`
`
`IN THE UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF TEXAS
`TYLER DIVISION
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`
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`Case No. 12-CV-00799-LED
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`JURY TRIAL DEMANDED
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`INVENSYS SYSTEMS, INC.,
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`
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`Plaintiff,
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`vs.
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`
`
`EMERSON ELECTRIC CO. and
`MICRO MOTION INC., USA,
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`
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`Defendants,
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`and
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`MICRO MOTION INC., USA,
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`
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`Counterclaim-Plaintiff,
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`vs.
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`
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`INVENSYS SYSTEMS, INC.,
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`Counterclaim-Defendant.
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`MICRO MOTION, INC.’S AMENDED ANSWER, AFFIRMATIVE DEFENSES,
`AND SECOND AMENDED COUNTERCLAIMS
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`Defendant Micro Motion, Inc. (“Micro Motion”)1 hereby responds to Plaintiff’s
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`
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`
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`First Amended Complaint (“the Complaint”) as follows:
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`PARTIES
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`1.
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`Micro Motion lacks knowledge or information sufficient to form a belief about
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`the truth of the allegations in this Paragraph and therefore denies them.
`
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`1 Invensys Systems, Inc. (“Invensys”) incorrectly identified Micro Motion Inc., USA as a
`Defendant in this action in the Original Complaint. The correct name is Micro Motion, Inc.
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`4852-2053-5061.1
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`Case 6:12-cv-00799-JRG Document 71 Filed 09/13/13 Page 2 of 29 PageID #: 1788
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`2.
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`No response is required from Micro Motion to the extent that the allegations in
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`this Paragraph are not directed to Micro Motion.
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`3.
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`Micro Motion denies that its name is “Micro Motion Inc., USA” and affirmatively
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`states that its correct name is “Micro Motion, Inc.” Micro Motion admits that it is a Colorado
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`corporation with its principal place of business being at 7070 Winchester Circle, Boulder,
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`Colorado 80301, and that it is an indirect wholly-owned subsidiary of Emerson Electric Co.
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`(“Emerson”). Micro Motion also admits that certain of its products are sold, offered for sale, and
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`used in this District. Micro Motion otherwise denies the remaining allegations in this Paragraph.
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`JURISDICTION
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`4.
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`Micro Motion admits that Invensys purports to bring this action under Title 35 of
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`the United States Code.
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`5.
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`No response is required from Micro Motion to the extent that the allegations in
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`this Paragraph are not directed to Micro Motion. To the extent that a response is required, Micro
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`Motion denies the allegations in this Paragraph.
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`6.
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`Micro Motion admits that it conducts business in Texas and that this Court has
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`personal jurisdiction over Micro Motion. Micro Motion otherwise denies the remaining
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`allegations in this Paragraph.
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`VENUE
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`7.
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`No response is required from Micro Motion to the extent that the allegations in
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`this Paragraph are not directed to Micro Motion. Micro Motion admits that because it is subject
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`to this Court’s personal jurisdiction and therefore is deemed to reside in this District, venue is
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`proper; however, Micro Motion affirmatively states that for the reasons set forth in Micro
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`Motion’s previously filed motion to transfer pursuant to 28 U.S.C. §1404(a), this Court should
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`4852-2053-5061.1
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`2
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`Case 6:12-cv-00799-JRG Document 71 Filed 09/13/13 Page 3 of 29 PageID #: 1789
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`transfer venue to the District of Colorado. Micro Motion denies the remaining allegations in this
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`Paragraph.
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`BACKGROUND
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`8.
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`No response is required from Micro Motion to the extent that the allegations in
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`this Paragraph are not directed to Micro Motion. Micro Motion admits that some digital Coriolis
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`flowmeters provide precise measurements of the mass flow rate of liquids and that some digital
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`Coriolis flowmeters are used in a variety of industries, including oil and gas, chemical, and food
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`and beverage. Micro Motion lacks knowledge or information sufficient to form a belief about
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`the truth of the remaining allegations in this Paragraph and therefore denies them.
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`9.
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`No response is required from Micro Motion to the extent that the allegations in
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`this Paragraph are not directed to Micro Motion. To the extent that a response is required, Micro
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`Motion lacks knowledge or information sufficient to form a belief about the truth of the
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`allegations in this Paragraph and therefore denies them.
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`10. Micro Motion admits that it is an indirect wholly-owned subsidiary of Emerson.
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`Micro Motion also admits that in or around 2006, it released certain Coriolis flowmeters having a
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`Micro Motion enhanced core processor. Micro Motion otherwise denies the remaining
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`allegations in this Paragraph.
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`11.
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`No response is required from Micro Motion to the extent that the allegations in
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`this Paragraph are not directed to Micro Motion. Micro Motion denies that it has facilities in this
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`District. Micro Motion lacks knowledge or information sufficient to form a belief about the truth
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`of the remaining allegations in this Paragraph and therefore denies them.
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`4852-2053-5061.1
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`3
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`Case 6:12-cv-00799-JRG Document 71 Filed 09/13/13 Page 4 of 29 PageID #: 1790
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`FIRST CLAIM
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`(Alleged Patent Infringement of the ’646 Patent)
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`12. Micro Motion repeats and incorporates herein by reference its responses to
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`Paragraphs 1-11 of the Complaint.
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`13. Micro Motion admits U.S. Patent No. 7,124,646 (“the ’646 patent”) states on its
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`face that: (a) its title is “Correcting for Two-Phase Flow in a Digital Flowmeter”; (b) it issued on
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`October 24, 2006; (c) the named inventors are Manus P. Henry and Maria Jesus De La Fuente;
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`and (d) Invensys is the assignee. Micro Motion also admits that a copy of what purports to be
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`the ’646 patent is attached to the Complaint as Exhibit A. Micro Motion denies that the ’646
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`patent was duly and legally issued. As for the remaining allegations, Micro Motion lacks
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`knowledge or information sufficient to form a belief as to their truth and therefore denies them.
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`14.
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`No response is required from Micro Motion to the extent that the allegations in
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`this Paragraph are not directed to Micro Motion. To the extent that a response is required, Micro
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`Motion admits that Micro Motion makes, offers for sale, and sells, within the territorial
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`boundaries of the United States, Coriolis meters containing a Micro Motion transmitter with a
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`Micro Motion enhanced core processor, and the components thereof. Micro Motion denies the
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`remaining allegations in this Paragraph.
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`15.
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`No response is required from Micro Motion to the extent that the allegations in
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`this Paragraph are not directed to Micro Motion. To the extent that a response is required, Micro
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`Motion denies the allegations in this Paragraph.
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`16.
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`No response is required from Micro Motion to the extent that the allegations in
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`this Paragraph are not directed to Micro Motion. To the extent that a response is required, Micro
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`Motion lacks sufficient information to form a belief about the truth of the vague allegations
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`4852-2053-5061.1
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`4
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`Case 6:12-cv-00799-JRG Document 71 Filed 09/13/13 Page 5 of 29 PageID #: 1791
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`regarding “at least one Information Disclosure Statement[]” in this Paragraph and therefore
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`denies them. Further, Micro Motion denies the remaining allegations in this Paragraph.
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`17.
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`No response is required from Micro Motion to the extent that the allegations in
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`this Paragraph are not directed to Micro Motion. To the extent that a response is required, Micro
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`Motion denies the allegations in this Paragraph.
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`SECOND CLAIM
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`(Alleged Patent Infringement of the ’761 Patent)
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`18. Micro Motion repeats and incorporates herein by reference its responses to
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`Paragraphs 1-17 of the Complaint.
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`19. Micro Motion admits U.S. Patent No. 7,136,761 (“the ’761 patent”) states on its
`
`face that: (a) its title is “Digital Flowmeter”; (b) it issued on November 14, 2006; (c) the named
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`inventors are Manus P. Henry, David W. Clarke, and James H. Vignos; and (d) Invensys is the
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`assignee. Micro Motion also admits that a copy of what purports to be the ’761 patent is
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`attached to the Complaint as Exhibit B. Micro Motion denies that the ’761 patent was duly and
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`legally issued. As for the remaining allegations, Micro Motion lacks knowledge or information
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`sufficient to form a belief as to their truth and therefore denies them.
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`20.
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`No response is required from Micro Motion to the extent that the allegations in
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`this Paragraph are not directed to Micro Motion. To the extent that a response is required, Micro
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`Motion admits that Micro Motion makes, offers for sale, and sells, within the territorial
`
`boundaries of the United States, Coriolis meters containing a Micro Motion transmitter with a
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`Micro Motion enhanced core processor, and the components thereof. Micro Motion denies the
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`remaining allegations in this Paragraph.
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`4852-2053-5061.1
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`5
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`Case 6:12-cv-00799-JRG Document 71 Filed 09/13/13 Page 6 of 29 PageID #: 1792
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`21.
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`No response is required from Micro Motion to the extent that the allegations in
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`this Paragraph are not directed to Micro Motion. To the extent that a response is required, Micro
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`Motion denies the allegations in this Paragraph.
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`22.
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`No response is required from Micro Motion to the extent that the allegations in
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`this Paragraph are not directed to Micro Motion. To the extent that a response is required, Micro
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`Motion lacks sufficient information to form a belief about the truth of the vague allegations
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`regarding “at least one IDS” in this Paragraph and therefore denies them. Further, Micro Motion
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`denies the remaining allegations in this Paragraph.
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`23.
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`No response is required from Micro Motion to the extent that the allegations in
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`this Paragraph are not directed to Micro Motion. To the extent that a response is required, Micro
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`Motion denies the allegations in this Paragraph.
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`THIRD CLAIM
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`(Alleged Patent Infringement of the ’136 Patent)
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`24. Micro Motion repeats and incorporates herein by reference its responses to
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`Paragraphs 1-23 of the Complaint.
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`25. Micro Motion admits U.S. Patent No. 6,311,136 (“the ’136 patent”) states on its
`
`face that: (a) its title is “Digital Flowmeter”; (b) it issued on October 30, 2001; (c) the named
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`inventors are Manus P. Henry, David W. Clarke, and James H. Vignos; and (d) Invensys is the
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`assignee. Micro Motion also admits that a copy of what purports to be the ’136 patent is
`
`attached to the Complaint as Exhibit C. Micro Motion denies that the ’136 patent was duly and
`
`legally issued. As for the remaining allegations, Micro Motion lacks knowledge or information
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`sufficient to form a belief as to their truth and therefore denies them.
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`4852-2053-5061.1
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`6
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`Case 6:12-cv-00799-JRG Document 71 Filed 09/13/13 Page 7 of 29 PageID #: 1793
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`26.
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`No response is required from Micro Motion to the extent that the allegations in
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`this Paragraph are not directed to Micro Motion. To the extent that a response is required, Micro
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`Motion admits that Micro Motion makes, offers for sale, and sells, within the territorial
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`boundaries of the United States, Coriolis meters containing a Micro Motion transmitter with a
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`Micro Motion enhanced core processor, and the components thereof. Micro Motion denies the
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`remaining allegations in this Paragraph.
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`27.
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`No response is required from Micro Motion to the extent that the allegations in
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`this Paragraph are not directed to Micro Motion. To the extent that a response is required, Micro
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`Motion denies the allegations in this Paragraph.
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`28.
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`No response is required from Micro Motion to the extent that the allegations in
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`this Paragraph are not directed to Micro Motion. To the extent that a response is required, Micro
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`Motion admits: (a) U.S. Patent No. 8,063,694 (“the ’694 patent”) states on its face that Micro
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`Motion is the assignee and the ’136 patent appears among twelve references under the
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`References Cited section; (b) U.S. Patent No. 7,974,792 (“the ’792 patent”) states on its face that
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`Micro Motion is the assignee and the ’136 patent appears among eighteen references under the
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`References Cited section; (c) U.S. Patent No. 7,293,470 (“the ’470 patent”) states on its face that
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`Micro Motion is the assignee and the ’136 patent appears among twelve references under the
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`References Cited section; and (d) U.S. Patent No. 6,487,507 (“the ’507 patent”) states on its face
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`that Micro Motion is the assignee and the ’136 patent appears among twenty-one references
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`under the References Cited section. Micro Motion denies the remaining allegations in this
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`Paragraph.
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`4852-2053-5061.1
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`7
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`Case 6:12-cv-00799-JRG Document 71 Filed 09/13/13 Page 8 of 29 PageID #: 1794
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`29.
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`No response is required from Micro Motion to the extent that the allegations in
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`this Paragraph are not directed to Micro Motion. To the extent that a response is required, Micro
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`Motion denies the allegations in this Paragraph.
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`30. Micro Motion admits that the ’136 patent and U.S. Patent Application No.
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`2003/0154804 appear among ten references listed in an IDS for the ’470 patent bearing a March
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`8, 2006 date stamp by the Patent & Trademark Office, and an assignment of the ’470 patent to
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`Micro Motion was recorded on March 8, 2006. Micro Motion denies the remaining allegations
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`in this Paragraph.
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`31. Micro Motion admits that the ’136 patent appears among seven references listed
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`in the September 11, 2007 IDS for the ’792 patent, and an assignment of the ’792 patent to Micro
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`Motion was recorded on September 11, 2007. Micro Motion denies the remaining allegations in
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`this Paragraph.
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`32. Micro Motion admits that the ’136 patent appears among eight references listed in
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`the October 15, 2008 IDS for the ’694 patent, and an assignment of the ’694 patent to Micro
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`Motion was recorded on October 15, 2008. Micro Motion denies the remaining allegations in
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`this Paragraph.
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`33.
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`No response is required from Micro Motion to the extent that the allegations in
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`this Paragraph are not directed to Micro Motion. To the extent that a response is required, Micro
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`Motion lacks sufficient information to form a belief about the truth of the vague allegations in
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`this Paragraph and therefore denies them.
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`34.
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`No response is required from Micro Motion to the extent that the allegations in
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`this Paragraph are not directed to Micro Motion. To the extent that a response is required, Micro
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`Motion denies the allegations in this Paragraph.
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`4852-2053-5061.1
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`8
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`Case 6:12-cv-00799-JRG Document 71 Filed 09/13/13 Page 9 of 29 PageID #: 1795
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`35.
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`No response is required from Micro Motion to the extent that the allegations in
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`this Paragraph are not directed to Micro Motion. To the extent that a response is required, Micro
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`Motion denies the allegations in this Paragraph.
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`FOURTH CLAIM
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`(Alleged Patent Infringement of the ’854 Patent)
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`36. Micro Motion repeats and incorporates herein by reference its responses to
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`Paragraphs 1-35 of the Complaint.
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`37. Micro Motion admits U.S. Patent No. 7,505,854 (“the ’854 patent”) states on its
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`face that: (a) its title is “Startup Techniques for a Digital Flowmeter”; (b) it issued on March 17,
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`2009; (c) the named inventors are Manus P. Henry and Mayela E. Zamora; and (d) Invensys is
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`the assignee. Micro Motion also admits that a copy of what purports to be the ’854 patent is
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`attached to the Complaint as Exhibit D. Micro Motion denies that the ’854 patent was duly and
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`legally issued. As for the remaining allegations, Micro Motion lacks knowledge or information
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`sufficient to form a belief as to their truth and therefore denies them.
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`38.
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`No response is required from Micro Motion to the extent that the allegations in
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`this Paragraph are not directed to Micro Motion. To the extent that a response is required, Micro
`
`Motion admits that Micro Motion makes, offers for sale, and sells, within the territorial
`
`boundaries of the United States, Coriolis meters containing a Micro Motion transmitter with a
`
`Micro Motion enhanced core processor, and the components thereof. Micro Motion denies the
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`remaining allegations in this Paragraph.
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`39.
`
`No response is required from Micro Motion to the extent that the allegations in
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`this Paragraph are not directed to Micro Motion. To the extent that a response is required, Micro
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`Motion denies the allegations in this Paragraph.
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`4852-2053-5061.1
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`9
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`Case 6:12-cv-00799-JRG Document 71 Filed 09/13/13 Page 10 of 29 PageID #: 1796
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`40.
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` No response is required from Micro Motion to the extent that the allegations in
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`this Paragraph are not directed to Micro Motion. To the extent that a response is required, Micro
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`Motion lacks sufficient information to form a belief about the truth of the vague allegations
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`regarding “one or more patent applications assigned to Micro Motion” in this Paragraph and
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`therefore denies them. Further, Micro Motion denies the remaining allegations in this Paragraph.
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`41.
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`No response is required from Micro Motion to the extent that the allegations in
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`this Paragraph are not directed to Micro Motion. To the extent that a response is required, Micro
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`Motion denies the allegations in this Paragraph.
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`FIFTH CLAIM
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`(Alleged Patent Infringement of the ’594 Patent)
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`42. Micro Motion repeats and incorporates herein by reference its responses to
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`Paragraphs 1-41 of the Complaint.
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`43. Micro Motion admits U.S. Patent No. 6,754,594 (“the ’594 patent”) states on its
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`face that: (a) its title is “Digital Flowmeter”; (b) it issued on June 22, 2004; (c) the named
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`inventors are Manus P. Henry, David W. Clarke, and James H. Vignos; and (d) Invensys is the
`
`assignee. Micro Motion also admits that a copy of what purports to be the ’594 patent is
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`attached to the Complaint as Exhibit E. Micro Motion denies that the ’594 patent was duly and
`
`legally issued. As for the remaining allegations, Micro Motion lacks knowledge or information
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`sufficient to form a belief as to their truth and therefore denies them.
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`44.
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`No response is required from Micro Motion to the extent that the allegations in
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`this Paragraph are not directed to Micro Motion. To the extent that a response is required, Micro
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`Motion admits that Micro Motion makes, offers for sale, and sells, within the territorial
`
`boundaries of the United States, Coriolis meters containing a Micro Motion transmitter with a
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`4852-2053-5061.1
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`10
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`Case 6:12-cv-00799-JRG Document 71 Filed 09/13/13 Page 11 of 29 PageID #: 1797
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`Micro Motion enhanced core processor, and the components thereof. Micro Motion denies the
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`remaining allegations in this Paragraph.
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`45.
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`No response is required from Micro Motion to the extent that the allegations in
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`this Paragraph are not directed to Micro Motion. To the extent that a response is required, Micro
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`Motion denies the allegations in this Paragraph.
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`46.
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`No response is required from Micro Motion to the extent that the allegations in
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`this Paragraph are not directed to Micro Motion. To the extent that a response is required, Micro
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`Motion lacks sufficient information to form a belief about the truth of the vague allegations
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`regarding “at least one IDS” in this Paragraph and therefore denies them. Further, Micro Motion
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`denies the remaining allegations in this Paragraph.
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`47.
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`No response is required from Micro Motion to the extent that the allegations in
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`this Paragraph are not directed to Micro Motion. To the extent that a response is required, Micro
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`Motion denies the allegations in this Paragraph.
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`SIXTH CLAIM
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`(Alleged Patent Infringement of the ’062 Patent)
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`48. Micro Motion repeats and incorporates herein by reference its responses to
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`Paragraphs 1-47 of the Complaint.
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`49. Micro Motion admits U.S. Patent No. 7,571,062 (“the ’062 patent”) states on its
`
`face that: (a) its title is “Digital Flowmeter”; (b) it issued on August 4, 2009; (c) the named
`
`inventors are Manus P. Henry, David W. Clarke, and James H. Vignos; and (d) Invensys is the
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`assignee. Micro Motion also admits that a copy of what purports to be the ’062 patent is
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`attached to the Complaint as Exhibit F. Micro Motion denies that the ’062 patent was duly and
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`4852-2053-5061.1
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`11
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`Case 6:12-cv-00799-JRG Document 71 Filed 09/13/13 Page 12 of 29 PageID #: 1798
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`legally issued. As for the remaining allegations, Micro Motion lacks knowledge or information
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`sufficient to form a belief as to their truth and therefore denies them.
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`50.
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`No response is required from Micro Motion to the extent that the allegations in
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`this Paragraph are not directed to Micro Motion. To the extent that a response is required, Micro
`
`Motion admits that Micro Motion makes, offers for sale, and sells, within the territorial
`
`boundaries of the United States, Coriolis meters containing a Micro Motion transmitter with a
`
`Micro Motion enhanced core processor, and the components thereof. Micro Motion denies the
`
`remaining allegations in this Paragraph.
`
`51.
`
`No response is required from Micro Motion to the extent that the allegations in
`
`this Paragraph are not directed to Micro Motion. To the extent that a response is required, Micro
`
`Motion denies the allegations in this Paragraph.
`
`52.
`
`No response is required from Micro Motion to the extent that the allegations in
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`this Paragraph are not directed to Micro Motion. To the extent that a response is required, Micro
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`Motion admits: (a) U.S. Patent No. 8,289,179 (“the ’179 patent”) states on its face that Micro
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`Motion is the assignee and the ’062 patent appears among sixteen references under the
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`References Cited section; (b) an assignment of the ’179 patent to Micro Motion was recorded on
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`November 4, 2009; and (c) a Notice of Allowability with a June 22, 2012 mail date and a Notice
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`of References Cited with a mail room date of June 22, 2012 posted on the Patent and Trademark
`
`Office database reference U.S. Patent Nos. 7,571,062; 6,917,887; 7,404,336; and 8,000,906.
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`Micro Motion denies the remaining allegations in this Paragraph.
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`53.
`
`No response is required from Micro Motion to the extent that the allegations in
`
`this Paragraph are not directed to Micro Motion. To the extent that a response is required, Micro
`
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`4852-2053-5061.1
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`12
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`Case 6:12-cv-00799-JRG Document 71 Filed 09/13/13 Page 13 of 29 PageID #: 1799
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`Motion lacks sufficient information to form a belief about the truth of the vague allegations in
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`this Paragraph and therefore denies them.
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`54.
`
`No response is required from Micro Motion to the extent that the allegations in
`
`this Paragraph are not directed to Micro Motion. To the extent that a response is required, Micro
`
`Motion denies the allegations in this Paragraph.
`
`55.
`
`No response is required from Micro Motion to the extent that the allegations in
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`this Paragraph are not directed to Micro Motion. To the extent that a response is required, Micro
`
`Motion denies the allegations in this Paragraph.
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`SEVENTH CLAIM
`
`(Alleged Patent Infringement of the ’906 Patent)
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`56. Micro Motion repeats and incorporates herein by reference its responses to
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`Paragraphs 1-55 of the Complaint.
`
`57. Micro Motion admits U.S. Patent No. 8,000,906 (“the ’906 patent”) states on its
`
`face that: (a) its title is “Digital Flowmeter”; (b) it issued on August 16, 2011; (c) the named
`
`inventors are Manus P. Henry, David W. Clarke, and James H. Vignos; and (d) Invensys is the
`
`assignee. Micro Motion also admits that a copy of what purports to be the ’906 patent is
`
`attached to the Complaint as Exhibit G. Micro Motion denies that the ’906 patent was duly and
`
`legally issued. As for the remaining allegations, Micro Motion lacks knowledge or information
`
`sufficient to form a belief as to their truth and therefore denies them.
`
`58.
`
`No response is required from Micro Motion to the extent that the allegations in
`
`this Paragraph are not directed to Micro Motion. To the extent that a response is required, Micro
`
`Motion admits that Micro Motion makes, offers for sale, and sells, within the territorial
`
`boundaries of the United States, Coriolis meters containing a Micro Motion transmitter with a
`
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`4852-2053-5061.1
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`13
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`Case 6:12-cv-00799-JRG Document 71 Filed 09/13/13 Page 14 of 29 PageID #: 1800
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`Micro Motion enhanced core processor, and the components thereof. Micro Motion denies the
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`remaining allegations in this Paragraph.
`
`59.
`
`No response is required from Micro Motion to the extent that the allegations in
`
`this Paragraph are not directed to Micro Motion. To the extent that a response is required, Micro
`
`Motion denies the allegations in this Paragraph.
`
`60.
`
`No response is required from Micro Motion to the extent that the allegations in
`
`this Paragraph are not directed to Micro Motion. Micro Motion admits: (a) the ’179 patent
`
`states on its face that Micro Motion is the assignee and the ’906 patent appears among sixteen
`
`references under the References Cited section; (b) an assignment of the ’179 patent to Micro
`
`Motion was recorded on November 4, 2009; and (c) a Notice of Allowability with a June 22,
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`2012 mail date and a Notice of References Cited with a mail room date of June 22, 2012 posted
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`on the Patent and Trademark Office database reference U.S. Patent Nos. 7,571,062, 6,917,887,
`
`7,404,336, and 8,000,906. Micro Motion denies the remaining allegations in this Paragraph.
`
`61.
`
`No response is required from Micro Motion to the extent that the allegations in
`
`this Paragraph are not directed to Micro Motion. To the extent that a response is required, Micro
`
`Motion lacks sufficient information to form a belief about the truth of the vague allegations in
`
`this Paragraph and therefore denies them.
`
`62.
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`No response is required from Micro Motion to the extent that the allegations in
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`this Paragraph are not directed to Micro Motion. To the extent that a response is required, Micro
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`Motion denies the allegations in this Paragraph.
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`63.
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`No response is required from Micro Motion to the extent that the allegations in
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`this Paragraph are not directed to Micro Motion. To the extent that a response is required, Micro
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`Motion denies the allegations in this Paragraph.
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`4852-2053-5061.1
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`14
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`DEMAND FOR A JURY TRIAL
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`64.
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`The allegations in this Paragraph do not call for a response from Micro Motion.
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`However, as indicated below, Micro Motion desires a trial by jury on all issues so triable and
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`respectfully requests the same.
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`AFFIRMATIVE DEFENSES
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`65. Micro Motion has not infringed, contributed to the infringement of, or induced the
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`infringement of any valid and enforceable claim of the ’646, ’761, ’136, ’854, ’594, ’062, and
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`’906 patents (collectively, “the Invensys patents-in-suit”) either literally or under the doctrine of
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`equivalents.
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`66.
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`The claims of the Invensys patents-in-suit are invalid for failing to comply with
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`one or more of the statutory requirements set forth in Title 35 of the United States Code,
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`including at least 35 U.S.C. §§ 101, 102, 103, and/or 112.
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`67.
`
`68.
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`The Complaint fails to state a claim upon which relief can be granted.
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`Invensys’s claims for damages, if any, against Micro Motion are statutorily
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`limited by 35 U.S.C. §§ 286, 287, and/or 288.
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`69.
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`Invensys’s claims are barred from relief under the applicable statute of
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`limitations.
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`70. Micro Motion believes that after a reasonable opportunity for further investigation
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`and discovery, the evidence will show that Invensys’s claims are barred, in whole or in part,
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`under principles of equity, including without limitation, prosecution laches, laches, waiver,
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`and/or estoppel.
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`71.
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`Invensys is not entitled to injunctive relief because any alleged injury is not
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`immediate or irreparable, and/or because Invensys has an adequate remedy at law.
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`72.
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`By virtue of statements made, amendments made, or positions taken during the
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`prosecution of the applications for the Invensys patents-in-suit and/or any related patents or
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`patent applications, Invensys is estopped from construing any claim of the Invensys patents-in-
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`suit to cover or include, either literally or under the doctrine of equivalents, any of Micro
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`Motion’s products, systems, or processes.
`
`73.
`
`74.
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`The Invensys patents-in-suit are unenforceable as a result of inequitable conduct.
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`The ’646 patent claims priority to U.S. Patent App. No. 09/716,644, filed
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`November 21, 2000 and to U.S. Provisional App. No. 60/166,742, filed November 22, 1999.
`
`75.
`
`The ’646 patent claims a method or controller for a Coriolis effect flowmeter,
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`including processing devices configured, among other things, to “determine, based on the sensor
`
`signal, the flow rate of the flowing liquid during a transition of the flowtube from a first state in
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`which the flowtube is substantially empty of the flowing liquid to a second state in which the
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`flowtube is substantially full of the flowing liquid.”
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`76.
`
`The claims of the ’646 patent purport to claim this process in all industrial
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`settings.
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`77.
`
`However, the data used in the ’646 patent comes exclusively from controlled
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`laboratory experiments.
`
`78.
`
`The ’646 patent states that its methods are repeatable in industrial settings:
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`“Similar repeatability could be achieved in an arbitrary industrial batch process.” ’646 patent,
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`col. 57:39-40.
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`79.
`
`This is the only statement in the ’646 patent that the claimed method can be used
`
`in a variety of real-world industrial batch processes.
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`Case 6:12-cv-00799-JRG Document 71 Filed 09/13/13 Page 17 of 29 PageID #: 1803
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`80.
`
`The provisional application on which the ’646 patent claims priority, U.S.
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`Provisional App. No. 60/166,742, says: “Thus, it cannot be guaranteed that similar repeatability
`
`could be achieved in an arbitrary industrial process.”
`
`81.
`
`The provisional application thus expressly states that the results cannot be
`
`generalized to a range of industrial processes.
`
`82.
`
`In the original application on which the ’646 patent claims priority, U.S. Patent
`
`App. No. 09/716,644, the language quoted above from the provisional application was changed
`
`to say: “Thus, it can be guaranteed that similar repeatability could be achieved in an arbitrary
`
`industrial batch process.”
`
`83.
`
`The language in the application is identical to the language in the provisional
`
`application, except that the application changed the word “cannot” to “can.”
`
`84.
`
`This language was changed to attempt to support the broad claims asserted in the
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`’646 patent.
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`85.
`
`The language from the ’646 patent quoted above was not supported by
`
`experimental data.
`
`86.
`
`The named inventors of the ’646 patent did not possess the broad scope of
`
`invention claimed in the independent claims of the ’646 patent.
`
`87.
`
`On information and belief, the language was changed from the provisional
`
`application with an intent to deceive the United States Patent and Trademark Office that the
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`claims were adequately supported.
`
`88.
`
`89.
`
`The change in language was a material misrepresentation.
`
`This material misrepresentation renders
`
`the claims of
`
`the ’646 patent
`
`unenforceable.
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`90.
`
`Throughout the specification of the ’646 patent are further examples where the
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`author of the ’646 patent specification attempted to generalize the invention in a way that was
`
`inconsistent with the provisional application.
`
`91.
`
`For example, in the provisional application, the inventors state that they had been
`
`unable to stall any “B” tube – a Foxboro Coriolis tube of a particular shape. However, the
`
`specification deleted the letter “B” and stated instead that “laboratory experiments conducted
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`thus far have been unable to stall a tube of any size with any level of gas phase when controlled
`
`by the digital controller 105.” ’646 patent, col. 57:63-65.
`
`92.
`
`Likewise, immediately following the portion of the provisional application that
`
`corresponds to column 58, line 48, the provisional application states: “However, the correction
`
`technique used here is not suitable for applications with much variation in the fluid density, or in
`
`three-phase flow applicatio