Case 6:12-cv-00799-JRG Document 81-10 Filed 10/25/13 Page 1 of 13 PageID #: 2291
`Case 6:12—cv—00799—JRG Document 81-10 Filed 10/25/13 Page 1 of 13 Page|D #: 2291
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`EXHIBIT H
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`EXHIBIT H
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`Case 6:12-cv-00799-JRG Document 81-10 Filed 10/25/13 Page 2 of 13 PageID #: 2292
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TYLER DIVISION
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`Plaintiff,
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`Case No. 6:12-cv-00799-LED
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`INVENSYS SYSTEMS, INC.,
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`vs.
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`EMERSON ELECTRIC CO. and
`MICRO MOTION INC., USA,
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`Defendants.
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`and
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`MICRO MOTION INC., USA,
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`Counterclaim-Plaintiff,
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`vs.
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`INVENSYS SYSTEMS, INC.,
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`Counterclaim-Defendant.
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`MICRO MOTION, INC.’S FIRST SET OF INTERROGATORIES (NOS. 1-11) TO
`INVENSYS SYSTEMS, INC.
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`Pursuant to Fed. R. Civ. P. 26 and 33, the Discovery Order, (Dkt. No. 53), and
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`any other applicable Court orders and local rules, Defendant and Counterclaim-Plaintiff Micro
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`Motion, Inc. (“Micro Motion”), by and through its attorneys, hereby requests that Plaintiff and
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`Counterclaim-Defendant Invensys Systems, Inc. (“Invensys”) respond to the following
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`interrogatories in writing under oath consistent with the Definitions and Instructions provided
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`below within thirty days (30) from service hereof:
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`Case 6:12-cv-00799-JRG Document 81-10 Filed 10/25/13 Page 3 of 13 PageID #: 2293
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`DEFINITIONS
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`1.
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`“Invensys” means Invensys Systems, Inc., its predecessors, successors, affiliates,
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`subsidiaries, parents, assignees, joint venturers, partners, principals, employees, representatives,
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`accountants, agents, officers, directors, attorneys, draftsmen, and all other persons or entities
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`acting or purporting to act on its behalf.
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`2.
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`3.
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`“You” and “your” shall refer to Invensys as defined herein.
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`The term “document” is defined to be synonymous in meaning and equal in scope
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`to the usage of this term in Fed. R. Civ. P. 34(a), and includes, but is not limited to, any writing,
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`graphic matter, or other tangible thing, whether printed, recorded, produced by a process, or
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`written or produced by hand, including, but not limited to, letters, reports, or other written
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`communications, correspondence, telegrams, books, memoranda, summaries, records of oral
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`conversations, original or preliminary notes, diaries, calendars, travel records or itineraries,
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`forecasts, analyses, lab reports, projections, work papers, invoices, shipping papers, contracts,
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`purchase orders, receipts, pamphlets, publications, catalogs, labels, packaging, displays,
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`photographs, proofs, slides, videotapes, films, artwork, drawings, sketches, illustrative materials,
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`models, graphs, statistical statements, notebooks, charts, plans, circulars, brochures, summaries
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`of negotiations, press releases, routing slips or the like, promotional or advertising materials,
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`marginal comments appearing on any document, price lists, layouts, printed publications,
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`minutes or records of meetings, minutes or records of conferences, agendas, expressions or
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`statements of policy, lists of persons attending meetings or conferences, reports or summaries of
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`investigations, opinions or reports of consultants, studies, evaluations, records, sound recordings,
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`motion pictures, computer input or output, recordings on disk or tape, tear sheets, magnetic
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`recording tapes, microfilms, and other storage means by which information is retained in
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`2
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`Case 6:12-cv-00799-JRG Document 81-10 Filed 10/25/13 Page 4 of 13 PageID #: 2294
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`retrievable form, and other material, whether printed, typewritten, handwritten, recorded or
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`reproduced by any process, whether mechanical, electrical, optical, chemical, or otherwise,
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`including drafts, revisions, foreign language versions or translations to English of any of the
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`foregoing. A draft or non-identical copy is a separate document within the meaning of this term.
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`4.
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`“Communication” means any oral, written, electronic, or other transmittal of
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`information, ideas, opinions, thoughts, or otherwise by any means from or to any person or thing.
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`5.
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`“Relate to,” “related to,” and “relating to,” means comprising, mentioning,
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`describing, containing, enumerating, involving, or in any way concerning, pertaining, or
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`referring to, being connected with, reflecting upon or resulting from, in whole or in part, directly
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`or indirectly, the stated subject matter.
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`6.
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`“Person” is defined as any natural person or any business, legal or governmental
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`entity, or association, including, but not limited to, sole proprietorships, partnerships,
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`corporations, associations, or joint ventures.
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`8.
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`When referring to a person, “to identify” means to give, to the extent known, the
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`(i) full name and, in the case of entities other than natural persons, the nature of the entity, e.g.,
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`corporation, partnership, etc.; (ii) person’s present residence and business addresses and
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`telephone numbers or, if unknown, the person’s last known residence and business addresses and
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`telephone numbers; (iii) company or business affiliation at the date of the matter referred to; (iv)
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`title and duties in the company or business with which the person was affiliated; and (v) person’s
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`current company or business affiliation.
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`9.
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`When referring to documents, “to identify” means to give, to the extent known,
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`the (i) type of document; (ii) general subject matter; (iii) date of the document; (iv) the
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`circumstances of the creation of the document, including identification of the author(s),
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`3
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`Case 6:12-cv-00799-JRG Document 81-10 Filed 10/25/13 Page 5 of 13 PageID #: 2295
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`addressee(s), and recipient(s); and (v) name, address, telephone number, occupation, job title,
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`and employer of the present or last-known custodian of the document.
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`10.
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`To “identify” or “describe a communication” means to state: (i) the date, type,
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`manner, and location of the communication; (ii) the identity of all parties to the communication;
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`(iii) the substance of the communication; and (iv) a description of any documents relating to the
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`communication.
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`11.
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`In each instance in which you are asked to “identify” a patent or a patent
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`application, whether of the United States or any foreign country, your description should include,
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`but not be limited to: (i) its country and patent application date; (ii) its dates of filing and grant,
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`respectively; (iii) the identity of its applicants, patentees, and assignees; (iv) its title; (v) for each
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`U.S. application, the identity of any foreign counterpart or parent application or patent; and
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`(vi) its current status.
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`12.
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`In each instance where you are asked to “identify” or “describe a product or
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`process,” your description should include, but not be limited to, the product’s catalog number,
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`part number, model number, series designation, trade designation, or other pertinent designation
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`customarily used by the party concerned to designate such product or process and to distinguish
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`it from others made by the same or different producer.
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`13.
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`The term “the ’646 patent,” as used herein, means United States Patent No.
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`7,124,646.
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`14.
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`The term “the ’761 patent,” as used herein, means United States Patent No.
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`7,136,761.
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`15.
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`The term “the ’136 patent,” as used herein, means United States Patent No.
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`6,311,136.
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`4
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`Case 6:12-cv-00799-JRG Document 81-10 Filed 10/25/13 Page 6 of 13 PageID #: 2296
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`16.
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`The term “the ’854 patent,” as used herein, means United States Patent No.
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`7,505,854.
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`17.
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`The term “the ’594 patent,” as used herein, means United States Patent No.
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`6,754,594.
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`18.
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`The term “the ’062 patent,” as used herein, means United States Patent No.
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`7,571,062.
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`19.
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`The term “the ’906 patent,” as used herein, means United States Patent No.
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`8,000,906.
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`20.
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`The “Invensys Patents-in-Suit” means the ’646 patent, the ’761 patent, the ’136
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`patent, the ’854 patent, the ’594 patent, the ’062 patent, and the ’906 patent.
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`21.
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`The term “the ’190 patent,” as used herein, means United States Patent No.
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`5,555,190.
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`22.
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`The term “the ’131 patent,” as used herein, means United States Patent No.
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`6,505,131.
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`23.
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`24.
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`The “Micro Motion Patents-in-Suit” means the ’190 patent and the ’131 patent.
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`“Invensys Accused Product” means each Invensys apparatus, product, device,
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`and/or method that infringes and/or is accused of infringing the asserted claims of the Micro
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`Motion Patents-in-Suit.
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`INSTRUCTIONS
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`1.
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`These interrogatories seek information current as of the date of service and to the
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`full extent permitted under the Federal Rules of Civil Procedure. As these interrogatories are of
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`a continuing nature, you are obligated to promptly supplement or correct any response that is
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`5
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`Case 6:12-cv-00799-JRG Document 81-10 Filed 10/25/13 Page 7 of 13 PageID #: 2297
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`incomplete, inaccurate, or which requires an additional response to comply with the Federal
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`Rules of Civil Procedure. See Fed. R. Civ. P. 26(e).
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`2.
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`Answer each interrogatory in full. If you cannot do so, answer to the extent
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`possible, explaining why you cannot answer completely and stating any knowledge, information,
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`or belief you have concerning the unanswered portion of the interrogatory. If you perceive an
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`interrogatory (or portion thereof) to be inapplicable, then indicate as much rather than leaving the
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`interrogatory (or portion thereof) unanswered.
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`3.
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`If you encounter any ambiguity in construing any interrogatory, definition,
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`construction, or instruction herein, set forth the matter deemed ambiguous and the construction
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`chosen or used in responding to the interrogatory.
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`4.
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`In construing these interrogatories, the plural shall include the singular, the
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`singular shall include the plural, and a masculine or feminine term shall include all other
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`genders. The words “and” and “or” mean “and/or” and should be read both ways so as to
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`encompass both constructions and call for answers to be provided to both constructions. The
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`word “each” includes the word “every,” and the word “every” includes the word “each.” The
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`word “any” shall be understood to include and encompass “all,” and “all” should be interpreted
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`to include and encompass “any.”
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`5.
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`If any document that is responsive to these interrogatories is known to exist but
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`cannot be produced, that document is to be specifically identified as precisely as possible and the
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`reasons for the inability to produce the document stated.
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`6.
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`In the event that a document that is responsive to these interrogatories has been
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`destroyed, the response hereto shall identify: (i) the preparer of the document; (ii) its addresser
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`(if different), addressee, and each recipient thereof; (iii) each person to whom it was distributed
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`6
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`Case 6:12-cv-00799-JRG Document 81-10 Filed 10/25/13 Page 8 of 13 PageID #: 2298
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`or shown; (iv) the date it was prepared; (v) the date it was transmitted (if different); (vi) the date
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`it was received; (vii) a description of its contents and subject matter; (viii) the date of its
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`destruction; (ix) the manner of its destruction; (x) the name, title, and address of the person
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`authorizing its destruction; (xi) the reason(s) for its destruction; (xii) the name, title, and address
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`of the person destroying the document; (xiii) and a description of the efforts to locate the
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`document and copies of it.
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`7.
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`As required by Fed. R. Civ. P. 26(b)(5), with respect to any information you
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`assert to be protected or privileged, you must expressly identify the nature of the privilege
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`asserted, indicate the factual basis for the privilege, and describe the nature and content of the
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`allegedly-privileged information in sufficient detail to enable others to assess the applicability of
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`the asserted privilege.
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`INTERROGATORY NO. 1:
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`INTERROGATORIES
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`Separately for each asserted claim of the Invensys Patents-in-Suit describe in
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`detail the conception, reduction to practice (actual or constructive), and all activities constituting
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`diligence from conception to reduction to practice, including without limitation, an identification
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`and description of: (i) when, where, and by whom each claimed invention was conceived; (ii)
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`the specific contribution by each alleged inventor; (iii) the first written description of each
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`claimed invention (including when and where it was made and by whom); (iv) the earliest
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`priority date of each claimed invention and all bases for such priority; (v) when, where, by
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`whom, and under what circumstances each claimed invention was first reduced to practice; (vi)
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`the first public disclosure of each claimed invention, including when, where, by whom, and to
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`whom; and (vii) all evidence and witnesses corroborating the above.
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`7
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`Case 6:12-cv-00799-JRG Document 81-10 Filed 10/25/13 Page 9 of 13 PageID #: 2299
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`INTERROGATORY NO. 2:
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`Identify by model name, model number, and time period sold, any product or
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`process made or used by anyone other than Micro Motion, including without limitation Invensys,
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`which Invensys contends is covered by any of the claims of the Invensys Patents-in-Suit,
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`including without limitation, any products or processes that have been marketed, advertised, or
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`marked as being covered by the Invensys Patents-in-Suit, and for each such product or process
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`state which claim covers it and the date of its first offer for sale and public use in the United
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`States.
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`INTERROGATORY NO. 3:
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`For each product or process identified in response to Interrogatory No. 2, identify
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`whether it was marked pursuant to 35 U.S.C. § 287(a), including: (i) a listing of each patent
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`number it was marked with; (ii) a description of all time periods it was marked with each
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`identified patent number; (iii) a description of all time periods it was made, used, sold or offered
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`for sale in, or imported into, the United States; (iv) a description, in an element-by-element chart,
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`of how each asserted claim of the Invensys Patents-in-Suit reads on the product or process; and
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`(v) an identification of all documents describing or supporting any of the information requested
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`by this Interrogatory.
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`INTERROGATORY NO. 4:
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`Identify each person who was associated with preparing, filing, or prosecuting the
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`Invensys Patents-in-Suit, and describe in detail the nature of each person’s involvement.
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`Case 6:12-cv-00799-JRG Document 81-10 Filed 10/25/13 Page 10 of 13 PageID #: 2300
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`INTERROGATORY NO. 5:
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`Identify any entity or person including, but not limited to, any holding company,
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`parent, subsidiary, affiliate, shareholder, or third party that has any financial interest, direct or
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`indirect, in the outcome of the current litigation or in any of the Invensys Patents-in-Suit.
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`INTERROGATORY NO. 6:
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`Identify and describe in detail each and every instance in which Invensys has
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`licensed, attempted to license, offered to license, suggested a license under, discussed a license
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`under, entered a covenant not to sue, entered a technology transfer agreement, or settled a lawsuit
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`that relates to the subject matter of any of the Invensys Patents-in-Suit and/or the Micro Motion
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`Patents-in-Suit, including, but not limited to, the persons, places, dates, and material terms
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`associated with each instance.
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`INTERROGATORY NO. 7:
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`Describe in detail the pre-suit investigation you or a third party on your behalf
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`undertook to form the basis of your allegation that Emerson and/or Micro Motion has infringed
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`any claim of the Invensys Patents-in-Suit, including, but not limited to, (i) the dates of all
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`activities related to your pre-suit investigation; (ii) the persons that participated or were involved
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`in your pre-suit investigation; (iii) any and all products examined, inspected, evaluated, or tested
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`during the course of your pre-suit investigation; (iv) the manner in which any products were
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`examined, inspected, evaluated, or tested during the course of your pre-suit investigation; and (v)
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`all documents and testing results relating to your pre-suit investigation.
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`INTERROGATORY NO. 8:
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`Describe in detail the legal and factual bases supporting any claims for lost
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`profits, reasonably royalties, or any other damages that Invensys claims to have suffered as a
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`9
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`Case 6:12-cv-00799-JRG Document 81-10 Filed 10/25/13 Page 11 of 13 PageID #: 2301
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`result of any conduct by Emerson and/or Micro Motion, and identify all evidence that Invensys
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`contends corroborates its claim for damages.
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`INTERROGATORY NO. 9:
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`Identify each and every instance in which you contend Invensys has lost a sale as
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`a result of the alleged infringement of Micro Motion or Emerson, including an identification of
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`(i) the customer or potential customer to whom the sale was made; (ii) the date or approximate
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`date of the same; (iii) the Invensys product offered or proposed to the customer; (iv) the person
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`at the customer most knowledgeable about the proposed transaction; and (v) the person at
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`Invensys most knowledgeable about the proposed transaction.
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`INTERROGATORY NO. 10:
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`Describe in detail all sources of funding for any and all research that led to the
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`alleged inventions in any of the Invensys Patents-in-Suit, identifying the name of the funding
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`source, the amount of funding received from each funding source, conditions imposed by each
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`funding source, and any and all agreements related to the funding and/or the ownership interests
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`in the alleged inventions that arose out of the research for which funding was provided.
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`INTERROGATORY NO. 11:
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`For each Invensys Accused Product state in detail the complete basis for
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`Invensys’s position, if any, that such Invensys Accused Product does not infringe the Micro
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`Motion Patents-in-Suit, identify all documents or evidence that support this position, and set
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`forth these contentions in a three-column claim chart setting out in the left column the claim
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`elements, in the middle column the claim elements you contend are missing, and in the right
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`column the basis for your contention that the claim element is missing.
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`10
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`Case 6:12-cv-00799-JRG Document 81-10 Filed 10/25/13 Page 12 of 13 PageID #: 2302
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`
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`/s/ Kadie M. Jelenchick
`Linda E.B. Hansen, WI Bar No. 1000660
`Richard S. Florsheim, WI Bar No. 1015905
`Jeffrey N. Costakos, WI Bar No. 1008225
`Kadie M. Jelenchick, WI Bar No. 1056506
`Matthew J. Shin, WI Bar No. 1090096
`Foley & Lardner LLP
`777 East Wisconsin Avenue
`Milwaukee, Wisconsin 53202
`Phone: (414) 271-2400
`Fax: (414) 297-4900
`Email: lhansen@foley.com
`rflorsheim@foley.com
`jcostakos@foley.com
`kjelenchick@foley.com
`mshin@foley.com
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`Attorneys for Defendant and Counterclaim-
`Plaintiff Micro Motion, Inc.
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`Dated: August 15, 2013
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`Guy N. Harrison, State Bar No. 00000077
`Harrison Law Firm
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`217 N. Center Street
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`Longview, Texas 75606
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`Phone: (903) 758-7361
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`Fax: (903) 753-9557
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`Email: guy@gnhlaw.com and
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`cj-gnharrison@att.net
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`11
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`Case 6:12-cv-00799-JRG Document 81-10 Filed 10/25/13 Page 13 of 13 PageID #: 2303
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`CERTIFICATE OF SERVICE
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`I hereby certify that on August 15, 2013, the attached MICRO MOTION,
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`INC.’S FIRST SET OF INTERROGATORIES (NOS. 1-11) TO INVENSYS SYSTEMS,
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`INC. was served via electronic mail upon all counsel of record. .
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`/s/ Kadie M. Jelenchick
`Kadie M. Jelenchick
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`12