Case 6:12-cv-00799-JRG Document 82 Filed 11/04/13 Page 1 of 8 PageID #: 2324
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TYLER DIVISION
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`C.A. No. 6:12-cv-00799-LED
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`JURY TRIAL DEMANDED
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`INVENSYS SYSTEMS, INC.,
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`v.
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`Plaintiff,
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`EMERSON ELECTRIC CO. and
`MICRO MOTION INC., USA,
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`and
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`Defendants.
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`MICRO MOTION INC., USA,
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`v.
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`INVENSYS SYSTEMS, INC.,
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`Counterclaim-Plaintiff, §
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`§§
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`§§
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`Counterclaim-Defendant.§
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`INVENSYS SYSTEMS, INC.’S REPLY BRIEF IN SUPPORT OF ITS MOTION TO
`DISMISS AND STRIKE MICRO MOTION, INC.’S COUNTERCLAIM AND
`AFFIRMATIVE DEFENSE OF INEQUITABLE CONDUCT
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`Case 6:12-cv-00799-JRG Document 82 Filed 11/04/13 Page 2 of 8 PageID #: 2325
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`Acknowledging that the pleading of its inequitable conduct claim was “necessarily
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`limited by the fact discovery has just begun,” Micro Motion’s Opposition (ECF No. 81)
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`(hereinafter, “Opposition”) only provides further evidence of Micro Motion’s “ready, fire, aim”
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`approach to its inequitable conduct pleading. Under controlling Federal Circuit precedent, Micro
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`Motion’s claims are subject to dismissal under Fed. R. Civ. P. 9(b) and 12(b)(6) for at least the
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`following reasons:1
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`First, Micro Motion admits to not having a sufficient basis to even set forth a claim for
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`inequitable conduct. In response to Micro Motion’s failure to satisfy the “who” element under
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`Exergen, Micro Motion admits that it “does not have the specific name or names” of the
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`individuals alleged to have committed the inequitable conduct. See Opposition, at 5; see also
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`Opposition, at 6 (acknowledging that it “fail[ed] to identify the ‘644 application’s author by
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`name”). There is no authority, and Micro Motion fails to even suggest any, in which a court
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`would permit an inequitable conduct claim to be pled against unidentified, unknown individuals.2
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`Indeed, this type of pleading is exactly the type of pleading that Exergen specifically rejected.
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`See Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312, 1329 fn.6 (Fed. Cir. 2009) (noting
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`1 Micro Motion’s allegations that Invensys delayed raising the deficiencies with Micro Motion’s pleading are simply
`inaccurate. First, Invensys had no ostensible obligation to even meet-and-confer with Micro Motion as L.R. CV-7(i)
`specifically exempts motions to dismiss from the meet-and-confer requirement. Regardless, in an attempt to avoid
`motion practice on these issues, Invensys’ counsel contacted Micro Motion’s counsel to meet-and-confer regarding
`Micro Motion’s inequitable conduct allegations and a “prospective motion” Invensys planned to make about the
`allegations six days prior to the filing of Invensys’ initial motion (ECF No. 77). Micro Motion’s counsel claimed it
`was unavailable for a meet-and-confer until five days later (i.e., one day prior to filing of Invensys’ initial motion).
`During the meet-and-confer, Invensys’ counsel set forth Invensys’ position on the deficiencies of Micro Motion’s
`pleading. Following a review of the authority provided by Invensys’ counsel, Micro Motion informed Invensys’
`counsel at 5:23 PM EST (after close of business) on the day of filing Invensys’ initial motion that it would agree to
`withdraw its “infectious unenforceability” claims. See Ex. 1.
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`2 The authority cited by Micro Motion (much of which is pre-Exergen and outside of this Circuit) in support of its
`argument that it satisfies the “who” element of Exergen is unavailing. In Cal. Instit. of Tech. v. Canon U.S.A., the
`pleading at issue specifically identified six author-inventors who could be charged with knowledge of their work, as
`well as the information contained there within, and how the information was material. 08:cv-08637, 2009 U.S. Dist.
`LEXIS 126174, *9 (C.D. Cal. Oct. 26, 2009). The declarant-inventor was named specifically and alleged to have
`made statements contrary to positions in her previously-authorized works. This far exceeds Micro Motion’s bare
`allegations which point only to alleged inconsistencies between the ‘742 Provisional, ‘644 Application, and ‘646
`Patent.
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`Case 6:12-cv-00799-JRG Document 82 Filed 11/04/13 Page 3 of 8 PageID #: 2326
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`one of the purposes of Rule 9(b) is to “to protect those whose reputation would be harmed as a
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`result of being subject to fraud charges”); see also Breville Pty Ltd. v. Storebound LLC, 12-CV-
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`01783-JST, 2013 WL 1758742, *5 (N.D. Cal. Apr. 24, 2013) (“the purpose of a heightened
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`pleading standard is to make it very difficult to allege claims against parties whose identities are
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`unknown at the time of the pleading”).
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`Rather than identify “who” allegedly committed inequitable conduct, Micro Motion
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`instead complains that it needs additional discovery in order to plead its “limited” claim with
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`more specificity. See Opposition at 4, 5. But numerous courts, including this Court, have
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`previously held that improperly pled allegations of inequitable conduct cannot be repaired by the
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`prospect of additional discovery. See, e.g., Acquis LLC v. Appro Int’l, 6:09-cv-148, 2010 WL
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`3155259, at *2 (E.D.T.X. July 22, 2010) (Davis, J.) (“[a]lthough Defendants argue that the
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`Exergen pleading standard does not apply where there has not been an opportunity to take
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`discovery and develop the allegations, no such distinction is made in Exergen or any other case
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`cited by Defendants”); see also Breville Pty Ltd. v. Storebound LLC, 12-cv-01783-JST, 2013 WL
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`1758742, *5 (N.D. Cal. Apr. 24, 2013) (rejecting argument that party should be allowed to
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`conduct discovery in order to identify specific individual involved in inequitable conduct).
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`Micro Motion resorts instead to complaining about Invensys’ responses to
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`interrogatories, notwithstanding that Micro Motion never expressed concerns about Invensys’
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`interrogatory responses before filing its Opposition, notwithstanding the admittedly early stage
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`of discovery (see Opposition, at 4), and notwithstanding that its very own questions are not
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`narrowly tailored to produce the information it now claims to seek. Omnibus, overly broad
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`questions concerning “each person’s involvement” and the individual responsible for “each
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`claimed invention” in the hundreds of pages and claims in the seven Invensys Patents-in-Suit are
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`Case 6:12-cv-00799-JRG Document 82 Filed 11/04/13 Page 4 of 8 PageID #: 2327
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`not properly circumscribed to yield an identification of the person responsible for one alleged
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`misrepresentation in one of the 68 columns of one of the seven patents-in-suit. If Micro Motion
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`later obtains discovery on the particulars of the alleged “inconsistency that is at the heart of [its]
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`inequitable conduct claim” (see Opposition, at 3), if it can meet the Exergen standard, and if it
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`can show the requisite good cause to amend its pleading (which Invensys doubts), Micro Motion
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`can then so move the Court for leave to amend. See Second Amended Docket Control Order,
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`ECF No. 69. This does not rectify the pleading’s current deficiencies, however.
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`Second, Micro Motion’s argument that it has satisfied the Exergen standard through its
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`“unequivocal” identification of the independent claims of the ‘646 Patent (see Opposition, at 7),
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`and the fact that the alleged inconsistencies satisfy “but-for” materiality in and of themselves
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`(see Opposition, at 9) have no merit. Micro Motion patently fails to identify how and why the
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`alleged inconsistencies affected the issuance of the independent claims of the ‘646 Patent. See
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`Exergen, 575 F.3d at 1330 (pleading must explain why information is material and how an
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`examiner would have used the information in assessing the patentability of the claims). This is
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`illustrated by the following chart comparing the alleged misrepresentations with the claim
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`element allegedly at issue:
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`Claim Element
`“determine, based on the sensor signal, the
`flow rate of the flowing liquid during a
`transition of the flowtube from a first state in
`which the flowtube is substantially empty of
`the flowing liquid to a second state in which
`the flowtube is substantially full.”
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`Alleged Misrepresentations
`“similar repeatability could be achieved in an
`arbitrary industrial batch process.” (‘646
`Patent, col 57: 39-40)
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`“laboratory experiments thus far have been
`unable to stall a tube of any size with any level
`of gas phase when controlled by the digital
`controller.” (‘646 Patent, col 57: 63-65)
`Deletion of the phrase: “the correction
`technique used here is not suitable for
`applications with much variation in the fluid
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`Case 6:12-cv-00799-JRG Document 82 Filed 11/04/13 Page 5 of 8 PageID #: 2328
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`density, or in three-phase flow applications, for
`which more research would be necessary.”
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`Micro Motion does not – and cannot – claim that these purported misstatements resulted
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`in the “unfair benefit of receiving an unwarranted claim.” SAP Am. Inc. v. Purple Leaf LLC,
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`2012 WL 2237995, *5 (N.D. Cal. June 15, 2012); accord SynQor, Inc v. Artesyn Technologies,
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`Inc., 2:07-CV-497, 2010 WL 3860129 (E.D. Tex. Sept. 9, 2010) (court dismissed inequitable
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`claim based on failure to show how alleged misstatement was material and how examiner would
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`have used the information). This is far from the classic inequitable conduct case of pointing to
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`language in an intentionally omitted prior art reference that reads directly on the claim language
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`in question, rendering it clearly invalid. In fact, based on Micro Motion’s pleading there is no
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`clear connection between the alleged misstatements and the issued claim language, rendering its
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`inequitable conduct claims fatally flawed. For one, deletion of the three phase flow language
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`(#3) does not appear material given that the applicable section of the specification discusses
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`measuring mass flow in a two phase condition (gas component and a liquid component). See
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`‘646 Patent, col 57, section O. For another, Micro Motion fails to explain how “industrial batch
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`repeatability” affects a determination of flow rate and takes the “industrial repeatability”
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`language in the ‘644 Application and ‘646 Patent completely out of context – the language
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`concerns repeatability in filling the flowmeter in question not repeatability in determining mass
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`flow.3 4 Instead, Micro Motion summarily concludes that the changes in language were done
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`“with an intent to deceive the United States Patent and Trademark Office that the claims were
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`3 See ‘646 Patent, col. 57, lines 37-42 (emphasis added): “Of course, the repeatability of the filling process is a
`lower bound on the repeatability of the Coriolis flowmeter total. Similar repeatability could be achieved in an
`arbitrary industrial batch process.”
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`4 Micro Motion’s remaining factual allegation similarly establishes no nexus with the applicable claim language. It
`claims that the change from “it is not possible to stall a B-tube of an size with any level of gas phase” to “unable to
`stall a tube of any level of gas phase” is a material misrepresentation, but fails to demonstrate an inconsistency, and
`fails to plead with any specificity how this relates to a determination of mass flow rate.
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`Case 6:12-cv-00799-JRG Document 82 Filed 11/04/13 Page 6 of 8 PageID #: 2329
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`adequately supported” (see Third Counterclaim, ¶ 29). In the absence of an adequately pled
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`connection between the language and the claims, no inequitable conduct claim can lie.5
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`Finally, Micro Motion’s arguments regarding intent to deceive are similarly unavailing.
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`Micro Motion claims that pleading on “information and belief” is sufficient under Exergen, as
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`intent can “generally be inferred from the facts and circumstances.”6 See Opposition, at 9. But
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`pleading on “information and belief” is only permitted under Rule 9(b) “if the pleading sets forth
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`the specific facts upon which the belief is reasonably based.” Exergen, 575 F.3d 1330-31
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`(emphasis added). Micro Motion’s pleading only points to general statements and claims that
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`are ostensibly “inconsistent” which creates the “possibility” of intent to deceive. But absent
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`pleading of additional facts evidencing the author’s intent, a reasonable inference of scienter
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`cannot be inferred. See Human Genome Scis., Inc. v. Genentech, No, 11-6519, 2011 WL
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`7461786 (C.D. Cal. Dec. 9, 2011) (fact that applicant contradicted himself in two different
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`filings insufficient; a contradiction is merely consistent with an intent to deceive, but intent
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`cannot be derived from alleged inconsistency in and of itself).
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`Based on the foregoing, Invensys respectfully requests that the Court grant its Motion to
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`Dismiss and Strike Micro Motion’s Counterclaim and Affirmative Defense of Inequitable
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`Conduct.
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`5 Additionally, Micro Motion points to the alleged inconsistencies as somehow constituting “unmistakably false”
`statements that in and of themselves justify materiality.
`In its pleading, Micro Motion does not state that the alleged
`inconsistencies were “unmistakably false”; indeed, Micro Motion only states that statements were “inconsistent”.
`This is clearly distinguishable from the facts set forth in Intellect Wireless and Therasense, which holds that “[w]hen
`the patentee has engaged in affirmative acts of egregious misconduct, such as the filing of an unmistakably false
`affidavit, the misconduct is material.” Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276, 1292 (Fed. Cir.
`2011). Micro Motion fails to set forth any facts sufficient to support egregious misconduct.
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`6 The authority cited by Micro Motion for this proposition is clearly distinguishable.
`In the case of Bruno Indep.
`Living Aids, Inc., v. Acord Mobility Servs., Ltd., 394 F.3d 1348, 1354 (Fed. Cir. 2005) (see Opposition, at 9), the
`Court could infer intent to deceive based on the clearly egregious behavior of the patentee. There, the patentee
`failed to disclose a material prior art reference to the PTO. At the time the patent was pending, a corporate officer
`involved with the prosecution of the patent disclosed the reference to the FDA and stated to the FDA that the
`patented product was substantially equivalent to the prior art device shown in the disclosed reference.
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`Case 6:12-cv-00799-JRG Document 82 Filed 11/04/13 Page 7 of 8 PageID #: 2330
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`Dated: November 4, 2013
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`Respectfully submitted,
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`/s/ Nicholas G. Papastavros
`Claudia Wilson Frost
`State Bar No. 21671300
`Jeffrey L. Johnson
`State Bar No. 24029638
`DLA PIPER LLP
`1000 Louisiana, Suite 2800
`Houston, TX 77002
`Telephone: 713.425.8400
`Facsimile: 713.425.8401
`Claudia.Frost@dlapiper.com
`Jeffrey.Johnson@dlapiper.com
`
`Nicholas G. Papastavros
`Daniel Rosenfeld
`DLA PIPER LLP
`33 Arch Street, 26th Floor
`Boston, MA 02110
`Telephone: 617.406.6000
`Facsimile: 617.406.6100
`Nick.Papastavros@dlapiper.com
`Daniel.Rosenfeld@dlapiper.com
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`ATTORNEYS FOR
`INVENSYS SYSTEMS, INC.
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`Case 6:12-cv-00799-JRG Document 82 Filed 11/04/13 Page 8 of 8 PageID #: 2331
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that on November 4, 2013, all counsel of record who are
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`deemed to have consented to electronic service are being served with a copy of this document via
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`the Court’s CM/ECF system per Local Rule CV-5(a)(3). Any other counsel of record will be
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`served by facsimile transmission and/or first class mail.
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`/s/ Nicholas G. Papastavros
`Nicholas G. Papastavros
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