Case 6:12-cv-00799-JRG Document 86 Filed 11/15/13 Page 1 of 8 PageID #: 2409
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`IN THE UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF TEXAS
`TYLER DIVISION
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`INVENSYS SYSTEMS, INC.,
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`Plaintiff,
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`vs.
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`Case No. 12-CV-00799-LED
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`EMERSON ELECTRIC CO. and
`MICRO MOTION INC., USA,
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`and
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`MICRO MOTION INC., USA,
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`Defendants,
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`Counterclaim-Plaintiff,
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`INVENSYS SYSTEMS, INC.,
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`vs.
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`Counterclaim-Defendant
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`MICRO MOTION, INC.’S SUR-REPLY TO INVENSYS SYSTEMS, INC.’S
`MOTION TO DISMISS AND STRIKE MICRO MOTION’S COUNTERCLAIM AND
`AFFIRMATIVE DEFENSE OF INEQUITABLE CONDUCT
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`4840-9941-9414.2
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`Case 6:12-cv-00799-JRG Document 86 Filed 11/15/13 Page 2 of 8 PageID #: 2410
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`I.
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`INTRODUCTION
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`The three asserted independent claims of the ’646 patent require that Invensys’s
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`Coriolis flowmeters “determine[], based on the sensor signal, the flow rate of the flowing liquid
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`during a transition of the flowtube from a first state in which the flowtube is substantially empty
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`of the flowing liquid to a second state in which the flowtube is substantially full of the flowing
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`liquid.” (Dkt. No. 81-3 at cls. 1, 10, 11.) Invensys provides no limitations on the particular
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`situation or set of circumstances under which its Coriolis flowmeters can determine flow rate
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`during such “batching from empty.” Instead, Invensys purports to claim and goes as far as to
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`“guarantee” that these measurements can be done and repeated in all industrial settings,
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`seemingly relying on the ’644 application’s specification for support. (Dkt. No. 81-4 at 103
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`(“Thus, it can be guaranteed that similar repeatability could be achieved in an arbitrary
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`industrial batch process.”) (emphasis added)); see also (Dkt. No. 81-3 at Col. 57, Ln. 39-40
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`(“[s]imilar repeatability could be achieved in an arbitrary industrial batch process”).)
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`This so-called “guarantee” is surprising and is the crux of Micro Motion’s
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`inequitable conduct allegations, given that less than a year earlier, the ’742 provisional stated the
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`exact opposite with respect to the Coriolis flowmeter’s ability to measure flow rate in a range of
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`industrial processes. Specifically, the ’742 provisional, to which the ’646 patent also purports to
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`claim priority, provides that “it cannot be guaranteed that similar repeatability could be
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`achieved in an arbitrary industrial process.” (Dkt. No. 81-5 at 3 (emphasis added).)
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`There was no basis for this flip-flop during prosecution of the ’646 patent, and in
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`briefing this Motion, Invensys still fails to provide any credible justification. This complete
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`reversal in language constitutes a material misrepresentation to the PTO, and under the
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`circumstances, it is appropriate to infer an intent to deceive. As explained in detail in its
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`4840-9941-9414.2
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`Case 6:12-cv-00799-JRG Document 86 Filed 11/15/13 Page 3 of 8 PageID #: 2411
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`Opposition, (Dkt. No. 81), Micro Motion has pled its inequitable conduct allegations with the
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`necessary particularity, and these allegations should not be dismissed. Nothing Invensys offers
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`in its Reply demands a different result.
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`II. MICRO MOTION’S INEQUITABLE CONDUCT COUNTERCLAIM AND
`AFFIRMATIVE DEFENSE ARE ADEQUATELY PLED
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`In its Reply, Invensys contends there are three bases for rejecting Micro Motion’s
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`inequitable conduct allegations. Each of Invensys’s arguments is without merit.
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`First, Invensys focuses on the Exergen requirement of “who” committed the
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`alleged inequitable conduct. Initially, in its Motion, Invensys mistakenly argued that Micro
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`Motion omitted identifying any “who,” ostensibly ignoring Micro Motion’s unequivocal
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`identification of the “author of the ’644 [application’s] specification” as the relevant actor. (Dkt.
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`No. 71 at 18, ¶ 90 and 23, ¶ 32.) Now, apparently recognizing its error, Invensys has given up
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`that argument and instead demands that in order to meet the “who” requirement, Micro Motion
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`must provide the actual name(s) of the individual(s).
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`Contrary to Invensys’s assertion, Exergen and its progeny do not require this
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`specificity. See Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312, 1325 (Fed. Cir. 2009)
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`(rejecting a pleading for merely identifying “Exergen, its agents and/or attorneys”); Breville Pty
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`Ltd. v. Storebound LLC, 12-CV-01783-JST, 2013 U.S. Dist. LEXIS 58893, at *11-13 (N.D. Cal.
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`Apr. 24, 2013) (rejecting allegations to the extent they were directed at a general category of
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`employees of the patent holder). To satisfy the “who” requirement, specific names are not
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`necessary, provided that sufficient identification is provided to put Invensys on notice of Micro
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`Motion’s claim. See, e.g., Cal. Inst. of Tech. v. Canon U.S.A., No. 2:08-cv-08637-MRP-VBK,
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`2009 U.S. Dist. LEXIS 126174, at *9 (C.D. Cal. Oct. 26, 2009). Unlike Exergen and Breville,
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`whose deficient pleadings alleged a blanket charge of inequitable conduct against an unlimited
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`4840-9941-9414.2
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`Case 6:12-cv-00799-JRG Document 86 Filed 11/15/13 Page 4 of 8 PageID #: 2412
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`pool of vague and amorphous potential actors, Micro Motion has specifically identified the
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`author of the ’644 application as the only individual who made material misrepresentations to the
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`PTO. In this case, there can be no question that Invensys has adequate notice of Micro Motion’s
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`claim regarding “who” committed the inequitable conduct.
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`Second, Invensys turns to the “how” and “why” requirements of Exergen in a
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`further attempt to challenge the sufficiency of Micro Motion’s pleading. In its Reply, just as it
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`did in its Motion, Invensys improperly contends that Micro Motion must not only allege why the
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`information is material, which Exergen requires, but prove its materiality. This is not the law or
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`required at the pleading stage. See Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276,
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`1291 (Fed. Cir. 2011) (en banc) (changing the definition of materiality from the “reasonable
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`examiner” standard to “but-for” materiality, but not changing the pleading requirements under
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`Exergen). Invensys’s numerous attempts to “disprove” materiality are premature, at best.
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`In its pleading, Micro Motion has provided particularized facts and a detailed
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`recitation as to why the ’644 application’s and the ’646 patent’s statements guaranteeing
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`similarly repeatability across real-world industrial batch processes are material. These
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`statements are the exact opposite of what was originally claimed in the ’742 provisional, and
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`there is no substantiation for the change. Using an unmistakably false statement as the sole
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`support for Invensys’s broad claims that its Coriolis flowmeter can do exactly what the ’742
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`provisional says it cannot, gives Invensys an “unfair benefit of receiving an unwarranted claim.”
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`SAP Am., Inc. v. Purple Leaf, Inc., No. C 11-4601 PJH, 2012 U.S. Dist. LEXIS 83531, at *15
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`(N.D. Cal. June 15, 2012) (internal quotation marks and quoting citation omitted).
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`Invensys does not contest the proposition that such unmistakably false statements
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`are in and of themselves material. See Intellect Wireless, Inc. v. HTC Corp., No. 2012-1658,
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`4840-9941-9414.2
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`Case 6:12-cv-00799-JRG Document 86 Filed 11/15/13 Page 5 of 8 PageID #: 2413
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`2013 U.S. App. LEXIS 20529, at *6 (Fed. Cir. Oct. 9, 2013). Instead, in a failed attempt to
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`distinguish Intellect Wireless, Invensys complains that Micro Motion only stated that the
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`unmistakably false statements were merely “inconsistent,” and therefore not considered material.
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`Invensys is wrong. A plain reading comparing the ’644 application and the ’646 patent with the
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`’742 provisional demonstrates, unequivocally, that the statements at issue are directly opposite,
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`not simply “inconsistent.” The reversal in language between the ’742 provisional and the ’644
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`application, without further substantiation, cannot be reconciled with the particular ’646 patent
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`claim limitation that purports to claim a process in all industrial settings. A reasonable examiner
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`at the PTO would have used this information in assessing the patentability of the ’646 claims.
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`See Exergen, 575 F.3d at 1333.
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`Third, Invensys argues that Micro Motion’s pleading is insufficient to infer intent
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`because again, in one instance, Micro Motion referred to the statements as being “inconsistent.”
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`Unlike in Human Genome Sciences, Inc. v. Genentech, Inc., No. 2:11-cv-6519-MRP (JEMx),
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`2011 U.S. Dist. LEXIS 153834 (C.D. Cal. Dec. 9, 2011) on which Invensys attempts to rely, the
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`contradiction at issue here goes to the heart of the proper scope of the claims of the ’646 patent.
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`Thus, under the facts and circumstances as pled, an intent to deceive should be inferred. See
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`Bruno Indep. Living Aids, Inc. v. Acorn Mobility Servs., Ltd., 394 F.3d 1348, 1354 (Fed. Cir.
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`2005).
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`Invensys fails to offer any legitimate basis for the complete rejection of the
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`language from the ’742 provisional and the adoption of the language to the contrary in the ’644
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`application and the ’646 patent. Indeed, in its Reply, Invensys abandons its original position that
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`Invensys may have conducted additional testing and research, the outcome of which could have
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`substantiated the change. Invensys no longer appears to contend that such testing was done.
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`4840-9941-9414.2
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`Case 6:12-cv-00799-JRG Document 86 Filed 11/15/13 Page 6 of 8 PageID #: 2414
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`Invensys similarly has not rebutted Micro Motion’s arguments that the language change is
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`unsupported by another related patent chain or that Invensys’s failure to comply with 35 U.S.C.
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`§ 112 may also be a proper ground for an inequitable conduct claim.
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`As pled, Micro Motion’s inequitable conduct allegations provide sufficient detail
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`under Exergen to support a reasonable inference of an intent to deceive.
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`III. CONCLUSION
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`Micro Motion has sufficiently pled its inequitable conduct allegations and more
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`than satisfied the requirements of Rule 9(b) and Exergen. Micro Motion does not seek leave to
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`conduct discovery to repair its allegations as Invensys contends. As discovery progresses and
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`this case unfolds, additional information solely in Invensys’s possession will come to light and
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`further substantiate Micro Motion’s inequitable conduct claim.1
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`For the foregoing reasons as well as those stated in its Opposition, Micro Motion
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`respectfully requests that the Court deny Invensys’s Motion.
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`1 At the appropriate time, Micro Motion intends to seek redress for the inequities of
`Invensys’s continued efforts to stall and prevent Micro Motion from having access to the
`relevant evidence in this case. The ’646 patent issued more than seven years ago on October 24,
`2006, which is the same year Micro Motion’s accused Coriolis flowmeters were introduced to
`the market. Given Invensys’s self-proclaimed “thorough” pre-suit investigation, and its delay in
`bringing this lawsuit, there is no excuse for Invensys’s failure to provide complete responses to
`Micro Motion’s discovery directed to among other things, issues surrounding the alleged
`conception, reduction to practice, and prosecution of the claimed inventions.
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`4840-9941-9414.2
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`Case 6:12-cv-00799-JRG Document 86 Filed 11/15/13 Page 7 of 8 PageID #: 2415
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`Dated: November 15, 2013
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`Guy N. Harrison, State Bar No. 00000077
`Guy Harrison Law Offices
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`217 N. Center Street
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`Longview, Texas 75601
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`Phone: (903) 758-7361
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`Fax: (903) 753-9557
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`Email: guy@gnhlaw.com
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`Respectfully submitted,
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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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`4840-9941-9414.2
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`Case 6:12-cv-00799-JRG Document 86 Filed 11/15/13 Page 8 of 8 PageID #: 2416
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`CERTIFICATE OF SERVICE
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`I hereby certify that on November 15, 2013, I electronically filed the foregoing
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`document with the Clerk of Court using the CM/ECF system which will send notification of such
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`filing via electronic mail to all counsel of record.
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`/s/ Kadie M. Jelenchick
`Kadie M. Jelenchick
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`4840-9941-9414.2