Case 6:12-cv-00799-JRG Document 92-17 Filed 12/11/13 Page 1 of 10 PageID #: 2543
`Case 6:12—cv—00799—JRG Document 92-17 Filed 12/11/13 Page 1 of 10 Page|D #: 2543
`
`EXHIBIT Q
`EXHIBIT Q
`
`

`
`Case 6:12-cv-00799-JRG Document 92-17 Filed 12/11/13 Page 2 of 10 PageID #: 2544
`
`DLA Piper LLP (us)
`1000 Louisiana Street, Suite 2800
`Houston, Texas 77002-5005
`www.diapiper.com
`
`Jeffrey Johnson
`jeffrey.johnson@diapiper.com
`T 713.425.8445
`F 713.300.6045
`
`DLA PIPER
`
`August 9, 2013
`VIA E-MAIL AND UPS
`
`Linda E.B. Hansen
`Foley & Lardner LLP
`777 East Wisconsin Avenue
`Milwaukee, Wisconsin 53202
`
`Re: Invensys Sys. Inc. v. Emerson Elec. Co. & Micro Motion, Inc. USA, No. 6:12-cv-799
`Document Production by Emerson Elec. Co. and Micro Motion, Inc.
`
`Dear Ms. Hansen:
`
`As you collect documents for production in this matter, please keep in mind the following
`categories of documents that Invensys expects to see in the production of Emerson Electric Co.
`and Micro Motion, Inc. ("Defendants"). Please note that this list is not meant to be exhaustive.
`Invensys expects to receive a copy of all documents, electronically stored information, and
`tangible things in the possession, custody, or control of Defendants that are relevant to the
`pleaded claims or defenses involved in this action. As used herein, the term "document" includes
`all of the types of information described in FRCP 34, excluding email, which is covered by our
`agreed ESI Order.
`
`Categories
`
`1. Documents sufficient to identify each Accused Products used, sold, and/or offered for
`sale by Defendants since 2006, including but not limited to any Accused Products that are
`not apparent by inspection of Defendants' internet website(s).
`
`2. Documents sufficient to identify each type of digital process (e.g., generating drive gain)
`of each Accused Product used, sold, and/or offered for sale by Defendants since 2006.
`
`3. Documents sufficient to identify each type of analog process (e.g., generating drive gain)
`of each Accused Product used, sold, and/or offered for sale by Defendants since 2006.
`
`The term "Accused Product," as used herein, means products or services either used by Defendants, or provided by
`Defendants and used by Defendants' customers that are Coriolis Meters (e.g., Micro Motion® Elite® Coriolis
`Meters) containing a Micro Motion transmitter with a Micro Motion enhanced core processor (e.g., Micro Motion
`Model 2400S, 1700, 2700 and Series 3000 transmitters) or any substantially similar component, and/or (ii)
`components of the aforementioned Coriolis Meters, including, but not limited to, a Micro Motion transmitter with a
`Micro Motion enhanced core processor (e.g., Micro Motion Model 2400S, 1700, 2700 and Series 3000 transmitters)
`or any substantially similar component.
`
`

`
`Case 6:12-cv-00799-JRG Document 92-17 Filed 12/11/13 Page 3 of 10 PageID #: 2545
`
`DLA PIPER
`
`Linda E.B. Hansen
`August 9, 2013
`Page Two
`
`4. Documents sufficient to identify any analog-to-digital converter (ADC, A/D or A to D) in
`each Accused Product used and/or offered by Defendants since 2006.
`
`5. Documents sufficient to identify how drive signals are generated in each Accused
`Product used and/or offered by Defendants since 2006.
`
`6. Documents sufficient to identify what information is generated from sensor signals in
`each Accused Product used and/or offered by Defendants since 2006.
`
`7. Documents sufficient to identify how sensor signals are used in each Accused Product
`used and/or offered by Defendants since 2006.
`
`8. Documents sufficient to identify any control algorithms (e.g., proportional-integral (PI)
`and proportional-integral-derivative (PID)) in each Accused Product used and/or offered
`by Defendants since 2006.
`
`9. Documents sufficient to identify any gain (e.g., positive or negative) used in generating
`drive signals in each Accused Product used and/or offered by Defendants since 2006.
`
`10. Documents sufficient to identify the measurements taken or calculated of materials
`following through Accused Products in each Accused Product used and/or offered by
`Defendants since 2006.
`
`11. Documents sufficient to identify how measurements are taken or calculated for materials
`following through Accused Products in each Accused Product used and/or offered by
`Defendants since 2006.
`
`12. Documents sufficient to identify how Accused Products initiate motion of conduits or
`tubes in each Accused Product used and/or offered by Defendants since 2006.
`
`13. Documents sufficient to identify how Accused Products maintain or sustain motion of
`conduits or tubes in each Accused Product used and/or offered by Defendants since 2006.
`
`14. Documents sufficient to identify how Accused Products maintain or sustain motion of
`conduits or tubes during batch or two-phase flow (e.g., empty-full-empty and aeration) in
`each Accused Product used and/or offered by Defendants since 2006.
`
`15. Documents sufficient to identify drive gain or signal mode changes during batch or two-
`phase flow (e.g., empty-full-empty and aeration) in each Accused Product used and/or
`offered by Defendants since 2006.
`
`

`
`Case 6:12-cv-00799-JRG Document 92-17 Filed 12/11/13 Page 4 of 10 PageID #: 2546
`
`DLA PIPER
`
`Linda E.B. Hansen
`August 9, 2013
`Page Three
`
`16. Documents sufficient to identify drive gain or signal mode changes during a system
`disturbance in each Accused Product used and/or offered by Defendants since 2006.
`
`17. Documents sufficient to identify signal modes for moving conduits or tubes in each
`Accused Product used and/or offered by Defendants since 2006.
`
`18. Documents sufficient to identify how Accused Products take or calculate measurements
`during batch or two-phase flow (e.g., empty-full-empty and aeration) in each Accused
`Product used and/or offered by Defendants since 2006.
`
`19. Documents sufficient to identify what measurements are taken or calculated during batch
`or two-phase flow (e.g., empty-full-empty and aeration) in each Accused Product used
`and/or offered by Defendants since 2006.
`
`20. Documents sufficient to identify how Accused Products adjust for time delay associated
`with Accused Product systems in each Accused Product used and/or offered by
`Defendants since 2006.
`
`21. Documents related to the use or operation of any Accused Product used and/or offered by
`Defendants since 2006, including but not limited to technical or user manuals and demos.
`
`22. Documents illustrating or describing the system architecture and/or network
`configuration for the systems that support any Accused Product used and/or offered by
`Defendants since 2006.
`
`23. Documents illustrating user interfaces (e.g., graphical user interfaces) for any Accused
`Product used and/or offered by Defendants since 2006.
`
`24. Documents identifying or describing any hardware and/or software used by Defendants
`in or with Accused Products for any Accused Product used and/or offered by Defendants
`since 2006.
`
`25. Source code for any system supporting any Accused Product used and/or offered by
`Defendants since 2006.
`
`26. Documents identifying, describing, or discussing the format and/or content of messages
`communicated between components of the systems that support any Accused Product
`used and/or offered by Defendants since 2006.
`
`

`
`Case 6:12-cv-00799-JRG Document 92-17 Filed 12/11/13 Page 5 of 10 PageID #: 2547
`
`DLA PIPER
`
`Linda E.B. Hansen
`August 9, 2013
`Page Four
`
`27. Documents related to the configuration, operation, and/or use of the hardware and/or
`software in any Accused Product used and/or offered by Defendants since 2006.
`
`28. Documents sufficient to show the data or other input (e.g., density information) required
`by any Accused Product used and/or offered by Defendants since 2006.
`
`29. Agreements that pertain to the use of any Accused Product used and/or offered by
`Defendants since 2006.
`
`30. Documents sufficient to show all uses of any Accused Products by Defendants or their
`customers.
`
`31. Documents that identify, describe, or discuss the number of customers that buy or use
`any Accused Products on a monthly, quarterly, or yearly basis for any time period since
`Defendants first offered any Accused Product.
`
`32. Documents sufficient to show all persons involved and/or knowledgeable about the
`design, development, marketing and/or testing of any Accused Product.
`
`33. Documents sufficient to show all persons knowledgeable about any of the documents that
`would be responsive to any category of identified in this letter.
`
`34. Documents related to all forms of marketing, sales, and offer for sale of any Accused
`Product.
`
`35. Documents sufficient to show any testing done on any Accused Product or Invensys
`product, including, but not limited to, what tests have been and/or are being performed,
`the protocols for such testing, what products are involved, the persons involved in the
`design of the tests and protocols, the persons involved in the testing, all results from the
`testing, the dates involved.
`
`36. Documents sufficient to show any evaluation, analysis, reverse engineering of any
`Invensys product, including, without limitation, all dates and persons involved.
`
`37. Documents sufficient to show how any Invensys product was obtained by, for or on
`behalf of Defendants, including, without limitation, all dates and persons involved.
`
`38. Documents sufficient to show all methods of manufacture of any Accused Product or any
`component thereof carried out by or on behalf of Defendants.
`
`

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`Case 6:12-cv-00799-JRG Document 92-17 Filed 12/11/13 Page 6 of 10 PageID #: 2548
`
`DLA PIPER
`
`Linda E.B. Hansen
`August 9, 2013
`Page Five
`
`39. Documents sufficient to show any importation of any Accused Product or any component
`thereof carried out by or on behalf of Defendants.
`
`40. Documents sufficient to identify all third-party (including Defendants' affiliated
`companies) vendors, distributors, suppliers, manufacturers, repair shops, or other agents
`that are used, employed, contracted, or otherwise engaged by or on behalf of Defendants
`to provide products and/or services related to the substance of any category identified in
`this letter, including any Accused Product or component thereof.
`
`41. Documents sufficient to identify all entities and/or individuals authorized by Defendants
`to sell or offer for sale any Accused Product to Defendants' customers, including but not
`limited to agreements between Defendants and its employees, contractors, sales agents,
`distributors, or vendors.
`
`42. Purchase orders, sales agreements, price lists, product catalogues, order forms,
`advertisements, and customer solicitations for the Accused Products from Jan. 1, 2006 to
`the present.
`
`43. Communications by Defendants' customers related to the customers' satisfaction or
`dissatisfaction with the Accused Products.
`
`44. Communications by Defendants' customers related to the customers' request for
`particular features, performance, or functionality offerings in Defendants' Coriolis
`flowmeters and related components.
`
`45. Documents sufficient to show Defendants' corporate structure for the years 2000 to
`present.
`
`46. Documents sufficient to identify the three to five persons most knowledgeable (and their
`job titles) about the creation, research, design, development, testing, manufacture,
`operation and commercialization of any aspect of any Accused Product, U.S. Patent Nos.
`5,555,190 and 6,505,131, and any prototype embodying the subject matter described or
`claimed in one or both of U.S. Patent Nos. 5,555,190 and 6,505,131.
`
`47. Documents sufficient to show all pricing of any Accused Product.
`
`48. Documents sufficient to show all evaluations, analysis, reports, surveys, studies or white
`papers related to any Accused Product or Invensys product that were prepared by, for or
`on behalf of Defendants.
`
`

`
`Case 6:12-cv-00799-JRG Document 92-17 Filed 12/11/13 Page 7 of 10 PageID #: 2549
`
`DLA PIPER
`
`Linda E.B. Hansen
`August 9, 2013
`Page Six
`
`49. Documents sufficient to show all evaluations, analysis, reports, surveys, studies or white
`papers related to Coriolis flowmeters that were prepared by, for, or on behalf of
`Defendants.
`
`50. Documents sufficient to show Defendants' attendance or participation in any trade shows,
`presentations or conferences related to Coriolis flowmeters.
`
`51. Documents sufficient to show any papers presented at any trade shows, presentations or
`conferences related to Coriolis flowmeters.
`
`52. Documents sufficient to show any fact relied upon in Defendants' Answer and/or
`Counterclaims in this lawsuit.
`
`53. Documents sufficient to show all prior art in Defendants' possession, custody or control
`or that Defendants are aware of that is related to U.S. Patent Nos. 5,555,190 and
`6,505,131.
`
`54. Documents sufficient to show all correspondence between the inventors of U.S. Patent
`Nos. 5,555,190 and 6,505,131 and any in-house counsel or prosecuting attorney related to
`the inventions claimed in U.S. Patent Nos. 5,555,190 and 6,505,131, including but not
`limited to any prior art.
`
`55. Documents sufficient to show any involvement by any inventor of U.S. Patent Nos.
`5,555,190 and 6,505,131 in the prosecution of either of U.S. Patent Nos. 5,555,190 and
`6,505,131.
`
`56. Documents related to the preparation, filing and prosecution of the applications for U.S.
`Patent Nos. 5,555,190 and 6,505,131, any patent applications that share the same priority
`claim and any related foreign applications, including communications between any
`person involved in prosecution of the patents-in-suit and the United States Patent and
`Trademark Office, any foreign patent office, or any other person.
`
`57. Documents sufficient to show any opinions of counsel that may be relied upon to rebut
`claims of willful infringement in this lawsuit.
`
`58. Documents sufficient to show any opinions of counsel that may be relied upon to rebut
`claims of knowledge or intent regarding indirect infringement in this lawsuit.
`
`59. Audited and unaudited company financial statements and annual reports since 2000.
`
`

`
`Case 6:12-cv-00799-JRG Document 92-17 Filed 12/11/13 Page 8 of 10 PageID #: 2550
`
`DLA PIPER
`
`Linda E.B. Hansen
`August 9, 2013
`Page Seven
`
`60. Documents related to Defendants' first awareness of any of the Patents-In-Suit or any
`inventions or technology described therein, any inventor of any of the Patents-In-Suit, or
`any product that embodies any of the Patents-In-Suit prior to this lawsuit.
`
`61. Defendants document retention and destruction policies or procedures from January 1,
`2006 to present.
`
`62. Documents sufficient to show all evaluations, analysis, reports, surveys, studies or white
`papers related to the characteristics and scope of the market in which you provide any
`Accused Product, including without limitation, consumer surveys, analysis of
`competitors, market share information, or market research prepared by you or on your
`behalf.
`
`63. Documents that constitute, mention, discuss, refer, or relate to your business plans,
`strategic plans, annual plans, purchase plans, marketing plans, pricing strategies, pricing
`guidelines, as well as all amendments or updates to such plans with respect to the
`purchase, acquisition, or otherwise obtaining of patent licenses relating to technology
`related to any aspect of any Accused Product, including, but not limited to, all documents
`and reports relating to purchase forecasts.
`
`64. Documents related to or referring to Invensys or any of Invensys's products or Invensys's
`patents.
`
`65. Documents sufficient to show Defendants' policies, guidelines or processes for the sale,
`licensing, exploitation or enforcement of any of its patents, including but not limited to,
`the U.S. Patent Nos. 5,555,190 and 6,505,131.
`
`66. Documents sufficient to show any notice given by Defendants to Invensys reflecting
`Defendants' contention that Invensys was or is infringing either of U.S. Patent Nos.
`5,555,190 and 6,505,131, including: the manner of notice; the date(s) of notice; the
`person(s) who gave such notice; and the person(s) who received such notice.
`
`67. Documents sufficient to show all communications before the filing of this lawsuit with
`any third party about all of the following: the Invensys Patents, Invensys, and any
`Invensys product.
`
`68. Reports, meeting minutes or other documents dated before the filing of this lawsuit,
`prepared for Defendants' Board of Directors or committees, related to the U.S. Patent
`Nos. 5,555,190 and 6,505,131, the Invensys Patents, this case, or the possibility of
`
`

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`Case 6:12-cv-00799-JRG Document 92-17 Filed 12/11/13 Page 9 of 10 PageID #: 2551
`
`DLA PIPER
`
`Linda E.B. Hansen
`August 9, 2013
`Page Eight
`
`litigation with Invensys or any other entity that Defendant believes is or ever has
`infringed any claim of U.S. Patent Nos. 5,555,190 and 6,505,131.
`
`69. All executed license agreements, settlement agreements, and covenants not to sue
`between Defendants and any other entity licensing either of U.S. Patent Nos. 5,555,190
`and 6,505,131.
`
`70. Documents sufficient to show any research and publications authored by the named
`inventors of the U.S. Patent Nos. 5,555,190 and 6,505,131 related to or regarding the
`technology described in U.S. Patent Nos. 5,555,190 and 6,505,131.
`
`71. Any document Defendants intend to offer at trial in support of its claims or defenses.
`
`72. Documents sufficient to show the chain of distribution of any Accused Products or
`components thereof between the time of sale and the importation into the United States
`from January 1, 2006 through the present and all entities involved.
`
`73. Documents sufficient to show for each Accused Product that is made, used, sold, offered
`for sale, or imported into the United States, or incorporated into any other product, by, for
`or on behalf of Defendants from January 1, 2006 through the present:
`
`a. the total number of units sold by year;
`
`b. the total revenue realized by year;
`
`c. the total cost of goods sold by year;
`
`d. the total profit realized by year;
`
`e. the identity of each customer by year.
`
`74. Documents sufficient to show any studies, reports or investigations related to or
`regarding any named inventor of any Invensys patent.
`
`75. Documents sufficient to show the costs to develop, design, and test the Accused Products
`prior to offering them for sale, including any subsequent improvements, redesigns, or
`upgrades.
`
`

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`Case 6:12-cv-00799-JRG Document 92-17 Filed 12/11/13 Page 10 of 10 PageID #: 2552
`
`DLA PIPER
`
`Linda E.B. Hansen
`August 9, 2013
`Page Nine
`
`Very truly yours,
`
`Jeffrey Jo s • n
`Partner
`
`JJ
`
`EAST\57319975.1