179134173745

Case 4:18-cv-00178 Document 146 Filed on 10/02/19 in TXSD Page 1 of 32
IN THE UNITED STATES DISTRICT COURT

FOR THE SOUTHERN DISTRICT OF TEXAS
HOUSTON DIVISION
FISHER-ROSEMOUNT SYSTEMS, INC.

and
EMERSON PROCESS MANAGEMENT Case No. 4:18-cv-00178-KPE
LLLP,
Plaintiffs,
v.
ABB, INC.,
Defendant.
PLAINTIFFS’ OPENING CLAIM CONSTRUCTION BRIEF

TABLE OF CONTENTS
I. INTRODUCTION .................................................................................................. 1

II. FACTUAL BACKGROUND ................................................................................. 2
III. LEGAL STANDARDS .......................................................................................... 6
IV. ARGUMENT .......................................................................................................... 8
A. ABB Cannot Show—By Clear and Convincing Evidence—that Any Claim
Term is Indefinite (Terms 5, 6, 8, 9, 10, 12, 13, 14, 15 and 17). ............................ 8
B. Disputed Claim Terms .......................................................................................... 11
1. Term 1: “a base [comprising / having] a first physical interface” ............ 11
2. Term 2: “module” ..................................................................................... 13
3. Term 3: “any of the different types of field devices” ............................... 14
4. Term 4: “communication protocol” .......................................................... 17
5. Term 7: “communication / communicate… / communicating…] via a
bus using [a/the] [first/second/third] communication protocol” ............... 18
6. Term 11: “query[ing] based on the tag obtained from the input/output
device a database” ..................................................................................... 19
7. Term 16: "when the obtained tag matches the second tag" ...................... 20
C. There Are No Means-Plus-Function Limitations In the Asserted Claims ............ 21
1. Term 18: “Article of Manufacture” Is Not a Means-Plus-Function
Limitation .................................................................................................. 23
2. Term 19: “Processor” Is Not a Means-Plus-Function Limitation ............. 24
i
TABLE OF AUTHORITIES
Cases
Accent Packaging, Inc. v. Leggett & Platt, Inc.,
707 F.3d 1318 (Fed. Cir. 2013) ............................................................................................... 12
ActiveVideo Networks, Inc. v. Verizon Commc’ns,
694 F.3d 1312 (Fed. Cir. 2012) ............................................................................................... 16
Advanced Ground Information Sys., Inc. v. Life360, Inc.,
830 F.3d 1341 (Fed. Cir. 2016) ............................................................................................... 23
Am. Fruit Growers, Inc. v. Brogdex Co.,
283 U.S. 1 (1931) ..................................................................................................................... 24
Apple Inc. v. Samsung Elecs. Co.,
786 F.3d 983 (Fed. Cir. 2015) ................................................................................................... 9
Arrows Up, LLC v. United States Silica Holdings, Inc.,
No. 4:17-cv-1945, 2019 WL 1002953 (S.D. Tex. Feb. 28, 2019) ............................................. 8
Baxter International, Inc. v. Fresenius Med. Care Holdings, Inc.,
No. 12-cv-6890, 2015 WL 74049 (N.D. Ill. Jan. 5, 2015)....................................................... 13
CXT Sys., Inc. v. Academy, Ltd.,
No. 2:18-cv-171, 2019 WL 4253841 (E.D. Tex. Sept. 6, 2019) ............................................. 17
CyberSource Corp. v. Retail Decisions, Inc.,
654 F.3d 1366 (Fed. Cir. 2011) ............................................................................................... 24
Denneroll Holdings Pty Ltd. v. Chirodesign Grp., LLC,
No. 4:15-cv-740, 2016 WL 705207 (S.D. Tex. Feb. 23, 2016) ............................................... 10
Diamond v. Diehr,
450 U.S. 175 (1981) ................................................................................................................. 24
eTool Development, Inc. v. National Semiconductor Corp.,
No. 2:08-cv-196, 2011 WL 4100456 (E.D. Tex. Sept. 13, 2011) ........................................... 13
Every Penny Counts, Inc. v. Am. Express Co.,
563 F.3d 1378 (Fed. Cir. 2009) ................................................................................................. 5
Fairfield Indus., Inc. v. Wireless Seismic, Inc.,
No. 4:14-cv-2972, 2015 WL 1034275 (S.D. Tex. Mar. 10, 2015) ............................................ 9
Finjan, Inc., v. Proofpoint, Inc.,
No. 13-cv-5808, 2015 WL 7770208 (N.D. Cal. Dec. 3, 2015) ............................................... 25
Gottschalk v. Benson,
409 U.S. 63 (1972) ................................................................................................................... 23
GPNE Corp. v. Apple Inc.,
830 F.3d 1365 (Fed. Cir. 2016) ............................................................................................... 14
In re Beauregard,
53 F.3d 1583 (Fed. Cir. 1995) ................................................................................................. 24
ii
In re Nuijten,
500 F.3d 1346 (Fed. Cir. 2007) ............................................................................................... 24
Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc.,
381 F.3d 1111 (Fed. Cir. 2004) ................................................................................................. 6
Mars, Inc. v. JCM Am. Corp.,
No. 05-cv-3165, 2008 WL 2684118 (D.N.J. July 2, 2008) ....................................................... 8
Masimo Corp. v. Philips Elecs. N. Am. Corp.,
No. 09-cv-80, 2015 WL 7737308 (D. Del. Dec. 1, 2015) ....................................................... 25
Medrad, Inc. v. MRI Devices Corp.,
401 F.3d 1313 (Fed. Cir. 2005) ................................................................................................. 7
Medtronic, Inc. v. Advanced Cardiovascular Sys., Inc.,
248 F.3d 1303 (Fed. Cir. 2001) ............................................................................................... 22
Microsoft Corp. v. i4i Ltd. Partnership,
131 S. Ct. 2238 (2011) ............................................................................................................... 9
Nautilus, Inc. v. Biosig Instruments, Inc.,
572 U.S. 898 (2014) ................................................................................................................... 9
O2 Micro International Ltd. v. Beyond Innovation Technology Co.,
521 F.3d 1351 (Fed. Cir. 2008) ............................................................................................... 10
Phillips v. AWH Corp.,
415 F.3d 1303 (Fed. Cir. 2005) ........................................................................................ passim
Presidio Components, Inc. v. Am. Technology Ceramics Corp.,
875 F.3d 1369 (Fed. Cir. 2017) ............................................................................................... 10
Quanergy Sys., Inc. v. Velodyne Lidar, Inc.,
No. 16-cv-5251, 2017 WL 4410174 (N.D. Cal. Oct. 4, 2017) ................................................ 25
Smartflash LLC v. Apple,
No. 6:13-cv-447, 2015 WL 4208754 (E.D. Tex. July 7, 2015) ............................................... 25
Thorner v. Sony Comput. Entm’t Am. LLC,
669 F.3d 1362 (Fed. Cir. 2012) ................................................................................................. 7
Toshiba Corp. v. Imation Corp.,
681 F.3d 1358 (Fed. Cir. 2012) ............................................................................................. 7, 8
Vitronics Corp. v. Conceptronic, Inc.,
90 F.3d 1576 (Fed. Cir. 1996) ................................................................................................... 8
WesternGeco L.L.C. v. ION Geophysical Corp.,
876 F. Supp. 2d 857 (S.D. Tex. 2012) ....................................................................................... 9
Whirlpool Corp. v. Ozcan,
No. 2:15-cv-2103, 2016 WL 7474517 (E.D. Tex. Dec. 29, 2016) .......................................... 10
White v. Dunbar,
119 U.S. 47 (1886) ..................................................................................................................... 7
iii
Williamson v. Citrix Online, LLC,

792 F.3d 1339 (Fed. Cir. 2015) ............................................................................................... 22
WundaFormer, LLC v. Flex Studios, Inc.,
680 F. App'x 925 (Fed. Cir. 2017) ........................................................................................... 13
Zeroclick, LLC v. Apple Inc.,
891 F.3d 1003 (Fed. Cir. 2018) ............................................................................................... 23
Statutory Authorities
35 U.S.C. § 101 ............................................................................................................................. 23
35 U.S.C. § 112 ......................................................................................................................... 7, 22
35 U.S.C. § 282 ............................................................................................................................... 9

iv
I. INTRODUCTION
Plaintiffs Fisher-Rosemount Systems, Inc., and its subsidiary Emerson Process
Management LLLP (collectively “Emerson”) identified one claim term for construction:
“module” as used in the ‘567 and ‘769 patents. In those patents the claimed “module” is not just
any module, but rather a unit configured to electronically marshal information. This construction
is almost verbatim from the specification, and reflects an instance of the intrinsic record referring
to a broad or contextually varying word in a particular manner.
Meanwhile, ABB identified a staggering 18 claim terms for construction.1 As to 12 of
those terms, ABB—with no identification of any supporting intrinsic or extrinsic evidence—
contends each term is indefinite. ECF No. 118-1. Yet it is ABB that bears the burden of proof on
this issue, and it must meet that burden with clear and convincing evidence. Attorney argument,
for good reason, does not suffice to invalidate duly granted patents that, in this instance, cover
technology worth millions of dollars. ABB did not identify any evidence that it will rely on to
meet its burden. See ECF No. 118-1. Because ABB cannot meet its burden, the Court need not
address these terms further. However, to the extent there is any doubt, Emerson’s expert Dr.
Sturges, who is one of skill in the art, examined each claim limitation ABB contends is indefinite
and opines that each is understandable to a person having skill in the art either because it is a
known term in the art, or it is explained in the context of the patents, or both. No term is
indefinite, and ABB’s unsupported assertion to the contrary should be rejected.
As to the remaining 7 claim terms that ABB identified, ABB repeatedly attempts to read-
in limitations that are not present in the claims; including limitations that are inconsistent with
the specification and disclosed embodiments. As a matter of black letter law, these positions
1
Because of the quantity of claim terms at issue, Emerson refers to the claim terms by their term
number in Exhibit A to the Joint Claim Construction Statement. ECF No. 118-1.
1
should also be rejected. Either the claim terms need no construction, or they should be construed
in a manner consistent with the plain and ordinary meaning as proposed by Emerson.
II. FACTUAL BACKGROUND
Emerson’s Innovative Technology
Emerson is a leading provider of automated industrial control and process control
solutions. Ex. 5. These are solutions used to automate the production, processing and
distribution in, for example, the chemical, oil and gas, refining, pulp and paper, wastewater
treatment and other industries. See id. One Emerson solution is a distributed control system
known as DeltaV. Id. DeltaV is a robust solution that comprises numerous hardware (e.g.,
controllers, interface cards and fieldbus I/O), and software components (e.g., DeltaV Operate,
DeltaV Analyze, and DeltaV Alarm) that together permit communication and control of field
devices (e.g., the valves, solenoids, and sensors) to accomplish industrial processes. See
generally Ex. 6; Ex. 7.
DeltaV is not, standing-alone, the invention of the asserted patents. Versions of DeltaV
predate the patents. One such version was in use by a large oil and gas company in the late 2005-
early 2006 timeframe. At a meeting around this time, this customer presented Emerson with a
challenge to address and remedy certain long-standing issues that existed in distributed control
solutions available at that time, including problems occasioned by the need to wire and cross-
marshal hundreds if not thousands of field devices (i.e., spaghetti wiring) over a large area. Ex. 8,
Resp. to Rog. 6. These problems added complexity, cost and opportunity for error to the design
and implementation of a new, or changes to an existing, distributed control system.
2
Emerson responded to this challenge and solved the issues presented in a novel and
unexpected way. Id. Specifically, Emerson conceived of an unprecedented I/O solution which
decoupled the design phase of a control system from the I/O implementation phase. The solution
was to land the wires from field devices at a base and electronically marshal the field
connections via removable single-channel modules.
See Ex. 1, summary of invention; ECF No. 137. The
modules, which Emerson calls CHARMs (acronym
for “characterization modules” shown right), replace
the respective wires and marshal signals from the field
electronically using data and signal management. Id.
As explained in Emerson’s Technology Tutorial, this
allows engineers to simply land wires anywhere on a first physical interface of a base, and the
location of that wire need not ever move. ECF No. 137.
To protect its innovation, on September 19, 2006 Emerson filed the application that
ultimately issued as the ‘567 patent. In ABB’s technology tutorial, ABB makes much of that fact
that during the patenting process of this first application, the focus of the claims changed.2 Yet,
given the complexity of the technology and the many facets of it, it is not all that surprising that
what was claimed in this first pioneering patent transitioned in terms of what was ultimately
patented. Since CHARMs were introduced to DeltaV in 2009, it has driven sales of both the
invention and Emerson’s DeltaV control system technologies in the hundreds of millions of
dollars of annual sales Ex. 5. Emerson has sought to protect its innovation through patents
2
ABB’s “technology tutorial” wholly fails to discuss the applicable technology and is not an
example of a technology tutorial. Instead it (1) discusses turn of the century assembly lines and
HVAC systems that are not remotely applicable here, and (2) merely walks through the file
histories of the asserted patents.
3
directed to different aspects of the innovation and with differing scope. The three patents
asserted here reflect just some of the patents covering DeltaV with CHARMs.
The Asserted Patents
The ‘567 and ‘769 patents3 are directed to an apparatus for electronically marshalling
field device signals to a process controller. As explained in the expert report and in the
background of the patents, the invention of the '567 and '769 Patents significantly reduces the
amount of wiring in the marshalling cabinets. Ex. 1 at 9:21-43. Instead, the termination modules
124a-c and 126a-c connect to field devices send/receive signals from the field devices 112a-c,
116a-c and marshal information to/from the process
controller 104 via the bus 136a. Ex. 1 at 7:14-26; see
also Figs 1 and 2 (Fig. 2 shown right). According to
the '567 Patent, the termination modules 124a-c and
126a-c have a one-to-one correspondence with the
number of field devices 112a-c, 116a-c. Ex. 1 at
7:29-34; 7:56-63.
In an example where the termination modules (known commercially as CHARMs)
receive information from the field device, the termination module receives information
representing readings from the field, among other things, in a first protocol (e.g. HART, 4-20
mA), and the termination module encodes that information for transmission via the bus using a
different protocol. Ex. 1 at 7:14-22; 7:56-63; 8:32-65; 9:55-66. Conversely, the termination
modules can transmit data to the field in a protocol understandable to the field devices after
3
The ‘769 patent is a continuation-in-part of the ‘567 patent. As is common in such
circumstances, the ‘769 patent has the same specification as the ‘567 patent, but includes some
new matter as well.
4
receiving data from the process controller via the bus. Id. As such, the modules electronically
marshal information, thereby obviating the need to cross marshal field devices to I/O cards.
The termination modules 124a can removably couple to a base 402. Ex. 1 at 14:7- 12.
Once inserted into the base, the module 124a can communicate with the field devices through a
first physical interface (e.g. termination screws 406) and
communicate with the bus through a second physical
interface 408, as shown in Fig 5 (right). Ex. 1 at 14:7-42.
The '769 Patent provides additional detail about the
termination modules and the protocols supported by the
termination modules.
The '875 Patent builds on the '567 and '769 patents
and explains an electronic marshalling process using device tags. Ex. 3 at 4:42 –5:3. The
automatic marshalling associates or binds a field device identifier (called a device tag) with a
process control routine implemented by the controller and an I/O channel and I/O port. Id. The
tag can be received from a field device, compared to values stored in a database, and bound or
associated with the process control routine. Id. The device tag to database comparison can
identify connection errors or automatically perform the electronic marshalling. Id.
The Accused ABB System4
ABB offers a distributed control system known as the Ability System 800xA. In March
2017, at ABB’s Customer World Event, ABB announced the introduction of “Select I/O” as a
“digital marshalling” solution and component of its Ability 800xA system. See Third Am.
Compl. ¶¶ 54-56 and Exs. thereto. This system, which employs what ABB calls “Signal
4
The Federal Circuit has recognized that awareness of the accused product may provide
“meaningful context” for claim construction. See Every Penny Counts, Inc. v. Am. Express Co.,
563 F.3d 1378, 1383 (Fed. Cir. 2009).
5
Conditioning Modules” or “SCMs” appear so similar to Emerson’s CHARMs modules that an
industry publication referred to them as “rather ‘charm’ing.”
See Ex. 9 (noting that this was “a wry nod to Emerson Process
Management’s Charm programmable I/O system introduced
several years ago”).
III. LEGAL STANDARDS
“It is a bedrock principle of patent law that the claims of a patent define the invention to
which the patentee is entitled the right to exclude.” Phillips v. AWH Corp., 415 F.3d 1303, 1312
(Fed. Cir. 2005) (internal quotation marks omitted). For this reason, “a claim construction
analysis must begin and remain centered on the claim language itself, for that is the language the
patentee has chosen to ‘particularly point[] out and distinctly claim[] the subject matter which the
patentee regards as his invention.’” Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc.,
6
381 F.3d 1111, 1116 (Fed. Cir. 2004) (quoting 35 U.S.C. § 112, ¶ 2). “[T]he words of a claim are
generally given their ordinary and customary meaning . . . [which is] the meaning that the term
would have to a person of ordinary skill in the art in question5 at the time of the invention, i.e., as
of the effective filing date of the patent application.” Phillips, 415 F.3d at 1312–13 (internal
quotation marks omitted).
There are only two exceptions to the general rule in favor of plain meaning: “1) when a
patentee sets out a definition and acts as his own lexicographer, or 2) when the patentee
disavows the full scope of a claim term either in the specification or during prosecution.”
Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). Patents serve a
public notice function. Because of this and absent the two scenarios discussed above (i.e., acting
as lexicographer or disclaimer), it is “unjust to the public, as well as an evasion of the law, to
construe it in a manner different from the plain import of its terms.” Phillips, 415 F.3d at 1312
(quoting White v. Dunbar, 119 U.S. 47, 52 (1886)); see also Toshiba Corp. v. Imation Corp., 681
F.3d 1358, 1369 (Fed. Cir. 2012) (“Absent disclaimer or lexicography, the plain meaning of the
claim controls.”).
Absent the above exceptions, terms are construed according to their plain and ordinary
meaning, and the “[t]he ordinary meaning of a claim term is its meaning to the ordinary artisan
after reading the entire patent.” Id. at 1321 (internal quotation marks omitted); see also Medrad,
Inc. v. MRI Devices Corp., 401 F.3d 1313, 1319 (Fed. Cir. 2005) (the person of ordinary skill is
required to “read the claim term not only in the context of the particular claim. . . but in the
context of the entire patent, including the specification.”) (internal citations omitted). The patent
specification, is, in fact, “the ‘single best guide to the meaning of a disputed term.’” Phillips, 415
5
Emerson has set forth its understanding of the level of skill in the art in interrogatory response
(Ex. 23, Response No. 4) and in the expert report of Dr. Sturges. Ex. 4 ¶ 34. ABB, on the other
hand, has refused to provide a response on this topic, and Emerson has a pending motion to
compel that addresses this and other deficiencies. ECF No. 129 at 12-13.
7
F.3d at 1315 (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir.
1996)). That said, the Federal Circuit has repeatedly cautioned not to “read limitations from the
specification into claims.” Toshiba Corp., 681 F.3d at 1369. “Extrinsic evidence” (i.e., expert
testimony, dictionaries and learned treatises) may also be considered, but only so long as that
evidence does not contradict the meaning of claim terms indicated by the intrinsic record. See
Phillips, 415 F.3d at 1317–18.
There are also situations where it is not necessary to construe claim terms, beyond stating
that the plain and ordinary meaning applies. See, e.g., ActiveVideo Networks, Inc. v. Verizon
Commc’ns., Inc., 694 F.3d 1312, 1325-26 (Fed. Cir. 2012) (affirming the district court’s
determination that the terms “superimposing the first indication over the display of the first
anchor channel” and “including with the first indication a second indication” have plain
meanings that do not require additional construction). Because the role of claim construction is
to resolve claim scope disputes, there is nothing improper about limiting construction to the
narrow issues in dispute and not re-phrasing the patentee’s chosen words. Mars, Inc. v. JCM Am.
Corp., No. 05-cv-3165, 2008 WL 2684118, at *8 (D.N.J. July 2, 2008) (“The Court will not
attempt to explicate the meaning of an already clear phrase and thereby risk altering the scope”).
IV. ARGUMENT
A. ABB Cannot Show—By Clear and Convincing Evidence—that Any Claim

Term is Indefinite (Terms 5, 6, 8, 9, 10, 12, 13, 14, 15 and 17).
ABB contends that 10 separate claim terms are indefinite.6 Claims will be held invalid
for indefiniteness only “if they are so indefinite that they ‘fail to inform, with reasonable
certainty, those skilled in the art about the scope of the invention.’” Arrows Up, LLC v. U.S.
6
In Exhibit A to the joint claim construction statement, ABB identifies term numbers 5, 6, 8, 9,
10, 12, 13, 14, 15 and 17 as supposedly indefinite. As to two additional terms (term numbers 18
and 19), ABB contends the term is governed by Section 112 ¶ 6, that there is no disclosure of
corresponding structure, and hence the terms are also allegedly indefinite. These two terms and
the application of Section 112 ¶ 6 is discussed separately in Section IV.C below.
8
Silica Holdings, Inc., No. 4:17-cv-1945, 2019 WL 1002953, at *3 (S.D. Tex. Feb. 28, 2019)
(quoting Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 901 (2014). The burden is on
the defendant—ABB—to prove indefiniteness, and it must do so by clear and convincing
evidence. Fairfield Indus., Inc. v. Wireless Seismic, Inc., No. 4:14-cv-2972, 2015 WL 1034275,
at *4 (S.D. Tex. Mar. 10, 2015) (“A party arguing indefiniteness must prove it by clear and
convincing evidence”) (citing Microsoft Corp. v. i4i Ltd. P'ship, 131 S. Ct. 2238, 2242 (2011)).
In its Local Patent Rule 4-3 disclosure, ABB cited no affirmative evidence in support of
supposed indefiniteness of any claim term. It did not submit an expert report from one of skill in
the art. It did not submit literature from the industry. It offered no explanation whatsoever for its
position. Instead, for every allegedly indefinite claim term, ABB repeated the same mantra that:
ABB contends that the claim term is indefinite as used in the asserted claims, [and that]
ABB may rely on [the asserted claim(s) where the term appears], and any intrinsic and
extrinsic evidence cited by Emerson . . .
See, e.g., ECF No. 118-1 at 11-12. Not only does this disclosure not comply with the local
patent rules, it does not come close to meeting ABB’s burden to prove indefiniteness by clear
and convincing evidence. See WesternGeco L.L.C. v. ION Geophysical Corp., 876 F. Supp. 2d
857, 871 (S.D. Tex. 2012) (“As the Court is to approach the indefiniteness question from the
position of one skilled in the art, it looks to the positions taken by the parties' experts, bearing in
mind that the burden is on Defendants to establish indefiniteness by clear and convincing
evidence”) (footnote omitted); Apple Inc. v. Samsung Elecs. Co., 786 F.3d 983, 1003 (Fed. Cir.
2015), rev'd and remanded on other grounds, 137 S. Ct. 429 (2016) (rejecting indefiniteness
contention where “no evidence showing that skilled artisans would find the element. . . lacking
reasonable certainty in its scope”).
Issued patents are entitled to a statutory presumption of validity. 35 U.S.C. § 282. To
overcome this presumption, the challenger must come forward with clear and convincing
9
evidence; attorney argument does not suffice. As one court put it, a defendant “has failed to meet
the high burden necessary to establish that the relevant claims are indefinite” where “[i]nstead of
submitting evidence, such as an expert declaration, to demonstrate the understanding of a person
of ordinary skill in the art, [defendant] relies entirely on attorney argument based on the patent’s
intrinsic evidence.” See Whirlpool Corp. v. Ozcan, No. 2:15-cv-2103, 2016 WL 7474517, at *3
(E.D. Tex. Dec. 29, 2016).
Here, ABB’s failure of proof should end the inquiry. But even were the Court to examine
the issue further, the claim terms are not indefinite. “A patent need not explicitly include
information that is already well known in the art.” See Presidio Components, Inc. v. Am. Tech.
Ceramics Corp., 875 F.3d 1369, 1376 (Fed. Cir. 2017) (citations omitted). Indeed, a term needs
no construction where the “ordinary meaning of the term is readily understandable.” Denneroll
Holdings Pty Ltd. v. Chirodesign Grp., LLC, No. 4:15-cv-740, 2016 WL 705207, at *6 (S.D.
Tex. Feb. 23, 2016) (citing O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351,
1360 (Fed. Cir. 2008). In this case, the terms are well understood, either in the art or as explained
in the description of the invention in the patent, or both. Emerson’s expert Dr. Sturges, who is
one of skill in the art, addresses each supposedly indefinite claim term and explains it. Ex. 4 ¶¶
65-67, 68-71, 81-84, 91-100, 107-115, 123-141. Dr. Sturges and other evidence support
Emerson’s position that these terms are not indefinite, but instead are terms well-understood in
the art and/or in the context of the patents:
 Term 5: “fieldbus protocol” (i.e. a protocol used to communicate on a field bus) is well-
understood in the art. Ex. 4 ¶ 66. The patent provides examples (Foundation Fieldbus (FF-
H1) and Profibus PA) and rightfully calls these fieldbus protocols “well-known”. Ex. 2 26:3-
6 and 32:24-29; see also Ex.17, Ex. 32.
10
further construction is not necessary.7 “[A] claim interpretation that excludes a preferred
embodiment from the scope of the claim is rarely, if ever, correct.’” Accent Packaging, Inc. v.
Leggett & Platt, Inc., 707 F.3d 1318, 1326 (Fed. Cir. 2013) (citation omitted). Despite this
cardinal rule of claim construction, this is precisely what ABB’s proposed construction would
do. The specifications of the ‘567 and ‘769 Patents describe two embodiments of the first
physical interface: a termination screw and a socket. Ex. 1 at 14:1-30. At least one of those
embodiments (a termination screw) is removable from the base, completely contrary to ABB’s
proposed construction. One skilled in the art would understand that a termination screw is
removable simply using a screwdriver. Ex. 4 ¶ 42. In fact, the termination screw embodiment is
not just one embodiment, it is the preferred and commercial embodiment of the patents and the
Accused Products.
Nothing in the specification or file history of the asserted patents otherwise indicates that
the first interface cannot be removable from the base. It simply is not there. Based on ABB’s
technology tutorial (which focused almost exclusively on the file history of the asserted patents),
it appears ABB intends to rely on the applicant’s statements made in contrasting the claimed
invention with the prior art reference “Odom” (U.S. Patent Application No. 2008/0005406).
However, during prosecution, the applicant merely stated that Odom fails to teach a base having
a first physical interface because the modules of Odom directly connect to field devices (i.e., the
connection is through the module, not a base). This has nothing to do with whether or not the
interface can or cannot be removable from the base.
The words of the claim are “having” and “comprising.” The plain meaning of those
words do not connote anything about “integrally formed” or “not removable.” See Ex. 18,
7
The words “base” and “first physical interface” appear in both the claim language and ABB’s
proposed construction, meaning these words, which are well-understood within the field (see Ex.
4 at ¶¶ 38-44) and by ABB, require no further construction.
12
word “module” has a more nuanced and precise meaning. The specification explains that the
“modules” referred to in the ‘567 and ‘769 patents, labeled 124a-c in the figures and referred to
as “termination modules” in the specification, are physical units electrically coupled (indirectly
through the base) to field devices and “configured to marshal information associated with the
field devices 112a-c in the first process area 114. . .” Ex. 1 at 5:17-19; see also Ex. 1 at 4:11-15;
6:23-32 (explaining that the modules marshal (i.e. organize or route) signals between the field
and the controllers).
Moreover, the modules of the ‘567 and ‘769 patents accomplish marshalling in a far more
advanced manner than conventional marshalling, which simply bridged two points using a wire,
not unlike the old operator-controlled telephone system from the 1960’s. Instead, the modules of
the ‘567 and ‘769 patents electronically marshal information, thereby obviating the need for
onerous, messy cross-wiring. See ECF No. 137. The patents, at some length, explain the process
of electronic marshalling, explaining that the modules can packetize field device information and
transmit that data on a universal I/O bus to a controller. In view of the specific context and
express teachings of the asserted patents, the patentee clearly intended to give the word
“module” a more explicit and nuanced definition. See, e.g., GPNE Corp. v. Apple Inc., 830 F.3d
1365, 1370 (Fed. Cir. 2016) (“We have recognized that when a patent ‘repeatedly and
consistently’ characterizes a claim term in a particular way, it is proper to construe the claim
term in accordance with that characterization.”) (citations omitted).
ABB’s proposed construction, on the other hand, appears to come from a generic
dictionary definition of the word and has no connection to the patents whatsoever. The patents
never use the word “assembly”, and all mention of “components” comes from sections unrelated
to the modules. In this situation, the meaning ascribed by the specification must win out. See
Phillips, 415 F.3d at 1317 (holding extrinsic evidence cannot contradict the intrinsic record). As
14
embodiments, Emerson’s commercial embodiment and ABB’s accused embodiment – a one-
size-fits-all module.
A review of the specification shows the patentee clearly did not intend to use a word
meaning nearly the opposite of the actual claim language. The specification explains that
modules simply cannot communicate with every type of field device because some types of field
devices communicate through analog data and other types of field devices communicate through
digital data. For example, a termination module having a digital field device interface can speak
to a digital field device, whereas a termination module having an analog field device interface
can speak to analog field devices. See Ex. 1 at 22:41-58. For example, an analog module may be
unable to communicate with a first type of field device (e.g. a digital temperature sensor), but
could communicate with a second type of field device (e.g. an analog pressure sensor) and a third
type of field device (e.g. a HART flow sensor). In this example, the module can communicate
with a plurality of different types of field devices (pressure and flow sensors), and in fact can
communicate with any of the analog or HART sensors, but the module cannot communicate with
every type of field device in the world because the analog module cannot understand digital data.
Nor does the patent otherwise imply communication through one module to all field device
types. The specification is clear that modules communicate with field devices on a one-to-one
basis. See Ex. 1 at 7:29-34; 7:56-63. Because the claimed modules only communicate with one
field device at any given time, construing the claim to suggest that a single module
communicates with every type of field device mischaracterizes the claimed technology.
Like almost every claim limitation discussed herein, the words actually used by the patent
claims best describe the claimed invention. Therefore, the Court need not rewrite or re-
characterize the claim language where such revision was not intended by the patentee or
necessary to understand the invention. See, e.g., ActiveVideo Networks, Inc. v. Verizon
16
analog/digital. See Ex. 1 at 6:51-65; 7:56-63. And nothing in the prosecution history of the
patents otherwise disclaimed or altered this basic proposition.9
The strength of the intrinsic evidence requires this Court to look no further, but Dr.
Sturges confirms what the patents already disclose, i.e., that all forms of electrical
communication, including analog communication, digital communication, and combined
analog/digital communication, require protocols for communication. Ex. 4 at 49-50. Simply
stated, analog communication requires an analog communication protocol. See, e.g., Ex. 26 and
Ex. 27. Not surprising, therefore, definitions of “protocol” or “communication protocol” in
dictionaries, and, even in court claim constructions, do not exclude analog, but instead more
broadly define it any “set of rules” governing communication between electronic devices (or
similar variants). See, e.g., Ex. 31 (protocol is “a set of rules governing the communication and
transfer of data between machines”); Celltrace LLC v. AT&T, Inc., et al, Case No. 6:09-cv-294
(E.D. Tex.), ECF No. 234 at 12 (protocol: “a specific set of rules, procedures or conventions
relating to the format of data transmitted between two devices.”); Karl Storz Endoscopy-
America, Inc. v. Smith & Nephew, Inc., Case No. 2:07-02702 (W.D. Tenn.), ECF No. 113 at 37
(protocol: “a set of rules governing the communication and/or transfer of data”).
ABB’s proposed construction attempts to rule out analog communication protocols,
which are integral to every process control system. This proposal should be rejected and the term
construed consistent with its plain and ordinary meaning.
9
To the contrary, at one point, the patentee’s claims read “a first interface configured to receive
first information from a field device using a first communication protocol and further configured
to receive analog-encoded information…” Ex. 30. In other words, claims presented during the
prosecution history recognized that the first communication protocol could be used to transmit
analog-encoded information
18
contradicts what one of skill in the art would overwhelmingly expect, there is no basis for claim
narrowing from the plain and ordinary meaning.
C. There Are No Means-Plus-Function Limitations In the Asserted Claims
Under Section 112 ¶ 6 (now subsection (f)), a claim element:
may be expressed as a means or step for performing a specified function without the
recital of structure, material or acts in support thereof, and such claims shall be construed
to cover the corresponding structure, material, or acts described in the specification and
equivalents thereof.
Typically in patent claim drafting this provision is invoked by reciting a “means for [performing
a certain function]”. If the claim language at issue does not include the term “means” or “step”,
then there is a rebuttable presumption that § 112 ¶ 6 does not apply. See Williamson v. Citrix
Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc). The presumption against
application of § 112 ¶ 6 may be rebutted only “if the challenger demonstrates that the claim term
fails to ‘recite sufficiently definite structure’ or else recites ‘function without reciting sufficient
structure for performing that function.’” Id. at 1349. “The standard is whether the words of the
claim are understood by persons of ordinary skill in the art to have a sufficiently definite
meaning as the name for structure.” Id. at 1349.
In this case, ABB contends two claim elements invoke 35 U.S.C. § 112 ¶ 6: “article of
manufacture” and “processor,” and that because the specification allegedly does not sufficiently
identify corresponding structure, the claim terms are indefinite.10 As an initial matter, neither
claim term includes the term “means,” so the presumption against application of Section 112 ¶ 6
applies. In terms of rebutting the presumption, in the pre-Markman exchanges ABB cited no
10
If a claim term is governed by Section 112 ¶6, then construction involves two steps. The first
step determines “the function of the means-plus-function limitation.” Medtronic, Inc. v.
Advanced Cardiovascular Sys., Inc., 248 F.3d 1303, 1311 (Fed. Cir. 2001). The second step
“determine[s] the corresponding structure disclosed in the specification and equivalents thereof.”
Id. If corresponding structure is lacking from the specification, then the claim term is indefinite.
See Williamson, 792 F.3d at 1348.
22
evidence, intrinsic or extrinsic, besides the claims themselves in support of its position. See ECF
No. 118-1.11 Hence, Emerson is at a loss as to how ABB—the party with the burden—can rebut
the presumption here. See Zeroclick, LLC v. Apple Inc., 891 F.3d 1003, 1007 (Fed. Cir. 2018)
(noting that the challenger must rebut the presumption and holding that district court erred in
concluding that the terms “program” and “user interface” were means-plus-function limitations
given the challenger provided no evidence and did not carry burden); see also Advanced Ground
Info. Sys., Inc. v. Life360, Inc., 830 F.3d 1341, 1347 (Fed. Cir. 2016) (“In determining whether
this presumption has been rebutted, the challenger must establish by a preponderance of the
evidence that the claims are to be governed by § 112, ¶ 6”). Beyond the failure of proof, the
claim terms plainly connote structure as discussed below, and thus, are not governed by Section
112 ¶ 6, and not indefinite.
1. Term 18: “Article of Manufacture” Is Not a Means-Plus-Function Limitation
The term “article of manufacture” appears in the preamble of claims 10-15 of the ‘875
patent, e.g., claim 10 recites “[a]n article of manufacture storing machine readable instructions
that, when executed, cause a machine to. . .” For those familiar with patent claim drafting, this is
a classic Beauregard claim; a form of claiming that is both permissible and has nothing to do
with means-plus-function claiming under Section 112 ¶ 6.
Section 101 of the Patent Act limits patentability to four broad categories of subject
matter: “[1] process, [2] machine, [3] manufacture, or [4] composition of matter, or any new and
useful improvement thereof . . .” 35 U.S.C. § 101. In the early days of software development, it
was unclear whether software fit within one of these categories and was patentable. An early
U.S. Supreme Court case, for example, held that a software program untethered to a machine or
tangible medium was unpatentable. See Gottschalk v. Benson, 409 U.S. 63, 71 (1972). In 1981,
11
It generically reserved the right to rely on anything Emerson identified, but failed to
affirmatively and specifically identify any evidence beyond the claims themselves.
23
however, the U.S. Supreme Court clarified that “a claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a mathematical formula, computer
program, or digital computer." Diamond v. Diehr, 450 U.S. 175 (1981). Consistent with this
holding and after a patentee appealed the denial of a claim directed to software fixed in a
tangible medium (i.e., as an article of manufacture), the Patent Office deemed such claims
patentable under §101. In re Beauregard, 53 F.3d 1583 (Fed. Cir. 1995). In the more than 20+
years since that decision, it has become common to claim software via a “Beauregard claim”,
i.e., a claim directed to an article of manufacture storing the software code. See CyberSource
Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011) (discussing the history of
“Beauregard claims” and noting that they are considered within an eligible category–articles of
manufacturer–by the Patent Office).
That is what occurred here. The preamble of claims 10-15 of the ‘875 patent invokes the
statutory class and claims the software in a fixed tangible medium, as is permissible to do. This
has nothing to do with mean-plus-function claiming, and Emerson is quite frankly at a loss as to
how ABB could contend otherwise. A manufacture is a “tangible article.” See In re Nuijten, 500
F.3d 1346, 1356 (Fed. Cir. 2007) (citing Am. Fruit Growers, Inc. v. Brogdex Co., 283 U.S. 1, 11
(1931)). It is not a function, and Section 112 ¶ 6 just simply has no application.
2. Term 19: “Processor” Is Not a Means-Plus-Function Limitation
ABB’s position that “processor” in the ‘875 patent invokes Section 112 ¶ 6 is also
without merit.12 A processor is a physical thing, just as a car is a
physical thing. See Ex. 4 ¶ 148. If you search “processor” on the
Internet you can find images (like the one shown to the right); you can buy one. Id.; Ex. 16. Just
12
Oddly, ABB appears to contend the term “processor” is a means-plus-function term when used
in the ‘875 patent, but not when the same term is used in the ‘567 and ‘769 patents. Yet the ‘567
patent was incorporated by reference in its entirety into the ‘875 patent, meaning if the ‘567
patent sufficiently described the structure of a processor, then the ‘875 patent does as well.
24
as there are many types of cars, there are many types of processors, but this does not mean the
term connotes no structure. As explained in the expert report of Dr. Sturges, the basic structure
of a processor—i.e., a chip with transistors, a control unit, registers and cache memory—is well
known. See Ex. 4, ¶ 149.
Consistent with the foregoing, numerous courts have declined to construe a processor as a
means-plus function limitation. See Quanergy Sys., Inc. v. Velodyne Lidar, Inc., No. 16-cv-5251,
2017 WL 4410174, at *19 (N.D. Cal. Oct. 4, 2017) (“processor” refers to a specific class of
structures. As such, “processor” is not a means-plus-function term invoking § 112, ¶ 6.”); Finjan,
Inc., v. Proofpoint, Inc., No. 13-cv-5808, 2015 WL 7770208, at *11 (N.D. Cal. Dec. 3, 2015)
(rejecting notion that because processor was shown in block diagram it was a means-plus-
function claim term); Masimo Corp. v. Philips Elecs. N. Am. Corp., No. 09-cv-80, 2015 WL
7737308, at *8 (D. Del. Dec. 1, 2015) (rejecting means-plus-function for the term “processor”);
Smartflash LLC v. Apple, No. 6:13-cv-447, 2015 WL 4208754, at *3 (E.D. Tex. July 7, 2015)
(concluding that “processor” connotes sufficient structure to avoid means-plus-function
treatment); see also Man. Pat. Exam. Proc. § 2106 (noting that a claim directed to a
“microprocessor” is understood to be a manufacturer, i.e., a product claim).
25
Dated: October 2, 2019 Respectfully submitted,
/s/ Kara R. Fussner

Rudolph A. Telscher, Jr., 41072MO*
Attorney in Charge
Kara R. Fussner, 54656MO*
Steven E. Holtshouser, 33531MO*
Paul L. Smelcer, 69351MO*
HUSCH BLACKWELL LLP
190 Carondelet Plaza, Suite 600
St. Louis, MO 63105
314.480.1500 Telephone
314.480.1505 Facsimile
rudy.telscher@huschblackwell.com
kara.fussner@huschblackwell.com
steve.holtshouser@huschblackwell.com
paul.smelcer@huschblackwell.com
*Admitted pro hac vice
Nathan P. Sportel. 6304061IL

HUSCH BLACKWELL LLP
120 South Riverside Plaza, Suite 2200
Chicago, IL 60606
Nathan.sportel@huschblackwell.com
Thomas H. Watkins
State Bar No. 20928000
Southern District of Texas I.D. No. 15332
HUSCH BLACKWELL LLP
111 Congress Avenue, Suite 1400
Austin, Texas 78701-4093
tom.watkins@huschblackwell.com
Attorneys for Plaintiffs Fisher-Rosemount

Systems, Inc. and Emerson Process
Management LLLP
26
CERTIFICATE OF SERVICE
I hereby certify that on this 2nd day of October 2019, I caused the foregoing to be filed
electronically with the Clerk of Court and to be served via the Court’s Electronic Filing System
upon all counsel of record.
/s/ Kara R. Fussner
27
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Case 4:18-cv-00178 Document 146 Filed on 10/02/19 in TXSD Page 1 of 32

IN THE UNITED STATES DISTRICT COURT

FISHER-ROSEMOUNT SYSTEMS, INC.

PLAINTIFFS’ OPENING CLAIM CONSTRUCTION BRIEF

I. INTRODUCTION .................................................................................................. 1

Williamson v. Citrix Online, LLC,

Plaintiffs Fisher-Rosemount Systems, Inc., and its subsidiary Emerson Process

to a broad or contextually varying word in a particular manner.

Meanwhile, ABB identified a staggering 18 claim terms for construction.1 As to 12 of

those terms, ABB—with no identification of any supporting intrinsic or extrinsic evidence—

indefinite, and ABB’s unsupported assertion to the contrary should be rejected.

II. FACTUAL BACKGROUND

Emerson’s Innovative Technology

Emerson is a leading provider of automated industrial control and process control

generally Ex. 6; Ex. 7.

and implementation of a new, or changes to an existing, distributed control system.

connections via removable single-channel modules.

See Ex. 1, summary of invention; ECF No. 137. The

modules, which Emerson calls CHARMs (acronym

for “characterization modules” shown right), replace

the respective wires and marshal signals from the field

electronically using data and signal management. Id.

As explained in Emerson’s Technology Tutorial, this

The Asserted Patents

116a-c and marshal information to/from the process

controller 104 via the bus 136a. Ex. 1 at 7:14-26; see

also Figs 1 and 2 (Fig. 2 shown right). According to

the '567 Patent, the termination modules 124a-c and

126a-c have a one-to-one correspondence with the

number of field devices 112a-c, 116a-c. Ex. 1 at

In an example where the termination modules (known commercially as CHARMs)

first physical interface (e.g. termination screws 406) and

communicate with the bus through a second physical

interface 408, as shown in Fig 5 (right). Ex. 1 at 14:7-42.

The '769 Patent provides additional detail about the

termination modules and the protocols supported by the

The '875 Patent builds on the '567 and '769 patents

identify connection errors or automatically perform the electronic marshalling. Id.

The Accused ABB System4

Conditioning Modules” or “SCMs” appear so similar to Emerson’s CHARMs modules that an

industry publication referred to them as “rather ‘charm’ing.”

Management’s Charm programmable I/O system introduced

several years ago”).

III. LEGAL STANDARDS

quotation marks omitted).

as lexicographer or disclaimer), it is “unjust to the public, as well as an evasion of the law, to

Phillips, 415 F.3d at 1317–18.

A. ABB Cannot Show—By Clear and Convincing Evidence—that Any Claim

the defendant—ABB—to prove indefiniteness, and it must do so by clear and convincing

reasonable certainty in its scope”).

Issued patents are entitled to a statutory presumption of validity. 35 U.S.C. § 282. To

submitting evidence, such as an expert declaration, to demonstrate the understanding of a person

(E.D. Tex. Dec. 29, 2016).

the art and/or in the context of the patents:

6 and 32:24-29; see also Ex.17, Ex. 32.

interface can or cannot be removable from the base.

and the controllers).

term in accordance with that characterization.”) (citations omitted).

embodiments, Emerson’s commercial embodiment and ABB’s accused embodiment – a one-

patents otherwise disclaimed or altered this basic proposition.9

communication, including analog communication, digital communication, and combined

analog/digital communication, require protocols for communication. Ex. 4 at 49-50. Simply

Ex. 27. Not surprising, therefore, definitions of “protocol” or “communication protocol” in