Micro Motion, Inc.v.Invensys Systems, Inc.

Patent Trial and Appeal Board

Feb 18, 2015

11555033 (P.T.A.B. Feb. 18, 2015)

Trials@uspto.gov Paper 14
Tel: 571–272–7822 Entered: February 18, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
MICRO MOTION, INC.,
Petitioner,
v.
INVENSYS SYSTEMS, INC.,
Patent Owner.
_______________

Case IPR2014-01409
Patent 7,571,062 B2
_______________

Before WILLIAM V. SAINDON, MICHAEL R. ZECHER, and
JENNIFER M. MEYER, Administrative Patent Judge.

SAINDON, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
37 C.F.R. § 42.108
Denying Petitioner’s Motion for Joinder
37 C.F.R. § 42.122

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I. INTRODUCTION
Petitioner requests an inter partes review of claims 1, 12, 23–25, 29,
36, and 43 of U.S. Patent No. 7,571,062 (Ex. 1001, “the ’062 patent”).
Paper 2, 3 (“Pet”). Petitioner acknowledges that it was served more than a
year before filing its Petition, but asserts that 35 U.S.C. § 315(b) does not
apply to this proceeding because its Petition is accompanied by a timely
Motion for Joinder under 35 U.S.C. § 315(c) to a pending inter partes
review of the ’062 patent. Pet. 2–3; see also Paper 3 (Petitioner’s Motion
for Joinder); Micro Motion, Inc. v. Invensys Sys., Inc., Case IPR2014-00393
(PTAB Aug. 4, 2014) (Paper 16, instituting inter partes review on claims 1,
29, 40, and 45 of the ’062 patent). Patent Owner timely filed a Preliminary
Response. Paper 13 (“Prelim. Resp.”).
We have jurisdiction under 35 U.S.C. § 314, which provides that
an inter partes review may not be instituted “unless . . . there is a reasonable
likelihood that the petitioner would prevail with respect to at least 1 of the
claims challenged in the petition.” Upon consideration of the Petition,
Preliminary Response, and the papers and exhibits cited therein, we do not
institute an inter partes review on any challenged claim. Likewise, we do
not grant Petitioner’s Motion for Joinder.
A. Related Matters
The ’062 patent is subject to the aforementioned inter partes review,
IPR2014-00393. Pet. 1.
Petitioner alleges the ’062 patent has been asserted in Invensys Sys.,
Inc. v. Emerson Electric Co., No. 6:12-cv-00799-LED (E.D. Tex.). Pet. 1.
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Petitioner has filed a number of petitions for inter partes review of
Patent Owner’s patents. Id. at 2.
B. Background on Flow Meter Technology
As described in the background section of the ’062 patent, Coriolis
flow meters seek to measure the flow of material through a tube by taking
advantage of the Coriolis effect. Ex. 1001, 1:31–41. A driving mechanism
applies forces to the tube to induce it to oscillate. Id. at 1:42–43. The flow
meter uses sensors to measure the twisting of the tube (due to the Coriolis
effect, as explained below) and thereby, estimates the mass and/or density of
the material. See id. at 3:47–56; see also Ex. 1064 ¶¶ 28–38 (Declaration of
Dr. Michael D. Sidman explaining how Coriolis flow meters operate).
Figures 1–3 of Exhibit 1009,
1
reproduced below, show the Coriolis effect in
action:
In Figure 1, an empty tube bent in a horseshoe shape is made to
oscillate up and down; both legs of the tube pass the midpoint of the up-and-

1
Micro Motion, How the Micro Motion® Mass Flow and Density Sensor
Works, (1990) (Ex. 1009).
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down oscillation at the same time. Ex. 1009, 1. In Figure 2, fluid now flows
in one end of the tube and out the other. Id. The tube is depicted as rising,
in the upward swing of its oscillation. Id. In this moment, the fluid flowing
into the first leg of the tube is pushed upwards by the rising tube, but resists
this motion, due to inertia, and exerts a downward force on this leg, holding
back the upward rise of this leg. Id. By the time the fluid has passed around
the bend and into the second leg of the tube, however, the fluid has been
accelerated upwards by the upward rise of the tube, and, thus, pushes
upward on the second leg of the rising tube. Id. Figure 3 depicts an end
view of the tube, and the net result of these forces—a twisting of the tube.
Id. When the tube moves in its downward swing of its oscillation, the
opposite twist occurs. Id. The amount of twisting is proportional to the
mass of the fluid moving through the tube. Id.
Accordingly, a flow meter uses the left and right velocity sensor
signals for two purposes. The first is to determine the difference in phase
between the two legs of the flow meter, which, in turn, is used to determine
the mass flow rate of the fluid that flows through the tube. Ex. 1064 ¶ 33.
We refer to this as the flow measurement function. The second is to
measure the oscillation of the tube, which, in turn, is used to control that
oscillation to drive it in a manner to obtain accurate phase difference
measurements. Id. ¶ 41. We refer to this as the drive function.
2

2
The oscillation of the tube also is measured to determine the frequency of
oscillation, which, in turn, is used to determine the density of the material in
the tube. Ex. 1064 ¶¶ 37, 39. This particular density measurement function
is not important to our discussion.
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C. The ’062 Patent
The ’062 patent describes a flow meter that uses digital signal
processing to generate a drive signal. The flow meter measures the
amplitude, frequency, and phase of velocity sensor signals located on the
legs of the flow tube. Ex. 1001, 12:9–19. Among other uses, the digital
signal processor uses these measurements to drive the vibration of the tube
in a manner leading to the most accurate measurements. Measuring the
signals, as well as computing the drive signal, however, takes time. Id. at
20:53–60. To be most effective, the drive signal needs to be coordinated
with the actual vibration of the flow tube. The ’062 patent introduces a
phase shift of the calculated drive signal to compensate for the delays
introduced by the measurements and computations. Id.
D. Illustrative Claim
Of the claims challenged, claim 1 is independent and claims 12, 23–
25, 29, and 36 depend therefrom. Challenged claim 43 depends from
independent claim 40, which is not challenged in this proceeding.
Independent claim 1 is reproduced below with emphasis added:
1. A digital flowmeter comprising:
a vibratable conduit;
a driver connected to the conduit and operable to
impart motion to the conduit;
a sensor connected to the conduit and operable to
sense the motion of the conduit; and
a control and measurement system connected
between the driver and the sensor, wherein the
control and measurement system is configured
to:
receive a sensor signal from the sensor,
generate a drive signal based on the sensor
signal using digital signal processing,
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supply the drive signal to the driver, and
generate a measurement of a property of
material flowing through the conduit based
on the signal from the sensor;
use digital processing to adjust a phase of the
drive signal to compensate for a time delay
associated with components connected
between the sensor and the driver.

Ex. 1001, 55:21–40 (emphasis added).
E. Asserted Ground and Prior Art
Petitioner asserts that claims 1, 12, 23–25, 29, 36, and 43 of the ’062
patent are unpatentable in view of Kalotay
3
and Romano
4
.
II. ANALYSIS
A. Claim Construction
No issue in this Decision requires a claim construction. See, e.g.,
Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
1999) (only those terms that are in controversy need to be construed, and
only to the extent necessary to resolve the controversy).
B. Petitioner’s Ground
Petitioner asserts that claims 1, 12, 23–25, 29, 36, and 43 are
unpatentable over Kalotay and Romano. Pet. 16. Put simply, Petitioner’s
proposed ground is to take the flowmeter of Kalotay and to compensate for
the delays associated with system components located between the sensors
and the driver by using the alleged teachings of Romano to compensate for

3
U.S. Patent No. 5,009,109 (issued Apr. 23, 1991) (Ex. 1008).
4
U.S. Patent No. 4,934,196 (issued June 19, 1990) (Ex. 1006).
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such delays. See id. at 32–33. To understand this ground, we first look to
the devices of Kalotay and Romano. Then, we present our analysis of
Petitioner’s ground.
1. Kalotay
Kalotay describes a Coriolis flow meter having flow conduits, drivers,
sensors, and a control electronics. Ex. 1008, 6:5–14, 8:2–9. The drive
circuit controls the conduit oscillation by applying a pre-defined burst of
energy to drive the conduit at an appropriate point during the oscillation
cycle, thereby maintaining peak amplitude within a prescribed range. Id. at
3:40–4:4. A burst also can be applied to remove energy from the conduit in
order to retard the peak value of vibrations. Id. at 4:57–62. The circuitry
that performs these tasks is reproduced in Figure 4, below:
Figure 4 depicts circuitry for enabling the pre-defined burst feature of
Kalotay. A digital path determines whether additional energy is required
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and an analog path determines when the energy may be applied. Left
velocity sensor 160L sends a signal that is received by analog-to-digital
(“A/D”) converter 520 and comparator 540 to begin the digital path of the
circuit. Id. at 12:6–10, 13:11–13. The digital signal from A/D converter 520
is processed by microcontroller 530, which determines whether the
amplitude of vibratory motion has decayed to a sufficient level to warrant
applying further energy to the flow tube. Id. at 12:14–68. When additional
energy is warranted, microprocessor 530 applies an appropriate signal to the
gate of timer/counter 550 to indicate that energy needs to be applied. Id. at
12:44–51.
In order to ensure the energy applied to the tube is applied only at
appropriate times during its oscillation, Kalotay monitors the movement of
the tube. Specifically, comparator 540, defining the analog path of the
circuit, only allows a burst of energy to be sent to drive coil 180 when the
conduit is moving in an appropriate direction, as monitored by the voltage
signal from left velocity sensor 160L. Id. at 13:9–32. Figure 6 of Kalotay,
depicting the burst timing, is reproduced below:
Figure 6 of Kalotay depicts the sensor signal from the left velocity sensor as
a roughly sinusoidal shape.
5
A reference voltage VREF is depicted as a

5
Note that this is a graph depicting velocity, not position. The peak on the
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dashed line intersecting portions of the left velocity sensor signal. When the
value of the left velocity sensor signal is greater than VREF, Kalotay discloses
that a pulse may be applied effectively to the flow tube to induce further
oscillation. Thus, when VREF is exceeded, comparator 540 enables
timer/counter 550.
Timer/counter 550 sits at the confluence of the digital and analog
paths of Kalotay’s circuit, and requires a signal from both in order to trigger
a drive signal. When triggered, timer/counter 550 applies a pre-programmed
signal that is imparted by drive coil 180 to the flow tube. Id. at 12:44–59
(describing the circuitry for enabling the burst), 13:34–64 (describing when
to apply the burst to achieve certain results), 14:3–34 (describing how to
apply the burst). Kalotay discloses that “it is not critical where a burst of
energy . . . is applied to the flow conduits as long as that burst is applied
within the positive ‘drive window’ [as defined by VREF]”). Id. at 13:36–40.
2. Romano
Romano discloses a flow meter with two velocity sensor signals. The
two sensor signals are sampled continuously on an alternating basis using
multiplexor 302. Ex. 1006, 22:10–19, 33–45. As a result of this alternating
sampling, the samples for one signal will always lead the samples for the
other signal. Id. at 22:19–22. To calculate a mass flow rate, however, the
signals from both the left and right velocity sensors have to be compared as
of the same time.
6
Accordingly, Romano proposes to shift the phase of one

velocity graph generally corresponds to the midpoint position in the swing of
the moving conduit.
6
Romano discusses measuring the “time interval” between one leg of the
tube reaching a certain location before the other leg reaches that location.
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of the signals so that the samples represent the appropriate point in time. Id.
at 22:22–32. Figure 3 of Romano depicts the circuitry responsible for
measuring the velocity sensor signals, among other functions, and is
reproduced below:

Figure 3 of Romano depicts a time interval measurement circuit used for
determining the phase difference between the left and right velocity sensor
signals, which, in turn, is used to determine the mass flow rate of the fluid
that flows through the tube. Id. at 20:57–65. The drive circuit is depicted as

Ex. 1006, 3:52–4:2. This is measured by comparing the phases of the
signals of the two sensors when they are oscillating at a given fundamental
frequency, rather than by literally setting a stopwatch and measuring the
time interval. Id. at 6:38–42.
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separate from the input circuit; they are connected via bus 350. Id. at 22:6–
23:1; Fig. 3.
3. Analysis—Claims 1, 12, 23–25, 29, and 36
Petitioner proposes to modify the drive function of Kalotay to account
for processing delays allegedly inherent in its drive function by
incorporating the teachings of the phase shifting in the flow measurement
function of Romano. Pet. 16–35. Petitioner asserts that one of ordinary skill
in the art would have recognized that such a combination would avoid
processing/data gathering delays, such as to give the drive function of
Kalotay more accurately timed bursts and potentially avoid problems arising
from “clipping.” Id. at 32–35. Critically, however, Petitioner does not
explain sufficiently how Romano’s teaching regarding phase shifting one of
two necessary inputs for Romano’s flow measurement function would be
applied to Kalotay’s drive function, which only has one input.
In order to calculate mass flow, Romano needs to know the phase
difference between the left and right velocity sensor signals at the same
moment in time. Ex. 1006, 6:38–42. Because the multiplexor alternates
velocity sensor measurements, one of the sensor signals has to be phase
shifted so that the two signals could be said to represent the state of the flow
tube at the same moment in time. Id. at 22:22–32. Thus, Romano is phase
shifting to accommodate a particular calculation (mass flow) on account of
the physical limitations of its circuitry (the multiplexor). Even if we were to
consider the multiplexor to cause “a time delay associated with components
connected between the sensor and the driver,” as required by claim 1,
Petitioner has not explained how this teaching is applied in a relevant
manner to the drive circuit of Kalotay, which has no multiplexor and no
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need to have synchronized velocity signal pairs. Kalotay describes only one
velocity sensor input signal to create its drive signal. See, e.g., Ex. 1008,
Fig. 4.
Further, Petitioner has not made clear what would be the use of
shifting the phase of the velocity signal in Kalotay. Kalotay’s
microprocessor is using the amplitude of the signal to determine whether
energy needs to be added. Ex. 1008, 15:55–16:29 (comparing the amplitude
of the signal to pre-defined limit values to determine whether to trigger
timer/counter 550), Fig. 6. The amplitude calculated here would be the same
regardless of its phase. Petitioner alleges that phase shifting the velocity
sensor signal will allow Kalotay to compensate for computational delays, but
Petitioner has not explained sufficiently how shifting the phase of the
velocity sensor signal will speed up the calculation of the amplitude of the
signal. Accordingly, Petitioner has not persuaded us that shifting the phase
of the sensor signal in Romano would serve to change the timing of the
burst.
Petitioner also appears to propose that, because it was known
generally to compensate for processing delays, that it would have been
obvious to apply such compensation techniques to Kalotay. See Pet. 32–33.
Even taking this as true, claim 1 requires a specific phase shift (of the drive
signal) in response to a specific time delay (components between sensor and
driver). Petitioner has not shown sufficiently that this particular type of
phase shift in response to this particular type of problem was known or
otherwise obvious to a person of ordinary skill at the time of invention.
Petitioner attempts to show that one of ordinary skill in the art would have
recognized the problem (manifested as a “clipping” of a burst), but the only
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proof they offer that such a problem was known in the art is the analysis of
its declarant, Dr. Sidman. Pet. 27–28, 32–33; Ex. 1064 ¶¶ 167–73. Dr.
Sidman, however, offers no proof that the clipping problem was recognized
at the time of the ’062 invention and that the solution was to time the burst
in a certain manner.
7
See Ex. 1064 ¶ 167 (merely alleging that “[o]ne of
ordinary skill in the art would recognize that a clipped off burst . . . would
produce an unfortunately timed mechanical disturbance”).
For the reasons set forth above, we determine that Petitioner has not
established a reasonable likelihood of showing the subject matter of claims
1, 12, 23–25, 29, and 36 of the ’062 patent would have been obvious in view
of Kalotay and Romano. Because we do not institute inter partes review of
claims 1, 12, 23–25, 29, and 36 of the ’062 patent, Petitioner’s Motion for
Joinder with respect to these claims is moot.
4. Analysis—Claim 43
In Micro Motion, Inc. v. Invensys Sys., Inc., Case IPR2014-00393
(PTAB Aug. 4, 2014) (Paper 16), we instituted an inter partes review of
independent claim 40 of the ’062 patent as unpatentable over Kalotay, but
not of claim 43, which depends from claim 40. We noted, “Petitioner does
not offer an analysis as to why these claims would have been obvious in
view of Kalotay,” and we also determined that, while Petitioner directed us

7
Indeed, the only persuasive evidence we have before us on the matter is
Kalotay itself, which teaches that burst timing is not, in fact, a problem
because the comparator takes care of the timing aspects of the burst by way
of the “drive window” it defines. Ex. 1008, 13:35–38 (“it is not critical
where a burst of energy . . . is applied to the flow conduits as long as that
burst is applied within the positive ‘drive window’ [defined by the
comparator]”).
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to some analysis in an exhibit containing invalidity charts for the co-pending
litigation, it was improper for Petitioner to incorporate by reference in such a
manner. Id. at 16.
In this proceeding, Petitioner now comes forward with an analysis, in
its Petition, of how claim 43 is unpatentable over Kalotay, and seeks to join
to the earlier-filed proceeding. Pet. 47–49. Joinder may be authorized when
warranted, but the decision to grant joinder is discretionary. 35 U.S.C.
§ 315(c); 37 C.F.R. § 42.122(b). Petitioner, as the moving party, carries the
burden of proof. 37 C.F.R. § 42.20(c).
We exercise our discretion and deny joinder of this proceeding to
IPR2014-00393. The proposed ground directed to claim 43 is a second bite
at the apple for Petitioner. In IPR2014-00393, Petitioner neglected to
include an analysis of claim 43 and offers now the analysis it could have
offered then. See also ZTE Corp. v. ContentGuard Holdings, Inc., Case
IPR2013-00454, slip op. at 5–6 (PTAB Sept. 25, 2013) (Paper 12) (“The
Board is concerned about encouraging, unnecessarily, the filing of petitions
which are partially inadequate.”). This is not a case where circumstances
have changed that would make joinder an equitable remedy for Petitioner.
Ariosa Diagnostics v. Isis Innovation, Ltd., Case IPR2013-00250, slip op. at
3 (PTAB Apr. 19, 2013) (Paper 4) (requesting joinder when a new product
was launched, leading to a threat of new assertions of infringement); id. at
Paper 25 (Decision Granting Motion for Joinder) (PTAB Sep. 3, 2013);
Microsoft Corp. v. Proxyconn, Inc., Case IPR2013-00109, slip op. at 3, 5
(PTAB Feb. 25, 2014) (Paper 15) (granting joinder when additional claims
had been asserted against petitioner in concurrent district court litigation).
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In addition, the timing weighs against joinder. This Petition is
admittedly time-barred under 35 U.S.C. § 315(b). Pet. 2–3. IPR2014-00393
is scheduled for oral hearing March 12, 2015, and discovery is closed.
Joining this proceeding to IPR2014-00393 would require a new period for
discovery, delaying IPR2014-00393 substantially.
8
See Opp. Mot. Joinder
(Paper 10), 12 (“If Petitioner’s Motion for Joinder were to be granted, an
additional deposition of [Petitioner’s Declarant] . . . will be necessary.”). As
such, granting joinder would have a significant impact on the schedule of
IPR2014-00393.
Taking into consideration our discussion above, with respect to claim
43 of the ’062 patent, we deny Petitioner’s Motion to Join this proceeding to
IPR2014-00393. Because the Petition is otherwise time-barred, we deny the
Petition as to claim 43 as untimely.
III. ORDER
In accordance with the foregoing, it is
ORDERED that Petitioner’s Petition is denied; and
FURTHER ORDERED that Petitioner’s Motion for Joinder is denied.

8
Some may allege that the panel taking this case in the order received,
instead of expediting it, caused the timing issue. In this case, we see no
reason to prioritize a second bite at the apple and to make others wait for
their first bite. See also 37 C.F.R. § 42.1(b) (we are to construe our rules “to
secure the just, speedy, and inexpensive resolution of every proceeding.”).
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For PETITIONER:

Andrew S. Baluch
Jeffrey N. Costakos
Angela Murch
Linda Hansen
Kadie Jelenchick
FOLEY & LARDNER LLP
WASH-Abaluch-PTAB@foley.com
jcostakos@foley.com
amurch@foley.com
lhansen@foley.com
kjelenchick@foley.com

For PATENT OWNER:

Jeffrey L. Johnson
James M. Heintz
DLA PIPER LLP (US)
Invensys_Micro_IPR@dlapiper.com