IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`Case No. 6:11-cv-00622-LED
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`JURY TRIAL DEMANDED
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`Case No. 6:11-cv-00623-LED
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`JURY TRIAL DEMANDED
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`Case No. 6:11-cv-00624-LED
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`JURY TRIAL DEMANDED
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`ROY-G-BIV Corporation,
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`
`
` Plaintiff,
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`v.
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`ABB, Ltd., ABB, Inc., MEADWESTVACO
`TEXAS, LP and MEADWESTVACO
`CORPORATION,
`
` Defendants.
`
`ROY-G-BIV Corporation,
`
`
`
` Plaintiff,
`
`v.
`
`HONEYWELL INTERNATIONAL, INC.
`MOTIVA ENTERPRISES, LLC,
`
` Defendants.
`
`
`
`ROY-G-BIV Corporation,
`
`
`
` Plaintiff,
`
`v.
`
`SIEMENS CORP., et al.
`
` Defendants.
`
`PLAINTIFF ROY-G-BIV CORPORATION’S AMENDED
`DISCLOSURE OF ASSERTED CLAIMS AND INFRINGEMENT CONTENTIONS
`PURSUANT TO LOCAL PATENT RULE 3-1
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`Pursuant to Rule 3-1 of the Rules of Practice for Patent Cases Before the Eastern
`
`District of Texas (“the Patent Rules” or “P.R.”), ROY-G-BIV Corporation (“Plaintiff”)
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`Page 1 of 8
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`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`
`
`
`
`
`
`Case No. 6:11-cv-00622-LED
`
`JURY TRIAL DEMANDED
`
`
`
`
`
`Case No. 6:11-cv-00623-LED
`
`JURY TRIAL DEMANDED
`
`
`
`
`
`Case No. 6:11-cv-00624-LED
`
`JURY TRIAL DEMANDED
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`ROY-G-BIV Corporation,
`
`
`
` Plaintiff,
`
`v.
`
`ABB, Ltd., ABB, Inc., MEADWESTVACO
`TEXAS, LP and MEADWESTVACO
`CORPORATION,
`
` Defendants.
`
`ROY-G-BIV Corporation,
`
`
`
` Plaintiff,
`
`v.
`
`HONEYWELL INTERNATIONAL, INC.
`MOTIVA ENTERPRISES, LLC,
`
` Defendants.
`
`
`
`ROY-G-BIV Corporation,
`
`
`
` Plaintiff,
`
`v.
`
`SIEMENS CORP., et al.
`
` Defendants.
`
`PLAINTIFF ROY-G-BIV CORPORATION’S AMENDED
`DISCLOSURE OF ASSERTED CLAIMS AND INFRINGEMENT CONTENTIONS
`PURSUANT TO LOCAL PATENT RULE 3-1
`
`
`
`
`
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`
`
`
`
`
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`Pursuant to Rule 3-1 of the Rules of Practice for Patent Cases Before the Eastern
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`District of Texas (“the Patent Rules” or “P.R.”), ROY-G-BIV Corporation (“Plaintiff”)
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`Page 1 of 8
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`hereby submits its Amended Disclosure of Asserted Claims and Preliminary Infringement
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`Contentions, including the claim charts previously served on September 14, 2012 as
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`Exhibits A-D, which are hereby incorporated by reference, and accompanying Exhibit E.
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`This disclosure is made solely for the purpose of this action.
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`Discovery in this matter is at a very early stage and is ongoing. The Defendants
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`have not yet produced any documents and things, any computer source code, or provided
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`any deposition testimony or other discovery in this action. RGB’s investigation regarding
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`these and other potential grounds of infringement is ongoing. This patent rule disclosure is
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`based upon information that RGB has been able to obtain publicly, together with RGB’s
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`current good faith beliefs regarding each accused apparatus, product, device, process,
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`method, act, or other instrumentality (generally referred to herein as “Accused
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`Instrumentalities” and as further defined below) of which Plaintiff is aware, and is given
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`without prejudice to RGB’s rights to obtain leave, as necessary, to supplement or amend its
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`disclosure as additional facts are ascertained, analyses are made, research is completed
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`and/or claims are construed, especially the review of Defendants’ confidential information
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`including source code, documents, and deposition testimony. For example, the selection of
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`figures shown in Exhibits A-E, including but not limited to those depicting the location of
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`and identifying the presence of claim elements in the Accused Instrumentalities, is
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`illustrative and may change after review of Defendants’ confidential information including
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`source code and related information. Accordingly, Plaintiff explicitly reserves the right to
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`amend and/or supplement Exhibits A-E regarding direct and/or indirect infringement, as
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`well as literal infringement and/or infringement under the doctrine of equivalents based
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`upon evidence uncovered in this litigation.
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`2
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`Page 2 of 8
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`These disclosures also are based at least in part upon RGB’s present understanding
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`of the meaning and scope of the asserted claims of the patents-in-suit in the absence of
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`claim construction proceedings for all the patents-in-suit or discovery in this matter. Any
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`references in Exhibits A-E to prior claim constructions refer to the Markman Order issued
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`in ROY-G-BIV Corp. v. FANUC Ltd. et al., Case No. 2:07-cv-00418-DF in which certain
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`terms of the ‘236, 543 and ‘058 Patents (as defined below) were construed by the Court,
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`and are provided merely for the convenience of the parties and are not to be construed as
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`admissions or a waiver of other claim constructions that RGB may propose during the
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`Markman phase of this case. RGB reserves the right to seek leave to supplement or amend
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`these disclosures if its understanding of the claim terms change, including if the Court
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`further construes them.
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`
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`1.
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`Pursuant to P.R. 3-1(a), Plaintiff asserts that the Defendants currently
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`infringe and/or have infringed at least the following claims:
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`(a)
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`Defendants ABB, Inc. and ABB, Ltd (collectively “ABB”) currently
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`infringe and/or have infringed under one or more of 35 U.S.C. § 271 (a), (b), (c), (f) and (g)
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`(either individually, jointly, or jointly in concert with their customers such as
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`Meadwestvaco Texas, LP and Meadwestvaco Corporation (collectively, “Meadwestvaco”),
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`or by inducing and/or contributing to infringement by customers such as Meadwestvaco):
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`(i) claims 1-5 of United States Patent No. 6,513,058 (“the ‘058 Patent”); (ii) claims 1-10 of
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`United States Patent No. 6,516,236 (“the ‘236 Patent); (iii) claims 5-16 of United States
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`Patent No. 6,941,543 (“the ‘543 Patent”); and (iv) claims 16-30 and 46-59 of United States
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`Patent No. 8,073,557 (“the ‘557 Patent”).
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`3
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`Page 3 of 8
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`(b)
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`Defendant Meadwestvaco currently infringes and/or has infringed
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`under one or more of 35 U.S.C. § 271 (a), (b), (c), (f) and (g) (either individually, jointly, or
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`jointly in concert with ABB): (i) claims 1-5 of the ‘058 Patent; (ii) claims 1-10 of the ‘236
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`Patent; (iii) claims 5-16 of the ‘543 Patent; and (iv) claims 16-30 and 46-59 of the ‘557
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`Patent.
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`
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`2.
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`Pursuant to P.R. 3-1(e): (1) the asserted claims of the ‘058 Patent, claims 1-
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`9 of the ‘236 Patent, and the asserted claims of the ‘543 and ‘557 Patents are each entitled
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`to the benefit of the May 30, 1995 filing date of United States Application Serial No.
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`08/454,736, which issued as United States Patent No. 5,691,897; and (2) claim 10 of the
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`‘236 Patent is entitled to the benefit of the May 30, 1996 filing date of United States Patent
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`Application Serial No 08/656,421, which issued as United States Patent No. 5,867,385.
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`3.
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`Pursuant to P.R. 3-1(f), Plaintiff’s XMC software, when used alone or in
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`combination with third party hardware, such as third-party motion control devices,
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`computers, and other objects incorporates or reflects each of the asserted claims of the
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`‘058, ‘236, ‘543 and ‘557 Patents.
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`4.
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`Pursuant to P.R 3-1(b)-(d), Exhibits A-E identify which of the Accused
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`Instrumentalities infringe each asserted claim, as well as where each limitation of the claim
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`is literally found in the Accused Instrumentalities. To the extent that any of the limitations
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`in claims 7-10 of the ‘236 patent are governed by 35 U.S.C. § 112(6), Plaintiff’s expects
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`that ABB’s source code or other confidential information will be required to identity the
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`structure (i.e., software code) that performs the claimed function in the Accused
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`Instrumentalities. Based upon its review and analysis of publicly available documents,
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`Plaintiff asserts the claims are literally infringed. To the extent Defendants successfully
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`Page 4 of 8
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`argue that any of the limitations are not literally present in the Accused Instrumentalities,
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`the charts identify illustrative support for where the equivalent feature is found under the
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`doctrine of equivalents pursuant to the function-way-result and/or insubstantial differences
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`tests.
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`5.
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`As used herein and in the accompanying exhibits, the following terms have
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`the following meanings:
`
`(a)
`
`The term “Accused Instrumentalities” means Industrial System
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`800xA Systems, as defined further below.
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`(i)
`
`The term “Industrial System 800xA Systems” means the
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`systems and sub-systems described as such in Exhibits A-E and includes systems
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`incorporating one or more Industrial System 800xA Drivers and, depending upon the claim
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`at issue, one or more Industrial System 800xA Servers, one or more Industrial System
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`800xA Application Programs, and Industrial System 800xA Hardware, as further defined
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`below.
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`
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`(A)
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`The term “Industrial System 800xA” Server means
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`software identified as such in Exhibits A-E, including the software marketed by ABB as the
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`“Connectivity Server” and/or the “Real Time Database” and any software implementing
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`the same or similar functionality to that disclosed for Industrial System 800xA Servers in
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`Exhibits A-E;
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`(B)
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`The term “Industrial System 800xA Application
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`Program” means any application program that comprises hardware independent function
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`calls exposed by any Industrial System 800xA Server, which on information and belief
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`includes but is not necessarily limited to those application programs described in Exhibits
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`5
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`Page 5 of 8
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`A-E, including Industrial IT System 800xA Operations, System 800xA Smart Client,
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`System 800xA Engineering Tools, Panel 800, Compact HMI 800, the Aspect Server, and
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`all application programs based upon the Industrial System 800xA Systems including but
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`not limited to those application programs that offer the same or similar functionality to that
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`disclosed in Exhibits A-E and/or which are offered in the various industries and submarkets
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`listed
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`on
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`ABB’s
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`website
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`at
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`the
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`following
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`links:
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`http://www.abb.com/product/seitp334/102b314866674ccdc12572bb0031ea42.aspx.
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`(C)
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`The term “Industrial System 800xA Drivers” means
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`identified in Exhibits A-E, as well as any drivers that expose functions corresponding to
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`function calls made by any Industrial System 800xA Server, which on information and
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`belief includes but is not necessarily limited to Industrial System 800xA OPC Servers;
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`drivers for controllers such as AC800M, AC500, ACS800, IRC5; and drivers used by PLC
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`Connect or other architecturally equivalent interfaces that communicate with Industrial
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`System 800xA Hardware, as further defined below; and
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`(D)
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`The term “Industrial System 800xA Hardware”
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`means any hardware identified in Exhibits A-E as well as any controller or motion control
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`device hardware corresponding to any Industrial System 800xA Driver, which on
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`information and belief includes but is not necessarily limited to the AC800M, AC500,
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`ACS800, and IRC5, and any controllers and motion control devices for which an OPC
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`Server or equivalent architectural interface exists.
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`6
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`Page 6 of 8
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`
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`/s/ Richard S. Meyer
`William A. Isaacson
`D. Michael Underhill
`Richard S. Meyer
`BOIES, SCHILLER & FLEXNER LLP
`5301 Wisconsin Avenue, NW
`Washington, DC 20015
`Telephone: 202.237.2727
`Fax: 202.237.6131
`E-mail: wisaacson@BSFLLP.com
`E-mail: munderhill@BSFLLP.com
`E-mail: rmeyer@BSFLLP.com
`
`Lance Lubel
`Lead Attorney
`Texas State Bar No. 12651125
`Adam Voyles
`Lubel Voyles LLP
`5020 Montrose Blvd., 8th Floor
`Houston, Texas 77006
`Tel: (713) 284-5200
`E-mail: lance@lubelvoyles.com
`E-mail: adam@lubelvoyles.com
`
`Gregory P. Love
`Texas Bar No. 24013060
`STEVENS LOVE
`P. O. Box 3427
`Longview, Texas 75606-3427
`903.753.6760
`903.753.6761 (Fax)
`E-mail: greg@stevenslove.com
`
`Russell A. Chorush
`Texas State Bar No. 24031948
`HEIM, PAYNE & CHORUSH, L.L.P.
`JP Morgan Chase Tower
`600 Travis Street, Suite 6710
`Houston, Texas 77002
`Telephone: (713) 221-2000
`Fax: (713) 221-2021
`E-mail: rchorush@hpcllp.com
`
`Attorneys
`Corporation
`
`Plaintiff
`
`ROY-G-BIV
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`Dated: November 6, 2012
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`
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`for
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`7
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`Page 7 of 8
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`CERTIFICATE OF SERVICE
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`I hereby certify that on November 6, 2012, counsel of record for the parties are being
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`served a copy of the foregoing document via E-mail:
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`
`Michael E. Jones
`Allen F. Gardner
`POTTER MINTON
`A Professional Corporation
`110 N. College Ave., Suite 500
`Tyler, Texas 75702
`
`Steven M. Auvil
`BENESCH FRIEDLANDER
`COPLAN & ARONOFF LLP
`200 Public Square, Suite 2300
`Cleveland, Ohio 44114-2378
`
`
`/s/Patrick M. Lafferty____________
`Patrick M. Lafferty
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`Page 8 of 8
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