Free Reply to Response to Motion - District Court of Colorado - Colorado

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IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF COLORADO Civil Action No. 1:04-cv-01769-MSK-CBS A MAJOR DIFFERENCE, INC., a Colorado corporation, Plaintiff, v. ERCHONIA MEDICAL, INC., an Arizona corporation, ERCHONIA MEDICAL LASERS, L.L.C., an Arizona limited liability company, ERCHONIA PATENT HOLDINGS, L.L.C., an Arizona limited liability company, Defendants.

ERCHONIA PATENT HOLDINGS, L.L.C., an Arizona limited liability company, ERCHONIA MEDICAL, INC., an Arizona corporation, Counter-Claimants and Third-Party Plaintiffs, v. A MAJOR DIFFERENCE, INC., a Colorado corporation, ROBERT E. MORONEY, an individual, ROBERT E. MORONEY, L.L.C., a Colorado limited liability company, MIKI SMITH, an individual, KMS MARKETING, INC., a Colorado corporation, and STARGATE INTERNATIONAL, INC., a Colorado corporation, Counter-Defendants and Third-Party Defendants.

A MAJOR DIFFERENCE, INC.'S REPLY IN FURTHER SUPPORT OF ITS MOTION IN LIMINE TO PRECLUDE ARGUMENT AND EVIDENCE RELATING TO INFRINGEMENT BASED ON THE DOCTRINE OF EQUIVALENTS

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Erchonia's Response to Plaintiff's Motion In Limine to Preclude Argument and Evidence Relating to Infringement Based on the Doctrine of Equivalents ("Response") further demonstrates its willful noncompliance with this Court's June 1, 2005 Order and exposes its failure to timely introduce evidence on the issue of doctrine of equivalents into the current record. Hence, Plaintiff's Motion In Limine should be granted. As anticipated, Erchonia argues that this Court must conduct an infringement analysis under the doctrine of equivalents in order to determine whether infringement has occurred in this case. (Response, p. 7.) No such mandate exists. Erchonia has simply misconstrued the relevant case law. See, e.g., ACTV, Inc. v. Walt Disney Co., 346 F.3d 1082, 1094 (Fed. Cir. 2003) (explaining that an analysis of literal infringement for a means-plus-function claim limitation involving an equivalents analysis is not the same as a doctrine of equivalents analysis). Erchonia simply refuses to acknowledge that the Federal Circuit has consistently ruled that equivalency must be proven by particularized evidence and linking argument. Texas Instruments, Inc. v. Cypress Semiconductor Corp., 90 F.3d 1558, 1567 (Fed. Cir. 1996). Instead, it attempts to hide behind a dated ruling in National Presto to support its proposition that particularized testimony as to the function-way-result test is not required. (Response, pp. 9-10.) Five months after National Presto, however, a Federal Circuit panel emphasized that National Presto did nothing to change the requirement for particularized testimony. Texas Instruments, Inc., 90 F.3d at 1567. In fact, the panel ultimately found that there was no particularized expert testimony relating to the function and result portions of the doctrine of equivalents analysis and affirmed the district court's grant of JMOL. Id.

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at 1568 ("nor [was] there any particularized testimony explaining why the function and result [were] the same...."). Erchonia attempts to distinguish AMD's cited case law based on procedural bases, but has missed AMD's point ­ i.e., the record is devoid of any particularized "evidence" supporting Erchonia's afterthought of doctrine of equivalents infringement. Evidence and argument cannot merely be subsumed in Erchonia's case of literal infringement. nCube Corp. v. Sea Change Int'l, Inc., 436 F.3d 1317, 1325 (Fed. Cir. 2006). Evidence and argument must be presented concerning the doctrine and each of its elements. Id.; Texas Instruments, Inc., 90 F.3d at 1567 (stating that evidence must be provided on a limitation-by-limitation basis). As the Federal Circuit aptly noted, if this were not the case, the fact-finder would not have an analytical framework for making its decision and would be "put to sea without guiding charts when called upon to determine infringement under doctrine [of equivalents]." Texas Instruments, Inc., 90 F.3d at 1567. Erchonia's rationale for not complying with this Court's June 1, 2005 Order is equally unpersuasive. As Erchonia acknowledged, its patent claim potentially encompasses two different theories of infringement and yet, it failed to separately enumerate each alleged claim in its portion of the October 15, 2006 Parties' Final Pre-Trial Order. Infringement under the doctrine of equivalents requires an intensely factual inquiry. Leggett & Platt, Inc. v. Hickory Springs Mfg. Co., 285 F.3d 1353, 1357 (Fed. Cir. 2002), citing, Vehicular Techs. Corp. v. Titan Wheel Int'l, Inc., 212 F.3d 1377, 1381 (Fed. Cir. 2000). Erchonia made this very point in response to AMD's Motion for Summary Judgment. (See Doc. #173, 3/03/06 Response, p. 16.) Nonetheless, it attempts for the third time to introduce almost two pages of unsupported argument as to why it believes the 3

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function-way-result test has been met. (See Response, pp. 6-7.) Integral statements like, "[t]he function performed by this structure is the fastening or securing of the optical assemblies" are simply not supported by any "evidence" of record. (Id.) This is not surprising, however, as there is no expert or other testimony on this issue, an issue which was only brought to the foreground after expert discovery ended and in direct response to AMD's Motion for Summary Judgment. Should Erchonia be allowed to present argument under this doctrine, AMD will be prejudiced as it is unclear what "evidence" will be used to support such a claim. It should not be permitted to initially argue that infringement through equivalence is highly factual and then hide the "evidence" that supports those facts. The purpose of the Final Pre-Trial Order was to frame all of the claims at issue and to cite all facts supporting each element of each claim for the Parties so that there were no surprises. As this Court has also recognized, particularized testimony and linking argument as to the doctrine of equivalents are required and such evidence must be presented on a limitation-by-limitation basis. Medtronic Navigation, Inc. v. Brainlab Medizinische

Computersystems GmbH, 417 F. Supp. 2d 1188, 1211 (D.Colo. 2006), citing, Network Commerce, Inc. v. Microsoft Corp., 422 F.3d 1353, 1363 (Fed. Cir. 2005). This was not done. Erchonia's claim under the doctrine of equivalents was clearly an afterthought. Erchonia felt the need to introduce expert testimony on the issue of literal infringement and now argues that the more involved argument of infringement through equivalence does not warrant such testimony. This is a red herring. Erchonia was given ample opportunity to introduce evidence on this issue and it didn't. Based on the foregoing, AMD respectfully requests that its Motion In Limine be granted in its entirety. 4

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Respectfully submitted,

Dated: November 20, 2006

By:

s/ Scott R. Bialecki Robert R. Brunelli [email protected] Benjamin B. Lieb [email protected] Scott R. Bialecki [email protected] Paul S. Cha [email protected] SHERIDAN ROSS P.C. 1560 Broadway, Suite 1200 Denver, CO 80202-5141 Telephone: 303-863-9700 Facsimile: 303-863-0223 E-mail: [email protected] ATTORNEYS FOR A MAJOR DIFFERENCE, INC., ROBERT E. MORONEY, ROBERT E. MORONEY, L.L.C., MIKI SMITH, KMS MARKETING, INC. AND STARGATE INTERNATIONAL, INC.

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CERTIFICATE OF SERVICE

I hereby certify that on November 20, 2006, I electronically filed the foregoing with the Clerk of Court using the CM/ECF system which will send notification of such filing to the following e-mail addresses: Richard L. Gabriel, Esq. [email protected] Holme Roberts & Owen, LLP 1700 Lincoln Street, Suite 4100 Denver, Colorado 80203, John R. Mann, Esq. [email protected] Charles R. Ledbetter, Esq. [email protected] Valerie A. Garcia, Esq. [email protected] Kennedy Childs & Fogg, P.C. 1050 17th Street, Suite 2500 Denver, Colorado 80265 Ira M. Schwartz, Esq. [email protected] DeConcini McDonald Yetwin & Lacy, P.C. 7310 N. 16th Street, Suite 330 Phoenix, Arizona 85020 s/ Kristin M. Heil Kristin M. Heil Assistant to Scott R. Bialecki SHERIDAN ROSS P.C. 1560 Broadway, Suite 1200 Denver, CO 80202-5141 Telephone: 303-863-9700 Facsimile: 303-863-0223 E-mail: [email protected] [email protected]
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