Free Motion in Limine - District Court of Colorado - Colorado

Case 1:04-cv-01769-MSK-CBS

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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 MEDICAL, 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 MOTION IN LIMINE TO PRECLUDE ARGUMENT AND EVIDENCE RELATING TO INFRINGEMENT BASED ON THE DOCTRINE OF EQUIVALENTS ______________________________________________________________________________ Plaintiff A Major Difference, Inc. ("AMD") hereby moves in limine to preclude Erchonia Medical, Inc., Erchonia Medical Lasers, L.L.C., Erchonia Patent Holdings, L.L.C. (collectively,

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"Erchonia") from introducing any argument and/or evidence at trial regarding patent infringement under the doctrine of equivalents. Erchonia has not presented any timely, reliable evidence in support of infringement under this doctrine and it has not followed this Court's requirement for factually supporting such a claim in the Parties' proposed Final Pre-Trial Order. Erchonia should be precluded from now asserting any argument and/or evidence at trial relating to infringement under this doctrine. I. BACKGROUND On July 15, 2005, AMD attempted to have Erchonia identify the factual basis of any claim, including any claim of patent infringement of U.S. Patent No. 6,746,473 ("the '473 Patent"). Specifically, AMD asked Erchonia to, inter alia, "[d]escribe in detail the factual basis of each claim, counterclaim, and defense asserted by Erchonia in its Answer, Counterclaims, and ThirdParty Complaint, and identify all documents concerning, referring or relating to same." (Erchonia Defendants' Responses to AMD's First Set of Discovery Requests, p. 2 (emphasis added), Ex. 5 to Declaration of Robert R. Brunelli, Esq., In Support of AMD's Motion for Summary Judgment of Non-infringement, Doc. #163.) After receiving an extension until August 31, 2005, Erchonia stated in response thereto, inter alia, that "[t]he specific ways in which the Quantum System Laser infringes the '473 Patent are set forth in Defendants' Response to Interrogatory No. 3, below." (Id. (emphasis added).) Interrogatory No. 3, in turn, had stated: [w]ith regard to Erchonia's claim that AMD's Quantum System Laser infringes the '473 Patent, identify the claim(s) that are alleged to be infringed by such product, and, on a claimby-claim basis, specifically identify the structure of the product that Erchonia contends to correspond to each limitation of each identified claim, and identify all documents concerning, referring or relating to same. 2

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(Id. (emphasis added).) Erchonia responded to Interrogatory No. 3 by providing a chart of alleged literal infringement of the asserted claims. (Id., pp. 9-15.) No facts supporting a claim of infringement under the doctrine of equivalents were included in Erchonia's response. On October 4, 2005, Erchonia even supplemented its responses to AMD's first set of discovery requests, but again did not include a breakdown of any facts supporting a claim under the doctrine of equivalents. Primary expert reports, which related to, inter alia, Erchonia's claims of infringement, were exchanged during October of 2005 and rebuttal reports were later exchanged by the December 9, 2005 Rule 26(a)(2) deadline. Nowhere in any of Erchonia's expert reports was the concept of infringement under the doctrine of equivalents explicitly discussed. In fact, to date, no expert report has been supplied by Erchonia in which infringement of the '473 Patent under the doctrine of equivalents has been specifically addressed. Discovery closed on December 20, 2005. (11/16/05 Minute Order, p. 2, Doc. #140.) On February 8, 2006 (i.e., almost two months after the deadline for rebuttal expert reports to be served), AMD filed its Motion for Summary Judgment of Noninfringement, arguing that Erchonia had waived any claim to infringement of the '473 Patent under the doctrine of equivalents. (2/8/06 AMD Motion For Summary Judgment of Noninfringement, p. 8, Doc. #162.) In response, Erchonia served its Second Supplemental Responses to AMD's First Set of Discovery Requests. In that document, Erchonia provided information allegedly supporting a claim for infringement under the doctrine. Importantly, that disclosure only concerned a single element of Claim 1 of the '473 Patent (i.e., if an optical arrangement is attached to the wand). (Erchonia Defendants' Second Supplemental Response To AMD's First Set of Discovery Requests, pp. 2-4, Ex. 18 to Defendants' Response to 3

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AMD's Motion for Summary Judgment, Doc. #164.) Erchonia also argued in its Response to AMD's Motion for Summary Judgment that it had not waived any claim for infringement of the '473 Patent under the doctrine of equivalents. (3/03/06 Defendants Amended Response to AMD's Motion for Summary Judgment, pp. 14-16, Doc. #173 ("3/03/06 Response").) Further, Erchonia argued that its Counterclaims sufficiently pled both claims of literal and doctrine of equivalents infringement. (Id. at 15.) In preparation for the upcoming trial, the Parties filed a initial, proposed Pre-Trial Order with the Court on August 23, 2006.1 Pursuant to this Court's June 1, 2005 Order, the Parties were to provide a separate enumeration of each claim to be tried. More importantly, the Parties were required to separately enumerate every element of each claim and identify each fact that will be offered to prove that element. (6/1/05 Pre-Trial Preparation and Trial Setting Order - Jury Trial (Civil), p. 3, Doc. #81.) The Court cautioned that a narrative statement would not be sufficient to satisfy this requirement and that "[a]ny claims . . . not specifically identified and supported as required will be deemed waived." (Id. (emphasis supplied).) Erchonia has not separately enumerated any claim of infringement under the doctrine of equivalents. (8/23/06 Parties' Proposed Final PreTrial Order.) Rather, Erchonia only provided a recitation of the literal elements of the claims at issue in the '473 Patent. (Id.) The Court held a pre-trial conference on September 6, 2006, made some determinations as to how the trial would proceed and instructed the Parties to submit a revised Pre-Trial Order by

Pursuant to D.C.COLO.LCivR 7.1A, Erchonia was informed of this Motion as evidenced by the reference thereto in the 8/23/06 Parties' proposed Final Pre-Trial Order. 4

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October 16, 2006. Erchonia, thus, had a second chance to separately enumerate and factually support any asserted claim under the doctrine of equivalents. As seen in the Parties' proposed Final Pre-Trial Order sent to the Court via e-mail on October 15, 2006, Erchonia has again failed to meet this requirement. (10/15/06 Parties Final Pre-Trial Order.) II. ARGUMENT Erchonia has argued that the Court must always conduct an infringement analysis under the doctrine of equivalents in determining whether infringement has occurred. (3/03/06 Response, p. 16.) This is simply untrue. As the Federal Circuit has repeatedly stated, the party asserting infringement under the doctrine of equivalents must "present evidence and argument concerning the doctrine and each of its elements." nCube Corp. v. SeaChange Int'l, Inc., 436 F.3d 1317, 1325 (Fed. Cir. 2006), quoting, Lear Siegler, Inc. v. Sealy Mattress Co. of Mich., Inc., 873 F.2d 1422, 1425 (Fed. Cir. 2006). "Particularized testimony and linking argument must be presented as to the 'insubstantiality of the differences' between the claimed invention and the accused device or process, or with respect to the function, way, result test when such evidence is presented to support a finding of infringement under the doctrine of equivalents." Texas Instruments Inc. v. Cypress Semiconductor Corp., 90 F.3d 1558, 1567 (Fed. Cir. 1996). Furthermore, such evidence must be presented on a limitation-bylimitation basis. Id. Erchonia cannot argue that its Counterclaims were broad enough to encompass both types of infringement and then not comply with this Court's June 1, 2005 standing directive to detail all factual bases for all of its claims and fail to produce any reliable, particularized testimony on the

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subject. Erchonia has waived its right to introduce any evidence and/or argument at trial of infringement under a doctrine of equivalents theory. Surely, Erchonia will argue that it has produced "evidence" on this issue through its Second Supplemental Responses to AMD's interrogatory requests. Such a position is a smoke screen. The responses were crafted in direct response to AMD's Motion for Summary Judgment and to address an overlooked evidentiary matter. The supplementation is untimely and should not be allowed. Erchonia had the chance to supplement its responses during the discovery time period, which it did in October of 2005. It wasn't until its evidentiary flaw was pointed out by AMD, did Erchonia scramble to address this issue. Erchonia's detailed Second Supplemental Responses evidence two things. First, there are separate factual bases for asserting its claim of infringement under the doctrine of equivalents that were not included in its initial response. Second, while Erchonia felt the need to present expert testimony in support of its position on literal infringement of the '473 Patent, there is no particularized expert testimony of record analyzing infringement under the doctrine of equivalents. For example, at least four major premises of the function-way-result test in Erchonia's Second Supplemental Responses are not supported by any citation to anyone of skill in the art: The function performed by the structure that consists of . . . is the fastening or securing of the optical assemblies to the wand assembly. ... This means is substantially equivalent to the set screws that fastened the optical assemblies to the hollow metal casing in the original version of the wand. ... This result achieved by the QSL's method of securing the optical assemblies to the wand assembly is substantially the same as fastening, securing, or joining them to the hollow metal

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casing directly, whether with set screws as in the earlier version (see STAR1080-STAR1081) or be some other means of direct attachment. ... This structure thus achieves substantially the same result as securing the optical arrangements directly to the hollow metal casing of the wand assembly. (Ex. 18 to 3/03/06 Response, p. 3.) Although it cites to Dr. Greivenkamp's expert testimony in support of some of its statements in its Second Supplemental Response, Erchonia is clearly trying to retroactively apply testimony generated solely for its claim of literal infringement. Such an attempt falls short of meeting Erchonia's burden of presenting "evidence and argument concerning the doctrine [of equivalents] and each of its elements." Lear, 873 F.2d at 1425, quoting, Nestier Corp. v. Menasha Corp. - Lewisystems Div., 739 F.2d 1576, 1579 (Fed. Cir. 1984). The fact that any presented evidence and argument on literal infringement may also bear on equivalence is also immaterial. Id. at 1425; see also Dynacore Holdings Corp. v. Philips Corp., 363 F.3d 1263, 1278 (Fed. Cir. 2004) (noting that even an expert's unsupported conclusion on issue of infringement would be insufficient). III. CONCLUSION Erchonia's current doctrine of equivalents story is simply too little too late. To be successful, Erchonia will have to argue that: (1) it was not required to identify all factual bases for all of its claims in its initial interrogatory responses (even though it now asserts that its counterclaims are broad enough to address both theories of infringement); (2) it is not required to present particularized expert evidence on this theory (even though it deemed it necessary to offer such evidence to support its literal infringement claim); and (3) most importantly, there was good cause not to detail the factual bases supporting its doctrine of equivalents infringement claim in, not one, but two versions 7

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of the proposed Final Pre-Trial Order (even though it has impliedly acknowledged that different bases exist, as evidenced by its Second Supplemental Response on the issue). Such unbelievable positions clearly contravene the requirements of full disclosure under the Federal Rules of Civil Procedure. On this record, Erchonia should not be permitted to introduce any evidence and/or argument pertaining to any claim of infringement under the doctrine of equivalents pursuant to Fed. R. Civ. P. 37(c)(1) and this Court's June 1, 2005 standing order. Respectfully submitted, Dated: October 16, 2006 By: s/ Robert R. Brunelli 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 this 16th day of October, 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 Robert R. Brunelli 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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