Free Proposed Jury Instructions - 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.

AMD PARTIES' PROPOSED SPECIAL JURY INSTRUCTIONS AND SPECIAL VERDICT FORM

Pursuant to the Court's September 6, 2006 Order, Plaintiff A Major Difference, Inc., and Counter-Defendants and Third-Party Defendants A Major Difference, Inc., Robert E. Moroney,

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Robert E. Moroney, L.L.C., Miki Smith, KMS Marketing, Inc. and Stargate International, Inc. (collectively "AMD Parties") respectfully submit their Proposed Special Jury Instructions and Special Verdict Form. I. AMD's Proposed Special Jury Instructions And Special Verdict Form

AMD Parties respectfully submit the following Proposed Special Jury Instructions and Special Verdict Form:

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_____ Stipulated; Tendered by: _____ Plaintiff INSTRUCTION NO. _____ CORROBORATION

X

Defendant

Erchonia asserts that the "invention" date for asserted claims set forth in the '473 Patent should not be August 1, 2001 (the Patent filing date), but should instead be June 2000. To be entitled to that earlier invention date, Erchonia must persuade you that it is highly probable the inventors first conceived and then reduced each of the claimed inventions to practice by June 2000. To meet its burden of proof, Erchonia must present evidence corroborating that the inventors in fact conceived and reduced to practice the inventions set forth in Claims 1-6 and 9-11 of the '473 Patent by June 2000. Corroborative evidence is generally defined as additional evidence over and above the testimony of inventors and tending to prove the same point or fact of conception and reduction to practice. Generally, such evidence will include dated documents or things and/or third party testimony. Inventor testimony alone cannot, standing alone, rise to highly probable evidence sufficient to prove conception and reduction to practice. A "rule of reason" analysis is applied to determine whether a claimed inventor's testimony concerning a date of conception and reduction to practice has been corroborated. Factors for determining sufficient corroboration are: (1) the delay between the event and trial; (2) the interests of a corroborating witness; (3) the impact of the invention on the industry; and (4) the relationship between a corroborating witness and the claimed inventor. I will now discuss the specific requirements for the prior art categories relied upon by the AMD Parties. Authorities 35 U.S.C. §101; 35 U.S.C. §115; University of Colorado Foundation, Inc. v. American Cyanamid Co., 342 F.3d 1298, 68 U.S.P.Q.2d 1120, (Fed. Cir. 2003); Hasselstrom v. McKusick, 51 C.C.P.A. 1008, 324 F.2d 1013, 139 U.S.P.Q. 511, (C.C.P.A. 1963); Ethicon, Inc. v. U.S. Surgical Corp., 937 F.Supp. 105, 1304 (D. Conn. 1996), aff'd, 135 F.3d 1456 (Fed. Cir. 1998), cert. Denied, 119 S. Ct. 278 (1998); Price v. Symek, 988 F.2d 1187, 1195 (Fed. Cir. 1993).

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_____ Stipulated; Tendered by: _____ Plaintiff INSTRUCTION NO. _____

X

Defendant

PRIOR ART ­ ON-SALE OR OFFERED FOR SALE MORE THAN ONE YEAR BEFORE THE APPLICATION WAS FILED In this case, the AMD also asserts that devices were sold and offered for sale more than one year before the filing date of the application for the '473 Patent and claims that those devices constitute invalidating prior art. The sale or offer for sale in the United States of a product may be prior art to a patent claim if the product was sold or offered for sale more than one year before the application for the patent was filed. Even a single offer for sale to a single customer may be a commercial offer, even if the customer does not accept the offer. The date of invention for the patent claims is irrelevant to this category of prior art. In order for there to be an offer for sale, two requirements must be met. First the product must have been the subject of a commercial offer for sale. Second, the product must be "ready for patenting." An invention is ready for patenting if the product offered for sale has been developed to the point where there was reason to expect that it would work for its intended purpose. The product may be ready for patenting even if it is not ready for commercial production, or has not been technically perfected. Authorities Pfaff v. Wells Elecs., Inc., 525 U.S. 55 (1998); Space Systems/Loral, Inc. v. Lockheed Martin Corp., 271 F.3d 1076, 1080 (Fed. Cir. 2001); Scaltech, Inc. v. Retech/Tetra, LLC, 269 F.3d 1321 (Fed. Cir. 2001); Group One, Ltd. v. Hallmark Cards, Inc., 254 F.3d 1041, 1046-47 (Fed. Cir. 2001); Robotic Vision Sys., Inc. v. View Eng'g, Inc., 249 F.3d 1307 (Fed. Cir. 2001); Monon Corp. v. Stoughton Trailers, Inc., 239 F.3d 1253, 1257-6 1 (Fed. Cir. 2001); Vanmoor v. Wal-Mart Stores, Inc., 201 F.3d 1363, 1366 (Fed. Cir. 2000); STX, LLC v. Brine, Inc., 211 F.3d 588, 590 (Fed. Cir. 2000); Zacharin v. United States, 213 F.3d 1366, 1370 (Fed. Cir. 2000); Brasseler, U.S.A.I., L.P. v. Stryker Sales Corp., 182 F.3d 888, 889 (Fed. Cir. 1999); Cont'l Plastic Containers v. Owens Brockway Plastic Prods., Inc., 141 F.3d 1073, 1077 (Fed. Cir. 1998); D.L. Auld Co. v. Chroma Graphics Corp., 714 F.2d 1144, 1147 (Fed. Cir. 1983); WL. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1548-50 (Fed. Cir. 1983).

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IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF COLORADO Civil Action No. 1:04-cv-1769-MSK-CBS A MAJOR DIFFERENCE, INC., a Colorado corporation, Plaintiff, vs. ERCHONIA MEDICAL, INC., an Arizona corporation, ERCHONIA MEDICAL LASERS, L.L.C., an Arizona limited liability company, and ERCHONIA PATENT HOLDINGS, L.L.C., an Arizona limited liability company, Defendants.

ERCHONIA PATENT HOLDINGS, LLC, an Arizona limited liability company; ERCHONIA MEDICAL INC., an Arizona corporation, Counterclaimants and Third-Party Plaintiffs, vs. 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, INCORPORATED, a Colorado corporation, and STARGATE INTERNATIONAL INC., a Colorado corporation, Counterdefendant and Third-Party Defendants.

(PLAINTIFF'S PROPOSED) SPECIAL VERDICT FORM

Please answer the following questions and proceed as directed:

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PART I ­ INVALIDITY 1. Which of the following claims, if any, of the '473 patent do you find invalid (indicate

invalidity by placing an "X" next to each invalid claim): Claim 1 Claim 2 Claim 3 Claim 4 Claim 5 Claim 6 Claim 9 Claim 10 Claim 11 If you found all claims invalid, please turn to the last page of this Special Verdict Form, have each Juror sign the Form and then return the Form to the Court Bailiff. If, however, you have found one or more claims not invalid, continue to Part II.

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PART II ­ DIRECT INFRINGEMENT 2.a. Does the original Quantum System Laser sold by AMD, KMS and Stargate infringe

one or more valid claims of the '473 patent? Yes No

If your answer to 2.a. is "No," skip to Question 3.a. If, however, you have found one or more claims infringed, then continue with Question 2.b.

2.b.

If your answer to 2.a. is "Yes," indicate which of the following claims are infringed: Claim 1 Claim 2 Claim 3 Claim 4 Claim 5 Claim 6 Claim 9 Claim 10 Claim 11

2.c.

If your answer to Question No. 2.a. is "Yes," please state the amount of damages to

be awarded for: AMD's infringing sale of the original Quantum System Laser $ KMS's infringing sale of the original Quantum System Laser $

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Stargate's infringing sale of the original Quantum System Laser $

2.d.

If your answer to Question No. 2.a. is "Yes": Do you find AMD's infringement of the '473 patent was willful? Yes No

Do you find Stargate's infringement of the '473 patent was willful? Yes No

Do you find KMS's infringement of the '473 patent was willful? Yes No

3.a.

Does the revised Quantum System Laser sold by AMD, KMS and Stargate infringe

one or more valid claims of the '473 patent? Yes No

If your answer to 3.a. is "No," skip to Question 4.a. If, however you have found one or more claims infringed, then continue with Question 3.b.

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3.b.

If your answer to 3.a. is "Yes," indicate which of the following claims are infringed: Claim 1 Claim 2 Claim 3 Claim 4 Claim 5 Claim 6 Claim 9 Claim 10 Claim 11

3.c.

If your answer to Question No. 3.a. is "Yes," please state the amount of damages to

be awarded for: AMD's infringing sale of the revised Quantum System Laser $ KMS's infringing sale of the revised Quantum System Laser $ Stargate's infringing sale of the revised Quantum System Laser $

3.d.

If your answer to Question No. 3.a. is "Yes": Do you find AMD's infringement of the '473 patent was willful? Yes No

Do you find Stargate's infringement of the '473 patent was willful? Yes No 9

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Do you find KMS's infringement of the '473 patent was willful? Yes No

4.a.

Does the Excalibur Laser sold by AMD, KMS and Stargate infringe one or more valid

claims of the '473 patent? Yes No

If your answer to 4.a. is "No," please turn to the last page of this Special Verdict Form, have each Juror sign the Form, and then return the Form to the Court Bailiff. If, however, you have found one or more claims infringed, then continue with Question 4.b.

4.b.

If your answer to 4.a. is "Yes," indicate which of the following claims are infringed: Claim 1 Claim 2 Claim 3 Claim 4 Claim 5 Claim 6 Claim 9 Claim 10 Claim 11

4.c.

If your answer to Question No. 4.a. is "Yes," please state the amount of damages to

be awarded for: AMD's infringing sale of the Excalibur Laser $ 10

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KMS's infringing sale of the Excalibur Laser $ Stargate's infringing sale of the Excalibur Laser $

4.d.

If your answer to Question No. 4.a. is "Yes": Do you find AMD's infringement of the '473 patent was willful? Yes No

Do you find Stargate's infringement of the '473 patent was willful? Yes No

Do you find KMS's infringement of the '473 patent was willful? Yes No

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PART III ­ INDUCED INFRINGEMENT 5.a. '473 patent? Yes No Did Robert E. Moroney actively induce infringement of one or more claims of the

5.b.

If your answer to Question No. 5.a. is "Yes," please state the amount of damages to

be awarded to Defendants for Robert E. Moroney's infringement: $

5.c.

If your answer to Question No. 5.a. is "Yes," do you find that Robert E. Moroney's

infringement was willful? Yes No

6.a.

Did Robert E. Moroney, LLC actively induce infringement of one or more claims of

the '473 patent? Yes No

6.b.

If your answer to Question No. 6.a. is "Yes," please state the amount of damages to

be awarded to Defendants for Robert E. Moroney, LLC's infringement: $

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6.c.

If your answer to Question No. 6.a. is "Yes," do you find that Robert E. Moroney,

LLC's infringement was willful? Yes No

7a. patent?

Did Miki Smith actively induce infringement of one or more claims of the '473

Yes

No

7.b.

If your answer to Question No. 7.a. is "Yes," please state the amount of damages to

be awarded to Defendants for Miki Smith's infringement: $

7.c.

If your answer to Question No. 7.a. is "Yes," do you find that Miki Smith's

infringement was willful? Yes No

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Please sign this Special Verdict Form on the signature lines provided below.

Foreperson

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Respectfully submitted,

Dated: October 16, 2006

By:

s/ Paul S. Cha 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 October 16, 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 Paul S. Cha 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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