Free Statement - District Court of Arizona - Arizona

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Michael S. Rubin (#005131) David Bray (#014346) MARISCAL WEEKS MCINTYRE & FRIEDLANDER, PA 2901 North Central Avenue, Suite 200 Phoenix, Arizona 85012-2705 Robert R. Brunelli (#20070) Benjamin B. Lieb (#28724) SHERIDAN ROSS P.C. 1560 Broadway, Suite 1200 Denver, Colorado 80202-5141 Attorneys for Robert E. Moroney, LLC, Robert Moroney, and A Major Difference, Inc. IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF ARIZONA Erchonia Medical, Inc., et al. Plaintiffs, v. Miki Smith, et al. Defendants. Erchonia Medical, Inc., et al. ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) )

No. CIV 02-2036-PHX-MHM

17 Plaintiffs, 18 v. 19 Miki Smith, et al. 20 Defendants. 21 22 23 24 25 26 27 v. Erchonia Medical, Inc., et al. Defendants. Robert E. Moroney, LLC, et al. Plaintiffs,

ROBERT E. MORONEY'S AND ROBERT E. MORONEY LLC'S RESPONSE TO ERCHONIA MEDICAL, INC. AND KEVIN TUCEK'S STATEM ENT OF FACTS IN SUPPORT OF ITS R E S P O N S E T O CONSOLIDATED MOTION FOR SUMMARY JUDGMENT REGARDING INFRINGEMENT OF U.S. PATENT NO. 6,013,096

Robert Moroney ("Moroney") and Robert E. Moroney LLC (collectively "REM"), 28 hereby responds to Erchonia Medical, Inc. and Kevin Tucek's (collectively referred to hereinafter as "Erchonia") Statement of Facts in Support of Its Response to Consolidated Case 2:02-cv-02036-MHM Document 346 Filed 08/25/2006 Page 1 of 11

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Motion for Summary Judgement Re Infringement of U.S. Patent No. 6,013,096 ("E.S.O.F."), on a paragraph-by-paragraph basis: 1. REM admits that Kevin Tucek ("Tucek") is the named inventor of U.S.

Patent No. 6,013,096 ("the '096 Patent"), which purports to have issued on January 11, 2000, and is entitled "Hand-Held Laser Light Generator Device." 2. REM admits that Erchonia purports to be the exclusive licensee of the '096

Patent. However, Erchonia has not presented any evidence proving that any devices that it manufactures and distributes are "covered" by the '096 Patent. 3.-13. The allegations of Paragraphs 3-13 of E.S.O.F., including Erchonia's

relationship with Moroney and any FDA clearances Erchonia may have received are not relevant to any issue raised in REM's Consolidated Motion for Summary Judgment of Non-Infringement of the '096 Patent by the Quantum IV Laser (the "Motion"). 14. As set forth in Paragraph 14 of E.S.O.F., REM disputes that Miki Smith

displayed an alleged prototype of the Quantum IV Laser on behalf of REM at a trade show. The record establishes merely that a laser device was sent to Smith in New Orleans and that Smith delivered it to another individual for evaluation: Q: When you were at New Orleans, were you telling prospective buyers of equipment that they should wait to buy a laser, that there was a new, better, faster, cheaper laser coming on the market? No. Not at the seminar.

A: ... Q: A:

Were you sure you were not doing that at a break at the seminar at the hotel? No because I had to go up to the room. I wasn't feeling very good. I think that we had eaten some bad food the night before, and I had spent most of the day Saturday and part of the day Sunday in my room sleeping. Didn't you show Jack Hutchins a four diode head prototype at the hotel in your room? Jack saw it at Tony's office. I am asking specifically did you also show it to him at the hotel in your room?

23 24 25 26 A: 27 Q: 28 Q:

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A: Q: A: Q:

It was in my room in the hotel. How come you had it? Bob sent it to me. He wanted Tony to do a scan on it, to find out how good it was. Was Tony on the moon [sic]? Why couldn't Bob send it to Tony? Because he knew I was going to see Tony.

5 A: 6 ... 7 Q: 8 9 10 11 12 13 Q: 14 15 16 17 A: 18 Q: 19 A: 20 Q: 21 A: 22 Q: 23 A: 24 Q: 25 A: 26 Q: 27 28 A: A prototype. The purpose that you understood that he was sending you the laser was to go talk to Tony about the laser? Was it a good laser. He had just gotten it from England. Yeah. It was a prototype. One of Maroney's [sic] lasers? To myself. In care of whom? To the hotel. Where did he send it, to your knowledge? Yes. -- sent the laser to New Orleans? Yes. A: Q: That aside, you took one of Maroney's [sic] lasers with you to New Orleans to show Tony? He sent it down there, because he knew he had just gotten it. We have to break down some personal pronouns. "He" being Maroney [sic] -A: Q: A: So you were taking a laser to Tony to show him how a laser might be used? No. No? Tony is a little different, but he is very good at what he does. He taps into energy fields. He is an intuitive, and he doesn't know who is who or who is what, but he can tell you everything about your life without knowing you.

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Q: A:

He being Bob Maroney [sic] had just gotten it? Yes.

(July 8, 2005 Deposition of Miki Smith ("Smith 2005 Depo."), p. 171, l. 14 - p. 174, l. 10, Ex. D to E.S.O.F.). 15. REM does not dispute the statement in Paragraph 15 of E.S.O.F., but states

that the "two lasers from Flitton Engineers" were identical to the production version of Quantum IV Laser, except for the absence of a keyed-lock. (Declaration of Robert Moroney ("Moroney Dec. II"), ¶ 4, attached hereto as Ex. O; Smith 2005 Depo., p. 176, ll. 15-21, Ex. D to E.S.O.F.) 16.-20. Not disputed. 21. Flitton did not make any changes to the production version of the

Quantum IV Laser. (February 27, 2003 Deposition of Paul DeAngelis ("DeAngelis 2003 Depo."), p. 60, l. 14 - p. 62, l. 25, Ex. G to S.O.F.) 22.-25. The allegations of Paragraphs 22-25 of E.S.O.F., including alleged sales from Flitton to Aqua-Detox, the supply of any alleged prototype by Neil Bivens by Flitton, and any conversation between Bivens and Moroney are not relevant to any issue raised in the Motion. 26. REM is the only United States company that sold the production version

of the Quantum IV Laser. (DeAngelis 2003 Depo., pp. 113, l. 13-22, Ex. G to E.S.O.F.) Moroney has not personally sold any Quantum IV Lasers. (Moroney Dec., ¶ 8, Ex. A to S.O.F.) 27. REM disputes the allegations set forth in Paragraph 27 of E.S.O.F. The

production Quantum IV Laser uses only one type of laser diode module. (July 26, 2005 Deposition of Paul DeAngelis ("DeAngelis 2005 Depo."), p. 32, l. 5 - p. 33, l. 1; p. 37, ll. 11-25; p. 145, l. 6 - p. 149, l. 4, Ex. B to S.O.F.) These modules consist of a cylindrical housing with the semiconductor laser diode and a printed circuit board contained in one end, and a screw-in ferrule holding a single collimating lens in the other end. (Robinson Depo., p. 103, l. 16 - p. 105, l. 20 and Ex. 55 thereto, Ex. C to S.O.F.)

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28.

Flitton purchased all of the semiconductor laser diode modules utilized in

the production version of the Quantum IV Laser from Diode Laser Concepts. (DeAngelis 2005 Depo., p. 31, l. 24 - p. 32, l. 4, Ex. B to S.O.F.) 29. Concepts: LASER DIODE MODULE FAY-MS3-50 FAT-MS3-50 ("FAT" appears to be a typographical error. The description of these diode modules is identical to the FAY-MS3-50 diode modules.) FAY-FE3-50 FNY-RL3-19 (DeAngelis 2005 Depo., Ex. 2 thereto, Ex. B to S.O.F.) 30. REM disputes the allegations set forth in Paragraph 30 of E.S.O.F. First, QUANTITY 429 8 Flitton purchased the following laser diode modules from Diode Laser

75 22

these allegations are not relevant to the Motion. Furthermore, Mr. Robinson does not state that a rod lens generates a planar beam, but merely states that in 1999 a cylindrical lens could be used to create a line. (Robinson Depo., p. 74, ll. 15-21, Ex. J to E.S.O.F.) Robinson does not state that such a cylindrical lens generates a planar beam. (Id.) 31. The allegations set forth in Paragraph 31 of E.S.O.F. are directed towards

an alleged prototype of the Quantum IV Laser unit. These allegations are not relevant to REM's Motion. Additionally, there is no evidentiary support for the allegation that Mr. Smith demonstrated any laser for REM's benefit. (See Paragraph 14 above.) 32. REM disputes the allegations set forth in Paragraph 32 of E.S.O.F.

Erchonia mischaracterizes the deposition testimony of Mr. Smith. The passage Erchonia relies upon for this assertion is: Q: A: Wasn't the head size different between the prototype and the production? Do you remember that at all? I don't remember that.

(Smith 2005 Depo., p. 176, ll. 22-25, Ex. D to E.S.O.F.) Erchonia has presented no evidence that the alleged Quantum IV Laser prototype had a different head size than the -5Document 346 Filed 08/25/2006

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production version of the Quantum IV Laser. In fact, the only difference between the laser device Smith received in New Orleans and the production Quantum IV Laser was the absence of a keyed lock switch. (See Paragraph 15 above.) 33. 34. Admitted. REM admits the Quantum IV Laser is a hand-held laser generator device,

but disputes that it is used for medical therapy. The Quantum IV Laser is a "hand-held therapeutic laser." (DeAngelis 2005 Depo., p. 21, l. 25 - p. 22, l. 3, Ex. B to S.O.F.) 35. REM admits that the Quantum IV Laser units have a hand-held probe.

REM also admits that the probe handle is hollow. REM disputes that the probe is freely moveable because it is attached to the housing by a coil cord. (Moroney Dec., ¶ 5; DeAngelis 2005 Depo., p. 57, l. 16 - p. 60, l. 24, Ex. B to S.O.F.) 36. REM disputes the allegations set forth in Paragraph 36 of E.S.O.F. The

Quantum IV Laser generates four independent laser beams. Each beam is generated by a semiconductor laser diode module contained in the head of the probe. (Moroney Dec., ¶ 6, Ex. A to S.O.F.) 37. 38. Admitted. REM admits that the Quantum IV Laser has a battery inside the control

unit. (DeAngelis 2005 Depo., p. 59, l. 10-20, Ex. B to S.O.F.) 39.-41. The Quantum IV Laser includes a laser probe with a hollow tube handle and a solid head portion. (DeAngelis 2005 Depo., p. 57, l. 16 - p. 59, l. 9; p. 150, ll. 2-25, Ex. B to REM's S.O.F.; Moroney Dec., ¶ 6, Ex. A to S.O.F.) Within the solid head are four laser diode modules. (Id.) Inside the hollow tube handle are the wires connecting to the rear of the four laser diode modules. (Id.) The cord from the control unit enters the hollow tube handle of the probe through a gland that is screwed into the end of the handle. (Id.) 42. REM disputes that the start and stop buttons "start and stop the operation

of the machine." The front of the membrane keypad panel has numeric entry buttons and separate buttons for programming functions of the device, including separate 'start,' 'stop'

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and 'enter' buttons. (DeAngelis 2005 Depo., p. 60, l. 3 - p. 62, l. 22, Ex. B to S.O.F.; Moroney Dec., ¶ 5, Ex. A to S.O.F.) These tactile buttons have a normally open position and are protected with a vinyl overlay. (DeAngelis 2003 Depo., p. 30, l. 20 - p. 31, l. 3, Ex. G to E.S.O.F.; DeAngelis 2005 Depo., p. 135, l. 6 - p. 143, l. 7, Ex. B to S.O.F.) When pressed, the tactile buttons send a pulse signal to the microprocessor, which, in turn, has been programmed to control the operation of each of the laser diode modules. (DeAngelis 2005 Depo., p. 139, l. 5 - p. 142, l. 20, Ex. B to S.O.F.; Tucek Depo., p. 88, l. 5 - p. 89, l. 18, Ex. D to S.O.F.) To operate the Quantum IV Laser, the user presses the 'start' button on the keypad to turn on the lasers. (Moroney Dec., ¶ 7, Ex. A to S.O.F.) Once the set time has expired, the Quantum IV Laser automatically stops. (Id.) The user may also manually press the 'stop' button on the keypad to turn off the lasers. (Id.) Neither the 'start' or 'stop' buttons alone can singly control the activation and deactivation of the lasers. (Id.) 43. REM disputes the allegations set forth in Paragraph 43 of E.S.O.F. The

Quantum IV Laser has a programmable microprocessor. The microprocessor controls the operation of each of the laser diode modules. (DeAngelis 2005 Depo., p. 59, l. 10 - p. 63, l. 14, Ex. B to S.O.F.) The membrane keypad panel permits the user to manually enter the operating time. (Id., p. 62, ll. 16-22.) 44. REM disputes the allegations set forth in Paragraph 44 of E.S.O.F. First,

the deposition transcript that Erchonia relies upon does not establish that REM has described anything through A Major Difference, Inc. ("AMD"). Moreover, the record does not establish that AMD is a "related distribution company" of REM. Finally, the product description that Erchonia relies upon is plainly directed to AMD's Quantum System Laser, i.e., the "black" laser, not the Quantum IV Laser from Flitton Engineers. (Moroney 2005 Depo., p. 14, l. 15 - p. 17, l. 4; p. 54, l. 23 - p. 55, l. 8, attached hereto as Ex. P.) Erchonia's counsel is clearly aware of this distinction as he pointedly asked Moroney which laser product the description referred to. (Id.)

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45.

REM disputes the allegations set forth in Paragraph 45 of E.S.O.F. The

laser diode modules utilized in the Quantum IV Laser generate a laser beam having an elliptical spot shape. (Robinson Depo., p. 105, ll. 3-10, Ex. C to S.O.F.; DeAngelis 2005 Depo., p. 147, l. 16 - p. 148, l. 16, and Ex. 9 thereto, Ex. B to S.O.F.; Moroney Dec., ¶ 6, Ex. A to S.O.F.; Moroney Dec. II, ¶ 5.) Erchonia has also failed to present any evidence supporting the assertion that four to six inches is the "usual working distance for this type of device." Regardless, there is no such limitation in the asserted claims of the '096 Patent. (See S.O.F., ¶ 19.) 46. REM disputes the allegations set forth in Paragraph 46 of E.S.O.F. The

laser diode module referenced as Exhibit 51 in Mr. Robinson's deposition includes a four element lens. (Robinson Depo., Ex. 51 thereto, Ex. J to E.S.O.F.) Erchonia

mischaracterizes this statement by making a generalization that all semiconductor laser diode modules with only a single collimating lens would also generate an elliptical beam. 47. REM admits that Mr. Robinson stated a typical length to width ratio for

an elliptical beam from a semiconductor laser diode module. However, this statement is merely a generalization, not the rule that Erchonia implies. (Robinson Depo., p. 33, ll. 14-20, Ex. J to E.S.O.F.) 48. REM disputes the allegations set forth in Paragraph 48 of E.S.O.F. (See

Paragraph 44 above.) 49. Motion. 50. REM admits that Mr. Robinson has testified that a "TO can" may function The allegations set forth in Paragraph 49 are not relevant to REM's

as an aperture. However, Erchonia has not presented any evidence of any structure in the actual semiconductor laser diode module utilized in the Quantum IV Laser functions as an aperture or that the laser diode modules even have a "TO can." 51. Although Flitton's first invoice for Quantum IV Lasers sold to REM is

dated July 9, 2002, this invoice does not accurately reflect when REM received these two

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lasers from Flitton. Mr. Moroney purchased the lasers and brought them back to the United States in May or June of 2002. (Moroney Dec., ¶ 1, Ex. A to S.O.F.) 52. Semiconductor laser diodes emit a highly-divergent beam:

Not every laser produces a narrow beam of monochromatic, coherent light. Semiconductor diode lasers, for example, produce beams that spread out over an angle of 20 to 40°, hardly a pencil-thin beam. (Hecht, J., The Laser Guidebook, 2d Ed., 1992, p. 3, attached hereto as Ex. Q.) Tucek has admitted that semiconductor laser diodes emit a divergent beam. (Tucek Depo., p. 46, l. 14 - p. 48, l. 14, attached hereto as Ex. R.) Mike Robinson of Diode Laser Concepts, the manufacturer of the laser diode module utilized in the Quantum IV Laser, has also testified that all semiconductor laser diodes emit a divergent beam. (Robinson Depo., p. 43, ll. 8-25, attached hereto as Ex. S.) Erchonia's proffered expert in another lawsuit between Erchonia and AMD, John E. Greivenkamp, Ph.D., has opined that a general characteristic of semiconductor laser diodes is that they emit a divergent beam. (Expert Report of John E. Greivenkamp, Ph.D., ¶¶ 27-28, attached hereto as Ex. T.) 53. The laser beams emitted by the Quantum IV Laser are elliptically-shaped.

When shown against a surface, the spot shape cast by the emitted laser beams is elliptical. (Moroney Dec. II, ¶ 5, Ex. O hereto.) Further, the beams are divergent. (Id.) 54. The definition of "planar" is "of, relating to, or lying in a plane . . . (Webster's Ninth New Collegiate Dictionary, p. 898,

two-dimensional in quality."

attached hereto as Ex. U.) The definition of "rectangle" is "one with adjacent sides of unequal length." (Id., p. 985.) The definition of "rectangular" is "shaped like a rectangle . . . having edges, surfaces or faces that meet at right angles . . . having faces or surfaces shaped like rectangles." (Id.)

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Dated: August 25, 2006

Respectfully submitted,

By:

s/ Benjamin B. Lieb Michael S. Rubin David Bray MARISCAL WEEKS MCINTYRE & FRIEDLANDER, PA Robert R. Brunelli Benjamin B. Lieb SHERIDAN ROSS P.C. Attorneys for Robert E. Moroney, LLC, Robert Moroney, and A Major Difference, Inc.

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CERTIFICATE OF SERVICE I hereby certify that on August 25, 2006, I electronically transmitted or caused to be transmitted the attached ROBERT E. MORONEY'S AND ROBERT E. MORONEY LLC'S RESPONSE TO ERCHONIA MEDICAL, INC. AND KEVIN TUCEK'S STATEMENT OF FACTS IN SUPPORT OF ITS RESPONSE TO CONSOLIDATED MOTION FOR SUMMARY JUDGMENT REGARDING INFRINGEMENT OF U.S. PATENT NO. 6,013,096 to the Clerk's Office using the CM/ECF system for filing and transmittal of a Notice of Electronic Filing to the following ECF registrants: David Geoffrey Bray: [email protected], [email protected]

7 Michael S. Rubin: [email protected], [email protected] 8 Ray Kendall Harris: [email protected], [email protected] 9 Timothy R. Hyland: [email protected], [email protected], [email protected] 10 Steven Plitt: [email protected], [email protected], [email protected] 11 12 13 14 Michael Warzynski: [email protected], [email protected] 15 Scott A. Salmon: [email protected] 16 17 18 19 In addition, a copy of the above-referenced pleading was mailed to the following: 20 21 22 23 24 25 26 27 28 DATED THIS 25th day of August, 2006. By: s/ Benjamin B. Lieb Gale Peterson Cox Smith Matthews 112 E Pecan Street, Suite 1800 San Antonio, TX 78205-1521 Gordon Samuel Bueler Bueler Jones LLP 1300 N. McClintock Drive, #B-4 Chandler, AZ 85226 Gregory L. Miles Lori A. Curtis Davis Miles PLLC P.O. Box 15070 Mesa, AZ 85211-3070 Ira M. Schwartz: [email protected], [email protected], [email protected] Michael A. Cordier: [email protected], [email protected], [email protected] Dominic Lewis Verstegen: [email protected], [email protected], [email protected] Bradley R. Jardine: [email protected], [email protected], [email protected]

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