Free Reply in Support of Motion - 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,

REPLY IN FURTHER SUPPORT OF ROBERT MORONEY'S AND ROBERT E. MORONEY LLC'S CONSOLIDATED MOTION FOR SUMM ARY JUDGMENT OF NON-INFRINGEMENT OF U.S. PATENT NO. 6,013,096

Robert Moroney ("Moroney") and Robert E. Moroney LLC ("REM") (Moroney and 28 REM collectively referred to hereinafter as "REM"), by and through the undersigned counsel, hereby Reply in further support of REM's Consolidated Motion for Summary Case 2:02-cv-02036-MHM Document 345 Filed 08/25/2006 Page 1 of 11

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Judgment of Non-Infringement of U.S. Patent No. 6,013,096 (the "Motion"). This Reply is supported by REM's contemporaneously-filed Response to Erchonia Medical, Inc. and Kevin Tucek's Statement of Facts in Support of its Response to Consolidated Motion for Summary Judgement Regarding Infringement of U.S. Patent No. 6,013,096 ("R.S.O.F."). I. INTRODUCTION On August 4, 2006, Erchonia Medical, Inc. ("Erchonia") and Kevin Tucek ("Tucek") (Erchonia and Tucek collectively referred to hereinafter as "Erchonia") filed a Response in Opposition to AMD's Motion ("Response"), along with its Statement of Facts in support thereof ("E.S.O.F."). Erchonia's Response fails to establish any genuine issue of material fact with respect to the issues raised in REM's Motion. REM is entitled to summary judgment that the Quantum IV Laser does not infringe the asserted claims of U.S. Patent No. 6,013,096 ("the '096 Patent) for any one or more of the numerous reasons set forth below and in its Motion. II. FURTHER ARGUMENT In view of Erchonia's Response, there is no genuine issue of material fact that the approximately sixty production Quantum IV Lasers sold by REM in the United States do not infringe the asserted claims of the '096 Patent.1 A. There Is No Genuine Issue Of Material Fact That The Semiconductor Laser Diodes In The Quantum IV Laser Emit Divergent Beams

Limitation (b) of Claim 1, as construed, requires that the laser within the device generate a "narrow beam." (S.O.F., ¶ 19.) Erchonia asserts only literal infringement of limitation (b), including as a statutory equivalent under 35 U.S.C. § 112(6). (Id.) REM

As noted in REM's Motion, Erchonia recently asserted that alleged prototypes to the Quantum IV Laser were imported and used by REM in the United States. (Motion, p. 2, n. 1.) Although REM expressly excluded these alleged prototypes as a subject of the Motion, Erchonia devotes a substantial portion of its Response to the alleged prototypes. In doing so, Erchonia appears to be attempting to cloud the issues presented for decision in the Motion. REM requests that the Court ignore Erchonia's tactics. To be sure, AMD's Motion is directed solely to the approximately sixty production Quantum IV Lasers sold by REM in the United States, and does not seek any decision with respect to the two or three alleged prototypes that Erchonia claims were "used and demonstrated in the U.S. by REM." (Response, p. 7.) -2Document 345 Filed 08/25/2006

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asserts that Erchonia has no evidence that the semiconductor laser diode within the laser diode modules utilized with the Quantum IV Laser generates a narrow beam. (Motion, pp. 15-16). Erchonia effectively concedes this assertion by merely arguing that laser light, by definition, is a narrow beam. (Response, p. 6, n. 1.) Erchonia is wrong. According to The Laser Guidebook, semiconductor laser diodes emit a highly-divergent beam, not a narrow 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. (R.S.O.F., ¶ 52.) Three potential witnesses in this action, including Tucek himself, have acknowledged that semiconductor laser diodes emit a divergent beam. (Id.) Erchonia has presented no contradictory evidence ­ the mere footnote argument by Erchonia's counsel is insufficient to establish a genuine issue of material fact on this issue. Vivid Tech., Inc. v. Am. Science & Eng'g, Inc., 200 F.3d 795, 812 (Fed. Cir. 1999). There is no genuine issue of material fact that the semiconductor laser diode within the laser diode modules utilized with the Quantum IV Laser emits a divergent beam. As such, the Quantum IV Laser cannot literally infringe the "narrow beam" limitation. Furthermore, Erchonia has failed to present any evidence that a divergent beam is a statutory equivalent to a "narrow beam." This failure alone warrants summary judgment. Cf. Lear Siegler, Inc. v. Sealy Mattress Co. of Mich., Inc., 873 F.2d 1422, 1425 (Fed. Cir. 1989) ("The party asserting infringement must present 'evidence and argument concerning the doctrine and each of its elements.' The evidence and argument on the doctrine of equivalents cannot merely be subsumed into plaintiff's case of literal infringement.") B. Erchonia Has Waived Literal Infringement Of The "Substantially Planar" Limitation

Limitation (c) of Claim 1 requires that the claimed device emit a "substantially 25 planar" laser beam. (S.O.F., ¶ 19.) Erchonia has expressly waived literal infringement 26 with respect to this limitation, asserting infringement only under the doctrine of 27 equivalents. (Id.) However, AMD has demonstrated that prosecution history estoppel 28 precludes the application of the doctrine of equivalents as to this limitation. (Motion, -3Document 345 Filed 08/25/2006

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pp. 14-15.) Erchonia concedes this point, failing to address it whatsoever.2 Instead, Erchonia now argues literal infringement of this limitation. (Response, p. 9.) Erchonia is precluded from doing so. Mass. Institute of Tech. v. Lockheed Martin Global Tele., Inc., 251 F. Supp. 2d 1006, 1011-12 (D. Mass. 2003); Powell v. Storz Opthalmics, Inc., No. 93-1204, 1994 U.S. Dist. LEXIS 20202, *13-15 (M.D. Fla. June 6, 1994). C. Erchonia Has Failed To Establish A Genuine Issue Of Material Fact As To The Laser Beam Shape Emitted By The Quantum IV Laser

Even if the Court considers literal infringement of the "substantially planar" limitation, Erchonia has failed to establish a genuine issue of material fact with respect to this issue. REM presents overwhelming evidence that the laser beams emitted by the Quantum IV Laser are elliptically-shaped, not substantially planar. Specifically, Messrs. Robinson, Moroney and Paul DeAngelis, the designer and manufacturer of the Quantum IV Laser, have all testified that the laser diode module utilized in the Quantum IV Laser emits an elliptically-shaped beam. (S.O.F., ¶ 5.) Indeed, when shown against a surface, the spot shape cast by the emitted laser beam is plainly elliptical. (R.S.O.F., ¶ 53.) The spot shape size increases as the device is moved further away from the surface, indicating that the laser beam is also divergent. (Id.) This elliptical shape and divergence of the beam indicates that the laser beam is not planar, i.e., two-dimensional in quality. (R.S.O.F., ¶¶ 53-54.) The Court may observe for itself, from the actual Quantum IV Laser devices submitted by the parties for review, that the emitted laser beams are elliptically-shaped and divergent. Erchonia does not argue that an elliptically-shaped laser beam literally satisfies the "substantially planar" limitation. Instead, Erchonia attempts to create a factual issue by

Indeed, Erchonia has not presented any evidence that would establish that the laser beam emitted by the Quantum IV Laser, whatever its shape, satisfies the "substantially planar" limitation under the doctrine of equivalents. This is yet another failure of proof warranting summary judgment. Lear Siegler, Inc., 873 F.2d at 1425. -4Document 345 Filed 08/25/2006

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claiming that a single Quantum IV Laser that Tucek has allegedly examined emits a rectangularly-shaped beam.3 (Response, p. 9.) Tucek's conclusory assertion is insufficient as a matter of law to create a genuine issue of material fact. Tucek provides no evidence corroborating his alleged observations, including any photographs, drawings or diagrams of the beam shape he claims to have observed, how his examination was performed, or any documentation or description detailing how he managed to perform his measurements. (See E.S.O.F., ¶ 45.) Without this information, Tucek's testimony amounts to bare assertion. TechSearch LLC v. Intel Corp., 286 F.3d 1360, 1371-72 (Fed. Cir. 2002) (general factual assertions, general denials and conclusory statements insufficient to shoulder non-movant's burden); Union Carbide Corp. v. Am. Can Co., 724 F.2d 1567, 1571-72 (Fed. Cir. 1984) (witness testimony without factual support must be discounted on summary judgment). Moreover, Tucek admits that the distance at which he measured the laser beam shape is insufficient to establish its actual shape: "[A]t this distance the width of the beam did not appear to vary at any point in the length of the generated beam." (E.S.O.F., ¶ 45.) When observed at a further distance, the laser beam is enlarged sufficiently by divergence to observe that the beam shape is, in fact, elliptical. (R.S.O.F., ¶ 53.) No reasonable jury could conclude otherwise. TechSearch LLC, 286 F.3d at 1371 (summary judgment appropriate where apparent that only one conclusion as to infringement can be reached by reasonable jury). Alternatively, Tucek's testimony establishes that the Quantum IV Laser does not infringe the '096 Patent. A rectangularly-shaped beam is literally not planar, i.e.,

two-dimensional in quality. (R.S.O.F., ¶ 54.) No reasonable jury could so conclude. TechSearch LLC, 286 F.3d at 1371.

Erchonia disingenuously claims that the marketing literature for A Major Difference, Inc. describes the laser beam emitted by the Quantum IV Laser as being a "very concentrated line." (Response, p. 8.) Erchonia and its counsel know well that this literature refers to a different product named the "Quantum System Laser" (a/k/a the black laser) that is not at issue in the present action. (R.S.O.F., ¶ 44.) -5Document 345 Filed 08/25/2006

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Erchonia has failed to establish a genuine issue of material fact as to whether the Quantum IV Laser emits an elliptically-shaped, divergent beam that does not literally satisfy the "substantially planar" limitation. D. Erchonia Has Waived Literal Infringement Of The "Optical Arrangement" Limitation

Erchonia has expressly waived literal infringement with respect to the "optical 6 arrangement" limitation, asserting only doctrine of equivalents infringement. (S.O.F., 7 ¶ 19.) REM has demonstrated, however, that application of the doctrine of equivalents to 8 this limitation is precluded by the "all limitations" rule. (Motion, pp. 13-14.) Erchonia 9 does not address this argument, tacitly conceding no doctrine of equivalents infringement. 10 Instead, Erchonia now speculates that this limitation could be literally satisfied because 11 there might be some other structure within the laser diode module acting as a second 12 optical device. (Response, pp. 7-8.) As with the "substantially planar" limitation, 13 Erchonia is precluded from asserting literal infringement. Mass. Institute of Tech., 251 14 F. Supp. 2d at 1011-12; Powell, 1994 U.S. Dist. LEXIS 20202, at *13-15. 15 E. 16 17 18 19 20 21 22 23 24 25 26 27 28 Erchonia Has Failed To Establish A Genuine Issue Of Material Fact As To The "Transforming" Limitation

Limitation (c) of Claim 1 requires that the beam emitted by the laser be transformed by the optical arrangement. (S.O.F., ¶ 19.) Erchonia has expressly waived literal infringement with respect to this limitation, asserting that this limitation is infringed only under the doctrine of equivalents. (Id.) Erchonia is precluded from asserting literal infringement of the "transforming" limitation. Mass. Institute of Tech., 251 F. Supp. 2d at 1011-12; Powell, 1994 U.S. Dist. LEXIS 20202, at *13-15. Nevertheless, Erchonia now asserts literal infringement, theorizing that because a "typical" semiconductor laser diode would emit an elliptically-shaped beam, and because Tucek claims to have observed a rectangularly-shaped beam, that the structure of the laser diode module might be acting as a second optical device. (Response, p. 8; "[I]t is probable that this shape is created from the effect of the laser diode module TO can or housing.")

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There are at least three errors to Erchonia's theory. First, Erchonia has no evidence that the semiconductor laser diode utilized in the Quantum IV Laser has the "typical" length to width ratio or that the actual beam shape emitted by that semiconductor laser diode is different than the beam emitted from the module. Indeed, Erchonia ignores the only evidence of how the laser diode module utilized in the Quantum IV Laser actually operates. Mr. Robinson of Diode Laser Concepts has testified that the laser beam emitted by that semiconductor laser diode is elliptical prior to passing through the single collimating lens and remains unchanged after passing therethrough. 4 (S.O.F., ¶ 5.) Second, Erchonia's theory hinges upon Tucek's conclusory and unreliable assertion of the emitted beam shape. Third, and most importantly, Erchonia has failed to come forth with any evidence that the structure of its theoretical laser diode module satisfies the "transforming" limitation under the doctrine of equivalents. This alone is another

evidentiary failure warranting summary judgment. Lear Siegler, Inc., 873 F.2d at 1425. F. The Semiconductor Laser Diodes Of The Quantum IV Laser Are Not Mounted In The Interior Cavity Of The Probe Of The Quantum IV Laser

Limitation (a) of Claim 1 requires a "hand-held wand, which is considerably longer than its width, which is in the form of a hollow tube that defines an interior cavity." (S.O.F., ¶ 19, emphasis added.) Limitation (b) of Claim 1 requires the laser to be mounted in that interior cavity. (Id.) In combination, these limitations require that it is the overall elongated tube shape of the wand that defines a hollow interior cavity in which the laser must be mounted. (Id.) Erchonia has expressly waived doctrine of equivalents

infringement with respect to limitation (b), asserting only literal infringement, including as a statutory equivalent under 35 U.S.C. § 112(6). (Id.) Erchonia argues that these limitations are literally satisfied because the laser diode modules are "mounted" in hollowed out sections of the probe head of the Quantum IV Laser. (Response, p. 10.) This argument is erroneous because, among other things, the Whatever Erchonia's theoretical laser diode module might do does not conflict with Robinson's testimony. Jansen v. Rexall, 342 F.3d 1329, 1334 (Fed. Cir. 2003) ("theoretical possibility" insufficient to create genuine issue of material fact). -7Document 345 Filed 08/25/2006
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probe head of the Quantum IV Laser does not satisfy the structural requirements of limitation (a), i.e., the head is not considerably longer that its width, and the head shape does not define the internal cavities therein. (S.O.F., ¶ 4; see also Motion, p. 4.) Alternatively, the hollows in the head are not "defined" by the elongated tube shape of the probe. (See Id.) No reasonable jury could find that the probe head structure would literally satisfy these claim limitations. TechSearch LLC, 286 F.3d at 1371. Next, Erchonia argues that the alleged equivalents were not surrendered under Festo because the "amendment in question related to the shape of the wand described in claim element 1(a). . . . [and not] the location of the laser beam generating device inside the wand." (Response, p. 11.) In fact, before the amendment to limitation (a), the laser could be mounted in any interior cavity within the wand. (S.O.F., ¶ 14.) The laser mounting location was limited to the interior cavity defined by the elongated tube shape of the wand after the amendment. (Id., ¶ 16.) Thus, as a matter of law, a presumption arises that alternative wand structures defining an internal cavity were surrendered. Biagro Western Sales, Inc. v. Grow More, Inc., 423 F.3d 1296, 1306 (Fed. Cir. 2005).5 Erchonia has failed to come forward with any evidence or argument rebutting the presumption of surrender. There is no genuine issue of material fact that the semiconductor laser diodes of the Quantum IV Laser are not mounted within the interior cavity of the wand of the Quantum IV Laser, as literally required by limitations (a) and (b) of Claim 1 in combination. Further, although Erchonia also asserts that the Quantum IV Laser probe has equivalent structure, its conclusory allegations do not satisfy its burden as the non-movant.

Erchonia attempts to distinguish Biagro Western by arguing that the "case deals with equivalents under the Doctrine of Equivalents and not statutory equivalents, this case does not address the situation in question." Erchonia's attempt to distinguish Biagro Western is inapplicable. The claimed hollow tube structure of the wand defining an interior cavity and the requirement for mounting the laser in that interior cavity is not part of any means-plus-function limitation. Therefore, statutory equivalents under 35 U.S.C. § 112(6) is inapplicable. IMS Tech., Inc. v. Haas Automation, Inc., 206 F.3d 1422, 1432 (Fed. Cir. 2000). -8Document 345 Filed 08/25/2006

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Cf. Lear Siegler, Inc., 873 F.2d at 1425; cf. TechSearch LLC, 286 F.3d at 1372 (reciting Graver Tank mantra insufficient to avoid summary judgment.). G. Erchonia Has Failed To Present Any Evidence That The Quantum IV Laser Has Structures Acting In Substantially The Same Way As A Start Switch Activateable Between On And Off Positions And A Selector Knob Having Multiple Time Period Length Setting Positions

Erchonia admits that it must prove that the various tactile buttons of the 7 Quantum IV Laser perform in substantially the same way as a single start switch 8 activateable between on and off positions and a selector knob having multiple time period 9 length setting positions. (Response, p. 12.) But Erchonia fails to present any evidence or 10 argument that the tactile buttons do perform in substantially the same way. Instead, 11 Erchonia merely presumes what it must prove as the non-movant, i.e., that a reasonable 12 jury could find statutory equivalence between these structures. (See Id.) This argument 13 is insufficient. Vivid Tech., 200 F.3d at 812 (truth of a disputed material fact cannot be 14 established by attorney argument alone); cf. TechSearch LLC, 286 F.3d at 1372 (reciting 15 Graver Tank mantra insufficient to avoid summary judgment). The truth is that the tactile 16 buttons of the Quantum IV Laser are substantially different, both structurally and 17 functionally. (Motion, pp. 17-18.) Erchonia has failed to come forth with any evidence 18 demonstrating a genuine issue of material fact on this issue. 19 III. 20 The foregoing constitute at least seven individual reasons why the approximately 21 sixty production Quantum IV Lasers sold by REM in the United States cannot infringe the 22 asserted claims of the '096 Patent. For any one or more of these reasons, summary 23 judgment of non-infringement in favor of Moroney and REM is required. Further, despite 24 Moroney's challenge, Erchonia has failed to present any evidence of any personal action 25 by Moroney that would constitute infringement of any asserted claim of the '096 Patent. 26 This is an independent reason requiring summary judgment in Moroney's favor. 27 28 CONCLUSION

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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 REPLY IN FURTHER SUPPORT OF ROBERT MORONEY'S AND ROBERT E. MORONEY LLC'S CONSOLIDATED MOTION FOR SUMMARY JUDGMENT OF NON-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]

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

J:\4888\-7\PLEADINGS\MSJ Non-Infringement\Reply in Support of MSJ re Noninfringement\REMs Reply in Further Support of MSJ of Noninfringement of '096 Patent.V2.wpd

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