Free Motion for Summary Judgment - 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 MORONEY'S AND ROBERT E. MORONEY LLC'S CONSOLIDATED MOTION FOR SUMMARY JUDGMENT OF NON-INFRINGEMENT OF U.S. PATENT NO. 6,013,096

Robert Moroney ("Moroney") and Robert E. Moroney LLC (collectively "REM"), 28 by and through undersigned counsel, hereby move the Court, pursuant to Fed. R. Civ. P. Rule 56, to grant summary judgment in favor of REM and against Erchonia Medical, Inc. Case 2:02-cv-02036-MHM Document 334 Filed 07/21/2006 Page 1 of 20

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and Kevin Tucek (collectively referred to hereinafter as "Erchonia") that REM's Quantum IV Laser does not infringe asserted Claims 1-3 and 5-9 of U.S. Patent No. 6,013,096.1 The present Motion is supported by the contemporaneously-filed

Statement of Facts ("S.O.F."), as well as the following Memorandum of Points and Authorities, all of which are incorporated herein by reference. Respectfully submitted,

7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Erchonia has recently asserted that an unspecified number of alleged prototypes to the Quantum IV Laser were imported and used by REM in the United States. This Motion does not address these alleged prototypes. Further, REM does not concede the existence or the structure of these allegedly infringing prototypes, or that it ever imported or used any such prototypes in the United States. -2Document 334 Filed 07/21/2006
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Dated: July 21, 2006

By:

s/ Benjamin B. Lieb Michael S. Rubin David G. Bray MARISCAL WEEKS MCINTYRE & FRIEDLANDER, P.A. 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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1 2 3 4 5 6 7 · 8 9 · 10 11 12 13 · 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 II. · I.

MEMORANDUM OF POINTS AND AUTHORITIES INTRODUCTION REM's Quantum IV Laser does not infringe any asserted claim of the '096 Patent for numerous reasons, including, with respect to Claim 1of the '096 Patent, the following: · The single collimating lens utilized in the Quantum IV Laser cannot satisfy the "optical arrangement" limitation of Claim 1, as construed, because such a finding would vitiate the requirement for a collection of two or more optical devices; The Quantum IV Laser emits elliptically-shaped laser beams that are not literally "substantially planar" and Erchonia is estopped from asserting infringement of this limitation under the doctrine of equivalents; Erchonia has no evidence that the laser beams in the Quantum IV Laser have been transformed as required by Claim 1; The lasers in the Quantum IV Laser are not mounted within the hollow interior cavity of the Quantum IV Laser probe as required by Claim 1 and Erchonia is estopped from asserting the doctrine of equivalents with respect to this limitation; and The Quantum IV Laser does not have structures that are equivalent under 35 U.S.C. § 112, ¶ 6 to a start switch activatable between on and off positions and a selector knob having multiple time period length setting positions as required by Claim 1.

BACKGROUND A. REM And Its Quantum IV Laser Product

In about April or May of 2002, Moroney received an unsolicited telephone call from a company in England called Flitton Engineering ("Flitton"), a medical equipment manufacturer. Flitton represented to Moroney that it had developed a hand-held cold laser known as the "Radiant Health Laser" and wanted to know if Moroney would be interested in marketing and selling the product in the United States. Curious, Moroney flew to England to examine the Radiant Health Laser, purchasing two for further evaluation. Having determined that the Radiant Health Laser was of high quality and low price, Moroney later began importing it into the United States. This action for patent infringement was initiated shortly thereafter by Erchonia. Ultimately, REM sold

approximately sixty of the Radiant Health Lasers in the United States under the trademark

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"Quantum IV" (hereinafter, the "Quantum IV Laser"). Moroney has not personally sold any Quantum IV Lasers. (S.O.F., ¶ 1.) B. The Quantum IV Laser Design And Operation

The Quantum IV Laser is a therapeutic cold laser consisting primarily of a control unit and a laser probe, with a cord connecting the control unit to a laser probe. The housing includes a membrane keypad with an LCD display. At the bottom of the housing is a keyed lock switch for turning power to the unit on and off, the entry point for the cord, and a recharging socket. (S.O.F., ¶¶ 2 and 3.) The laser probe includes a hollow tube handle and a solid head. Within the solid head are four laser diode modules. Inside the hollow tube handle are the wires connecting to the rear of the four laser diode modules. 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. These features of the probe are illustrated below:

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(S.O.F., ¶ 4.) The laser diode modules primarily utilized in the laser probe are manufactured by Diode Laser Concepts, Inc. and have a part number FAY-MS3-50.2 These laser diode modules consist of a cylindrical housing with a semiconductor laser diode and a printed circuit board contained in one end, and a screw-in ferrule holding a single collimating lens at the other end as shown below:

Each laser diode module emits a laser beam having an elliptical spot shape. All Quantum IV Lasers sold by REM in the United States emitted elliptically-shaped laser beams. (S.O.F., ¶ 5.) Inside the control unit are a number of components, including a battery and a circuit board mounting a programmable microprocessor. This circuit board also includes a number of supporting components for the microprocessor. The cord from the laser probe enters the housing and the wires within that cord connect to the circuit board. (S.O.F., ¶ 7.)

Erchonia has no evidence of the structure of any other laser diode modules incorporated into any Quantum IV Laser sold in the United States. -5Document 334 Filed 07/21/2006

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The front of the membrane keypad panel has numeric entry buttons and separate buttons for programming functions of the device, including separate 'start,' 'stop' and 'enter' buttons. The membrane keypad comprises a number of tactile buttons having a normally open position and protected with a vinyl overlay. 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. (S.O.F., ¶ 8.) To operate the Quantum IV Laser, the user must first power on the unit by turning the keyed lock switch from the 'off' to the 'on' position. The user then manually enters the operating time, in minutes and seconds, using the numeric buttons on the membrane keypad. The entered time is displayed on the LCD display. Once the operating time has been entered, the user presses the 'enter' button on the keypad and the device is ready to be used. The user then presses the 'start' button on the keypad to turn on the lasers. Once the set time has expired, the Quantum IV Laser automatically stops. Alternatively, the user may manually press the 'stop' button on the keypad to turn off the lasers. (S.O.F., ¶ 9.) C. The '096 Patent

The '096 Patent issued on January 11, 2000, to Kevin B. Tucek, and is entitled "Hand-Held Laser Light Generator Device." The '096 Patent specification explains that it is directed to: A hand-held laser light generator device includes a wand, a semiconductor diode laser for generating a beam of laser light, an optical arrangement, a housing having an interior chamber, a battery in the housing interior chamber, an electrical cord connecting the laser in the wand with the battery in the housing, an electronic timing circuit, a start switch and a selector knob. The wand, capable of being retained in a user's hand, is an elongated hollow tube and defines an interior cavity. The laser is mounted in the wand interior cavity and therewith is freely movable so as to enable the user to direct the beam of laser light onto a desired location. The optical arrangement mounted in the wand interior cavity receives and transforms the generated beam of laser light into a line of laser light. The electrical timing circuit is disposed in the housing interior chamber and mounted to the housing. The start switch is activatable between on and off positions while the selector knob has multiple period of time length setting positions. The start switch and selector knob are mounted to the housing and accessible at the exterior thereof and are in operable communication with the electrical timing circuit for controlling initiation of generation of and length of the period of time that the laser light beam is generated. -6Document 334 Filed 07/21/2006

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This device is depicted in Figures 1 and 3 of the '096 Patent:

(S.O.F., ¶ 10.) D. The '096 Patent File History

The application for the '096 Patent was filed on November 19, 1997, by Kevin B. Tucek. The original application included twenty claims, of which Claims 1, 11 and 18 were independent claims. Claim 1, as originally submitted in the '096 Patent application, read as follows: 1. A hand-held laser light generator device for use in medical therapy, said device comprising: (a) a wand defining an interior cavity and capable of being retained in a hand of a user; (b) means for generating a beam of laser light mounted in said interior cavity of said wand and therewith being freely movable so as to enable the user to direct said beam of laser light onto a desired location; (c) an optical arrangement mounted in said interior cavity of said wand for receiving the generated beam of laser light from said generating means and for transforming the generated beam of laser light into a line of laser light; (d) a housing defining an interior chamber and having an exterior; (e) means for supplying electrical power to said generating means being disposed in said interior chamber of said housing; (f) means for electrically interconnecting said laser beam generating means and said electrical power supplying means; and (g) means for controlling a period of time said beam of laser light is generated. (S.O.F., ¶ 14.)

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On January 15, 1999, the Patent Examiner issued an Office Action rejecting all of the original claims of the '096 patent application. Specifically, the Examiner rejected Claim 1 of the application as being obvious under 35 U.S.C. § 103(a) over prior art references Ohshiro in view of Blum. The Examiner explained that: Ohshiro et al. teaches a semiconductor laser treatment device in which it is disclosed that the device contains: (a) a wand regarded as a radiation delivery device, 1, and is regarded as being a substantially elongated hollow tube; (b) a means for generating a laser beam via semiconductor laser, 10; (c) a collimating lens or cylindrical lens, 19; (d) a housing separate from the wand, which is shown in Figure 8; (e) means for supplying electrical power to the laser generation means contained in the wand; (f) means for electrically connecting the wand to the housing via a cable, 66; (g) means for controlling a period of time of laser generation via the time control circuit, 39. Additionally, see Figures 1, 7, and 8. The laser diode is regarded as being of the type which uses less than one watt of power, since this device is for use in the treatment of tissue and a large power usage would cause damage to the tissue. Finally, as shown in Figures 8 and 9, the housing contains a cradle for releasably securing the wand therein. Ohshiro does not teach that there is a means for transforming the generated beam of laser light into a line of laser light. Blum et al. teaches an alternative optical treatment device in which it is stated on column 4, line 63-65, that it is known to focus light along a line for the medical procedure. Therefore, it would have been obvious to one skilled in the art to modify the device of Ohshiro et al. with Blum et al. to provide a laser line focusing means as an known alternative means of focusing the light onto the tissue for treatment. (S.O.F., ¶ 15.)

17 In response to the First Office Action, Tucek submitted substantial amendments to 18 19 20 21 22 23 24 25 26 27 28 The underlined language indicates the language added by Tucek and language removed is surrounded by brackets. -8Document 334 Filed 07/21/2006
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Claim 1 of the application, among others. These amendments are set forth below:3 1. (amended) A hand-held laser light generator device for use in medical therapy, said device comprising: (a) a wand in the form of a substantially elongated hollow tube defining an interior cavity and capable of being retained in a hand of a user and freely moved relative to the surface of the skin of a patient to receive the medical therapy; (b) means mounted in said interior cavity of said wand for generating a beam of laser light [mounted in said interior cavity of said wand and therewith being freely movable so as to enable the user to direct said beam of laser light onto a desired location] in the red color spectrum; (c) an optical arrangement mounted in said interior cavity of said wand for receiving the red color spectrum generated beam of laser light from said generating means and for transforming the generated beam of laser light into a substantially planar beam of laser light disposed externally of said wand for producing a line of laser light in the red color spectrum at

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a desired location on the surface of the patient's skin and with said line of laser light being visible to the user as said wand is held and freely moved by the user in a spaced relationship from and out of contact with the patient; (d) a housing defining an interior chamber and having an exterior; (e) means disposed in said interior chamber of said housing for supplying electrical power to said laser beam generating means [being disposed in said interior chamber of said housing]; (f) means for electrically interconnecting said laser beam generating means and said electrical power supplying means such that said wand is movable relative to said housing; and (g) means on said housing for controlling a period of time said beam of laser light is generated. In support of these amendments, Tucek stated that:

8 9 10 (S.O.F., ¶ 16.) The remaining details of Tucek's amendments and arguments to the 11 Examiner are set forth in the file history and will not be repeated here. 12 In light of Tucek's amendments and arguments, the Examiner allowed the amended 13 Claims 1 and 3-20 to issue. Claim 1 of the application issued as asserted Claim 1 of the 14 '096 Patent. (S.O.F., ¶ 17.) 15 E. 16 Erchonia originally asserted that the Quantum IV Laser infringed Claims 1-3, 5-9, 17 10-12 and 14-16. However, by letter dated March 3, 2005, and subsequently through its 18 recently-filed Report Re: Patent Claims and Supplement thereto, Erchonia has withdrawn 19 its assertion that the Quantum IV Laser infringes Claims 10-12 and 14-16. (S.O.F., ¶ 18.) 20 Accordingly, only independent Claim 1 and dependent Claims 2, 3 and 5-9 remain at issue 21 in this action. 22 Claim 1, as interpreted by the Court in the June 8, 2006 Order adopting the Special 23 Master's Final Report and Recommendation on Claim Construction, includes the following 24 25 26 27 28 Elements relevant to the present Motion are set forth in bold and italics, including elements that correspond to narrowing amendments during prosecution which are also underlined. Means-plus-function limitations, invoking 35 U.S.C. § 112, ¶ 6, are marked with an asterisk. -9Document 334 Filed 07/21/2006
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[Claim 1 was] amended to more clearly distinguish the invention defined therein over the cited references by incorporating the subject matter of Claim 2 and by reciting further detailed aspects of the laser beam.

Erchonia's Infringement Allegations

limitations:4

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(a) 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, and which is capable of being held in the hand of a user and which can be moved without restriction relative to the surface of the skin of a patient receiving medical therapy; (b)* a laser that generates a narrow beam of monochromatic, coherent light having a wave length in the red color spectrum and mounted in the interior cavity of the wand; (c) an optical arrangement (defined below) mounted in said interior cavity of said wand for receiving the red color spectrum generated beam of laser light from said generating means and for transforming the generated beam of laser light into a substantially planar beam of laser light disposed externally of said wand for producing a line of laser light in the red color spectrum at a desired location on the surface of the patient's skin and with said line of laser light being visible to the user as said wand is held and freely moved by the user in a spaced relationship from and out of contact with a patient. "Optical arrangement" has been construed to mean "a collection comprising two or more mirrors, lens, prisms, or other optical devices, placed in some specified configuration, which reflect, refract, dispense, absorb, polarize, or otherwise act on light." That definition allows for a combination of two or more different optical devices. Also, a mirror, whether it is motorized or not is an optical device; (g)* an electrical timing circuit, a start switch activatable between on and off positions, and a selector knob having multiple time period length setting positions on said housing. With respect to the limitations of Claim 1 shown above, Erchonia asserts that: limitation

16 (a) is infringed literally or under the doctrine of equivalents; limitation (b) is infringed 17 literally only, including as an "equivalent" under 35 U.S.C. § 112, ¶ 6; limitation (c) is 18 infringed under the doctrine of equivalents only; and limitation (g) is infringed literally 19 only, including as an "equivalent" under 35 U.S.C. § 112, ¶ 6. (S.O.F., ¶ 19.) 20 III. 21 A. 22 Summary judgment should be granted where "there is no genuine issue as to any 23 material fact and that the moving party is entitled to judgment as a matter of law." Fed. 24 R. Civ. P. 56(c). In order to defeat the present Motion, Erchonia must show that there is 25 a genuine factual issue "that properly can be resolved only by a finding of fact because 26 they may reasonably be resolved in favor of either party." Anderson v. Liberty Lobby, 27 Inc., 47 U.S. 242, 250 (1986). However, Erchonia "may not rest upon the mere allegations 28 or denials of [its] pleadings, but . . . must set forth specific facts showing that there is a -10Document 334 Filed 07/21/2006 Legal Standard For Summary Judgment LEGAL STANDARDS

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genuine issue for trial." Fed. R. Civ. P. 56(e); Matsushita Elec. Indus. Co. Ltd. v. Zenith Radio Corp., 475 U.S. 574, 586-87 (1986). Indeed, because Erchonia bears the burden of proving infringement of the '096 Patent, REM need only show here that Erchonia has no evidence of infringement and point to the specific ways in which the accused Quantum IV Laser does not meet relevant claim limitations. Exigent Tech., Inc. v. Atrana Solutions, Inc., 442 F.3d 1301, 1308-09 (Fed. Cir. 2006). Erchonia must then come forward with sufficient argument or evidence of infringement to prevail at trial. Id. B. Elements Of Proof For Patent Infringement

To prevail upon its claim for infringement of the '096 Patent, Erchonia must prove by a preponderance of evidence that each and every limitation of independent Claim 1 as construed by the Court is present in the Quantum IV Laser, either literally or by substantial equivalent. Freedman Seating Co. v. Amer. Seating Co., 420 F.3d 1350, 1356-57 (Fed. Cir. 2005); Wahpeton Canvas Co. v. Frontier Inc., 870 F.2d 1546, 1552 n.9 (Fed. Cir. 1989) (dependent claims not infringed unless the independent claim from which they depend infringed). Infringement, either literal or under the doctrine of equivalents, is a question of fact. Ferguson Beauregard v. Mega Sys., Inc., 350 F.3d 1327, 1338 (Fed. Cir. 2003). To prove literal infringement of means-plus-function limitations of the '096 Patent, Erchonia must show that the accused structure of the Quantum IV Laser is either the same as the disclosed structure or is an "equivalent" under 35 U.S.C. § 112(6). Kemco Sales, Inc. v. Control Papers Co., Inc. 208 F.3d 1352, 1364 (Fed. Cir. 2000). An accused structure is equivalent under 35 U.S.C. § 112(6) only if it: (1) performs the identical claimed function; and (2) is otherwise insubstantially different from the corresponding structure disclosed in the patent specification. JVW Enter., Inc. v. Interact Access, Inc., 424 F.3d 1324, 1333 (Fed. Cir. 2005). For the relevant structure in the accused device to be equivalent to the structure in the written description, differences between the two must be insubstantial. For example, the structure in the accused device must perform the claimed function in substantially the same way to achieve substantially the same result as the structure in the written description.

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Id. To prove infringement under the doctrine of equivalents, Erchonia must show "equivalence" between the elements of the Quantum IV Laser and the claimed elements of the '096 Patent, Warner-Jenkinson Co. v. Hilton Davis Chemical Co., 520 U.S. 17, 21 (1997), by showing that those elements perform "substantially the same function in substantially the same way to obtain the same result" as the claimed elements of the '096 Patent. Graver Tank & Manu. Co. v. Linde Air Products Co., 339 U.S. 605, 608 (1950). However, the doctrine of equivalents is limited by two legal doctrines ­ the "all limitations" rule, and prosecution history estoppel. Seachange Int'l, Inc. v. C-COR, Inc., 413 F.3d 1361, 1378 (Fed. Cir. 2005). Application of these doctrines is a question of law. Id. The "all limitations" rule provides that "the doctrine of equivalents does not apply if applying the doctrine would vitiate an entire claim limitation." Freedman Seating Co., 420 F.3d at 1358, citing, Warner-Jenkinson Co., 520 U.S. at 29 ("It is important to ensure that the application of the doctrine [of equivalents], even as to an individual element, is not allowed such broad play as to effectively eliminate that element in its entirety." (emphasis added)); Lockheed Martin Corp. v. Space Sys., 324 F.3d 1308, 1321 (Fed. Cir. 2003) ("If a court determines that a finding of infringement under the doctrine of equivalents would entirely vitiate a particular claimed element, then the court should rule that there is no infringement under the doctrine of equivalents." (citation omitted, emphasis added)). Prosecution history estoppel prohibits a patentee from recapturing disclaimed subject matter under the doctrine of equivalents. Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 344 F.3d 1359 (Fed. Cir. 2003) (en banc) ("Festo III"): A narrowing amendment made for a substantial reason relating to patentability gives rise to a presumption that the patentee has surrendered all subject matter between the original claim limitation and the amended claim limitation. If the narrowing amendment was the addition of a new claim limitation . . . equivalents are presumptively not available with respect to that limitation.

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A patentee may rebut the presumption of surrender by showing that at the time of the amendment one skilled in the art could not reasonably be expected to have drafted a claim that would have literally encompassed the alleged equivalent. The Supreme Court identified three ways in which the patentee may overcome the presumption. The patentee may show that the alleged equivalent would have been unforeseeable at the time of the amendment, that the rationale underlying the amendment bore no more than a tangential relation to the equivalent in question, or that there was "some other reason" that the patentee could not reasonably have been expected to have described the alleged equivalent. Biagro Western Sales, Inc. v. Univ. of California, 423 F.3d 1296, 1305 (Fed. Cir. 2005).

7 Erchonia bears the burden of rebutting the presumption of surrender. Id. Further, the 8 determination of whether the presumption has been rebutted is a question of law, even if 9 there are underlying factual issues that must be resolved in making this determination. Id. 10 IV. 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 THE QUANTUM IV LASER DOES NOT INFRINGE CLAIMS 1-3 AND 5-9 OF THE '096 PATENT The undisputed facts show that the Quantum IV Laser does not satisfy multiple limitations of Claim 1 of the '096 Patent and, therefore, cannot infringe Claim 1. Freedman Seating Co., 420 F.3d at 1356-57. As a result, the Quantum IV Laser also cannot infringe dependent Claims 2, 3 and 5-9. Wahpeton Canvas Co., 870 F.2d at 1552, n.9. A. The "All Limitations" Rule Precludes A Single Collimating Lens From Satisfying The "Optical Arrangement" Limitation Of Claim 1

Erchonia concedes no literal infringement of limitation (c) of Claim 1 which, as construed, requires "a collection comprising two or more mirrors, lens, prisms, or other optical devices, placed in some specified configuration, which reflect, refract, dispense, absorb, polarize, or otherwise act on light." (S.O.F., ¶ 19.) Instead, Erchonia asserts that the single collimating lens in the laser diode modules of the Quantum IV Laser can satisfy this limitation under the doctrine of equivalents. (Id.) The "all limitations" rule precludes such a finding as a matter of law. To allow a single optical device to satisfy the "optical arrangement" limitation would vitiate the requirement for a collection of two or more optical devices. Seachange Int'l Inc. v. C-Cor, Inc., 413 F.3d 1361 (Fed. Cir. 2005); Freedman Seating Co., 420 F.3d

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at 1358-62. That is, the numerical requirement for two or more optical devices cannot be satisfied by only one optical device without reading "two or more" out of the claim. This limitation could have easily been drafted so that it did not require an arrangement of a collection of optical devices. Indeed, Erchonia has claimed that the use of a single optic such as a collimating lens was well-known at the time the `096 Patent application was filed. (S.O.F., ¶ 20.) "[A]s between the patentee who had a clear opportunity to negotiate broader claims but did not do so, and the public at large, it is the patentee who must bear the cost of its failure to seek protection for this foreseeable alteration of its claimed structure." Sage Prods., Inc. v. Devon Indus. Inc., 126 F.3d 1420, 1425 (Fed. Cir. 1997). As a matter of law, the "all limitations" rule precludes a single collimating lens from satisfying the "optical arrangement" limitation of Claim 1. B. Erchonia Is Estopped From Asserting The Doctrine Of Equivalents As To The "Substantially Planar Beam" Limitation Of Claim 1

Erchonia concedes that the elliptically-shaped laser beam of the Quantum IV Laser does not literally satisfy limitation (c) of Claim 1, that requires the emitted laser beam shape to be "substantially planar." (S.O.F., ¶ 19.) Erchonia asserts infringement of this limitation only under the doctrine of equivalents. (Id.) Prosecution history estoppel, however, precludes Erchonia's assertion of the doctrine of equivalents as to this limitation. The original language of Claim 1 had no limitation directed to the shape of the laser beam emitted from the claimed device. (S.O.F., ¶ 14.) The addition of the phrase "substantially planar beam of laser light disposed externally of said wand" to limitation (c) was clearly added for the purposes of distinguish the claimed subject matter over the prior art cited by the Examiner during prosecution. Tucek admitted as much when he stated that "by reciting further detailed aspects of the laser beam," he was attempting "to more clearly distinguish he invention defined [in Claim 1.]" (Id.) As a matter of law, a presumption

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arises that all other laser beam shapes have been surrendered. Biagro Western Sales, Inc., 423 F.3d at 1305. Erchonia cannot rebut this presumption.5 Erchonia has no evidence that an elliptical laser beam shape was unforeseeable or that Tucek could not have reasonably been expected to claim an elliptical laser beam shape. As a matter of fact, Tucek was fully aware of an elliptical beam shape prior to filing the '096 Patent application because he built a prototype which emitted such a shape. (S.O.F., ¶ 11.) Tucek clearly could have drafted this limitation in such a way that would include an elliptical laser beam shape. Next, the rationale for adding the "substantially planar beam" limitation to Claim 1 is not merely tangential to the elliptical beam shape emitted by the Quantum IV Laser. Before the amendment, there was no limitation whatsoever as to the required shape of the emitted laser beam ­ the laser beam could have been of any shape. (S.O.F., ¶ 14.) Thus, there is a direct relationship between the amendment and the elliptical shape of the laser beam emitted by the Quantum IV Laser. Biagro Western Sales, Inc., 423 F.3d at 1306. C. Erchonia Has No Evidence That The Laser Beams Emitted By The Quantum IV Laser Have Been Transformed As Required By Claim 1

Limitations (b) and (c) of Claim 1 in combination require that the beam that is emitted by the laser be a "narrow beam" that is transformed by the optical arrangement into a "substantially planar beam." (S.O.F., ¶ 19.) Thus, to infringe, the beam emitted by the semiconductor laser diodes in the Quantum IV Laser must be narrow and, by definition, must be other than a substantially planar shape. Erchonia has no evidence of the laser beam shape prior to when the laser beam passes through the collimating lens of the laser diode module, including the shape of the laser beam prior to passing through the Since before instituting this action, Erchonia and its attorneys have been aware that the Quantum IV Laser emits an elliptically-shaped laser beam. Indeed, prior to filing this action, Tucek conducted an examination of the laser beam shape emitted by the Quantum IV Laser. (S.O.F., ¶ 6.) Erchonia and its attorneys were also obviously aware of the narrowing amendment to limitation (c) of Claim 1, requiring the emitted laser beam shape to be "substantially planar." It is REM's position, therefore, that the assertion that this limitation is infringed under the doctrine of equivalents is unreasonable and REM specifically requests that the Court address this issue in rendering a decision on the present Motion. -15Document 334 Filed 07/21/2006
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collimating lens, whether the laser beam is narrow, and whether the shape of the laser beam is transformed by the collimating lens. (Id., ¶ 6.) As a result, Erchonia cannot prove infringement of this limitation. Exigent Tech., Inc., 442 F.3d at 1308-09. D. The Laser Diode Modules Of The Quantum IV Laser Are Not Mounted In The Hollow Interior Cavity Of The Quantum IV Laser Probe As Required By Claim 1

Limitation (a) of Claim 1, among other things, requires a "hand-held wand, which 7 is considerably longer than its width, which is in the form of a hollow tube that defines an 8 interior cavity." (S.O.F., ¶ 19.) In other words, this limitation requires that it is the overall 9 shape or structure of the wand that defines the hollow interior cavity. Limitation (b) of 10 Claim 1 requires the laser to be "mounted in the interior cavity of the wand." (Id.) These 11 claimed features are illustrated in Fig. 3 of the '096 Patent as shown below with the laser 12 12 mounted inside the interior cavity 16 of the hollow tube 32: 13 14 15 16 17 18 19 20 21 22 23 24 25 (Id., ¶ 10.) 26 These requirements of Claim 1 are not literally present in the Quantum IV Laser. 27 While the probe handle of the Quantum IV Laser includes a hollow tube defining an 28 interior cavity, the laser is not mounted in that interior cavity. (S.O.F., ¶ 4.) Instead, the -16Document 334 Filed 07/21/2006

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laser diode modules containing the semiconductor diode laser and collimating lens are located on the end of the probe in the solid head portion. (Id.) Prosecution history estoppel precludes the assertion of the doctrine of equivalents as to these limitations. Limitation (a) of Claim 1 as filed required only "a wand defining an interior cavity and capable of being retained in the hand of a user." (S.O.F., ¶ 14.) This limitation was amended to further define the overall structure of the wand as a "substantially elongated hollow tube." Limitation (b) of Claim 1 was also amended during prosecution, adding the requirement that the laser be "mounted in the interior cavity of the wand." (Id., ¶ 16.) As with the narrowing amendments to limitation (c), Tucek also amended these limitations for the purposes of distinguishing the claimed subject matter over the prior art cited by the Examiner during prosecution. (Id.) As a matter of law, this combination of narrowing amendments surrendered all other locations from mounting of the laser, including in a solid head portion. Biagro Western Sales, Inc., 423 F.3d at 1305. Erchonia has no evidence to rebut this presumption. In fact, Tucek was aware of laser diode modules at the time the '096 Patent application was filed (S.O.F., ¶ 11) and could have easily drafted these limitations in such a way to cover other locations for mounting them in a hand-held wand. Sage Prods., Inc., 126 F.3d at 1425. E. The Quantum IV Laser Does Not Have Structures "Equivalent" To A Start Switch Activatable Between On And Off Positions And A Selector Knob Having Multiple Time Period Length Setting Positions As Required By Claim 1

Limitation (g) of Claim 1 requires, among other things, "a start switch activatable between on and off positions, and a selector knob having multiple time period length setting positions." (S.O.F., ¶ 19.) Erchonia asserts only that these structures are

"equivalent" under 35 U.S.C. § 112(6). (Id.) There is no genuine issue of material fact that the membrane keypad of the Quantum IV Laser is not "equivalent." The '096 Patent discloses a single start switch having 'on' and 'off' positions. (S.O.F., ¶ 12.) This switch, alone, controls laser activation. (Id.) The Quantum IV Laser,

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in contrast, utilizes separate tactile buttons for 'start' and 'stop.' (Id.) Neither tactile button alone singly controls the activation or deactivation of the lasers. (Id.) The selector knob disclosed in the '096 Patent rotates to allow the user to select from a limited number of preselected time settings. (S.O.F., ¶ 12.) The Quantum IV Laser, on the other hand, has no rotating knob, no preselected time settings, and no limit on the number of different time settings for which it can be set. (Id.) Furthermore, the user must manually enter the exact time that the user wishes to operate the Quantum IV Laser using the numerical tactile buttons on the membrane keypad. (Id.) Indeed, Tucek has admitted that the membrane keypad functions in a different way than the selector knob: On the Quantum IV it does it a different way. What they are doing is to be able to get their variable timing intervals, it's controlled by their microprocessor; and the input or the timing interval that they program, it's programmed in via the membrane switch but it accomplishes the same thing. (Id., ¶ 13.)

14 Structurally, the membrane keypad is also very different than a selector knob ­ the 15 selector knob is a "knob" that rotates about an axis to a number of time period length 16 setting positions (S.O.F., ¶ 12), whereas the membrane keypad has no rotating structure. 17 (Id.) It is made up of a plurality of discrete tactile buttons with a protective vinyl overlay 18 that are individually engaged to send pulse signals to the microprocessor. (Id.) 19 The structural and functional differences between the structure disclosed in the '096 20 Patent for controlling the period of time the laser is generated and the membrane keypad 21 of the Quantum IV Laser are significant and substantial. The membrane keypad of the 22 Quantum IV Laser cannot be a § 112(6) equivalent. JVW Enter., Inc., 424 F.3d at 1333. 23 V. 24 For the foregoing reasons, REM respectfully requests that the Court grant summary 25 judgment in its favor and against Erchonia Medical, Inc. and Kevin Tucek, that REM's 26 Quantum IV Laser does not infringe asserted Claims 1-3 and 5-9 of the '096 Patent, and 27 any subsequent reissue of that patent. 28 CONCLUSION

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1 2 Dated: July 21, 2006 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

Respectfully submitted, By: s/ Benjamin B. Lieb Michael S. Rubin David G. Bray MARISCAL WEEKS MCINTYRE & FRIEDLANDER, P.A. 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 July 21, 2006, I electronically transmitted or caused to be transmitted the attached ROBERT MORONEY AND ROBERT E. MORONEY LLC'S CONSOLIDATED MOTION FOR SUMMARY JUDGMENT REGARDING NON-INFRINGEMENT FOR 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 In addition, a copy of the above-referenced pleading was mailed to the following: 19 20 21 22 23 24 25 26 27 28 DATED THIS 21st day of July, 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]

J:\4888\-7\PLEADINGS\M SJ Non-Infringement\M SJ re Noninfringement of US Pat No 6,013,096.wpd

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