Free Response - District Court of Arizona - Arizona

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Michael S. Rubin (#005131) [email protected] David Bray (#014346) [email protected] MARISCAL WEEKS MCINTYRE & FRIEDLANDER, PA 2901 North Central Avenue, Suite 200 Phoenix, Arizona 85012-2705 Robert R. Brunelli (#20070) [email protected] Benjamin B. Lieb (#28724) [email protected] 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

19 Plaintiffs, 20 v. 21 Miki Smith, et al. 22 Defendants. 23 24 25 26 27 28 v. Erchonia Medical, Inc., et al. Defendants. Robert E. Moroney, LLC, et al. Plaintiffs,

RESPONSE IN OPPOSITION TO ERCHONIA MEDICAL, INC.'S AND KEVIN TUCEK'S OBJECTIONS TO SPECIAL MASTER'S FINAL REPORT AND RECOMMENDATION ON CLAIM CONSTRUCTION BY ROBERT E. MORONEY, LLC, ROBERT E. MORONEY AND A MAJOR DIFFERENCE, INC.

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I.

INTRODUCTION On January 10, 2006, the Special Master issued a Draft Report and

Recommendation on Claim Construction relating to U.S. Patent No. 6,013,096 (the "Draft"). In the Draft, the Special Master invited the parties to file comments thereto, but limited to those instances where parties believed that the Draft contained errors of law or fact, or otherwise required clarification. (Draft, p. 3; [Docket No. 320].) REM filed a Response to the Draft requesting one simple clarification. Specifically, that the Final Report and Recommendation explicitly states the definition of "optical arrangement" that was agreed to by the parties during the Markman hearing. (REM Response, p. 4; [Docket No. 322].) Ultimately, the Final Report and Recommendation (the "Report") was clarified to set forth the Special Master's construction of "optical arrangement." Although the Special Master's construction for that term is virtually identical to what Erchonia previously agreed at the Markman hearing, Erchonia now takes issue with that definition. For the following reasons, REM respectfully requests that the Court reject the basis for Erchonia's Objection, and adopt and affirm the Special Master's Report in its entirety. For the convenience of the Court, REM has attempted to follow the format of Erchonia's Objection. II. CLARIFICATION OF BACKGROUND TO THE SPECIAL MASTER'S FINAL REPORT A. The Parties Agreed To The Meaning Of "Optical Arrangement" During The Markman Hearing

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The parties initially disputed the meaning of the term "optical arrangement" as used in asserted Claims 1 and 10 of U.S. Patent No. 6,013,096 ("the '096 Patent"). However, during the Markman hearing, the parties agreed that if "optical arrangement" was not a means-plus-function limitation or a coined term, it was essentially analogous to the term "optical system" which is defined by the McGraw-Hill Dictionary as "a collection comprising mirrors, lenses, prisms or other devices placed in some specified configuration, which reflect, refract, disperse, absorb, polarize or otherwise act on light." (Markman Hearing Transcript ("Tr."), p. 40, l. 18 ­ p. 46, l. 4.) The parties agreed upon this

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definition with two modifications: (1) that the definition must require two or more optical devices; and (2) that the broad language "other devices" must be limited to other optical devices. (Id.) Because REM believes that Erchonia's prior agreement to these

modifications is potentially dispositive, the relevant portion of the Markman hearing transcript has been reproduced in its entirety below for the Court's convenience: SPECIAL MASTER PETERSON: Okay. I am going to dictate slowly the definition for "optical system" taken from the McGraw-Hill Dictionary of Scientific and Technical Terms, and it is in the field of optics. It is, quote: A collection comprising mirrors, lenses, prism and other devices placed in some specified configuration which reflect, refract, disperse, absorb, polarize or otherwise act on light, period, close quote. Now, my question, Mr. Brunelli, is what, if anything, in the Specification or prosecution history would indicate that would incorrectly describe "optical arrangement"? MR. BRUNELLI: Could I have one moment to consider? SPECIAL MASTER PETERSON: Sure. MR. BRUNELLI: Okay. I've got two points. One, I read the definition as requiring at least - - Because of the word "collection," I read that as requiring at least two of these things. Is that how you're reading it, as well? SPECIAL MASTER PETERSON: Well, I hadn't gotten to that point yet, but all right. MR. BRUNELLI: So if there is - - I suppose you could read "collection" as requiring only one or more of these, as well, so there is an ambiguity there. If it's - - If it's not at least two, I think neither the Specification nor the file history support - - would support that reading. Second, I believe that a - - ''other devices" is broad in that it may include things that are not optics such as mechanical elements, a mechanical mask, or an electromechanical element such as a motorized mirror. Those are clearly - - Those type of things are clearly not encompassed by the Specification. SPECIAL MASTER PETERSON: All right. Let's - MR. BRUNELLI: And let me tell you why. SPECIAL MASTER PETERSON: Well, just a second. Let me - - We can solve that issue easily by changing "other devices" to "other optical devices." MR. BRUNELLI: Okay. SPECIAL MASTER PETERSON: And if we just make it clear, we say "a collection comprising two or more." MR. BRUNELLI: If we went with "a collection comprising two or more mirrors, lenses, prisms or other optical devices placed in some specified configuration which reflect, refract, disperse, absorb, polarize or otherwise -3Document 327 Filed 04/17/2006

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act upon light" and you're asking me if that would be a acceptable definition for "optical system," and clearly I think that would because it came out of the dictionary, as you just stated, and then the next question becomes does "optical system" - - can "optical system" be changed for "optical arrangement"? Am I following you? SPECIAL MASTER PETERSON: Well, no, you're changing the second question slightly. Is that an accurate definition of the term "optical arrangement" as it is used in the context of the patent and the prosecution history? MR. BRUNELLI: Well, I really think that the - - because of the way this patent was drafted, I really think that the patentee defined "optical arrangement" as being a particular thing. SPECIAL MASTER PETERSON: I understand.

9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 SPECIAL MASTER PETERSON: Well, I wasn't intending to do that, Mr. Schwartz. I just had some questions on my mind. MR. SCHWARTZ: Well, I think those are all good questions, then. I will tell you that I think that - - seeing the file history, that there is - - that the examiner, at least, had the opinion that optical - - Well, he had a discussion about other optical arrangements as taught in Oshiro and Blum, and kind of my interpretation of his - - what you stated, he had a long discussion about other optical arrangements that could be used, including light generating prisms and lenses and those things, and discussed that they were well-known in the art. So I would support your - - I support the contention that "optical arrangement" is broader than just a line generating prism and a collimating lens. And I also, as I said earlier, believe "optical system" and "optical arrangement" are equivalent. SPECIAL MASTER PETERSON: All right. Let me - - Let me ask you, Mr. Schwartz, from that definition that we just discussed with Mr. Brunelli, would that be acceptable from your standpoint? MR. SCHWARTZ: I think that the definition you read out of the McGraw-Hill Dictionary was extremely accurate. I don't have any -4Document 327 Filed 04/17/2006 SPECIAL MASTER PETERSON: All right. Mr. Schwartz, did you have anything to say in closing? MR. SCHWARTZ: I think you've made most of my points for me. I would just point out - MR. BRUNELLI: But let's - - let's assume that argument is falling - - is falling short, in your opinion, and so I will argue in the alternative. If, in the alternative, "optical arrangement" is - - is not - - has not been defined, then I think the proposed definition that we've just run through would work in understanding what is meant by "optical arrangement" as used in the claims of the '096 patent. SPECIAL MASTER PETERSON: All right. All right. Anything else? MR. BRUNELLI: Well, I'm so far over now, I can't take up more of your time.

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concern with what you've proposed as alternative language here other than making clear two things. When you say - - You had - - - At one point in your discussion Mr. Brunelli said "comprising two or more." I'd like to make it clear that it can be in combination. You could obviously have a lens and a prism, it doesn't have to be two lenses or two prisms, though I think that's what you intended anyway. SPECIAL MASTER PETERSON: Yes.

5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 Nevertheless, because REM wished to eliminate any possibility for future 22 ambiguity, REM requested that the Report expressly set forth the definition of "optical 23 arrangement" to which the parties had agreed. REM set forth two compelling reasons for 24 this requested clarification. 25 understand the meaning of and literal scope of the term "optical arrangement" as it had 26 27 28 REM agreed to these points of clarification. Namely, that this definition can include a combination of two or more different optical devices and that a mirror, whether it is motorized or not, is an optical device. (REM Response, p. 2, Footnote 2.) -5Document 327 Filed 04/17/2006
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MR. SCHWARTZ: The only point where I disagree with Mr. Brunelli was he made a point of saying that a motorized mirror, he believed, would be a mechanical device. I think a mirror, whether it's motorized or not, is an optical device, but I'm not sure we need to go that far for purposes of this discussion. SPECIAL MASTER PETERSON: All right. All right. Anything else, Mr. Schwartz? MR. SCHWARTZ: No, sir. I think that gives you a good flavor. I would just refer you, as know you're fully familiar, to the briefs or anything that we didn't address during oral argument. SPECIAL MASTER PETERSON: All right. Mr. Brunelli, anything else? MR. LIEB: No sir. (Tr., p. 40, l. 18 ­ p. 46, l. 4, emphasis added.) As shown above, Erchonia's attorney, Mr. Schwartz, was specifically asked by the Special Master whether the proposed definition for "optical arrangement" with REM's modifications was acceptable to Erchonia. His response was that it was with minor clarification.1 Based upon the foregoing agreement, the Special Master concluded that "[n]o further construction of the limitation was believed necessary." (Report, p. 116; [Docket No. 325].) B. REM's Request For Clarification Of The Report And Recommendation

First, in order to ensure that the jury would properly

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been used by Erchonia in the asserted '096 Patent claims. Sulzer Textil A.G. v. Picanol N.V., 358 F.3d 1356, 1366 (Fed. Cir. 2004) ("[T]he district court must instruct the jury on the meanings to be attributed to all disputed terms used in the claims in suit so that the jury would be able to 'intelligently determine the questions presented.'") Second, that without REM's requested clarification, the literal meaning of "optical arrangement" would remain subject to future dispute. C. Erchonia's Complete Reversal As To The Meaning Of "Optical Arrangement"

In it's Reply, Erchonia completely reversed itself as to the previously-agreed 9 definition of "optical arrangement." Erchonia argued that the modification of "other 10 devices" to "other optical devices" was unnecessary because it was redundant. (Reply, 11 p. 3; [Docket No. 323].) Next, Erchonia argued that the term "optical arrangement" could 12 literally constitute a single optical device. (Reply, p. 4.) However, Erchonia did not 13 present any evidence that one of ordinary skill in the art would have understood the term 14 "optical arrangement" in this way as used in the '096 Patent, even though it had abundant 15 opportunity to do so. (Report, pp. 119-120; p. 123.) 16 D. 17 Lacking any additional proof, the Special Master properly construed the term 18 19 Importantly, the Special Master rejected both of Erchonia's arguments in opposition to 20 REM's clarification request. (Report, pp. 117-19.) After considering the claim language, 21 the specification, and file history, the Special Master concluded that the term "optical 22 arrangement" requires multiple optical devices. The Special Master confirmed this finding 23 by reviewing the dictionary definitions of "optical system" and "system" which both 24 connote multiple parts, as well as finding that "the collected uses of 'optical arrangement' 25 26 27 28 The Special Master has also recognized that REM did not submitted any further evidence in support of its request for clarification. However, REM did not believe that presentation of any such additional evidence was necessary given that the parties had already agreed upon the meaning of "optical arrangement" and REM was merely seeking to have that agreement expressly stated in the Report. -6Document 327 Filed 04/17/2006
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Special Master's Construction Of Optical Arrangement"

"optical arrangement" using legally-permissible evidence already before him.2

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in various patents and other materials discussed [in the Report] generally illustrate or refer to multiple components or multiple optical elements or devices." (Report, p. 122.) Thus, the Special Master recommends in the Report that "optical arrangement" means: A collection comprising two or more mirrors, lenses, 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 difference optical devices. Also, a mirror, whether it is motorized or not, is an optical device. (Report, p. 123.) Not surprisingly, this definition is virtually identical to what Erchonia agreed during the Markman hearing, with the two minor concerns raised by Erchonia addressed and incorporated. III. ARGUMENT Erchonia first contends that REM's request for clarification of the Draft was improper, implying that it was somehow unduly prejudiced by the timing of REM's request for clarification. This argument is completely without merit. Indeed, at the Special Master's invitation, REM merely sought for the Draft to be clarified to specifically state the definition for "optical arrangement" to which the parties has already agreed. Even though it has already agreed to this definition, Erchonia has had ample opportunity to present additional briefing and evidence to the Special Master on this issue but has apparently chosen not to do so. (Report, pp. 119-20; p. 123.) Erchonia has not suffered any undue prejudice. A. Erchonia Has Failed To Present Competent Evidence Of How One Of Skill In The Art Would Construe The Term "Optical Arrangement" As Used In The '096 Patent

Erchonia next urges that "optical arrangement," as used in Claim 1 of the '096 Patent, can be a single lens or other optical device based merely upon a few prior art references that allegedly use "optical arrangement" to refer to a single optical device.3 (Opposition, pp. 6-7; [Docket No. 326].) Erchonia's proposed approach to construing Erchonia alleges that the Special Master did not consider these prior art references. In fact, the Special Master did consider these prior art references, but has concluded that "the collected uses of 'optical arrangement' in various patents and other materials discussed above generally illustrate or refer to multiple components or multiple optical elements or devices." (Report, p. 122.) -7Document 327 Filed 04/17/2006
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"optical arrangement" is legally erroneous, and is based upon inaccurate representation of the prior art. 1. Erchonia's Proposed Construction Methodology is Legally Erroneous

Erchonia's proposed methodology for construing "optical arrangement" is legally 5 erroneous because it attempts to use extrinsic evidence, consisting of a few prior art 6 references, to contradict the plain meaning of "optical arrangement" that has been derived 7 solely from the intrinsic evidence. Phillips v. AWH Corp., 415 F.3d 1303, 1324 (Fed. Cir. 8 2005); Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1584 (Fed. Cir. 1996). Using 9 only the intrinsic evidence, the Special Master has properly concluded that "optical 10 arrangement" requires at least two optical devices. (Report, pp. 120-22.) The Special 11 Master has confirmed this conclusion by resorting to reliable extrinsic evidence in the 12 form of dictionary definitions and the collective uses of the term in the prior art. (Id., p. 13 122.) The Special Master's claim construction methodology is correct as a matter of law 14 and Erchonia's is incorrect. Texas Digital Sys., Inc. v. Telegenix, Inc. 308 F.3d 1193, 15 1203 (Fed. Cir. 2002) (where intrinsic evidence resolves claim ambiguity, reference to 16 extrinsic evidence is improper.) But even if these prior art references were considered, 17 they do not show what Erchonia claims. 18 2. 19 20 21 22 23 24 25 26 27 28 The Ohshiro Reference Discloses a Two Lens Optical Arrangement

The first prior art reference upon which Erchonia relies is U.S. Patent No. 4,905,690 to Ohshiro et al. (Copy attached hereto as Exhibit 1; hereinafter

"Ohshiro"). As an initial matter, the term "optical arrangement" is not even used in Ohshiro. (See Id.) Instead, Ohshiro discloses the use of "a series of lenses which make the laser beams emitted from the semiconductor lasers parallel and also focus them to a single point to form a laser beam for use in medical treatment." (Report, p. 49, quoting Ohshiro; Ohshiro, Abs.; emphasis added.) Erchonia argues that, in rejecting Claim 5 in the '096 Patent application based on Ohshiro in conjunction with two other prior art references that disclose a line generating

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prism, "the Patent Examiner considered the possibility of a single prism acting as an optical arrangement." (Opposition, p. 6.) In fact, the Special Master has already rejected this argument as not persuasive, finding that the Patent Examiner was actually rejecting a claim that included "not one, but two optical devices." (Report, p. 118.) In other words, the Patent Examiner was aware that a line generating prism could be substituted for the focusing lens of the two lens combination of Ohshiro. Erchonia's claim that Ohshiro suggests that one of skill in the art would understand "optical arrangement" in the '096 Patent to refer to a single lens is meritless. 3. The '345 Patent Uses "Optical Arrangement" to Refer to Multiple Optical Devices

Erchonia next claims that U.S. Patent No. 5,822,345 to Sousa et al. ("the '345 11 Patent;" copy attached as Exhibit 2) uses "optical arrangement" to refer to a single lens. 12 This claim is false. The quote from the '345 Patent that Erchonia relies upon must be 13 considered in its textual context. The '345 Patent states: 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 ('345 Patent, col. 5, l. 62 ­ col. 6, l. 8; emphasis added.) The use of the plural term "lenses" shows that the '345 Patent drafter was using "optical arrangement" to refer to at least two optical devices in combination. 4. The '966 Patent Does Not Prove How One of Skill in the Art Would Understand "Optical Arrangement" as Used in the '096 Patent The output of laser 60 pumps a laser crystal 75, and it is the emission of crystal 75 that actually reaches the recording medium 50. A series of lenses 77, 79 concentrate the output of laser 60 onto an end face 85 of crystal 75. Radiation disperses as it exits slit 69 of laser 60, diverging at the slit edges. Generally the dispersion (expressed as a "numerical aperture," or NA) along the short or "fast" axis shown in FIG. 1 is of primary concern; this dispersion is reduced using a divergence- reduction lens 77. A preferred configuration is a completely cylindrical lens, essentially a glass rod segment of proper diameter; however, other optical arrangements, such as lenses having hemispheric cross-sections or which correct both fast and slow axes, can also be used to advantage.

The last prior art reference upon which Erchonia relies is U.S. Patent No. 5,200,966 to Esterowitz et al. ("the '966 Patent;" copy attached as Exhibit 3.) Erchonia argues that

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the following single passage from the '966 Patent establishes that one of skill in the art would understand "optical arrangement" as used in the '096 Patent to refer to a single lens: Optical system 13, which can be a focusing lens or other suitable optical arrangement, is utilized to collect and focus the pump beam from pump laser 11 to crystal 15 to essentially match the 970 nm pump beam to the cavity mode of the Er.sup.3+ :GSGG crystal 15. Optical system 13 may have a focal length of 2.5 cm, for example. ('966 Patent, col. 7, ll. 19-25.) To reach this conclusion, one must read "other suitable optical arrangement" to refer back to "focusing lens," instead of "optical system." Nevertheless, it appears to REM that the '966 Patent drafter was using "optical arrangement" consistent with a definition requiring two or more optical devices. But even if the '966 Patent drafter was equating a single lens to an "optical arrangement," this one use of the term is not sufficient to prove how one of relevant skill in the art would understand "optical arrangement" at the time the '096 Patent application was filed. Phillips, 415 F.3d at 1313 ("We have made clear, moreover, that the ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application."). Indeed, Erchonia has failed to come forth with any evidence connecting this one use to what those of skill in the art for the field of the '096 Patent understood at the time that the '096 Patent application was filed. Id. B. The Special Master Has Not Read The Preferred Embodiment Into The Term "Optical Arrangement"

Erchonia also contends that the Special Master read the preferred embodiment into 22 the definition of "optical arrangement." (Opposition, p. 7.) As noted in the Report, the 23 preferred embodiment of the "optical arrangement" disclosed in the '096 Patent 24 specification is a combination of a collimating lens and line generating prism. (Report, 25 p. 120.) Incredibly, Erchonia admits that the Special Master' construction does not limit 26 the term "optical arrangement" to a combination of a collimating lens and line generating 27 prism. 28 (Id., pp. 7-8.) Therefore, the Special Master has not read the preferred

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embodiment into the proposed construction for "optical arrangement." contention simply makes no sense. C. The Definition Of "Optical Arrangement" In Claim 1 Is Broader Than In Claim 4 ­ Claim Differentiation Is Maintained

Erchonia's

Erchonia contends that the claim differentiation doctrine requires no numerical limitation for the "optical arrangement." As noted in Erchonia's opening Markman brief, this doctrine applies where the only meaningful distinction between an independent and dependent claim is the limitation at issue, thereby dictating that the limitation should not be read into the independent claim. (Erchonia Brief Re Patent Claim Construction, p. 10, [Docket No. 239] citing, Wenger Mfg. Inc. v. Coating Mach. Sys. Inc., 239 F.3d 1225, 1233 (Fed. Cir. 2001).) Erchonia's attempted use of the claim differentiation doctrine here is misplaced. The Special Master's construction for "optical arrangement" merely specifies that there must be at least two optical devices, without specifying what those two optical devices must be. The "optical arrangement" in independent Claim 1 can include other combinations of optical devices. Dependent Claim 4, on the other hand, specifies that the two optical devices must be a collimating lens and a line generating prism. Thus, Claim 1 is necessarily broader than Claim 4. This is a meaningful difference between Claim 1 and Claim 4 ­ claim differentiation is maintained. D. The Special Master Did Not Assign A Burden Of Proof To Erchonia

In its final challenge to the Report, Erchonia claims that the Special Master 22 improperly imposed a burden of proof upon Erchonia. 23 challenges, this assertion is meritless. 24 The Special Master has merely commented that neither party pointed to evidence 25 in the record providing guidance as to how one of ordinary skill in the art would 26 understand the term "optical arrangement." (Report, p. 119.) The Special Master further 27 noted that Erchonia failed to provide evidence in support of some of its claim construction 28 arguments. (Id., pp. 121, 123.) This is not an assignment of burden of proof to Erchonia. -11Document 327 Filed 04/17/2006 As with Erchonia's other

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It is merely an observation that Erchonia has to come forward with evidence to support its arguments. E. "Optical Arrangement," As Used In The '096 Patent, Requires Two Or More Optical Devices 1. Legal Standards for Construing Disputed Claim Language

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The claim language itself governs its meaning. Metabolite Labs, Inc. v. Labcorp of Am. Holdings, 370 F.3d 1354, 1360 (Fed. Cir. 2004). In construing claims, the Court may look to intrinsic evidence, consisting of the claims themselves, the specification and the prosecution history. Markman v. Westview Instruments Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc), aff'd, 517 U.S. 370 (1996); Vitronics Corp., 990 F.3d at 1582 ("Such intrinsic evidence is the most significant source of the legally operative meaning of disputed claim language."). "The general rule is . . . that terms in the claim are to be given their ordinary and accustomed meaning." Johnson Worldwide Assoc. Inc. v. Zebco Corp., 175 F.3d 985, 990 (Fed. Cir. 1999). But it is "always necessary to review the specification to determine whether the inventor has used any terms in a manner inconsistent with their ordinary meaning. The specification acts as a dictionary when it expressly defines terms used in the claims or when it defines terms by implication." Vitronics Corp., 90 F.3d at 1582, citing, Markman, 52 F.3d at 979. The patent specification contains a written description of the invention. 35 U.S.C. § 112. That description acts as a sort of dictionary, which explains the invention and is the "single best guide" to determining the legal meaning of disputed claim terms. Vitronics, 90 F.3d at 1582. The prosecution history "contains the complete record of all the proceedings before the Patent and Trademark Office, including any express representations made by the applicant regarding the scope of the claims. As such, the record before the Patent and Trademark Office is often of critical significance in determining the meaning of the

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claims." Id. (citations omitted); see also, Southwall Tech., Inc. v. Cardinal IG Co., 54 F.3d 1570, 1576 (Fed. Cir. 1995). Any evidence outside the claims, specification and file history constitutes extrinsic evidence. Vitronics Corp., 90 F.3d at 1584: Within the class of extrinsic evidence, the court has observed that dictionaries and treatises can be useful in claim construction. We have especially noted the help that technical dictionaries may provide to a court to better understand the underlying technology and the way in which one of skill in the art might use the claim terms. Because dictionaries, and especially technical dictionaries, endeavor to collect the excepted meanings of terms used in various fields of science or technology, those resources have been properly recognized as among the many tools that can assist the court in determining the meaning of particular terminology to those of skill in the art of the invention. Such evidence, we have held, may be considered if the court deems it helpful in determining the true meaning of language used in the patent claims. .... We have viewed extrinsic evidence in general as less reliable than the patent and its prosecution history in determining how to read claim terms, for several reasons. First, extrinsic evidence by definition is not part of the patent and does not have the specification's virtue of being created at the time of patent prosecution for the purpose of explaining the patent's scope and meaning. Second, while claims are construed as they would be understood by a hypothetical person of skill in the art, extrinsic publications may not be written by or for skilled artisans and therefore may not reflect the understanding of a skilled artisan in the field of the patent. Third, extrinsic evidence consisting of expert reports and testimony is generated at the time of and for the purpose of litigation and thus can suffer from bias that is not present in intrinsic evidence. The effect of that bias can be exacerbated if the expert is not one of skill in the relevant art or if the expert's opinion is offered in a form that is not subject to cross-examination. Fourth, there is a virtually unbounded universe of potential extrinsic evidence of some marginal relevance that could be brought to bear on any claim construction question. In the course of litigation, each party will naturally choose the pieces of extrinsic evidence most favorable to its cause, leaving the court with the considerable tasks of filtering the useful extrinsic evidence from the fluff. Phillips, 415 F.3d at 1318-19 (citations omitted).

24 2. 25 The term "optical arrangement" in of itself connotes multiple optical devices. As 26 noted by the Special Master, the general dictionary definition for "arrangement" is 27 "something made by arranging parts or things together." (Report, p. 122.) 28 The Proper Construction of "Optical Arrangement"

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The technical definition of "optical system," which Erchonia now urges to be used, also connotes multiple optical devices. Indeed, the definition of "system" connotes multiple parts. (Id.) The definition of "optical system" is also cast in terms of multiple parts. (Id.) Finally, the term "collection," found in the "optical system" definition, also requires multiple parts: "an accumulation of objects;" "group, aggregate;" "a set." Merriam-Webster's Collegiate Dictionary (10th Ed. 1999) at 225. The '096 Patent specification also supports the conclusion that "optical arrangement" requires two or more optical devices. That is, the only embodiment disclosed in the '096 Patent specification consists of a collimating lens and a line generating prism. No where in the intrinsic evidence is there an example of an optical arrangement consisting of merely one optical device. (Report, p. 120.) Finally, the fact that the term "arrangement" was used inherently requires that there be at least two optical devices to be arranged. Phillips, 415 F.3d at 1314-15 (claim term referring to "steel baffles" strongly implies that "baffles" does not inherently mean objects made of steel). If Erchonia had meant to claim only a single optical device, it could have easily used other language to convey this meaning. For example, Erchonia could have used "at least one optical device" or "an optical device." Erchonia was free to use any language it desired when it obtained the '096 Patent. consequences of its choices. IV. CONCLUSION The Special Master is highly-knowledgeable and experienced in the legally proper methodology for construing disputed patent claim terms. Applying that knowledge and experience, the Special Master has properly construed the term "optical arrangement" as used in the '096 Patent to mean: A collection comprising two or more mirrors, lenses, 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, it is an optical device. It must now live with the

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This definition is virtually identical to that agreed to by Erchonia during the Markman hearing. Nevertheless, Erchonia insists that the Special Master somehow erred in reaching this definition. For the reasons set forth above, REM respectfully requests that the Court reject the basis for Erchonia's Objection and affirm and adopt the Special Master's Report in its entirety. Alternatively, should the Court believe that the Special Master has erred in construing "optical arrangement," REM requests that the Court remand the matter to the Special Master for further proceedings, as the Special Master is already fully knowledgeable of the issues and can most efficiently address any such error.

Respectfully submitted, Dated: April 17, 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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CERTIFICATE OF SERVICE I hereby certify that on April 17, 2006, I electronically transmitted or caused to be transmitted the attached RESPONSE TO ERCHONIA MEDICAL, INC.'S AND KEVIN TUCEK'S OBJECTIONS TO SPECIAL MASTER'S FINAL REPORT AND RECOMMENDATION ON CLAIM CONSTRUCTION BY ROBERT E. MORONEY, LLC, ROBERT E. MORONEY AND A MAJOR DIFFERENCE, INC. on behalf of Robert E. Moroney, LLC, 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] Michael S. Rubin: [email protected], [email protected] Ray Kendall Harris: [email protected], [email protected] Timothy R. Hyland: [email protected], [email protected], [email protected] Steven Plitt: [email protected], [email protected], [email protected] Dominic Lewis Verstegen: [email protected], [email protected], [email protected] Bradley R. Jardine: [email protected], [email protected], [email protected] Michael Warzynski: [email protected], [email protected] Scott A. Salmon: [email protected] Ira M. Schwartz: [email protected], [email protected], [email protected] Michael A. Cordier: [email protected], [email protected], [email protected] 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 17th day of April, 2006. By: s/ Benjamin B. Lieb Gregory L. Miles Lori A. Curtis Davis Miles PLLC P.O. Box 15070 Mesa, AZ 85211-3070

J:\4888\-7\PLEADINGS\REM 's Response to Erchonias and Tuceks Objections to Special M aster Report.wpd

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