Free Reply - District Court of Arizona - Arizona

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Ira M. Schwartz (I.D. No. 010448) Michael A. Cordier (I.D. No. 014378) DeCONCINI McDONALD YETWIN & LACY, P.C. 7310 N. 16th St., Suite 330 Phoenix, Arizona 85020 Telephone (602) 282-0500 (602) 282-0520 (Facsimile) [email protected] [email protected]
Attorneys for Plaintiff

IN THE UNITED STATES DISTRICT COURT IN AND FOR THE DISTRICT OF ARIZONA

DECONCINI MCDONALD YETWIN & LACY, P.C.

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Suite 330 Phoenix, Arizona 85020

Erchonia Medical Inc., et al Plaintiff, v. Miki Smith, et al Defendants. Case No.: CIV 02-2036-PHX-MHM Consolidated with CIV 02-2048-PHX-MHM and CIV 02-2353-PHX-MHM Erchonia Medical Inc., et al Plaintiff, v. Miki Smith, et al Defendants. Robert E. Moroney, LLC Plaintiff, v. Erchonia Medical, Inc., et al Defendants. REPLY TO RESPONSE TO SPECIAL MASTER'S DRAFT REPORT AND RECOMMENDATION ON CLAIM CONSTRUCTION

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7310 N. 16th Street,

Case 2:02-cv-02036-MHM

Document 323

Filed 02/21/2006

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Plaintiffs, Erchonia Medical Inc. and Kevin Tucek (collectively referred to herein as "Erchonia") , submit this reply in opposition to the Response To Special Master's Draft Report and Recommendation on Claim Construction by Robert E. Moroney, Robert E. Moroney, LLC, and A Major Difference (referred to herein as the "REM Response"). REM has requested that the Special Master's Draft Report and Recommendation on Claim Construction (the "Draft Report") be clarified with respect to the definition of the term "optical arrangement" as used in Claims 1 and 10 of U.S. Patent No. 6,013,096 (the "'096 Patent"). The proper construction of this term was discussed at length during oral argument on claim construction and the Draft Report comments extensively on the definition of this term. See Draft Report pp. 70-112. At the hearing on this matter, REM's counsel conceded that if the term "optical arrangement" was held not to be a means-plus-function claim or coined term, then this term was equivalent to the term "optical system." (see Tr. p. 43). In the end, the Special Master ruled that this term was not drafted as a "means plus function" claim or a coined term (Draft Report, p. 112). Based on this determination and the discussion of counsel at the Markman hearing, the Special Master ruled no further determination was necessary. Despite this ruling, REM requests that the Special Master further clarify the meaning of this term. Erchonia agrees with the Special Master's determination and believes that no further clarification is necessary. It is true that, based on the Special Master's determination and the parties' arguments at the Markman hearing, the parties essentially agree that an "optical arrangement" is

DECONCINI MCDONALD YETWIN & LACY, P.C.

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7310 North 16th Street, Suite 330 Phoenix, Arizona 85020

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equivalent to an "optical system." Further, the parties agree the McGraw-Hill Dictionary of Scientific and Technical Terms (5th Ed., 1994) (cited in the Draft Report at p. 70) is an appropriate starting point for the definition of "optical system." This definition is, "[a] collection comprising mirrors, lenses, prisms, and other devices, placed in some specified configuration, which reflect, refract, dispense, absorb, polarize, or otherwise act on light." Draft Report, p. 70. The areas of disagreement, however, are whether this definition is necessary and if so, whether it is adequate or requires some refinement. Erchonia's position is that this definition is not required as the term "optical arrangement" and its equivalent "optical system" are well known and understood in the art and do not require further definition. However, to the extent further clarification is required, Erchonia believes that the above definition of "optical system" applies equally to the definition of "optical arrangement" in this instance and further that above definition of "optical system" is correct as written above and does not require any further modification. REM, however, requests that this definition be modified in two respects. First, they require that the term "other devices" in this definition be limited to "other optical devices." Erchonia objects to this requested modification because it adds nothing to the definition and is redundant with the definition offered. As used in the definition of "optical system," the other devices must, "reflect, refract, dispense, absorb, polarize, or otherwise act on light." As noted in the Draft Report at p. 70, the term "optical" means "pertaining to or utilizing visible or near visible light." Since by definition this "other device" must act in some way on light, to say that this other device is an "optical device" adds nothing to the definition. Words that add nothing to the definition can only serve to add further potential for ambiguity, 3
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DECONCINI MCDONALD YETWIN & LACY, P.C.

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7310 North 16th Street, Suite 330 Phoenix, Arizona 85020

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interpretation or confusion. Therefore, for the sake of clarity, this requested modification should be rejected. REM's second requested refinement is that the optical system must consist of two or more optical devices. Erchonia objects to this proposed construction because the definition of "optical system" does not require such a limitation. In fact, as noted in the draft report, the term "optical arrangement" is not limited to a collimating lens and a line generating prism, or any particular optical arrangement. Draft Report, p. 82. The Special Master goes on to cite the Examiner's language that, it would have been obvious, "to modify the combined device of Ohshiro et al and Blum et al, with Itzkan to provide a line generating prism as an alternative, equivalent means for focusing the light onto the tissue in a line." Draft Report, p. 82 citing Office Action at 4.) In other words, the Examiner at least raises the possibility that the optical arrangement used to generate a line may consist of a single prism. The possibility of having a single device as an optical system was further discussed during the Markman hearing. In response to a question from the Special Master regarding the prior art mechanisms, or arrangements or systems used to generate a line, Mr. Brunelli stated that the Ohshiro Patent, which was a prior art reference cited in the `096 patent file history, had laser light which was focused with, "just a cylindrical lens standing alone." Therefore, it is clear that even REM understood that a single optical element might constitute some type of optical system, optical mechanism, or optical arrangement. Tr. p. 32. In conclusion, Erchonia believes that the term "optical arrangement" as used in the `096 Patent is equivalent to "optical system," a term which is well understood in the art. To

DECONCINI MCDONALD YETWIN & LACY, P.C.

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7310 North 16th Street, Suite 330 Phoenix, Arizona 85020

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the extent further clarification is needed, the appropriate definition of an optical system is, "[a] collection comprising mirrors, lenses, prisms, and other devices, placed in some specified configuration, which reflect, refract, dispense, absorb, polarize, or otherwise act on light." No modification to this definition is needed or warranted. DATED this 21st day of February, 2006. DeCONCINI McDONALD YETWIN & LACY, P.C.

DECONCINI MCDONALD YETWIN & LACY, P.C.

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7310 North 16th Street, Suite 330 Phoenix, Arizona 85020

By s/Ira M. Schwartz Ira M. Schwartz Michael A. Cordier 7310 North 16th Street, Suite 330 Phoenix, Arizona 85020 Attorneys for Plaintiff Erchonia Medical Inc.

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Certificate of Service I certify that on February 21, 2006, I electronically transmitted the attached document to the Clerk's Office using the CM/ECF System for filing and transmittal of a Notice of Electronic Filing to those attorneys registered with CM/ECF: Michael Warzynski, Esq. JARDINE BAKER HICKMAN & HOUSTON PLLC 3300 N. Central Ave., Suite 2600 Phoenix, AZ 85012 Co-Counsel for Erchonia Medical Inc. Benjamin B. Lieb, Esq. Robert Brunelli, Esq. SHERIDAN ROSS PC 1560 Broadway, Suite 1200 Denver, CO 80202 Attorneys for Robert E. Moroney, LLC, Robert E. Moroney, and A Major Difference Inc. David Bray, Esq. MARISCAL WEEKS MCINTYRE & FRIEDLANDER PA 2901 N. Central Ave., Suite 200 Phoenix, AZ 85012 Attorneys for Robert E. Moroney, LLC, Robert E. Moroney, and A Major Difference Inc. Gregory L. Miles, Esq. Lori A. Curtis, Esq. DAVIS MILES PLLC 1550 E. McKellips Road, Suite 101 Mesa, AZ 85203 Attorneys for John and Claudette Brimhall Dominic L. Verstagen, Esq. KUNZ PLITT HYLAND DEMLONG & KLEIFIELD 3838 N. Central Ave. Suite 1500 Phoenix, AZ 85012 Attorneys for John and Claudette Brimhall Scott A. Salmon, Esq. THE CAVANAGH LAW FIRM 1850 N. Central Avenue, Suite 2400 Phoenix, AZ 85004 Attorneys for George Gonzalez and Lorena Guzman Gordon S. Bueler, Esq. BUELER JONES, LLP 1300 N. McClintock Drive, Suite B-4 Chandler, AZ 85226 Attorneys for Miki Smith and KMS Marketing, Inc.

DECONCINI MCDONALD YETWIN & LACY, P.C.

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7310 North 16th Street, Suite 330 Phoenix, Arizona 85020

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And a copy was sent by facsimile and U.S. Mail to: Gale R. Peterson, Esq. Cox Smith Matthews 112 East Pecan St., Suite 1800 San Antonio, TX 78206 Special Master /s/ Ira M. Schwartz

DECONCINI MCDONALD YETWIN & LACY, P.C.

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7310 North 16th Street, Suite 330 Phoenix, Arizona 85020

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