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

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Plaintiffs,
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RESPONSE TO SPECIAL MASTER'S DRAFT REPORT AND RECOMMENDATION ON CLAIM CONSTRUCTION BY ROBERT E. MORONEY, LLC, ROBERT E. MORONEY AND A MAJOR DIFFERENCE, INC.

v.
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Miki Smith, et al.
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Defendants.
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Robert E. Moroney, LLC, et al. Plaintiffs, v. Erchonia Medical, Inc., et al. Defendants.

Case 2:02-cv-02036-MHM

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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"). The Draft invites the parties to file comments thereto within thirty (30) days, but limited to those instances where the Draft contains clear errors of law or fact, or otherwise requires clarification. Robert E. Moroney, LLC, Robert E. Moroney, and a Major Difference, Inc. (collectively "REM") believe that the Draft requires only one clarification as further delineated below.1 I. THE MEANING OF "OPTICAL ARRANGEMENT" NEEDS CLARIFICATION IN THE DRAFT The parties have disputed the meaning of the term "optical arrangement" as used

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in asserted Claims 1 and 10 of U.S. Patent No. 6,013,096 ("the '096 Patent"). Specifically,
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REM has asserted that the term is either a means-plus-function limitation or a coined term,
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generally requiring a collimating lens and line generating prism arranged in serial
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relationship. (Draft, p. 63.) On the other hand, Erchonia Medical Inc. ("Erchonia") has
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basically asserted that the term requires no definition. (Id.)
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During the Markman hearing, the parties agreed that if "optical arrangement" is not
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a means-plus-function limitation or a coined term, it is essentially analogous to the term
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"optical system" which is defined by the McGraw-Hill Dictionary as "a collection
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comprising mirrors, lens, prisms or other devices placed in some specified configuration,
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which reflect, refract, disperse, absorb, polarize or otherwise act on light." (Tr., p. 40, l.
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18 - p. 45, l. 23.) The parties agreed to this definition with two caveats: (1) that the
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definition must require two or more optical devices; and (2) that the broad language "other
22 23 24 25 26 27 28 Notwithstanding, REM reserves the right to challenge the Special Master's final report and recommendation pursuant to Fed. R. Civ. P. 53 and Fed. R. App. P. 3; Fed. Cir. R. 3. During the Markman hearing, Erchonia expressed concern that this definition could be construed to require two or more of the same optical devices, i.e., "two lenses or two prisms," rather than combinations of different optical devices such as a "lens and a prism." (Tr., p. 45, ll. 2-12.) REM agrees that the definition allows for a combination of two or more different optical devices. Erchonia also expressed concern that a "motorized mirror" could be considered a mechanical device rather than an optical device under the definition. (Id., p. 45, ll. 14-20.) Again, REM agrees that a mirror, whether it is motorized or not, is an optical device. -2Document 322
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devices" must be limited to other optical devices.2 (Id.) Although the Draft refers to this

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agreement, it does not set forth the agreed definition, concluding that in light of the parties' apparent agreement "[n]o further construction of the limitation is believed necessary." (Draft, p. 112.) However, there are two compelling reasons why the Draft should be supplemented to set forth the definition of "optical arrangement" to which the parties have agreed. A. The Jury Must Be Instructed As To The Proper Literal Scope Of "Optical Arrangement"

First, the agreed definition of "optical arrangement" is necessary to ensure that the
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jury will properly understand the meaning and scope of that term as it has been used by
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Erchonia in the asserted '096 Patent claims. Sulzer Textil A.G. v. Picanol N.V., 358 F.3d
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1356, 1366 (Fed. Cir. 2004) ("[T]he district court must instruct the jury on the meanings
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to be attributed to all disputed terms used in the claims in suit so that the jury would be
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able to 'intelligently determine the questions presented.'"). If the jury is not so instructed,
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Erchonia may argue at trial that a single optical device such as a single collimating lens,
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or that other devices that are not optics (such as a mask), satisfies the literal scope of this
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limitation. The jury must be instructed that the literal scope of "optical arrangement" is
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not so broad, as Erchonia has conceded. (Tr., p. 40, l. 18 ­ p. 45, l. 23.)
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B.
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Without Clarification, The Proper Meaning Of "Optical Arrangement" Will Remain Disputed

Second, without REM's requested clarification of the meaning of "optical arrangement," its literal meaning will likely remain disputed. It is REM's contention that Erchonia has conceded that "optical arrangement" literally requires at least two or more optical devices. Indeed, the word "arrangement" inherently requires that there be at least two optical devices to be arranged. See Philips v. AWH Corp., 415 F.3d 1303, 1314-15 (Fed. Cir. 2005) (en banc) (claim term referring to "steel baffles" strongly implies that "baffles" does not inherently mean objects made of steel). REM expects, however, that if the Draft is not clarified, Erchonia will likely assert that the Special Master's determined that "optical arrangement" is not a means-plusfunction limitation or a coined term constitutes implicit recognition of Erchonia's proposed

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construction for the term. Thus, as noted above, Erchonia could then argue that a single optical device such as a single collimating lens, or that a mechanical device such as a mask, satisfies the literal scope of this limitation. II. REM'S PROPOSED CLARIFICATION FOR THE DRAFT To enable the jury to clearly understand the literal scope of the asserted '096 Patent claims, and to avoid continuing dispute over the meaning of "optical arrangement," REM urges that the Draft be clarified by inserting the following language before the last sentence of Section D.4., currently on page 112: Specifically, the parties generally agreed that "optical arrangement" means "a collection comprising two or more mirrors, lens, prisms or other optical devices placed in some specified configuration, which reflect, refract, disperse, absorb, polarize or otherwise act on light." Id. Alternatively, REM urges the Special Master to otherwise clarify that the term "optical

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arrangement," as used in the asserted '096 Patent claims, has the meaning agreed to by the
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parties during the Markman hearing.
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Respectfully submitted,
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Dated: February 9, 2006

By:

s/ Robert R. Brunelli 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 February 9, 2006, I electronically transmitted or caused to be transmitted the attached RESPONSE TO SPECIAL MASTER'S DRAFT 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]

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Michael S. Rubin: [email protected], [email protected]
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Ray Kendall Harris: [email protected], [email protected]
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Timothy R. Hyland: [email protected], [email protected], [email protected]
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Steven Plitt: [email protected], [email protected], [email protected]
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Dominic Lewis Verstegen: [email protected], [email protected], [email protected] Bradley R. Jardine: [email protected], [email protected], [email protected] Michael Warzynski: [email protected], [email protected]

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Scott A. Salmon: [email protected]
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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 Gregory L. Miles Lori A. Curtis Davis Miles PLLC P.O. Box 15070 Mesa, AZ 85211-3070 Gale Peterson Cox Smith Matthews 112 E Pecan Street, Suite 1800 San Antonio, TX 78205-1521 DATED THIS 9th day of February, 2006. By:
J:\4888\-7\PLEADINGS\REM's Response to Special Masters Draft Report.wpd

s/ Robert R. Brunelli

Case 2:02-cv-02036-MHM

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