Free Motion for Miscellaneous Relief - District Court of Arizona - Arizona

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Peter C. Warner (Ariz. State Bar #009338) [email protected] 1723 W. 4th Street Tempe, AZ 85281-2404 Tel.: (480) 894-6500 Fax: (602) 798-8279 Attorney for Plaintiff IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF ARIZONA Koepnick Medical & Education Research Foundation, L.L.C., Plaintiff, vs. Alcon Laboratories, Inc., et al., Defendants. ) ) ) ) ) ) ) ) ) ) ) ) ) ) No. CIV 03-0029-PHX-JAT PLAINTIFF'S MOTION TO VACATE 5/17/06 TAXATION OF COSTS ORDER

Plaintiff Koepnick Medical & Education Research Foundation, L.L.C.,
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pursuant to Rule 54(d)(1), Fed. R. Civ. P., and LRCiv 54.1(b), moves to vacate the
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Taxation of Costs Order dated May 17, 2006 and deny the costs awarded therein
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to Defendants and Counterclaimants Alcon Laboratories, Inc., Alcon
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RefractiveHorizons, Inc., and Southwestern Eye Center, Ltd. (collectively, the
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"Alcon Defendants") because the Alcon Defendants are not prevailing parties
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under Rule 54(d). This motion is supported by the attached memorandum of
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points and authorities. A draft order is attached hereto.
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Respectfully submitted this 30th day of May, 2006.
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PETER C. WARNER, P.C.
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s/ Peter C. Warner_______ By: Peter C. Warner Attorney for Plaintiff/Counterclaim-Defendant

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MEMORANDUM OF POINTS AND AUTHORITIES On March 1, 2006, the Alcon Defendants filed their Memorandum of Taxable Costs. On March 10, 2006, Plaintiff filed its Objection to that Memorandum. On May 17, 2006, the Clerk of the Court entered a Taxation of Costs Order taxing $4,208.38 of costs in favor of the Alcon Defendants against Plaintiff. Dkt. # 132. This action involved, inter alia, a claim for patent infringement by Plaintiff against the Alcon Defendants and a counterclaim by the Alcon Defendants against Plaintiff for violation of Section 2 of the Sherman Antitrust Act. Dkt. #1 and Dkt. #30. The Alcon Defendants' monopolization counterclaim was not a defense to Plaintiff's patent infringement claim. The Alcon Defendants sought costs on the basis that this Court entered a Consent Judgment of non-infringement of U.S. Patent No. 5,658,303 in favor of all Defendants and against Plaintiff. Dkt. #125. The Consent Judgment was entered based the Court's construction of certain terms of the patent. Id.; Dkt. #119. Plaintiff acknowledges that the Alcon Defendants therefore prevailed on the patent infringement claim. However, Plaintiff prevailed on the Alcon Defendants' Section 2 monopolization counterclaim. After extensive briefing (Dkt. ##34, 36, 40) and oral argument (Dkt. # 41), the Court initially dismissed the antitrust counterclaim without prejudice and denied without prejudice the Alcon's request to amend the antitrust counterclaim. Dkt. #42. After further extensive briefing (Dkt. ##53, 57, 61) and further oral argument (Dkt. #74), the Court denied the Alcon Defendants' subsequent motion to amend the antitrust counterclaim, this time with prejudice. Dkt. #80.

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Therefore, this case was effectively a draw as between Plaintiff and the Alcon Defendants. 1 The Alcon Defendants are no more prevailing parties than Plaintiff. Amarel v. Connell, 102 F.3d 1494, 1523 (9th Cir. 1996) ("In the event of a mixed judgment, however, it is within the discretion of a district court to require each party to bear its own costs. Testa v. Village of Mundelein, 89 F.3d 443 (7th Cir.1996) (requiring each party to bear its own costs where plaintiff prevailed on one claim and defendant prevailed on federal claim) (citations omitted). In the event that plaintiffs prevail on their Section 1 claim on remand, the resultant mixed judgment may warrant that each party bear its own costs."); Ruiz v. A.B. Chance Co., 234 F.3d 654, 670 (Fed. Cir. 2000) ("In this case, [asserted infringers] prevailed on the patent invalidity issue, but [patentee] prevailed on all of the other issues, including the non-patent issues. The district court did not err in refusing to award costs, for neither party prevailed sufficiently to require an award of costs and make a decision not to do so an abuse of discretion."); and Kalkowski v. Ronco, Inc., 424 F. Supp. 343, 354 (N.D. Ill. 1976). For the foregoing reasons, Plaintiff requests the Court to vacate the Taxation of Costs Order dated May 17, 2006 and order that Plaintiff and the Alcon Defendants bear their own costs in this action. Respectfully submitted this 30th day of May, 2006. PETER C. WARNER, P.C. s/ Peter C. Warner_______ By: Peter C. Warner Attorney for Plaintiff/Counterclaim-Defendant

In sharp contrast, co-defendants Bausch &Lomb Incorporated and SwagelWooton Eye Center, Ltd. did not file any antitrust counterclaims. Arguably, they would be prevailing parties. However, they elected not to seek taxation of costs against Plaintiff.
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Copy of the foregoing and attached proposed order served via the Court's ECF system this 30th day of May, 2006, to: Timothy J. Burke Fennemore Craig PC 3003 N. Central Ave., Ste. 2600 Phoenix, AZ 85012-2913 Mark Deatherage Gallagher & Kennedy, P.A. 2575 E. Camelback Rd. Phoenix, Arizona 85016 Copy of the foregoing mailed this 30th day of May, 2006, to: Joseph R. Re Knobbe Martens Olson & Bear LLP 2040 Main St., 14th Floor Irvine, CA 92614 David Shukan Kirkland & Ellis 777 S. Figueroa St., 34th Floor Los Angeles, CA 90017-3140 s/ Peter C. Warner_______

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