Free Response to Motion - District Court of Arizona - Arizona

1 Martin W. Schiffmiller KIRSCHSTEIN, OTTINGER, 2 ISRAEL & SCHIFFMILLER, P.C. 489 Fifth Avenue, 17th Floor 3 New York, New York 10017 Telephone: 212) 697-3750 4 James W. Armstrong (No. 009599) 5 SACKS TIERNEY P.A. 4250 N. Drinkwater Blvd., 4th Floor 6 Scottsdale, Arizona 85251-3693 Telephone: (480) 425-2600 7 [email protected] 8 Attorneys for Defendant Liz Claiborne, Inc. 9 10 11
P.A., ATTORNEYS 4250 NORTH DRINKWATER BOULEVARD FOURTH FLOOR SCOTTSDALE, ARIZONA 85251-3693

UNITED STATES DISTRICT COURT DISTRICT OF ARIZONA

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12 Lemelson Medical, Education & Research Foundation, Limited Partnership, 13 Plaintiff, 14 v. 15 CompUSA, Inc., et al., 16 Defendants. 17 18 Liz Claiborne, Inc., 19 20 v. 21 Lemelson Medical, Education & Research Foundation, Limited Partnership, 22 Counterdefendant. 23 24 Counterclaimant,

No. CIV'00-0663-PHX-HRH RESPONSE TO PLAINTIFF'S MOTION TO DISMISS CASE AND CROSS-MOTION TO ADD CONDITION UPON DISMISSAL

Pursuant to Rule 41(a)(2) of the Federal Rules of Civil Procedure, Defendant Liz

25 Claiborne, Inc. ("Claiborne") hereby responds to the Motion to Dismiss Case filed by 26 Lemelson Medical, Education & Research Foundation ("Lemelson") on December 22, 27 2005. As discussed in the following Memorandum of Points and Authorities, while

28 Claiborne does not oppose the dismissal of Lemelson's latest Amended Complaint and
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1 Claiborne's Counterclaim, Claiborne respectfully urges the Court to condition that 2 dismissal upon Claiborne's right to seek an award of its reasonable attorneys' fees pursuant 3 to 35 U.S.C. § 285 and in accordance with Rule 54.2 of this Court's Local Rules of Civil 4 Procedure. 5 6 MEMORANDUM OF POINTS AND AUTHORITIES This lawsuit is one of five simultaneously filed in the District of Arizona by As amended, Lemelson's

7 Lemelson more than five years ago, on April 4, 2000.

8 Complaints accused hundreds of companies of infringing various patents issued to the late 9 Jerome H. Lemelson in the early 1990s, for which Lemelson claimed the benefit of the 10 filing dates of two patent applications submitted by Mr. Lemelson to the U.S. Patent and 11 Trademark office in 1954 and 1956. According to Lemelson, those patents purportedly
P.A., ATTORNEYS 4250 NORTH DRINKWATER BOULEVARD FOURTH FLOOR SCOTTSDALE, ARIZONA 85251-3693

12 encompassed bar code scanners and similar "machine vision" equipment like that 13 developed and sold by manufacturers such as Symbol Technologies, Inc. ("Symbol") and 14 Cognex Corporation ("Cognex"). Rather than sue Symbol, Cognex or any other

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15 manufacturers, however, Lemelson's lawsuits in Arizona targeted those manufacturers' 16 customers, like Claiborne, which had no role in either making or designing the scanning 17 technology at issue. Accordingly, Lemelson's claims of infringement in the instant lawsuit 18 were based merely upon the Defendants' use of bar code scanners and/or similar systems in 19 the routine course of operating their unrelated wholesale and retail sales and manufacturing 20 businesses. 21 Fortunately, however, prior to the commencement of the Arizona lawsuits, and in

22 response to letters sent by Lemelson to their customers alleging infringement, Symbol and 23 Cognex filed their own actions against Lemelson in the District of Nevada, seeking a 24 declaratory judgment that, inter alia, Lemelson's patents were invalid or unenforceable 25 under the equitable doctrine of prosecution laches. See Symbol Technologies, Inc. v. 26 Lemelson Med., Educ. & Research Found., Ltd. P'ship, No. CV-N-99-00397 (D. Nev. filed 27 July 21 1999); Cognex Corp. v. Lemelson Med., Educ. & Research Found., Ltd. P'ship, No. 28 CV-N-99-00533 (D. Nev. filed Sept. 27, 1999). In light of the long prior pendency of these
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1 manufacturer declaratory judgment actions, which were later consolidated before the
1 2 Nevada District Court on March 21, 2000, Claiborne and numerous other Defendants

3 moved to stay the instant lawsuit in October 2000, pending a final determination of the 4 validity of the same "bar code" and "machine vision" patents at issue here in the Nevada
2 5 litigation.

6

In its November 6, 2000 Response to the Defendants' stay motions, Lemelson

7 conceded that it made "little sense, as a matter of judicial administration or cost to the 8 parties, to litigate parties, to litigate this case in parallel with the other actions." 9 Accordingly, on April 3, 2001, the Court ordered that "this action is stayed pending the 10 entry of a final non-appealable judgment in the Symbol/Cognex litigation currently pending 11 in the United States District Court for the District of Nevada." The Court further ordered
P.A., ATTORNEYS 4250 NORTH DRINKWATER BOULEVARD FOURTH FLOOR SCOTTSDALE, ARIZONA 85251-3693

12 that the parties should notify it when such a judgment was entered, at which time further 13 orders would be made. 14 Meanwhile, following extensive pretrial proceedings and an interlocutory appeal to

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15 the Federal Circuit, the consolidated Symbol/Cognex litigation was tried before the Nevada 16 District Court from November 18, 2002 through January 17, 2003. 301 F.Supp. 2d at 1150. 17 After five and one-half months of additional post-trial briefing, the Nevada court entered its 18 final judgment on January 23, 2004, concluding (among other holdings) that Lemelson's 19 alleged patent rights had been forfeited under the equitable doctrine of prosecution laches. 20 301 F.Supp. 2d at 1154-57. Thus, as explained by the district court: 21 22 23 24 See Symbol Technologies, Inc. v. Lemelson Med., Educ. & Research Found., Ltd. P'ship, 301 F. Supp.2d 1147, 1150 (D. Nev. 2004).
2 1

The defense of prosecution laches was first recognized in the patent context nearly 150 years ago in Kendall v. Winsor, 62 U.S. 322, 21 Id., 62

Prior to submitting its stay motion Joinder on October 27, 2000, Claiborne filed an 25 Answer on October 2, 2005, denying any liability on the infringement claims asserted in Lemelson's First Amended Complaint, together with a Counterclaim seeking declaratory 26 and injunctive relief based upon the invalidity and unenforceability of Lemelson's patents. The Court later permitted Lemelson to amend its Complaint two more times, without 27 requiring the Defendants to submit additional answers. Lemelson's Third Amended Complaint was filed on August 30, 2002. Both Claiborne's and Lemelson's pleadings also 28 alleged that attorneys' fees were awardable under 35 U.S.C. § 285.
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U.S. at 329. Sixty- years later, in Woodbridge v. United States, 263 U.S. 50, 44 S.Ct. 45, 68 L.Ed. 159 (1923), and Webster Electric Co. v. Splitdorf Electrical Co., 264 U.S. 463, 44 S.Ct. 342, 68 L.Ed. 792 (1922), the Supreme Court applied the defense of prosecution laches to prevent the applicant from deliberately delaying the issuance of a patent solely to increase its commercial value, and to prevent a patent applicant from unreasonably postponing the time when the public could enjoy the free use of an invention.

6 Symbol/Cognex, 301 F.Supp.2d at 1154. 7 In applying these standards to the evidence introduced at trial, the Symbol/Cognex

8 court found that: 9 10 11
P.A., ATTORNEYS 4250 NORTH DRINKWATER BOULEVARD FOURTH FLOOR SCOTTSDALE, ARIZONA 85251-3693

Lemelson's 18 to 39 year delay in filing and prosecuting the asserted claims under the fourteen patents-in-suit after they were first purportedly disclosed in the 1954 and 1956 applications was unreasonable and unjustified and that the doctrine of prosecution laches renders the asserted claims unenforceable against Symbol and Cognex. The first patent based on Lemelson's 1954 application issued in 1962, and the first patent based on Lemelson's 1956 application issued in 1963. From that point forward, the public was entitled to assume that what was not claimed was dedicated to the public.

12 13 14

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15 301 F.Supp.2d at 1155-56 (citations omitted) (emphasis added). 16 The Nevada District Court further found that the evidence "strongly supported" the

17 following combination of factors asserted by the plaintiffs in support of their prosecution 18 laches claim: 19 20 21 22 23 24 25 (1) Mr. Lemelson's original disclosures were made public in the 1960's and those patents expired by the 1980's; (2) before the asserted claims were filed numerous articles and patents describing machine vision and bar code scanning were published, and commercial products were developed and marketed; (3) Mr. Lemelson was aware of the developments in the machine vision and bar code fields, and yet he still waited; (4) Mr. Lemelson systematically extended the pendency of his applications by sitting on his rights, and sequentially filing one application at a time so that he could maintain co-pendency while waiting for viable commercial systems to be designed and marketed; and (5) Mr. Lemelson (and his new counsel [including those who filed the Arizona lawsuits]) then drafted and prosecuted hundreds of new claims in the late 1980's and 1990's specifically worded to cover those commercial systems.

26 301 F.Supp.2d at 1156 (emphasis added). The Nevada court also noted that of the five 27 million patents issued in the United States between 1914 and 2001, Lemelson patents held 28 the top thirteen positions for the longest prosecutions, and that "[s]ome of the claims
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1 asserted by Lemelson in this case will not expire until 2011, fifty-five years after the 1956 2 application was filed and forty-eight years after the application issued as a patent." Id. 3 Moreover, Lemelson's "culpable neglect" in ignoring "the duty to claim his invention 4 promptly" resulted in a "prejudicial effect ... suffered by the public, and privately by 5 Symbol and Cognex and others, which were denied the ability to distinguish that which is 6 claimed by Lemelson from that which is not." Id. Accordingly, the court aptly concluded 7 that "[i]f the defense of prosecution laches does not apply under the totality of 8 circumstances presented here, the Court can envision very few circumstances under which 9 it would." Id. 10 11
P.A., ATTORNEYS 4250 NORTH DRINKWATER BOULEVARD FOURTH FLOOR SCOTTSDALE, ARIZONA 85251-3693

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Prosecution laches acts to protect the public by forcing patentees to file patent claims in a timely manner. Beyond the extraordinary delay presented here, the record also shows that Lemelson effectively extended his patent monopoly by maintaining co-pendency for nearly forty years through continuation practice, and added new claims to cover commercial inventions in the marketplace years after his original patents had expired. This is precisely the type of prejudice to the public which the equitable doctrine of prosecution laches is designed to guard against. Symbol/Cognex, 301 F.Supp.2d at 1157 (citations omitted). Lemelson subsequently appealed the district court's decision to the Federal Circuit, which in an opinion issued on September 5, 2005 affirmed the holding that Lemelson's asserted patents were unenforceable under the prosecution laches doctrine. Symbol

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Technologies, Inc. v. Lemelson Med., Educ. & Research Found., Ltd. P'ship, 422 F.3d 1378 (Fed. Cir. 2005).3 Specifically, after first explaining that because there may be several "legitimate" reasons for refiling a patent application, the doctrine should be used "sparingly" and "only in egregious cases of misuse of the statutory patent system," the Federal Circuit found that Lemelson's conduct met this strict standard: [R]efiling an application solely containing previously-allowed claims for the business purpose of delaying their issuance can be considered an abuse of the
3

The district court also held in the alternative that the plaintiffs' machine vision and 26 bar code scanning products did not infringe Lemelson's patent claims, and that those claims were otherwise invalid for lack of a "written description" and enablement under 35 U.S.C. 27 § 112. These additional holdings were not addressed by the Federal Circuit in Lemelson's appeal, given the appellate court's finding that the district judge did not abuse his discretion 28 in applying the prosecution laches defense. Symbol/Cognex, 422 F.3d at 1386.
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patent system. * * * In particular, multiple examples of repetitive refilings that demonstrate a pattern of unjustifiably delayed prosecution may be held to constitute laches. Taken singly, the delay in the prosecution on any one particular application will surely not appear to merit relief by the courts in equity. On the other hand, an examination of the totality of the circumstances, including the prosecution history of all of a series of related patents and overall delay in issuing claims, may trigger laches. The district court here heard considerable evidence that that was what occurred in this case. * * * The court also found that Lemelson had engaged in "culpable neglect" during the prosecution of these applications and it recognized the adverse effect on businesses that were unable to determine what was patented from what was not patented. * * * Under those circumstances, we can hardly conclude that the court abused its discretion in holding the involved patents unenforceable ... . The court thoroughly examined the facts and the equities, and it exercised its discretion reasonably.

4 10 422 F.3d at 1385-86 (citations omitted) (emphasis added).

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P.A., ATTORNEYS 4250 NORTH DRINKWATER BOULEVARD FOURTH FLOOR SCOTTSDALE, ARIZONA 85251-3693

Following the definitive outcome of Symbol/Cognex, Lemelson filed its Motion to

12 Dismiss this lawsuit on December 22, 2005. Because Lemelson did not seek the remaining 13 Defendants' stipulation to such a dismissal, however, it may only be granted "upon order of 14 the court and upon such terms and conditions as the court deems proper." Rule 41(a)(2), 15 Fed.R.Civ.P. Moreover, where (as here) a counterclaim has been pleaded by any defendant 16 prior to the service of such a motion, "the action shall not be dismissed against the 17 defendant's objection unless the counterclaim can remain pending for independent 18 adjudication by the court." Id. 19 As mentioned above, by this Response, Claiborne does not intend to oppose the

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20 dismissal of either Lemelson's Third Amended Complaint or Claiborne's Counterclaim, but 21 instead asks that, pursuant to Rule 41(a)(2), the Court condition that dismissal upon 22 Claiborne's right to move for an award of its reasonable attorneys' fees in accordance with 23 the post-judgment procedures set forth in Local Rule 54.2, which states, in pertinent part, 24 that: 25 26 Later, on panel rehearing, the Federal Circuit amended its opinion to extend the district court's laches holding of enforceability of the 76 patent claims asserted by 27 Lemelson to all of the claims contained in the 14 patents at issue. Symbol Technologies, Inc. v. Lemelson Med., Educ. & Research Found., Ltd. P'ship, 429 F.3d 1051 (Fed. Cir. 28 2005).
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Unless otherwise provided by statute or court order entered in an individual case, the party seeking an award of attorneys' fees and related non-taxable expenses shall file and serve a motion for award of attorneys' fees and related non-taxable expenses within fourteen (14) days of the entry of judgment in the action with respect to which the services were rendered. At a minimum, the motion shall specify: (A) The applicable judgment and the statutory or contractual authority entitling the parts to the award; and (B) The amount of attorneys' fees and related non-taxable expenses sought or a fair estimate of such amount. At the time of filing the motion, counsel need not file a memorandum of points and authorities, as required by Rule 7.2, Local Rules of Civil Procedure or the supporting documentation, as required by paragraph (d) of this Local Rule.

10 LRCiv 54.2(b)(1). In the event that the parties cannot voluntarily resolve such a fee claim 11 following the filing of the claimant's initial motion, subparagraph (b)(2) of Local Rule 54.2
P.A., ATTORNEYS 4250 NORTH DRINKWATER BOULEVARD FOURTH FLOOR SCOTTSDALE, ARIZONA 85251-3693

12 then mandates that "the memorandum of points and authorities ... attorneys' fees, and all 13 supporting documentation ... shall be filed and served within sixty (60) days of the entry of 14 judgment in the action with respect to which the services were rendered." 15 Consistent with the procedures specified in Local Rule 54.2, numerous federal

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16 decisions have held that the district court retains jurisdiction following the dismissal of a 17 patent case under Rule 41(a)(2) to decide a defendant's subsequent motion for attorneys' 18 fees under 28 U.S.C. § 285. See, e.g., Samsung Electronics Co. v. Rambus, Inc., 2005 U.S. 19 Dist. LEXIS 27329, at *28-*54 (E.D. Va. Nov. 8, 2005): Highway Equip. Co. v. FECO, 20 Ltd., 2005 U.S. Dist. LEXIS 17313 (N.D. Iowa April 22, 2005); Knauf Fiber Glass, GbmH 21 v. Certainteed Corp., 2004 U.S. Dist. LEXIS 6291 (S.D. Ind. March 24, 2004); Interstate 22 Forging Indus. v. Federal Forge, Inc., 1999 U.S. Dist. LEXIS 8760 (W.D. Mich. June 8, 23 1999); Technimark, Inc. v. Crellin, Inc., 14 F.Supp.2d 762, 767 (M.D.N.C. 1998); see also 24 Gilbreth Int'l Corp. v. Lionel Leisure, Inc., 587 F.Supp. 605 (E.D. Pa. 1983). Thus, for 25 example, as reasoned by the court in Interstate Forging: 26 27 28 Under [Section 285], the Court may award attorney's fees to the prevailing party in "exceptional cases." * * * The provision is designed to compensate the prevailing party "for costs which it would not have incurred but for the losing party's misconduct." W.L. Gore & Associates v. Oak Materials Group, 424 F.Supp. 700, 704 (D. Del. 1976). Courts have found that exceptional circumstances exist where "the patentee obtained the patent
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through fraud on the patent office, or demonstrated bad faith in bringing and maintaining the action while knowing of the invalidity of the patents." Id. The prevailing party carries the burden of proof on such claims, id. at 702, and must demonstrate the alleged fraud or bad faith by clear and convincing evidence, Machinery Corp. of America v. GullfiberAB, 774 F.2d 467, 471 (Fed. Cir. 1985); Sheller-Globe Corp. v. Milsco Mfr. Co.¸636 F.2d 177, 179 (7th Cir. 1980). Because Plaintiff dismissed its Complaint with prejudice, Defendant is the prevailing party with respect to the claims of infringement made by Plaintiff. Accordingly, Defendant is entitled to request attorney's fees and to submit its proofs on the facts making this case exceptional and justifying an award of attorney's fees pursuant to 35 U.S.C. § 285.

8 Interstate Forging, 1999 U.S. Dist. LEXIS 8760, at *7-*8 (granting defendant's Rule
5 9 41(a)(2) motion to add conditions to order of dismissal).

10

Here, too, Claiborne is clearly a "prevailing party" as a result of Lemelson's

11 dismissal of this case, entitiling Claiborne to seek an award of its reasonable attorneys' fees
P.A., ATTORNEYS 4250 NORTH DRINKWATER BOULEVARD FOURTH FLOOR SCOTTSDALE, ARIZONA 85251-3693

12 under Section 285. Claiborne therefore respectfully request the Court to condition its 13 dismissal order upon Claiborne's right to pursue and support its fee claim in accordance 14 with the procedures set forth in Local Rule 54.2. 15 16 17 18 19 20 21 22 23 24 25 26 27 28 As further explained by the district court in Gilbreth Int'l, the "bad faith" standard may also be satisfied by a showing of "recklessness": "'[A] patentee who knows or reasonably should know that the patent is invalid on any other ground, but nevertheless sues an alleged infringer is guilty of bad faith. * * * If no fraud is involved, the key to the determination of bad faith is the reasonableness of the patentee's belief in the patent's validity.'" 587 F.Supp. at 616 (quoting W.L. Gore, 424 F.Supp. at 704). Moreover, "'[C]onduct short of fraud and in excess of simple negligence is also an adequate foundation for deciding that a patent action is exceptional. Such conduct is a serious breach of the patentee's duty to the Patent Office. The party who succeeds in invalidating the unlawful patent performs a valuable public service. It is appropriate under such circumstances to reward the prevailing party by giving him attorney's fees for his efforts, and it is equally appropriate to penalize in the same measure the patentee who obtained the patent by his wrongdoing.'" Gilbreth Int'l, 587 F.Supp. at 616-17 (quoting Monolith Portland Midwest Co. v. Kaiser Aluminum, 407 F.2d 288, 294 (9th Cir. 1969)). Here, as noted above, not only has Lemelson itself conceded in its pleadings that this is an "exceptional" case within the meaning of Section 285, but the Nevada District Court likewise found that the parallel Symbol/Cognex litigation met that standard (although the plaintiffs there did not request an award of fees under the statute): "Lemelson contends that the conduct of Plaintiffs Symbol and Cognex and their counsel 'exceeded reasonable litigation tactics with a strategy of obfuscation' such as to warrant a declaration by this Court that Lemelson is entitled to an award of attorneys' fees under 35 U.S.C. § 285. * * * To characterize this case as 'exceptional' in terms of the exhaustive history of the Lemelson patents-in-suit and the equally exhaustive record adduced at trial, including preand post-trial briefing, would be an understatement. Here, however, Lemelson is not the prevailing party... ." 301 F.Supp.2d at 1167 (emphasis added).
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P.A., ATTORNEYS 4250 NORTH DRINKWATER BOULEVARD FOURTH FLOOR SCOTTSDALE, ARIZONA 85251-3693

DATED this 12th day of January, 2006.

SACKS TIERNEY P.A.

By: s/ James W. Armstrong Attorneys for Defendant Liz Claiborne, Inc.

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CERTIFICATE OF SERVICE

I hereby certify that on January 12, 2006, a complete, duplicate copy of this 3 document was forwarded directly to Judge Holland by Express Mail, at the following address: 4 5 Judge H. Russell Holland United States District Court 6 222 West 7th Avenue, Unit 54 Anchorage, Alaska 99513 7 8 9 s/ James W. Armstrong

I further certify that on January 12, 2006, I electronically transmitted the attached 10 document to the Clerk's Office using the CM/ECF System for filing and transmittal of a Notice of Electronic Filing to the following CMECF registrants: 11 Louis J. Hoffman, Esq. 12 Peter C. Warner, Esq. 13 Victoria Gruver Curtin, Esq. Steven G. Lisa, Esq. 14 14614 North Kierland Blvd., Suite 300 15 Scottsdale, Arizona 85254 Email: [email protected] 16 [email protected] [email protected] 17 [email protected] Attorneys for Plaintiff 18 19 Jennifer P. Nore, Esq. 20 Michael R. Ross, Esq. MEYER HENDRICKS & BIVENS, P.A. 21 P. O. Box 2199 22 Phoenix, Arizona 85001 Email: [email protected] [email protected] 23 Attorneys for Defendant American Retail Group, Inc. 24 25 Richard A. Halloran, Esq. Lewis and Roca LLP 26 40 North Central Avenue 27 Phoenix, AZ 85004-4429 Email: [email protected] 28 Attorneys for Defendant Avnet
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P.A., ATTORNEYS 4250 NORTH DRINKWATER BOULEVARD FOURTH FLOOR SCOTTSDALE, ARIZONA 85251-3693

1 Michael A. Beale, Esq. John A. Micheaels, Esq. 2 Beale & Micheaels, P.C. 3 1440 East Missouri Avenue, Suite C-150 Phoenix, Arizona 85014 4 Email: [email protected] [email protected] 5 Attorneys or Defendants Ann Taylor, Inc. 6 Cheryl Lee Johnson, Esq. 7 Squire Sanders & Dempsey, L.L.P. 8 801 South Figueroa Street, 14th Floor Los Angeles, California 90017-5554 9 Email: [email protected] 10 Attorneys for Defendant Bax Global, Inc. 11 Donald A. Wall, Esq. Mark A. Nadeau, Esq. 12 Squire Sanders & Dempsey, LLP 13 Two Renaissance Square 40 North Central Avenue, Suite 2700 14 Phoenix, Arizona 85004-444 1 15 Email: [email protected] [email protected] Attorneys for Defendants Arrow Electronics and BAX Global, Inc. 16 Douglas W. Seitz, Esq. 17 Timothy J. Casey, Esq. 18 Jennifer H. Dioguardi, Esq. Laura Jean Zeman, Esq. 19 Michael K. Kelly, Esq. 20 Bradley W. Petersen, Esq. Snell & Wilmer L.L.P. 21 One Arizona Center 22 400 East Van Buren Phoenix, AZ 85004-2202 23 Email: [email protected] [email protected] 24 [email protected] [email protected] 25 [email protected] 26 [email protected] 27 Attorneys for Defendants Best Buy, Ingram Industries, Micro Warehouse, Inc., Nash-Finch, and Target 28
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P.A., ATTORNEYS 4250 NORTH DRINKWATER BOULEVARD FOURTH FLOOR SCOTTSDALE, ARIZONA 85251-3693

1 Paul E. Burns, Esq. Steptoe & Johnson, LLP 2 Collier Center 3 201 East Washington, Suite 1600 Phoenix, AZ 85004-2382 4 Email: [email protected] 5 Attorneys for Defendant Consolidated Stores 6 Robert R. Brunelli, Esq. Sheridan Ross P.C. 7 1560 Broadway, Suite 1200 8 Denver, Colorado 80202 Email: [email protected] 9 Attorneys for Defendant Corporate Express, Inc. 10 Barry R. Sanders, Esq. 11 Michael S. Rubin, Esq. Mariscal, Weeks, McIntyre & Friedlander 12 2901 North Central Avenue, Suite 200 13 Phoenix, Arizona 85012 Email: barry@sanders ,mwmf.com 14 michael@rubin mwmf.com 15 Attorneys for Defendants Corporate Express, Inc., 7-Eleven, Inc., Smart & Final, Inc. 16 Jonathan M. James, Esq. Perkins Coie Brown & Bain PA 17 P.O. Box 400 18 Phoenix, AZ 85001-0400 Email: [email protected] 19 Attorneys for Defendant Genuine Parts Company 20 Brett L. Dunkelman, Esq. 21 Osborn Maledon, PA 22 2929 North Central Avenue, Suite 2100 Phoenix, AZ 85012-2794 23 Email: [email protected] Attorneys for Defendants CompUSA, Rexel, 24 Systemax, The Gap, Neiman Marcus Group, and Zale 25 26 27 28
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P.A., ATTORNEYS 4250 NORTH DRINKWATER BOULEVARD FOURTH FLOOR SCOTTSDALE, ARIZONA 85251-3693

1 Peter J. Brann, Esq. Brann & Isaacson, L.L.P. 2 P. O. Box 3070 3 Lewiston, Maine 04243-3070 Email: [email protected] 4 Attorneys for Defendants L.L. Bean, Inc. and Talbots, Inc. Ray K. Harris, Esq. 6 Fennemore Craig P.C. 3003 North Central Avenue, Suite 2600 7 Phoenix, AZ 85012-2913 8 Email: [email protected] Attorneys for Defendants Haworth, Inc., L.L. Bean, Inc., and Talbots, Inc. 9 10 Benjamin C. Thomas, Esq. Susan Elizabeth Irwin, Esq. 11 Thomas & Elardo, P.C. 2700 North Central Avenue, Suite 1500 12 Phoenix, Arizona 85004 13 Email: [email protected] [email protected] 14 Attorneys for Defendant Walmart 15 16 17 I further certify that on January 12, 2006, I served the attached document by U.S. mail, postage prepaid, on the following, who are not registered participants of the CM/ECF 19 System: 20 18 21 Andrew Abraham 22 Burch & Cracchiolo PA PO Box 16882 23 Phoenix, AZ 85011-6882 24 Hugh A Abrams 25 Sidley Austin Brown & Wood LLP Bank 1 Plaza 26 10 S Dearborn St 27 Chicago, IL 60603 28
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P.A., ATTORNEYS 4250 NORTH DRINKWATER BOULEVARD FOURTH FLOOR SCOTTSDALE, ARIZONA 85251-3693

s/ James W. Armstrong

1 Robert E B Allen Mariscal Weeks McIntyre & Friedlander PA 2 2901 N Central Ave 3 Ste 200 Phoenix, AZ 85012-2705 4 5 Larry C Boyd Ingram Micro Inc 6 1600 E St Andrew Pl Santa Ana, CA 92705 7 8 Kenneth R Chiate Pillsbury Winthrop LLP 9 725 S Figueroa St 10 Ste 2800 Los Angeles, CA 90017-5406 11 J Bennett Clark 12 Senniger Powers Leavitt & Roedel 13 1 Metropolitan Sq 16th Floor 14 St Louis, MO 63102 15 Kevin B Collins 16 Venable Baetjer Howard & Civiletti LLP 1201 New York Ave NW 17 Ste 1000 18 Washington, DC 20005-3917 19 Jennifer E Cook 20 Senniger Powers Leavitt & Roedel 1 Metropolitan Sq 21 16th Floor 22 St Louis, MO 63102 23 William D Coston Venable Baetjer Howard & Civiletti LLP 24 1201 New York Ave NW 25 Ste 1000 Washington, DC 20005-3917 26 27 28
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P.A., ATTORNEYS 4250 NORTH DRINKWATER BOULEVARD FOURTH FLOOR SCOTTSDALE, ARIZONA 85251-3693

1 John H Cotton John H Cotton & Associates Ltd 2 2300 W Sahara 3 Ste 420 Las Vegas, NV 89102 4 5 Rita Coyle DeMeules Robins Kaplan Miller & Ciresi LLP 6 2800 LaSalle Plaza 800 LaSalle Ave 7 Minneapolis, MN 55402-2015 8 David W Denenberg 9 Gibbons Del Deo Dolan Griffinger & Vecchione 10 1 Pennsylvania Plaza 37th Fl 11 New York, NY 10119
P.A., ATTORNEYS 4250 NORTH DRINKWATER BOULEVARD FOURTH FLOOR SCOTTSDALE, ARIZONA 85251-3693

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Martin I Eisenstein 13 Brann & Isaacson LLP PO Box 3070 14 Lewiston, ME 04243-3070 15 Albert E Fey 16 Fish & Neave 1251 Ave of the Americas 17 New York, NY 10020 18 Mark A Flagel 19 Latham & Watkins 20 633 W 5th St Ste 4000 21 Los Angeles, CA 90071-2007 22 Lee A Freeman 23 Freeman Freeman & Salzman PC 401 N Michigan Ave 24 Ste 3200 25 Chicago, IL 60611 26 27 28
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1 John N Gallo Sidley Austin Brown & Wood LLP 2 Bank 1 Plaza 3 10 S Dearborn St Chicago, IL 60603 4 5 Scott H Gingold Latham & Watkins 6 5800 Sears Tower 233 S Wacker Dr 7 Chicago, IL 60606 8 Jennifer P Goetsch 9 Marshall O'Toole Gerstein Murray & Borun 10 233 S Wacker Dr Ste 6300 11 Chicago, IL 60606
P.A., ATTORNEYS 4250 NORTH DRINKWATER BOULEVARD FOURTH FLOOR SCOTTSDALE, ARIZONA 85251-3693

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Thomas O Gorman 13 Porter Wright Morris & Arthur LLP 1919 Pennsylvania Ave NW 14 Ste 500 15 Washington, DC 20006 16 George Gottlieb Gottlieb Rackman & Reisman PC 17 270 Madison Ave 18 8th Floor New York, NY 10016 19 20 Lee F Grossman Marshall O'Toole Gerstein Murray & Borun 21 233 S Wacker Dr 22 Ste 6300 Chicago, IL 60606 23 Herbert J Hammond 24 Thompson & Knight LLP 25 1700 Pacific Ave Ste 3300 26 Dallas, TX 75201 27 28
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1 John E Hedstrom Porter Wright Morris & Arthur LLP 2 1919 Pennsylvania Ave NW 3 Ste 500 Washington, DC 20006 4 5 Jesse J Jenner Fish & Neave 6 1251 Ave of the Americas New York, NY 10020 7 8 Darin M Klemchuk Cash Klemchuk Powers Taylor LLP 9 Campbell Centre II 10 8150 N Central Expressway Ste 1575 11 Dallas, TX 75206
P.A., ATTORNEYS 4250 NORTH DRINKWATER BOULEVARD FOURTH FLOOR SCOTTSDALE, ARIZONA 85251-3693

12

SACKS TIERNEY

Emily S Lau 13 Fenwick & West LLP 2 Palo Alto Sq 14 Ste 700 15 Palo Alto, CA 94306 16 James T Malysiak Freeman Freeman & Salzman PC 17 401 N Michigan Ave 18 Ste 3200 Chicago, IL 60611 19 20 Lisa Meyerhoff Jenkens & Gilchrist PC 21 1445 Ross Ave 22 Ste 3200 Dallas, TX 75202 23 David A Nelson 24 Latham & Watkins 25 5800 Sears Tower 233 S Wacker Dr 26 Chicago, IL 60606 27 28
Case 2:00-cv-00663-HRH Document 718 17 Filed 01/12/2006 Page 17 of 20

1 Bart James Patterson University & Community College 2 5550 W Flamingo Rd 3 Ste C-1 Las Vegas, NV 89103-0137 4 5 David Anthony Plumley Christie Parker & Hale LLP 6 350 W Colorado Blvd Ste 500 7 Pasadena, CA 91105 8 Susan E Powley 9 Jenkens & Gilchrist PC 10 1445 Ross Ave Ste 3200 11 Dallas, TX 75202
P.A., ATTORNEYS 4250 NORTH DRINKWATER BOULEVARD FOURTH FLOOR SCOTTSDALE, ARIZONA 85251-3693

12

SACKS TIERNEY

Terryl K Qualey 13 Merchant & Gould 3200 IDS Ctr 14 80 S 8th St 15 Minneapolis, MN 55402-2215 16 Charles Quinn Fish & Neave 17 1251 Ave of the Americas 18 New York, NY 10020 19 James Samuel Rigberg 20 Mariscal Weeks McIntyre & Friedlander PA 2901 N Central Ave 21 Ste 200 22 Phoenix, AZ 85012-2705 23 Clyde A Shuman Cobrin & Gittes 24 750 Lexington Ave 25 Ste. 21 New York, NY 10022 26 27 28
Case 2:00-cv-00663-HRH Document 718 18 Filed 01/12/2006 Page 18 of 20

1 George M Sirilla Pillsbury Winthrop LLP 2 1600 Tysons Blvd 3 McLean, VA 22102 4 Bruce S Sostek 5 Thompson & Knight LLP 1700 Pacific Ave 6 Ste 3300 Dallas, TX 75201 7 8 Stefan V Stein Holland & Knight LLP 9 100 N Tampa St 10 Ste 4100 Tampa, FL 33602-3644 11 Jay Todd Stewart 12 Perkins Coie Brown & Bain PA 13 PO Box 400 Phoenix, AZ 85001-0400 14 15 Mark Michael Supko Kenyon & Kenyon 16 1500 K St NW Ste 700 17 Washington, DC 20005-1257 18 Raymond L Sweigart 19 Pillsbury Winthrop LLP 20 1600 Tysons Blvd McLean, VA 22102 21 22 William M Wesley McAndrews Held & Malloy Ltd 23 500 W Madison St Ste 3400 24 Chicago, IL 60661 25 Christopher C Winslade 26 McAndrews Held & Malloy Ltd 27 500 W Madison St Ste 3400 28 Chicago, IL 60661
Case 2:00-cv-00663-HRH Document 718 19 Filed 01/12/2006 Page 19 of 20

SACKS TIERNEY

P.A., ATTORNEYS 4250 NORTH DRINKWATER BOULEVARD FOURTH FLOOR SCOTTSDALE, ARIZONA 85251-3693

1 Darryl M Woo Fenwick & West LLP 2 275 Battery St 3 Ste 1600 San Francisco, CA 94111-3305 4 5 Donald L Zachary Bass Berry & Sims PLC 6 First American Ctr 315 Deaderick St 7 Ste 2700 8 Nashville, TN 37238-0002 9 Elizabeth L Zepeda 10 600 Citadel Dr Commerce, CA 90040 11 Norman H Zivin 12 Cooper & Dunham LLP 13 1185 Ave of the Americas New York, NY 10036 14 15 Thomas Zych Thompson Hine & Flory LLP 16 3900 Key Ctr 127 Public Sq 17 Cleveland, OH 44114-1216 18 19 20 21
597566.01

SACKS TIERNEY

P.A., ATTORNEYS 4250 NORTH DRINKWATER BOULEVARD FOURTH FLOOR SCOTTSDALE, ARIZONA 85251-3693

s/ James W. Armstrong

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Case 2:00-cv-00663-HRH Document 718 20 Filed 01/12/2006 Page 20 of 20