Free Response to Motion - District Court of Arizona - Arizona

1 James W. Armstrong (No. 009599) SACKS TIERNEY P.A. 2 4250 N. Drinkwater Blvd., 4th Floor Scottsdale, Arizona 85251-3693 3 Telephone: (480) 425-2600 [email protected] 4 Joel E. Lutzker 5 SCHULTE, ROTH & ZABEL 919 Third Avenue 6 New York, New York 10022 Telephone: (212) 697-5995 7 Attorneys for Defendant Minebea Co., Ltd. 8 9 10 11
P.A., ATTORNEYS 4250 NORTH DRINKWATER BOULEVARD FOURTH FLOOR SCOTTSDALE, ARIZONA 85251-3693

UNITED STATES DISTRICT COURT DISTRICT OF ARIZONA

12 Lemelson Medical, Education & Research 13 Foundation, Limited Partnership, 14 15 v. 16 Butler Manufacturing Co., et al. 17 18 19 Pursuant to Rule 41(a)(2) of the Federal Rules of Civil Procedure, Defendant Defendants. Plaintiff, RESPONSE TO PLAINTIFF'S MOTION TO DISMISS CASE WITH PREJUDICE AND CROSS-MOTION TO ADD CONDITION UPON DISMISSAL No. CIV'00-0662-PHX-HRH

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20 Minebea Co., Ltd. ("Minebea") hereby responds to the Motion to Dismiss Case filed by 21 Lemelson Medical, Education & Research Foundation ("Lemelson") on December 22, 22 2005. Lemelson's Motion to Dismiss has been necessitated by the holdings of the Federal 23 District and Circuit Courts in Symbol Technologies, Inc. v. Lemelson Med., Educ. & 24 Research Found., Ltd. P'ship, 301 F.Supp. 2d 1147 (D. Nev. 2004), aff'd, 422 F.3d 1378 25 (Fed. Cir. 2005), that the asserted Lemelson patents are invalid for lack of enablement, 26 unenforceable under the doctrine of prosecution laches, and not infringed. 27 Minebea does not oppose the dismissal with prejudice of Lemelson's Second 28 Amended Complaint. Nevertheless, Minebea respectfully urges the Court to condition that
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1 dismissal upon Minebea's right to seek an award of its reasonable attorneys' fees pursuant 2 to 35 U.S.C. § 285 and in accordance with Rule 54.2 of this Court's Local Rules of Civil 3 Procedure. Minebea also asks the Court to preserve Minebea's right to request further 4 discovery in support of this claim. 5 As explained more fully in the following Memorandum of Points and Authorities,

6 Minebea should be permitted to seek attorneys' fees that would not have been expended but 7 for Lemelson's misconduct. Since Lemelson has agreed to dismiss its claims with

8 prejudice, Minebea is clearly the prevailing party. Moreover, the Federal Circuit has 9 already affirmed in Symbol that Lemelson's conduct amounted to an egregious case of 10 misuse of the patent system. In addition, the evidence shows that Lemelson failed to 11 conduct a good faith investigation into whether there was a legally sufficient basis to assert
P.A., ATTORNEYS 4250 NORTH DRINKWATER BOULEVARD FOURTH FLOOR SCOTTSDALE, ARIZONA 85251-3693

12 infringement claims against Minebea. Lemelson filed a blunderbuss Complaint against 13 over a hundred defendants without any coherent connection between these disparate 14 defendants. In fact, Minebea has never manufactured or sold any products that could in 15 good faith be accused of infringing the Lemelson patents. In all the time that this case has 16 been pending and despite numerous requests from Minebea, Lemelson has never identified 17 a single Minebea product that it claims falls within the claims of any of its asserted patents. 18 In addition, Minebea reasonably believes that an opportunity to conduct discovery

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19 would reveal that Lemelson failed to undertake any analysis or investigation to determine 20 whether a proper basis existed to charge Minebea with infringement prior to bringing suit. 21 Accordingly, Minebea further requests the right to pursue limited discovery to support its 22 entitlement to reasonable attorneys' fees. 23 24 MEMORANDUM OF POINTS AND AUTHORITIES This lawsuit is one of five simultaneously filed in the District of Arizona by

25 Lemelson more than five years ago, on April 4, 2000. As amended, Lemelson's Complaint 26 accused over a hundred companies of infringing various patents issued to Jerome H. 27 Lemelson in the early 1990s, for which Lemelson claimed the benefit of the filing dates of 28 two patent applications submitted by Mr. Lemelson to the U.S. Patent and Trademark
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1 Office in 1954 and 1956. According to Lemelson, those patents purportedly encompassed 2 bar code scanners and similar "machine vision" equipment like that purportedly developed 3 and sold by manufacturers such as Symbol Technologies, Inc. ("Symbol") and Cognex 4 Corporation ("Cognex"). 5 Rather than sue Symbol, Cognex or any other manufacturers, however, Lemelson's

6 lawsuits in Arizona targeted scores of companies, like Minebea, which had no role in either 7 making or designing the scanning technology at issue. These lawsuits were filed in a 8 "shotgun" approach without any investigation into whether a reasonable basis existed to sue 9 these defendants for infringement. There does not appear to be any rhyme or reason behind 10 Lemelson's decision to bring suit in one case against this many disparate Defendants. The 11 products and services that these various Defendants manufacture or provide could not be
P.A., ATTORNEYS 4250 NORTH DRINKWATER BOULEVARD FOURTH FLOOR SCOTTSDALE, ARIZONA 85251-3693

12 more different, running the gamut from aerospace products and furniture to compact discs
1 13 and containers.

14

Minebea, a Japanese corporation with its principal offices in Tokyo, Japan, is

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15 included within this bloated list of defendants. Minebea primarily manufactures and sells 16 components and electronic devices, such as precision miniature ball bearings, personal 17 computer keyboards, hard disk drives, spindle motors, and fan motors. None of these 18 products could even arguably be claimed to fall within Lemelson's "machine vision" 19 patents. Neither Lemelson's Second Amended Complaint, nor its original Complaint and 20 Amended Complaint, specifically identifies even a single allegedly infringing product 21 manufactured or sold by Minebea. Lemelson's failure to even attempt to serve Minebea 22 with summons and complaint for nine months provides further evidence that Lemelson 23 lacked a reasonable basis for commencing this action against Minebea. In fact, Minebea 24 did not learn that an action has been filed against it until July 20, 2000 ­ approximately 25 three months after Lemelson's original Complaint has been filed ­ when it received a letter 26 27 Significantly, Lemelson makes no effort to identify a single product or service with 28 any particular Defendant.
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1 from Lemelson's counsel requesting that Minebea agree to accept service of the summons 2 and Amended Complaint. Thereafter on August 11, 2000 and again on September 6, 2000, 3 Minebea wrote to Lemelson requesting identification of the products sold by Minebea that 4 formed the basis for Lemelson's infringement assertions. Lemelson did not respond to 5 either request. 6 On November 14, 2000, Minebea filed a Motion to Dismiss pursuant to Fed. R. Civ.

7 P. 4(m) and 41(b), on the grounds that Lemelson had failed to serve the Summons and 8 complaint upon Minebea during the seven months that the action had been pending and had 9 further failed to take any steps to prosecute the action against Minebea. Lemelson

10 subsequently filed a Second Amended Complaint on December 14, 2000. On January 5, 11 2001, Minebea's motion to dismiss was denied and the action was stayed pending a final
P.A., ATTORNEYS 4250 NORTH DRINKWATER BOULEVARD FOURTH FLOOR SCOTTSDALE, ARIZONA 85251-3693

12 non-appealable judgment in Symbol Technologies, Inc. v. Lemelson Med., Educ. & 13 Research Found., Ltd. P'ship, No. CV-N-99-00397 (D. Nev. filed July 21 1999), a related 14 case fully discussed below. Lemelson did not properly serve a summons and complaint on 15 Minebea until February 23, 2001. 16 In separate actions, Symbol and Cognex filed their own actions against Lemelson in

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17 the District of Nevada, seeking a declaratory judgment that, inter alia, Lemelson's patents 18 were invalid or unenforceable under the equitable doctrine of prosecution laches. See 19 Symbol Technologies, Inc. v. Lemelson Med., Educ. & Research Found., Ltd. P'ship, No. 20 CV-N-99-00397 (D. Nev. filed July 21 1999); Cognex Corp. v. Lemelson Med., Educ. & 21 Research Found., Ltd. P'ship, No. CV-N-99-00533 (D. Nev. filed Sept. 27, 1999). In light 22 of the long prior pendency of these declaratory judgment actions, which were later 23 consolidated before the Nevada District Court on March 21, 2000, see Symbol/Cognex,, 24 301 F.Supp.2d at 1150, numerous Defendants moved to stay the instant lawsuit in 25 November 2, 2000, pending a final determination of the validity of the same "bar code" and 26 "machine vision" patents at issue here in the Nevada litigation. 27 Meanwhile, following extensive pretrial proceedings and an interlocutory appeal to

28 the Federal Circuit, the consolidated Symbol/Cognex litigation was tried before the Nevada
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1 District Court from November 18, 2002 through January 17, 2003. 301 F.Supp. 2d at 1150. 2 After five and one-half months of additional post-trial briefing, the Nevada court entered its 3 final judgment on January 23, 2004, concluding (among other holdings) that Lemelson's 4 alleged patent rights were unenforceable under the equitable doctrine of prosecution laches. 5 301 F.Supp. 2d at 1154-57. Thus, as explained by the district court: 6 7 8 9 10 11
P.A., ATTORNEYS 4250 NORTH DRINKWATER BOULEVARD FOURTH FLOOR SCOTTSDALE, ARIZONA 85251-3693

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 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.

12 Symbol/Cognex, 301 F.Supp.2d at 1154. 13 In applying these standards to the evidence introduced at trial, the Symbol/Cognex

14 court found that: 15 16 17 18 19 20 21 22 23 24 25 26 27 28 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. 301 F.Supp.2d at 1155-56 (citations omitted) (emphasis added). The Nevada District Court further found that the evidence "strongly supported" the following combination of factors asserted by the plaintiffs in support of their prosecution laches claim: (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
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P.A., ATTORNEYS 4250 NORTH DRINKWATER BOULEVARD FOURTH FLOOR SCOTTSDALE, ARIZONA 85251-3693

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

12 13 14 15 16 17 18 19

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20 Symbol/Cognex, 301 F.Supp.2d at 1157 (citations omitted). 21 Lemelson subsequently appealed the district court's decision to the Federal Circuit,

22 which in an opinion issued on September 5, 2005 affirmed the holding that Lemelson's 23 asserted patents were unenforceable under the prosecution laches doctrine. Symbol

24 Technologies, Inc. v. Lemelson Med., Educ. & Research Found., Ltd. P'ship, 422 F.3d 1378
2 25 (Fed. Cir. 2005). Specifically, after first explaining that because there may be several

26 27 The district court also held in the alternative that the plaintiffs' machine vision and bar code scanning products did not infringe Lemelson's patent claims, and that those claims 28 were otherwise invalid for lack of a "written description" and enablement under 35 U.S.C. § 112. These additional holdings were not addressed by the Federal Circuit in Lemelson's
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1 "legitimate" reasons for refiling a patent application, the doctrine should be used 2 "sparingly" and "only in egregious cases of misuse of the statutory patent system," the 3 Federal Circuit found that Lemelson's conduct met this strict standard: 4 5 6 7 8 9 10 11
P.A., ATTORNEYS 4250 NORTH DRINKWATER BOULEVARD FOURTH FLOOR SCOTTSDALE, ARIZONA 85251-3693

[R]efiling an application solely containing previously-allowed claims for the business purpose of delaying their issuance can be considered an abuse of the 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.

12 13

3 14 422 F.3d at 1385-86 (citations omitted) (emphasis added).

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15

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

16 Dismiss this lawsuit on December 22, 2005. Because Lemelson did not seek the remaining 17 Defendants' stipulation to such a dismissal, however, it may only be granted "upon order of 18 the court and upon such terms and conditions as the court deems proper." Rule 41(a)(2), 19 Fed.R.Civ.P. As mentioned above, by this Response, Minebea does not oppose the

20 dismissal of Lemelson's Second Amended Complaint, but instead asks that, pursuant to 21 Rule 41(a)(2), the Court condition that dismissal upon Minebea's right to move for an 22 award of its reasonable attorneys' fees in accordance with the post-judgment procedures set 23 24 appeal, given the appellate court's finding that the district judge did not abuse his discretion 25 in applying the prosecution laches defense. Symbol/Cognex, 422 F.3d at 1386. 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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1 forth in Local Rule 54.2, which states, in pertinent part, that: 2 3 4 5 6 7 8 9 10 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.

11 LRCiv 54.2(b)(1). In the event that the parties cannot voluntarily resolve such a fee claim
P.A., ATTORNEYS 4250 NORTH DRINKWATER BOULEVARD FOURTH FLOOR SCOTTSDALE, ARIZONA 85251-3693

12 following the filing of the claimant's initial motion, subparagraph (b)(2) of Local Rule 54.2 13 then mandates that "the memorandum of points and authorities ... attorneys' fees, and all 14 supporting documentation ... shall be filed and served within sixty (60) days of the entry of 15 judgment in the action with respect to which the services were rendered." 16 Consistent with the procedures specified in Local Rule 54.2, numerous federal

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17 decisions have held that the district court retains jurisdiction following the dismissal of a 18 patent case under Rule 41(a)(2) to decide a defendant's subsequent motion for attorneys' 19 fees under 28 U.S.C. § 285. See, e.g., Samsung Electronics Co. v. Rambus, Inc., 2005 U.S. 20 Dist. LEXIS 27329, at *28-*54 (E.D. Va. Nov. 8, 2005): Highway Equip. Co. v. FECO, 21 Ltd., 2005 U.S. Dist. LEXIS 17313 (N.D. Iowa April 22, 2005); Knauf Fiber Glass, GbmH 22 v. Certainteed Corp., 2004 U.S. Dist. LEXIS 6291 (S.D. Ind. March 24, 2004); Interstate 23 Forging Indus. v. Federal Forge, Inc., 1999 U.S. Dist. LEXIS 8760 (W.D. Mich. June 8, 24 1999); Technimark, Inc. v. Crellin, Inc., 14 F.Supp.2d 762, 767 (M.D.N.C. 1998); see also 25 Gilbreth Int'l Corp. v. Lionel Leisure, Inc., 587 F.Supp. 605 (E.D. Pa. 1983). Thus, for 26 example, as reasoned by the court in Interstate Forging: 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
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1 2 3 4 5 6 7 8

Materials Group, 424 F.Supp. 700, 704 (D. Del. 1976). Courts have found that exceptional circumstances exist where "the patentee obtained the patent 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.

9 Interstate Forging, 1999 U.S. Dist. LEXIS 8760, at *7-*8 (granting defendant's Rule
4 10 41(a)(2) motion to add conditions to order of dismissal).

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

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

12 dismissal of this case, entitling Minebea to seek an award of its reasonable attorneys' fees 13 under Section 285. Minebea therefore respectfully requests the Court to condition its 14 dismissal order upon Minebea's right to pursue and support its fee claim in accordance with 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, 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 pre- and 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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1 the procedures set forth in Local Rule 54.2. 2 3 4 5 6 7 8 9 10 11
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 Minebea Co., Ltd.

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1 2

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 I further certify that on January 12, 2006, I electronically transmitted the attached document to the Clerk's Office using the CM/ECF System for filing and transmittal of a 11 Notice of Electronic Filing to the following CMECF registrants: 10
P.A., ATTORNEYS 4250 NORTH DRINKWATER BOULEVARD FOURTH FLOOR SCOTTSDALE, ARIZONA 85251-3693

s/ James W. Armstrong

12 13 Louis J. Hoffman, Esq. Peter C. Warner, Esq. 14 Victoria Gruver Curtin, Esq. Steven G. Lisa, Esq. 15 Richard Lustiger, Esq. 14614 North Kierland Blvd., Suite 300 16 Scottsdale, Arizona 85254 Email: [email protected] pcw warnerpatents.com 17 [email protected] 18 Attorneys for Plaintiff 19 Charles W. Bradley, Esq. Attorney at Law 20 33 Mt. Green Road Croton-on-Hudson, NY 10520 21 Attorneys for Defendants Airborne Freight Corp., Saint-Gobain Containers, LLC, 22 Certain Teed Corporation, and The Gates Rubber Company 23 Stephen T. Sullivan, Esq. 24 Tish L. Berard, Esq. Sullivan Law Group 25 1850 North Central Avenue, Suite 1140 Phoenix, AZ 85012 26 Email: [email protected] Attorneys for Defendant Airbus Industries 27 G.I.E. 28
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Douglas W. Seitz, Esq. Timothy J. Casey, Esq. Joel P. Hoxie, Esq. Jennifer H. Dioguardi, Esq. Snell & Wilmer L.L.P. One Arizona Center 400 East Van Buren Phoenix, AZ 85004-2202 Email: [email protected] tcasey swlaw.com Attorneys for Defendant Arctic Cat, Inc., Metatec International, Inc., Precision Castparts Corp., Wyman-Gordon Company Robert A. Royal, Esq. Tiffany & Bosco, P.A. Third Floor Camelback Esplanade 2525 East Camelback Road Phoenix, AZ 85016-4237 Email: [email protected] Attorneys for Defendant Astec Industries, Inc.

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1 Cheryl Lee Johnson, Esq. Squire Sanders & Dempsey LLP 2 801 South Figueroa Street, 14th Floor Los Angeles, CA 90017 3 Email: [email protected] Attorneys for Ansell Limited, Bassett 4 Furniture Industries, Inc., Delco Remy Int'l Inc., Furniture Brands Int'l Inc., 5 Checkpoint Systems, Inc., Klaussner Furniture Industries Inc. and Exide Corp. 6 Donald A. Wall, Esq. 7 Mark A. Nadeau, Esq. Squire Sanders & Dempsey, LLP 8 Two Renaissance Square 40 N. Central Avenue, Suite 2700 9 Phoenix, AZ 85004-444 1 Email: [email protected] [email protected] 10 Attorneys for Defendants Butler 11 Manufacturing, Ball-Foster Glass Container Co. LLC, Bassett Furniture 12 Industries, Inc., HON Industries Inc., Intermet Corporation, Spalding Holdings 13 Corp., Airborne Freight Corporation, Emery Air Freight Corp., American 14 Standard Corporation, The Gates Corporation, Exide Corporation, Trek 15 Corporation Ansell Limited, Delco Remy Int., Inc., Checkpoint Systems, Inc., 16 Furniture Brands Int'l Inc., and Klaussner Furniture Industries, Inc. 17 James F. Polese, Esc. 18 Polese Pietzsch Williams & Nolan 2702 North 3rd Street, Suite 3000 19 Phoenix, AZ 85004-4607 Email: [email protected] 20 Attorneys for Defendant Crown Cork & Seal Company, Inc. 21 Deneen J. Melander, Esq. 22 Elliott E. Polebaum, Esq. Fried Frank Harris Shriver & Jacobson 23 1001 Pennsylvania Ave., NW, Suite 800 Washington, D.C. 20004-2505 24 Email: [email protected] Elliot [email protected] 25 Attorneys for Defendant Dassault Aviation SA 26 27 28
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Daniel L. Boots, Esq. James M. Hinshaw, Esq. Bingham Summers Welsh & Spilman, LLP 2700 Market Tower 10 West Market Street Indianapolis, IN 46204-4900 Email: [email protected] [email protected] Attorneys for Defendant Ball-Foster Glass Container Co., Inc. Robert J. Itri, Esq. Gallagher & Kennedy, P.A. 2575 East Camelback Road Phoenix, AZ 85016 Email: [email protected] Attorneys or Dynatech Corporation and Outboar Marine Corporation William J. Cass, Esq. CANTOR COLBURN, L.L.P. 55 Griffin Road South Bloomfield, Connecticut 06002 Email: [email protected] Attorneys for Defendant Dynatech Corporation N. Warner Lee, Esq. Robert James Pohlman, Esq. Ryley Carlock & Applewhite PA 101 North 1st Avenue, Suite 2700 Phoenix, AZ 85003-1973 Email: [email protected] [email protected] Attorneys for Defendant Ethan Allen Interiors Inc. Lillian C. Macia, Esq. Assistant General Counsel Jacuzzi Brands, Inc. 777 South Flagler Drive, Suite 1100W West Palm Beach, Florida 33401 Email: [email protected] Attorney for Jacuzzi Brands, Inc. Jennifer A. Van Kirk, Esq. Lewis and Roca LLP 40 North Central Avenue Phoenix, AZ 85004-4429 Email: [email protected] Attorneys for Defendants Lifestyle Furnishings Int'l and State Industries Inc.

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

Document 559 12 Filed 01/12/2006

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1 Francis J. Burke, Esq. Bennett Evan Cooper, Esq. 2 Paul E. Burns, Esq. Steptoe & Johnson, LLP 3 Collier Center 201 East Washington, Suite 1600 4 Phoenix, AZ 85004-2382 Email: [email protected] [email protected] 5 [email protected] 6 Attorneys for Defendant Dassault Aviation SA, York International Corporation, 7 Dynatech Corporation, Outboard Marine Corporation 8 Stephen P. Linzer, Esq. 9 Sacks Tierney, P.A. 4250 North Drinkwater Blvd., 4th Floor 10 Scottsdale, AZ 85251-3647 Email: [email protected] 11 Attorneys for Defendant Minebea Co., Ltd. 12 Joel E. Lutzker, Esq. Schulte Roth & Zabel, LLP 13 919 Third Avenue New York, NY 10022 14 Email: [email protected] Attorneys for Defendant Minebea Co., Ltd. 15 Jonathan M. James, Esq. 16 Perkins Coie Brown & Bain PA P.O. Box 400 17 Phoenix, AZ 85001-0400 Email: [email protected] 18 Attorneys for Defendant Mine Safety Appliances 19 Brett L. Dunkelman, Esq. 20 Osborn Maledon, PA 2929 North Central Avenue, Suite 2100 21 Phoenix, AZ 850 12-2794 Email: [email protected] 22 Attorneys for Defendant Owens-Illinois and Herman Miller, Inc. 23 David S. Foster, Esq. 24 Latham & Watkins 5800 Sears Tower 25 233 South Walker Drive Chicago, IL 60606 26 Email: [email protected] Attorneys for Defendant Owens-Illinois 27 28
Case 2:00-cv-00662-HRH
P.A., ATTORNEYS 4250 NORTH DRINKWATER BOULEVARD FOURTH FLOOR SCOTTSDALE, ARIZONA 85251-3693

Charles William Wirken, Esq. Gust Rosenfeld, PLC 201 West Washington, Suite 800 Phoenix, AZ 85004 Email: [email protected] Attorneys for Microsoft Corp.

Ray K. Harris, Esq. Fennemore Craig P.C. 3003 North Central Avenue, Suite 2600 Phoenix, AZ 85012-2913 Email: [email protected] Attorneys for Defendant Sauder Woodworking Company William B. Cunningham, Esq. Polster Liede Woodruff & Lucchesi, L.C. 12412 Powerscourt Drive, Suite 200 St. Louis, MO 63131-3615 Attorneys for Defendant U S. Can Corporation Brad W. Blocker, Esq. Adrian R. Wolff, Esq. Carr & Ferrell LLP 2200 Geng Road Palo Alto, CA 94303 Email: [email protected] [email protected] Attorneys for Defendant Wyman-Gordon Company and Precision Castparts Corp. Robert A. Schroeder, Esq. Pretty Schroeder & Poplawski PC 444 South Flower St., 19th Floor Los Angeles, CA 90071-2909 Email: [email protected] Attorney for Defendant York International Corp.

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Document 559 13 Filed 01/12/2006

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1 Barry R. Sanders, Esq. Allen Price & Padden PC 2 3131 East Camelback Road, Suite 110 Phoenix, AZ 85016 3 Email: [email protected] Attorney for Defendant Parker-Hannifin 4 Corp. and Wynn 's International 5 6 7 8

Cynthia L. Bauerly, Esq. Kurt J. Niederluecke, Esq. Frederickson & Byron, P.A. 200 South Sixth Street, Suite 4000 Minneapolis, MN 55402-1425 Email: [email protected] [email protected] Attorneys for Defendant Zomax Incorporation s/ James W. Armstrong

I hereby further certify that on January 12, 2006, I served the attached document by 9 U.S. mail, postage prepaid, on the following, who are not registered participants of the 10 CM/ECF System: 11 Robert E B Allen Mariscal Weeks McIntyre & Friedlander PA 12 2901 N Central Ave 13 Ste 200 Phoenix, AZ 85012-2705 14 15 Tish L Berard Sullivan Law Group 16 1850 N Central Ave Ste 1140 17 Phoenix, AZ 85004-4586 18 Toni L Bonney 19 Michael Best & Friedrich LLP 20 100 E Wisconsin Ave Ste 3300 21 Milwaukee, WI 53202 22 David K Callahan 23 Kirkland & Ellis 200 E Randolph Dr 24 Ste 5800 25 Chicago, IL 60601 26 Michael A Cantor Cantor Colburn LLP 27 55 Griffin Rd S 28 Bloomfield, CT 06002
Case 2:00-cv-00662-HRH Document 559 14 Filed 01/12/2006 Page 14 of 18

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

1 Brian A Comack 2 Amster Rothstein & Ebenstein 3 90 Park Ave 21st Floor 4 New York, NY 10016 John S Ferrell 6 Carr & Ferrell LLP 2200 Geng Rd 7 Palo Alto, CA 94303 8 Karl R Fink 9 Fitch Even Tabin & Flannery 10 120 S LaSalle St Ste 1600 11 Chicago, IL 60603
P.A., ATTORNEYS 4250 NORTH DRINKWATER BOULEVARD FOURTH FLOOR SCOTTSDALE, ARIZONA 85251-3693

5

12

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John F Flannery 13 Fitch Even Tabin & Flannery 120 S LaSalle St 14 Ste 1600 15 Chicago, IL 60603 16 Scott H Gingold Latham & Watkins 17 5800 Sears Tower 18 233 S Wacker Dr Chicago, IL 60606 19 20 John J Held McAndrews Held & Malloy Ltd 21 500 W Madison St 22 Ste 3400 Chicago, IL 60661 23 Michael E Husmann 24 Michael Best & Friedrich LLP 25 100 E Wisconsin Ave Ste 3300 26 Milwaukee, WI 53202 27 28
Case 2:00-cv-00662-HRH Document 559 15 Filed 01/12/2006 Page 15 of 18

1 David H Kagan Schulte Roth & Zabel LLP 2 919 3rd Ave 3 New York, NY 10022 4 Emily S Lau 5 Fenwick & West LLP 2 Palo Alto Sq 6 Ste 700 Palo Alto, CA 94306 7 8 Gary D Lueck Bingham McCutchen LLP 9 355 S Grand Ave 10 Ste 4400 Los Angeles, CA 90071 11 William B Mallin 12 Eckert Seamans Cherin & Mellott LLC 13 600 Grant St 42nd Floor 14 Pittsburgh, PA 15219-2788 15 Richard H Marschall 16 Michael Best & Friedrich LLP 100 E Wisconsin Ave 17 Ste 3300 18 Milwaukee, WI 53202 19 George P McAndrews 20 McAndrews Held & Malloy Ltd 500 W Madison St 21 Ste 3400 22 Chicago, IL 60661 23 Peter J McAndrews McAndrews Held & Malloy Ltd 24 500 W Madison St 25 Ste 3400 Chicago, IL 60661 26 27 28
Case 2:00-cv-00662-HRH Document 559 16 Filed 01/12/2006 Page 16 of 18

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

1 Elizabeth A McNellie Baker & Hostetler LLP 2 65 E State St 3 Ste 2100 Columbus, OH 43215 4 5 Lora Esch Mitchell Fredrikson & Byron PA 6 200 S 6th St Ste 4000 7 Minneapolis, MN 55402 8 David A Nelson 9 Latham & Watkins 10 5800 Sears Tower 233 S Wacker Dr 11 Chicago, IL 60606
P.A., ATTORNEYS 4250 NORTH DRINKWATER BOULEVARD FOURTH FLOOR SCOTTSDALE, ARIZONA 85251-3693

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Charles F O'Brien 13 Cantor Colburn LLP 55 Griffin Rd S 14 Bloomfield, CT 06002 15 James Samuel Rigberg 16 Mariscal Weeks McIntyre & Friedlander PA 2901 N Central Ave 17 Ste 200 18 Phoenix, AZ 85012-2705 19 Lawrence A Salibra , II 20 Alcan Aluminum Corp 6060 Parkland Blvd 21 Mayfield Heights, OH 44124-4185 22 William J Speranza 23 Wiggin & Dana PO Box 110325 24 Stamford, CT 06911-0325 25 Jay Todd Stewart 26 Perkins Coie Brown & Bain PA 27 PO Box 400 Phoenix, AZ 85001-0400 28
Case 2:00-cv-00662-HRH Document 559 17 Filed 01/12/2006 Page 17 of 18

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1 William M Wesley McAndrews Held & Malloy Ltd 2 500 W Madison St 3 Ste 3400 Chicago, IL 60661 4 5 Christopher C Winslade McAndrews Held & Malloy Ltd 6 500 W Madison St Ste 3400 7 Chicago, IL 60661 8 Darryl M Woo 9 Fenwick & West LLP 10 275 Battery St Ste 1600 11 San Francisco, CA 94111-3305
P.A., ATTORNEYS 4250 NORTH DRINKWATER BOULEVARD FOURTH FLOOR SCOTTSDALE, ARIZONA 85251-3693

12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28
Case 2:00-cv-00662-HRH
598313.01

s/ James W. Armstrong

SACKS TIERNEY

Document 559 18 Filed 01/12/2006

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