Free Response to Motion - District Court of Colorado - Colorado

Case 1:02-cv-01125-LTB-OES

Document 204

Filed 12/05/2005

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IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF COLORADO

CIVIL ACTION NO.: 02-CV-01125-ABJ-OES DAVID L. HILDEBRAND, an individual, Plaintiff, v. STECK MANUFACTURING COMPANY, INC., CORNWELL QUALITY TOOLS COMPANY; MATCO TOOLS; SNAP-ON TOOLS COMPANY, TOOLS USA AND EQUIPMENT COMPANY, and MAC TOOLS, Defendants.

DEFENDANTS' MEMORANDUM IN OPPOSITION TO THE PROPOSED INJUNCTION PURSUANT TO 35 U.S.C. 283 PROPOSED BY THE PLAINTIFF

Now come the Defendants Steck Manufacturing Company, Inc., Cornwell Quality Tools Company, MATCO Tools, Snap-On Tools Company, Tools USA and Equipment Company; and MAC Tools, by and through counsel, and pursuant to this Court's Order regarding injunctive relief signed on November 3, 2005, submit the following response to the proposed injunction language filed by the Plaintiff, David L. Hildebrand on November 21, 2005. As an introductory matter, the Defendants agree to the form of the proposed permanent injunction attached to this Court's Order regarding injunctive relief signed on November 3, 2005. The additional language proposed by Mr.

Case 1:02-cv-01125-LTB-OES

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Filed 12/05/2005

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Hildebrand taken from Form No. 8.02 of Horwitz and Horwitz "Patent Litigation and Tactics" is nothing more than a rewording of much of the language that was contained in this Court's Final Judgment entered on November 4, 2005. To avoid conflicting statements regarding Mr.

Hildebrand's rights relative to the enforceability of his `981 Patent, the simplified streamlined language contained in this Court's Proposed Permanent Injunction should be utilized which is limited to the issue of injunction. The Defendants also oppose Mr. Hildebrand's request for an order requiring Defendants to inventory and produce to Plaintiff all existing product which is allegedly infringing of the `981 Patent. The Defendants have no intention of selling the product identified in this Court's Proposed Permanent Injunction nor are they comfortable turning this product over to Mr. Hildebrand. If Mr. Hildebrand were to sell this product to a third party and the product failed, the third party could potentially sue the Defendants for product liability torts. According to the language proposed by Mr. Hildebrand, there would be nothing preventing him from selling the Defendants' product if it is tendered to his possession. Moreover, if Mr. HIldebrand obtains the Defendants' inventory, he could repackage the product and claim he purchased it from the Defendants in violation of the Court's order of injunction. After the Court issues the Permanent Injunction, Mr. Hildebrand has an available remedy if any Defendant violates the injunction by continuing to sell, market and/or produce the subject product. Finally, it should be noted that the Defendants plan to file a Joint Notice of Cross-Appeal to the United States Court of Appeals for the Federal Circuit. If the product is shipped to Mr. Hildebrand's possession and the Defendants are subsequently successful on appeal, it is extremely unlikely that they will be able to obtain the product back from Mr. Hildebrand.

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Case 1:02-cv-01125-LTB-OES

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Based on the foregoing, the Defendants offer their approval of the proposed permanent injunction drafted by this Court and oppose the additional language proposed by Mr. Hildebrand. Respectfully submitted, /s/Charles F. Shane David C. Greer Charles F. Shane BIESER, GREER & LANDIS, LLP 400 National City Center 6 North Main Street Dayton, Ohio 45402-1908 Tel: (937) 223-3277 Fax: (937) 223-6339 E-mail: [email protected] Craig Allely, Esq. HOLLAND & HART, LLP 555 Seventeenth Street, Suite 3200 Denver CO 80202-3979 Tel: 303-295-8247 Fax: 303-295-8261 E-mail:[email protected] Attorneys for Steck Manufacturing Company, Inc.; Cornwell Quality Tools Company; MATCO Tools; Snap-On Tools Company; Tools USA and Equipment Company; MATCO Tools and MAC Tools

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Case 1:02-cv-01125-LTB-OES

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Filed 12/05/2005

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CERTIFICATE OF SERVICE This is to certify that a copy of the foregoing was served upon the following via ordinary mail on the 5th day of December, 2005: David Hildebrand 975 East 58th Avenue, Unit A Denver, Colorado 80216 /s/Charles F. Shane
7856.980221 \ 276667.1

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