Compro-Frink Co. v. Valk Manufacturing Co.

8 Citing cases

  1. Trading Technologies International v. Espeed, Inc.

    750 F. Supp. 2d 962 (N.D. Ill. 2010)   Cited 65 times
    Holding that where the prevailing party has failed to provide sufficient information to ascertain that the costs are authorized, denial is an appropriate outcome

    See Young v. City of Chicago, 202 F. 3d 1000 (7th Cir. 2000) (holding that demonstrators who obtained an injunction against the City's exclusion of protestors during the Democratic national convention were prevailing parties entitled to attorney's fees). To support its proposition that TT is not the prevailing party, eSpeed cites three cases where neither party prevailed on all issues and each was required to bear its own costs: SeniorTechnologies, Inc. v. R.F. Technologies, Inc., 190 F.R.D. 642 (D. Neb. 2000); Compro-Frink Co. v. Valk Mfg. Co., 595 F.Supp. 302, 304 (E.D. Pa. 1982); and Kalkowski v. Ronco, Inc., 424 F.Supp. 343, 353 (N.D. Ill. 1976) (Def.'s Obj. at 3). To the extent that these cases engage in a prevailing party analysis that departs from controlling Federal Circuit law, we are not at liberty to accept their approach.

  2. Lifescan Inc. v. Home Diagnostics, Inc.

    Civil Action No. 96-597-JJF (D. Del. Oct. 30, 2001)   Cited 1 times

    See B.Braun Medical, Inc. v. Abbott Laboratories, 38 F. Supp.2d 393 (E.D.Pa. 1999). See also Compro-Frink Co. v. Valk Mfg. Co., 595 F. Supp. 302 (E.D.Pa. 1982) (denying the defendant costs where each party gained something by the litigation, plaintiff has a judicial declaration of a valid patent and defendant may continue to manufacture its accused product); Senior Technologies, Inc. v. R.F. Technologies, Inc., 190 F.R.D.642 (D.Neb. 2000) (denying the defendant costs in light of a judgment of non-infringement that also found the patent to be valid and that the defendant did not engage in inequitable conduct because the judgment did not materially alter the legal relationship between the parties by modifying either party's behavior to benefit the other party). Previously, I have awarded a defendant costs where the plaintiff was not successful in proving infringement, regardless of the judgment on invalidity, unenforceability, or misuse.

  3. Senior Technologies, Inc. v. R.F. Technologies, Inc.

    190 F.R.D. 642 (D. Neb. 2000)   Cited 4 times
    Denying costs to both parties where defendant, who prevailed on infringement claims, failed to establish patent invalidity as set forth in defendant's counterclaim

    In the patent infringement context, some courts have declined to tax costs when neither the plaintiff claiming infringement, nor the defendant asserting counterclaims for patent invalidity, non-enforceability, or misuse, prevails. SeeB. Braun Medical, Inc. v. Abbott Labs., 38 F.Supp.2d 393 (E.D.Pa.) (vacating clerk's taxation of costs and directing each party to bear its own costs when plaintiff secured declaration of patent validity and defendant secured declaration that its products did not infringe, but neither party recovered damages; court found that, practically speaking, there was no prevailing party or losing party), aff'd, 1999 WL 1204570 (Fed.Cir. Dec. 14, 1999) (table); Compro-Frink Co. v. Valk Mfg. Co., 595 F.Supp. 302 (E.D.Pa.1982) (denying costs to both parties when final judgment entered in favor of defendant on plaintiff's infringement claim, and in favor of plaintiff on defendant's counterclaims; when neither party prevailed as to the claims they asserted, but both prevailed to the extent they successfully defended claims asserted against them; and when denial of costs to both parties would not impose a penalty on either party as a practical matter). See alsoKalkowski v. Ronco, Inc., 424 F.Supp. 343, 354 (N.D.Ill.1976) (declining to award costs to either party when plaintiff lost infringement claim, defendant established patent invalidity, and defendant lost on counterclaims; noting that usual practice is to deny costs when both parties have prevailed in part and that " [w]here in a patent case there are claims and counterclaims with the case being a close and difficult one, it is not an abuse of discretion for th

  4. Skold v. Galderma Labs., L.P.

    CIVIL ACTION NO. 14-5280 (E.D. Pa. Aug. 29, 2017)   Cited 1 times

    Defendants submit that they are the "prevailing party" for purposes of Rule 54(d)(1) or, alternatively, that neither party is entitled to costs. See Compro-Frink Co. v. Valk Mfg. Co., 595 F.Supp. 302, 303-04 (E.D. Pa. 1982) (finding that there was no prevailing party where the litigation "resulted in a tie."). This argument is unpersuasive.

  5. Lyons v. Nike, Inc.

    920 F. Supp. 2d 1161 (D. Or. 2013)   Cited 2 times

    In each of these cases, the patent's validity was affirmatively established by the court and so neither party was adjudged the prevailing party, or both parties were. See Compro–Frink Co. v. Valk Manufacturing Co., 595 F.Supp. 302, 304 (E.D.Penn.1982) (“In the context of this case, in practical effect, there was no prevailing party and no losing party.”); Senior Technologies, Inc. v. R.F. Technologies, Inc., 190 F.R.D. 642, 644 (D.Neb.2000) (Where the relationship between the parties was not altered and neither party received a benefit, “neither party is a prevailing party for purposes of [Rule] 54(d)(1).” (citation omitted)); Lifescan, Inc. v. Home Diagnostics, Inc., Civil Action No. 95–597–JJF, 2001 WL 1339405, at *2, 2001 U.S. Dist. LEXIS 22311, at *6 (D.Del. Oct. 30, 2001) (“Additionally, I conclude that the legal relationship between HDI and Lifescan has not been materially altered, and the judgment did not modify either party's future behavior to benefit the other party.”); Dentsply Int'l, Inc. v. Hu–Friedy Manufacturing, Co., Inc., Civil Action No. 1:04–CV–0348 (Judge Conner), 2007 WL 2409739, at *1 n. 1, 2007 U.S. Dist. LEXIS 65554, at *3 n. 1 (M.D.Penn.

  6. Dentsply International Inc. v. Hu-Friedy Mfg. Co., Inc.

    CIVIL ACTION NO. 1:04-CV-0348 (M.D. Pa. Aug. 20, 2007)

    "); Lifescan Inc. v. Home Diagnostics, Inc., No. Civ.A. 96-597-JJF, 2001 WL 1339405, at *2 (D. Del Oct. 30, 2001) (concluding that "neither party has prevailed because the accused product was found not to infringe, and the patent was found to be valid and enforceable."); B. Braun Med., Inc. v. Abbott Labs., 38 F. Supp. 2d 393, 395 (E.D. Pa.), aff'd, 230 F.3d 1373 (Fed. Cir. 1999) ("[B]oth Braun and Abbott won and lost. Braun secured a declaration of validity of its patent but did not recover damages. Abbott secured a declaration that its products do not infringe, leaving Abbot free to make and sell them, but did not recover damages."); Compro-Frink Co. v. Valk Mfg. Co., 595 F. Supp. 302, 303 (E.D. Pa. 1982) (entering judgment in favor of defendant on plaintiff's claim of patent infringement, and in favor of plaintiff on defendant's counterclaim of patent invalidity and concluding "neither party was a prevailing party as to the respective claim asserted by each party, but both were prevailing parties to the extent each was defending against the claim of the other"), and that, accordingly, the court may exercise its discretion to deny costs to either party, Sozio v. Sears, Roebuck, and Co., No. Civ.A. 90-7483, 1994 WL 229660, at *1 (E.D. Pa. May 26, 1994) (noting that "[i]t is within the Court's discretion to determine whether, and to what extent, costs should be awarded to the prevailing party" (citingCopperweld Steel Co. v. Demag-Mannesmann-Bohler, 624 F.2d 7, 9 (3d Cir. 1980)); Bentz v. Am. Red Cross, No. Civ.A. 88-7608, 1990 WL 94011, at *6 (E.D. Pa. July 3, 1990) (noting that the court has discretion to deny costs to the prevailing party (citingDelaney v. Capone, 642 F.2d 57, 58 (3d C

  7. Rosco, Inc. v. Mirror Lite Co.

    139 F. Supp. 2d 287 (E.D.N.Y. 2001)   Cited 7 times
    Analyzing the “secondary meaning” of the plaintiff's “product numbering system,” which the defendant used “in a catalogue,” with respect to a false designation of origin claim under 15 U.S.C. § 1125

    Rosco has made an application for costs and attorney's fees. Courts have, however, regularly declined to award costs when neither the plaintiff claiming infringement nor the defendant asserting counterclaims for patent invalidity have prevailed. See B. Braun Medical, Inc. v. Abbott Labs., 38 F. Supp.2d 393 (E.D.Pa. 1999); Compro-Frink Co. v. Valk Mfg. Co., 595 F. Supp. 302 (E.D.Pa. 1982); see also Kalkowski v. Ronco, Inc., 424 F. Supp. 343, 354 (N.D.Ill. 1976). Because the conclusions reached by the Court do not materially alter the legal relationship between Rosco and Mirror Lite by modifying either party's behavior in a way that directly benefits the other party, neither party is a "prevailing party" for purposes of Federal Rule of Civil Procedure 54(d)(1).

  8. B. Braun Medical, Inc. v. Abbot Laboratories

    38 F. Supp. 2d 393 (E.D. Pa. 1999)   Cited 5 times

    Thus the court has discretion in awarding costs and may deny an award to a prevailing party; if it does so, it is required to articulate its reasons for the denial, which is necessary for purposes of appellate review. On this question the opinion of my colleague, Judge VanArtsdalen, in Compro-Frink Co. v. Valk Manufacturing Co., 595 F. Supp. 302 (E.D.Pa. 1982) is instructive. In that case Judge VanArtsdalen held that plaintiffs' patents were valid and enforceable but that the products manufactured by defendant did not infringe the patents.