OVADIA v. MING FUNG JEWELRY CORP

ROBERT SWEET, Senior District Judge

Defendant Ming Fung Jewelry Corporation ("Ming Fung Jewelry") has moved pursuant to Rule 56, Fed.R.Civ.P., to dismiss the complaint of plaintiffs Joseph Ovadia and Ovadia Corporation (collectively, "Ovadia"). Ming Fung Jewelry has also sought attorneys' fees pursuant to 35 U.S.C. § 285. For the reasons set forth below, the motion for summary judgment is granted in part and denied in part, and the application for attorneys' fees is denied at this time, with leave granted to renew.

Prior Proceedings

The complaint in this action was filed on April 8, 2004 and alleges violations of certain patents held by Ovadia on jewelry display cases by the use of counterfeit jewelry display cases at the J.A. International Winter Show held at the Jacob K. Javits Convention Center on January 25, 2004 through January 27, 2004 (the "2004 Winter Show"). The patents allegedly infringed by Ming Fung Jewelry are U.S. Patent No. 5,649,625 (the "'625 patent"), U.S. Patent No. 5,758,765 (the "'765 patent"), U.S. Patent No. 5,775,484 (the "'484 patent"), U.S. Patent No. 5,913,417 (the "'417 patent"), and U.S. Patent No. 5,957,274 (the "'274 patent) (collectively, the "patents-in-suit"), all owned by Joseph Ovadia and exclusively licensed to Ovadia Corporation.

Of the fifteen other patent infringement cases filed in this district since February 23, 2004 by Ovadia Corporation claiming infringement of some or all of the same patents allegedly infringed in the instant action, at least seven involve purported infringement also discovered at the 2004 Winter Show. Among these actions is a patent infringement suit premised on identical allegations to those at issue here and brought against the Top Ten Jewelry Corporation ("Top Ten"). The Top Ten action, case number 04 Civ. 2690, is assigned to the Honorable Richard J. Holwell.

See generally Ovadia Corp. v. Instyle Jewellery, No. 04 Civ. 9135 (RMB); Ovadia Corp. v. Dew Carat Ltd., No. 04 Civ. 8363 (GBD); Ovadia Corp. v. San Jade Jewellery Co., No. 04 Civ. 8362 (HB); Ovadia Corp. v. Omeroglu Decoration Ltd., No. 04 Civ. 8064 (DLC); Ovadia Corp. v. Dhanish Int'l Co., No. 04 Civ. 8062 (GBD); Ovadia v. Treasure Island Enters. Corp., No. 04 Civ. 3722 (KMW); Ovadia v. Liberty Best Jewelry, Inc., No. 04 Civ. 3721 (VM); Ovadia v. Four Seasons Jewelry Corp., No. 04 Civ. 2694 (GBD) (DCF); Ovadia v. Master Art Jewelry Indus. Ltd., No. 04 Civ. 2693 (HB); Ovadia v. EFE Jewelry, Ltd., No. 04 Civ. 2691 (RMB); Ovadia v. Top Ten Jewelry Corp., No. 04 Civ. 2690 (RJH); Ovadia v. Ace Jewelry Ltd., No. 04 Civ. 2683 (LAP); Ovadia v. Dynasty Gold Jewelers, Inc., No. 04 Civ. 1616 (GEL); Ovadia v. Amethyst Kingdom Co., No. 04 Civ. 1546 (SHS);Ovadia v. Gabry Packing S.N.C., No. 04 Civ. 1545 (LAP). Default judgments have been entered or other resolutions reached in the majority of these actions.

Ming Fung Jewelry filed the instant motion for summary judgment and attorneys' fees on December 3, 2004. Following further briefing, the motion was marked fully submitted on December 15, 2004. The Facts

The facts are drawn from Ming Fung Jewelry's Local Civil Rule 56.1 Statement, Ovadia's Local Civil Rule 56.1 Statement in Opposition, and the supporting affidavits, affirmation and declaration submitted by the parties.

According to Mark S. Hartmann, Jr. ("Hartmann"), Vice President and General Manager of Ovadia Corporation, he attended the 2004 Winter Show, a jewelry trade show, on January 25, 2004, and at a booth with the name "Top Ten" saw display trays and pads which he considered infringed one or more of Ovadia's patents. He was handed a business card with two names, "Top Ten" and "Ming Fung." He states that he asked an unidentified man of Asian descent whether both companies were exhibiting their jewelry at the booth, and was answered in the affirmative.

According to Ming Fung ("Ming Fung"), President of Ming Fung Jewelry, Ming Fung Jewelry does not exhibit at jewelry shows but only exhibits in a New York showroom. Ming Fung and his wife Winnie Fung ("Winnie Fung") are the shareholders and directors of Ming Fung Jewelry. They also own and operate Top Ten, for which Winnie Fung serves as the Vice-President and Chief Operating Officer. According to both Winnie Fung and Ming Fung, Top Ten does not maintain a showroom in New York. Top Ten sells its merchandise to retailers at jewelry shows in New York, Miami, Las Vegas, Chicago and other locations.

According to Ming Fung, Top Ten leased ten booths at the 2004 Winter Show from January 24, 2004 through January 27, 2004, and only the name "Top Ten" appeared on and above the booths in question. Photographs have been submitted showing booths bearing the name "Top Ten," and Ming Fung Jewelry has also submitted an invoice issued to Top Ten for ten booths at the 2004 Winter Show.

According to Ming Fung, none of the jewelry shown at the 2004 Winter Show was the property of Ming Fung Jewelry, none of the display trays or other display devices were the property of Ming Fung Jewelry, and all of the jewelry, display trays and other display devices at the 2004 Winter Show were the property of Top Ten.

Ming Fung acknowledges that the name "Ming Fung Jewelry Corp." appeared along with the name "Top Ten Jewelry Corporation" on business cards handed out at the Top Ten booths at the 2004 Winter Show. According to Ming Fung, the cards advertise Ming Fung Jewelry's showroom so that a retailer who could not find what he or she wanted at the 2004 Winter Show could go to the Ming Fung Jewelry showroom to see what was on display there.

Bowie Ha, the manager of Top Ten, has submitted an affidavit stating that on June 24, 2004 he attended a conference in the Top Ten action pending before Judge Holwell. Hartmann also attended the conference, and Ha overheard Hartmann inform Top Ten's counsel, who is also counsel to Ming Fung Jewelry, that Ming Fung Jewelry was being sued because its name appeared on the business card given to Hartmann at the 2004 Winter Show.

According to Ming Fung Jewelry, it did not use, sell, or induce others to use display cases infringing the patents-in-suit at the 2004 Winter Show. Ming Fung Jewelry has also denied that it continued to use, sell or induce others to use display cases infringing the patents-in-suit.

Ovadia has stated in its Local Civil Rule 56.1 Statement in Opposition that it does not contend that Ming Fung Jewelry sold display cases infringing the patents-in-suit at the 2004 Winter Show, or induced others to use display cases infringing the '765 patent, the '484 patent, the '417 patent, and the '274 patent at the 2004 Winter Show. Ovadia further disclaims contending that Ming Fung Jewelry continued to use, sell or induce others to use display cases infringing the patents-in-suit.

Ovadia asserts, however, that Ming Fung Jewelry used display cases infringing the patents-in-suit at the 2004 Winter Show and induced others, such as Top Ten, to use display cases infringing the '625 patent at the 2004 Winter Show.

Ovadia further claims that Ming Fung Jewelry's use of infringing display cases at the 2004 Winter Show was willful because Ming Fung Jewelry purchased authorized trays from Ovadia's distributor, Advanced Jewelry Display, bearing a patent notice in October 2002. Although Ovadia cites to the Hartmann declaration in support of this point, Hartmann has offered no testimony concerning a purported purchase by Ming Fung Jewelry of authorized trays in or about October 2002 or at any other time.

The Standard for Summary Judgment

Summary judgment is granted only if there is no genuine issue of material fact and the moving party is entitled to judgment as a matter of law. See Fed.R.Civ.P. 56(c); Celotex Corp. v. Catrett, 477 U.S. 317, 322-23 (1986); SCS Communications, Inc. v. Herrick Co., Inc., 360 F.3d 329, 338 (2d Cir. 2004). The court will not try issues of fact on a motion for summary judgment, but, rather, will determine "whether the evidence presents a sufficient disagreement to require submission to a jury or whether it is so one-sided that one party must prevail as a matter of law." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 251-52 (1986). Summary judgment is appropriate where the moving party has shown that "little or no evidence may be found in support of the nonmoving party's case. When no rational jury could find in favor of the nonmoving party because the evidence to support its case is so slight, there is no genuine issue of material fact and a grant of summary judgment is proper." Gallo v. Prudential Residential Servs., Ltd. P'ship, 22 F.3d 1219, 1223-24 (2d Cir. 1994) (internal citations omitted). If, however, "`as to the issue on which summary judgment is sought, there is any evidence in the record from which a reasonable inference could be drawn in favor of the opposing party, summary judgment is improper.'"Security Ins. Co. of Hartford v. Old Dominion Freight Line Inc., 391 F.3d 77, 82-83 (2d Cir. 2004) (quoting Gummo v. Village of Depew, 75 F.3d 98, 107 (2d Cir. 1996)).

"The party seeking summary judgment bears the burden of establishing that no genuine issue of material fact exists and that the undisputed facts establish her right to judgment as a matter of law." Rodriguez v. City of New York, 72 F.3d 1051, 1060-61 (2d Cir. 1995). This burden may be satisfied "by showing — that is pointing out to the district court — that there is an absence of evidence to support the nonmoving party's case."PepsiCo, Inc. v. Coca-Cola Co., 315 F.3d 101, 105 (2d Cir. 2002) (internal quotation marks and citations omitted); accord Goenaga v. March of Dimes Birth Defects Found., 51 F.3d 14, 18 (2d Cir. 1995) ("In moving for summary judgment against a party who will bear the ultimate burden of proof at trial, the movant's burden will be satisfied if he can point to an absence of evidence to support an essential element of the nonmoving party's claim.").

In order to defeat a motion for summary judgment, the non-moving party must offer sufficient evidence to enable a reasonable jury to return a verdict in its favor. See Anderson, 477 U.S. at 248; Byrnie v. Town of Cromwell, Bd. of Educ., 243 F.3d 93, 101 (2d Cir. 2001); Scotto v. Almenas, 143 F.3d 105, 114 (2d Cir. 1998). In other words, the non-moving party "may not rely simply on conclusory statements or on contentions that the affidavits supporting the motion are not credible." Ying Jing Gan v. City of New York, 996 F.2d 522, 532 (2d Cir. 1993); see also Scotto, 143 F.3d at 114-15.

A material fact is one that would "affect the outcome of the suit under the governing law," and a dispute about a genuine issue of material fact occurs if the evidence is such that "a reasonable jury could return a verdict for the nonmoving party."Anderson, 477 U.S. at 248; see also R.B. Ventures, Ltd. v. Shane, 112 F.3d 54, 57 (2d Cir. 1997). Thus, "[o]nly disputes over facts that might affect the outcome of the suit under the governing law will properly preclude the entry of summary judgment." Anderson, 477 U.S. at 248; see also Quarles v. Gen. Motors Corp., 758 F.2d 839, 840 (2d Cir. 1985) ("[T]he mere existence of factual issues — where those issues are not material to the claims before the court — will not suffice to defeat a motion for summary judgment."). In determining whether a genuine issue of material fact exists, a court must resolve all ambiguities and draw all reasonable inferences against the moving party. See Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587 (1986);Gibbs-Alfano v. Burton, 281 F.3d 12, 18 (2d Cir. 2002).

Summary Judgment Is Granted In Part And Denied In Part

Ming Fung Jewelry has moved for summary judgment dismissing Ovadia's complaint on the ground that Ovadia's claims are based on events that occurred at the 2004 Winter Show, where Top Ten, not Ming Fung Jewelry, leased booths and presented display cases and jewelry belonging to Top Ten.

Drawing all necessary inferences and resolving ambiguities against the moving party, see Matsushita Elec. Indus., 475 U.S. at 587, the affidavits and declaration submitted by the parties establish a factual dispute as to whether Ming Fung Jewelry used cases covered by the patents-in-suit at the 2004 Winter Show. Although Ming Fung Jewelry has presented considerable documentary evidence and testimony in support of its contention that only Top Ten exhibited at the 2004 Winter Show, it is for a jury to assess the credibility of interested witnesses such as Ming Fung and Winnie Fung and the degree to which the undated photographs, leasing invoices and other documentary evidence corroborate the testimony of both witnesses concerning the presence of Ming Fung Jewelry at the 2004 Winter Show and its ownership or use, if any, of the display cases alleged to infringe the patents-in-suit.

As Ming Fung Jewelry has pointed to the absence of evidence to support Ovadia's claims that Ming Fung Jewelry (i) sold infringing cases at the 2004 Winter Show, (ii) induced others to use cases infringing the '765 patent, the '484 patent, the '417 patent, and the '274 patent at the 2004 Winter Show, and (iii) continued to use, sell or induce others to use infringing cases,see generally PepsiCo, 315 F.3d at 105, and Ovadia has failed to offer any evidence in support of these claims, the claims are hereby dismissed.

The only evidence offered by Ovadia in support of its remaining claim that Ming Fung Jewelry induced others, such as Top Ten, to use cases allegedly infringing the '625 patent at the 2004 Winter Show is the declaration of Hartmann, who has testified that he witnessed both Ming Fung Jewelry and Top Ten using display trays and pads that appeared to infringe Ovadia's patents at the 2004 Witness Show. "In order to succeed on a claim of inducement, the patentee must show both direct infringement and a certain level of intent on the part of the alleged inducer that the patent be infringed." Insituform Techs., Inc. v. CAT Contracting, Inc., 385 F.3d 1360, 1377 (Fed. Cir. 2004) (citing Water Techs. Corp. v. Calco, Ltd., 850 F.2d 660, 668 (Fed. Cir. 1988)). Although intent may be established through circumstantial evidence, see Metabolite Labs., Inc. v. Lab. Corp. of Am. Holdings, 370 F.3d 1354, 1365 (Fed. Cir. 2004) (citing Water Techs., 850 F.2d at 668),petition for cert. filed, 73 U.S.L.W. 3298 (U.S. Nov. 3, 2004) (No. 04-607), no direct evidence of Ming Fung Jewelry's intent to cause the alleged infringement by Top Ten or others has been presented, nor has circumstantial evidence from which intent could be inferred been placed before the Court. Accordingly, Ovadia's claim that Ming Fung Jewelry induced others to use display cases infringing the '625 patent at the 2004 Winter Show is dismissed.

The Application For Attorneys' Fees Is Denied

Ming Fung Jewelry has sought attorneys' fees pursuant to 35 U.S.C. § 285 on the grounds that Ovadia failed to adequately investigate the merits of the suit before filing its complaint.

Section 285 provides that "[t]he court in exceptional cases may award reasonable attorney fees to the prevailing party." 35 U.S.C. § 285. Where "there is no final resolution of the dispute in [a] case, there is no `prevailing party' as is required for an award of attorney fees under 35 U.S.C. § 285." Medichem, S.A. v. Rolabo, S.L., 353 F.3d 928, 936 (Fed. Cir. 2003). Accordingly, Ming Fung Jewelry's request for attorneys' fees is denied at this time with leave to renew upon a final resolution of the dispute in this case. Conclusion

For the reasons stated above, Ming Fung Jewelry's motion for summary judgment is denied as to Ovadia's claims that Ming Fung Jewelry used products infringing the patents-in-suit at the 2004 Winter Show and is otherwise granted. Ming Fung Jewelry's application for attorneys' fees is denied at this time, with leave granted to renew upon the final disposition of this matter.

It is so ordered.