United States District Court, S.D. New York
January 12, 2005.
JOSEPH OVADIA and OVADIA CORPORATION, Plaintiffs,
MING FUNG JEWELRY CORP., Defendant.
The opinion of the court was delivered by: 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.
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,*fn1 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.
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,
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
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
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.
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.