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OVADIA v. MING FUNG JEWELRY CORP.

January 12, 2005.

JOSEPH OVADIA and OVADIA CORPORATION, Plaintiffs,
v.
MING FUNG JEWELRY CORP., Defendant.



The opinion of the court was delivered by: ROBERT SWEET, Senior District Judge

OPINION

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,*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. Holwell.

  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 ...


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