The opinion of the court was delivered by: RICHARD HOLWELL, District Judge
MEMORANDUM OPINION AND ORDER
This is a consolidated patent infringement action. Plaintiffs
Joseph Ovadia and the Ovadia Corporation allege that Top Ten
Jewelry and Ming Fung Jewelry (collectively, the "Defendants")
used, sold and induced others to use certain of plaintiffs'
patented jewelry cases during the "JA Winter Show", a trade show
held at the Jacob J. Javits Convention Center from January 25-27,
2004.*fn1 Judge Sweet was originally assigned the Ming Fung
action, captioned as Ovadia v. Ming Fung Jewelry Corp., 04 cv.
2692; I was assigned the Top Ten action, which was the
first-filed of the two. By Order dated June 3, 2005, this Court
consolidated the actions, and directed that the consolidated case
be docketed as Joseph Ovadia et al. v. Top Ten Jewelry Corp., et
al., 04 Civ. 2690 (RJH) (S.D.N.Y. filed April 8, 2004).
Prior to consolidation, by Opinion dated January 12, 2005,
Judge Sweet granted in part and denied in part Ming Fung's motion
for summary judgment, finding insufficient evidence to support plaintiffs' sale and
inducement claims, and plaintiff's continued use, sale, and
inducement claims, but concluding that genuine issues of fact
remained with respect to plaintiffs' use claims for each of the
patents-in-suit. Top Ten also moved for partial summary judgment
prior to consolidation, contending that there is no genuine issue
of fact with respect to any but the `625 use claim. Having
declined to rule on Top Ten's motion in connection with the
motion for consolidation, the Court now turns to the issues
raised therein, as well as Top Ten's related motion for
Under the doctrine of the law-of-the-case, it is not necessary
to revisit the bulk of the issues resolved in Judge Sweet's
decision. The law-of-the-case doctrine "`posits that if a court
decided a rule of law, that decision should continue to govern in
subsequent stages of the same case.'" Aramony v. United Way,
254 F.3d 403, 410 (2d Cir. 2001) (citing In re Crysen/Montenay
Energy Co., 226 F.3d 160, 165 n. 5 (2d Cir. 2000), cert.
denied, 532 U.S. 920 (2001)). The doctrine is broad enough to
"encompass? a lower court's adherence to . . . the rulings of
another judge or court in. . . . a closely related case".
Heller Intern Corp. v. Sharp, 1994 WL 386421, at *3 (N.D. Ill.
1994) (citation and quotation marks omitted) (emphasis added);
Moss v. Crawford & Co., 201 F.R.D. 398, 401 n. 1 (W.D. Pa.
2000) (law of the case doctrine applies to issues previously
determined in closely related cases). On this basis, and with one
exception, the Court will adopt the summary judgment ruling in
the Ming Fung action, which is premised "on identical allegations
to those at issue" in the Top Ten action. Ovadia v. Ming Fung
Jewelry Corp., 2005 WL 78584, at *1.
As Judge Sweet found, there is absolutely no evidence to
support plaintiffs' sale or inducement claims with respect to any
of the patents-in-suit. Ovadia v. Ming Fung Jewelry Corp., 2005 WL 78584, at *4. Neither is there evidence
that either defendant continued to use, sell, or induce others
to use or sell, any of the patents after the JA Winter Show
concluded. Id. Accordingly, the Court adopts both conclusions,
and therefore grants Top Ten's motion for partial summary
judgment in corresponding part. Id. The only issue, then, is
whether to apply the law-of-the-case doctrine to Judge Sweet's
determination that plaintiffs' use claims survive with respect
to each of the patents-in-suit.
Having considered that question, the Court declines to do so,
but only because plaintiffs have since conceded that only their
`625 use claim is supported by the record, effectively abandoning
the remainder of their use claims. (Pl. Opp. Memo., p. 3) ("[T]he
only actionable aspects of [d]efendants [sic] infringement were . . .
using display cases which infringe the `625 Patent . . . and
inducing others to infringe the `625 Patent.") Having already
concluded that the law-of-the-case doctrine precludes all of
plaintiffs' inducement claims, including the `625 inducement
claim, that leaves just the `625 use claim, which Top Ten does
not include in its motion for summary judgment. Accordingly, Top
Ten's motion is granted.
The final issue is whether Top Ten is entitled to attorneys'
fees and costs pursuant to 35 U.S.C. § 285. Top Ten argues costs
are appropriate in this case because plaintiffs failed to
adequately investigate the merits of the suit before filing their
complaint. Section 285 provides that "[t]he court in exceptional
cases may award reasonable attorneys' fees to the prevailing
party." 35 U.S.C. § 285. However, where there is no final
resolution of a case, there cannot be a "prevailing party" within
the meaning of Section 285. Ovadia v. Ming Fung Jewelry Corp.,
04 cv. 2692, 2005 WL 78584, at *5 (S.D.N.Y. Jan. 12, 2005) (citing Medichem, S.A. v. Rolabo,
S.L., 353 F.3d 928, 936 (Fed. Cir. 2003)). On this basis, Top
Ten's request for fees is denied without prejudice to renew
following final resolution of this case.
For the foregoing reasons, Top Ten's motion for partial summary
judgment is granted. Top Ten's motion for attorneys' fees and
costs is denied without prejudice to re-file following a final
disposition of this consolidated action.