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United States District Court, S.D. New York

August 12, 2005.

JOSEPH OVADIA, et al., Plaintiffs,
TOP TEN JEWELRY CORP., et al. Defendants.

The opinion of the court was delivered by: RICHARD HOLWELL, District Judge


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 attorneys' fees.

  Summary Judgment

  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.

  Attorneys' Fees

  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.


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