Gemveto Jewelry Co., Inc. v. Jeff Cooper Inc.

Decision Date15 July 1983
Docket NumberNo. 81 Civ. 3447.,81 Civ. 3447.
Citation568 F. Supp. 319
PartiesGEMVETO JEWELRY COMPANY, INC., Plaintiff, v. JEFF COOPER INCORPORATED and Jeff Cooper, Individually, Defendants.
CourtU.S. District Court — Southern District of New York

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Auslander, Thomas & Morrison, Jarblum & Solomon, P.C., New York City, for plaintiff; M. Arthur Auslander, James D. Fornari, New York City, of counsel.

Colvin, Miskin, Basseches & Mandelbaum, New York City, for defendants; Howard C. Miskin, Howard F. Mandelbaum, New York City, of counsel.

OPINION FINDINGS OF FACT AND CONCLUSIONS OF LAW

EDWARD WEINFELD, District Judge.

This is an action by plaintiff, Gemveto Jewelry Company, Inc. ("Gemveto"), a manufacturing jeweler, against Jeff Cooper Incorporated ("Cooper Jewelry"), another jewelry manufacturer, and its principal, Jeff Cooper, for infringement of two patents, violation of section 43 of the Lanham Act,1 copyright infringement of Gemveto's works of jewelry and unfair competition under New York statutory and common law.

The defendants deny validity of the patents, infringement and unfair competition. They counterclaim for a declaratory judgment of invalidity and noninfringement of the patents and copyrights and seek damages for plaintiff's alleged efforts to coerce defendants' customers to cease doing business with them by asserting patent and copyright claims known to be invalid and attorneys' fees under 35 U.S.C., section 285.

Gemveto sells its manufactured pieces of jewelry to retailers who sell the jewelry to the ultimate consumer. It is not disputed that its manufactured products are of extra high quality, and include 18 karat gold rings, bracelets, necklaces and earrings which comprise gemstones mounted in and forming part of artistic settings of precious stones. Gemveto's customers include the nation's outstanding jewelry retailers, such as Tiffany, Cartier, Van Cleef & Arpels, Neiman Marcus, and other well known retailers throughout the nation. Plaintiff has a preeminent reputation as a manufacturer of quality jewelry in terms of craftsmanship, style and design. Jean Vitau, principal of Gemveto and the inventor of the two patents at issue, has been described by his principal customers as a genius in designing, styling and producing fine quality jewelry. Defendant, Cooper Jewelry, makes and sells more moderately priced jewelry of 14 carat gold and gemstones of good but slightly imperfect quality. Jeff Cooper's initial activity in the jewelry business was as a salesman in the employ of others. While so employed, he began marketing for himself inexpensive items of jewelry such as gold horses that he purchased from casters. In 1977 he engaged in business on his own and in January 1978 incorporated Cooper Jewelry, which thereafter manufactured a "fashionable diamond line" aimed at the middle class market in contrast to Gemveto's market. The difference in their products were described by Cooper, who referred to Gemveto as the "Rolls Royce" and his company as the "Chevy" in the industry.2

I. PATENT INFRINGEMENT

Gemveto, by assignment from Vitau, is the owner of the two patents in suit. Vitau filed a patent application in the United States Patent and Trademark Office ("PTO") in January, 1979, for which a patent issued on September 16, 1980 (the "245 patent").3 In September, 1979, while the first was still pending, he filed a second application, for which a patent issued on October 6, 1981 (the "818 patent").4 Plaintiff contends that the defendants are manufacturing and selling jewelry that infringe on these patents. Defendants deny any infringement. In addition, they charge that both patents are invalid as obvious modifications of existing teachings, and because plaintiff committed fraud on the PTO by failing to disclose relevant prior art to the examiner.

A. THE PATENTS
1. The 245

The 245 patent basically consists of three parts: a cavity or "bezel," a retaining wall of gold, and a wire bar. The bezels are indentations in the mount into which the stones are placed up to their girdle, or widest part. The size of the plate between each bezel is determined by the amount of overlap of the peripheral portions of the stones to be mounted. Grooves, generally rectangular in shape, are then cut parallel to the bezels. The gold wall, or "supporting member," is then soldered into these grooves. Declivities are then cut into the outwardly extending portions of the wall. These are configured to receive and support the peripheral portions of the stones so that the stones rest on the bezels. Rods of wire are then placed and soldered on the top of the wall which are designed to overlie the declivities. The rods can be cylindrical, flat, oval or rectangular in cross-section. Both the rod and the wall are composed of precious metals. The downward pressure of the rod and the lateral anchoring of the wall secure the stones in the bezels.

2. The 818

The 818 patent also contains three components: bezels, supporting pegs and wire rods. The function of the bezels is the same as with the 245 patent — to serve as receptacles for the stones. Unlike the 245 patent, however, the connecting portion of the mount between each bezel can either be solid or hollowed. The shape of the hollowed portion can be varied, but diamond-shaped is preferred. The 818 patent employs metal pegs, called "elongated support members," in place of the metal wall used in the 245. The metal pegs are preferably cylindrical, but can have any cross-section. They are either soldered directly to the mount, or to the inner surface of the hollow. Manually deformable securing rods are thereafter affixed substantially parallel to the top surface of the setting. Either end of the rod is bent over the outer edge of the setting at a ninety-degree angle and affixed thereto. The rod is also soldered to the pegs. The space between the rod, the pegs and the mount serve the same function as the declivities in the 245 — they are slots to secure the peripheral portions of the stones. The 818 permitted greater flexibility in design than did the 245, and enabled Vitau to use a thinner and lighter wire rod that exposed the brilliance of the stones and gave the jewelry a clean and light appearance.

While the 818 contains improvements over the 245, there are substantial similarities between the two patents. Thus the examiner, who passed upon both applications, initially rejected the 818 patent on double patenting of the "obviousness-type." Accordingly, Vitau filed a terminal disclaimer in which he acknowledged the obviousness rejection, and dedicated to the public that portion of the lifetime of the 818 patent that would run beyond the statutory period of the 245. Thereafter, the 818 issued.5

B. VALIDITY
1. The 245

Under section 103, a patent may not issue if "the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which such subject matter pertains."6 Although "obviousness" is a question of law,7 it must be resolved by reference to factual inquiries, including (1) the scope and content of the prior art, (2) the differences between the prior art and the claims at issue, and (3) the level of ordinary skill in the pertinent art.8

Defendants contend that prior teachings, the wall or channel constructions, render the 245 patent obvious. In support, they offer the testimony of Joseph Lebovic, a diamond setter, who stated that the 245 patent was "sort of" similar to the wall construction.9 Without more, this fails to overcome the statutory presumption of validity that attaches to an issued patent.10 Moreover, a considerable amount of testimony from experienced jewelers was adduced that both Vitau patents were original and important advances in the industry.11 For example, Harold Tivol, president for thirty-one years of Tivol Plaza, a high quality store in Kansas City, with extensive training in the jewelry trade described Vitau as a "genius"12 who "developed a line that we had never seen before."13 In specific Tivol stated that the setting methods patented by Vitau "had never been done before."14 Similarly, Robert Haltom, Chairman of the Board of Haltom Jewelers in Fort Worth and a jeweler for thirty years, testified that he had never seen a setting style like Gemveto's "anywhere."15 Finally, another experienced jeweler, Dominick Pompillonia, testified that he, too, had never seen anything similar to Gemveto's settings prior to their introduction by Vitau.16 These statements, as well as Vitau's description of the lengthy and arduous process he undertook to invent the patented settings, are accepted by the Court as substantial evidence that even persons of extraordinary skill in the industry considered the differences between Vitau's patent and prior art to be significant. In addition, there is undisputed evidence of the great commercial success of the patent. This, too, is evidence of non-obviousness.17 Thus, the Court concludes that the 245 patent is not obvious by reason of the wall or channel constructions and that the patent was lawfully issued to Vitau.18

2. The 818

The defendants contend that the 818 is invalid by reason of plaintiff's acts with respect to the 245. The essence of their argument centers about the claim that Gemveto published, advertised and placed on sale rings made in accordance with the teachings of the 245 patent in July and August, 1978 — more than one year prior to September 17, 1979, the filing date of the 818 application. The rings were advertised in a widely circulated trade journal, shipped to several customers and offered for sale at two trade shows during that time.19 Defendants' argument continues that the aforesaid prior public sale and offering rendered the claims of the 818 obvious in view of prior art and therefore invalid under section 103. In...

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    • United States District Courts. 2nd Circuit. United States District Court (Eastern District of New York)
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    ...the threat of bringing a trademark infringement claim does not constitute unfair competition.' See Gemveto Jewelry Co. v. Jeff Cooper, Inc., 568 F.Supp. 319, 328 (S.D.N.Y.1983), vacated and remanded on other grounds, 800 F.2d 256 (2d Cir.1986) ("The assertion by the defendants of these clai......
  • Gemveto Jewelry Co. v. Jeff Cooper, Inc., 81 Civ. 3347 (EW).
    • United States
    • United States District Courts. 2nd Circuit. United States District Courts. 2nd Circuit. Southern District of New York
    • July 19, 1985
    ...two days notice of settlement. 1 United States Patent Nos. 4,222,245 and 4,292,818. 2 15 U.S.C. § 1125(a). 3 Gemveto Jewelry Co. v. Jeff Cooper Inc., 568 F.Supp. 319 (S.D.N.Y.1983). 4 17 U.S.C. § 401(a). 5 Gemveto Jewelry, 568 F.Supp. at 334-35. 6 A defendant may not be held in contempt for......
  • M. Kramer Mfg. Co., Inc. v. Andrews, 84-1710
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    ...discovering the omission; there is no evidence that it dallied or sold any games after that discovery. See Gemveto Jewelry Co. v. Jeff Cooper, Inc., 568 F.Supp. 319 (S.D.N.Y.1983). Furthermore, only three or four games were sold prior to the discovery of the omission of copyright notice but......
  • Ward v. National Geographic Soc., 99 CIV. 12385(LAK).
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    • United States District Courts. 2nd Circuit. United States District Courts. 2nd Circuit. Southern District of New York
    • July 13, 2002
    ...WL 39259, 14 U.S.P.Q.2d 1829 (E.D.Pa. Mar. 30, 1990), aff'd without opinion, 919 F.2d 136 (3d Cir.1990); Gemveto Jewelry Co. v. Jeff Cooper Inc., 568 F.Supp. 319 (S.D.N.Y.1983), vacated on other grounds, 800 F.2d 256 (Fed. Cir.1986); Norris Indus., Inc. v. Int'l Tel. & Tel. Corp., No. TCA 8......
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  • Forms of Redress for Design Piracy: How Victims Can Use Existing Copyright Law
    • United States
    • Seattle University School of Law Seattle University Law Review No. 21-04, June 1998
    • Invalid date
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