Lee v. Peak

• Decision Date: 01 April 2010
• Docket Number: No. 07-CV-338-JTC.,07-CV-338-JTC.
• Citation: 705 F.Supp.2d 249
• Parties: Jake LEE, Plaintiff,v.ACCESSORIES BY PEAK, Rajesh Shah, Defendants.
• Court: U.S. District Court — Western District of New York

705 F.Supp.2d 249

Jake LEE, Plaintiff,v.ACCESSORIES BY PEAK, Rajesh Shah, Defendants.

No. 07-CV-338-JTC.

United States District Court W.D. New York.

April 1, 2010.

COPYRIGHT MATERIAL OMITTED

Jennifer Meredith, Dariush Keyhani, Meredith & Keyhani, PLLC, Buffalo, NY, for Plaintiff.

Justin S. White, Shelby Bakshi & White, Williamsville, NY, for Defendants.

JOHN T. CURTIN, District Judge.

This is an action brought by plaintiff Jake Lee, owner of United States Patent No. 6,418,936, issued on July 16, 2002 for a “tobacco pipe” (“the '936 Patent”), seeking injunctive relief and damages for patent infringement under Title 35 of the United States Code, and for common law trademark infringement. As alleged in the complaint, plaintiff “is an individual who does business throughout the United States and is located in West Hollywood, CA.” Item I, ¶ 4. Plaintiff claims that he has continuously used the trademark “Six Shooter” in connection with the sale of products covered by the '936 Patent, and that defendant Rajesh Shah, owner and president of Accessories by Peak, Inc., infringed the patent and trademark by selling nearly identical products under the trademark “6 Shooter.” See Item 1, ¶¶ 10-16.

Plaintiff moves for partial summary judgment pursuant to Rule 56 of the Federal Rules of Civil Procedure on his claim for enhanced damages based on willful infringement of the '936 Patent. Plaintiff also requests that the court order an accounting to determine the amount of damages due.

For the reasons that follow, plaintiff's motion for partial summary judgment is granted in part and denied in part.

BACKGROUND

As reflected in the transcript of plaintiff's deposition, taken by telephone on September 16, 2008 (Item 17, Ex. E), plaintiff first became aware of defendant's alleged infringing activities in March 2003 while attending a merchandise trade show in Las Vegas. He was informed by a customer at the show that there was a vendor selling a pipe identical to the Six Shooter. Plaintiff testified that he retrieved a manila folder containing a copy of the '936 Patent, which he always brings along when he attends a trade show, and took a walk with an associate, Robert Macleod, to seek out the vendor. They proceeded to a nearby booth where defendant Rajesh Shah was displaying what appeared to be an exact replica of plaintiff's Six Shooter pipe. Plaintiff testified that he introduced himself to Mr. Shah, showed him the patent, and told him that he owned the patent as well as the rights to the pipe identified on the patent. Plaintiff testified that he told Mr. Shah, “you cannot sell these,” to which Mr. Shah replied, “Okay.” Plaintiff took the replica pipe from the display, along with Mr. Shah's business card, and walked away. Id. at 22-23.

Plaintiff testified that in early 2004 he received word from a client that Mr. Shah and his company, Accessories by Peak, Inc., were still selling replicas of plaintiff's Six Shooter pipe. On February 24, 2004, plaintiff sent Mr. Shah an e-mail stating:

Dear Rajesh,

I just received word that you are still selling knockoffs of my “Patented” pipe. You agreed that you would stop selling them and you are not keeping to your agreement. Therefore, you leave me no choice but to take legal action against you. You will be receiving a letter from my attorney and a law suit will soon follow. In America, we take Patent infringement very seriously.

Item 17, Ex. D, Attachment 1. Plaintiff received no response to this e-mail.

Plaintiff testified that in December 2006 he called one of his customers on the East Coast to inquire about the substantial drop in sales of his pipes. The customer replied that he had been buying a “knockoff” locally from Accessories by Peak. In January, 2007, plaintiff had his brother place an order with Accessories by Peak for five of the pipes, which were shipped to plaintiff's father's business address in Los Angeles. Item 17, Ex. E, at 26-27; see also id., Ex. D, Att. 2.

Plaintiff filed this action in May, 2007. On December 14, 2007, this court entered an order upon consent of the parties, adjudging and decreeing that:

1. The '936 Patent was duly and legally issued to Jake Lee as inventor of the subject matter of the '936 Patent, including all right to recover for past infringement thereof.

2. The '936 Patent is valid and enforceable.

3. Defendants, their officers, agents, servants, employees, attorneys, and all other persons acting in concert, participation or privity with them, and their successors and assigns are hereby permanently enjoined and restrained from infringing, contributorily infringing or inducing the infringement of the '936 Patent by making, using, selling and/or offering for sale any and all pipes as described in the '936 Patent and/or equivalence [sic] under the doctrine of equivalence in U.S. patent law.

4. The Court shall retain continuing jurisdiction over this action for the purposes of enforcing the terms of this Order and/or Settlement between the parties.

Item 7.

When efforts to reach informal settlement of the lawsuit failed, plaintiff filed his motion for partial summary judgment seeking an order declaring that defendants have infringed the '936 Patent by selling the “6 Shooter” tobacco pipe, and that the infringement was willful. Plaintiff also requests that the court order an accounting to determine damages.

DISCUSSION

A. Summary Judgment Standard

The standard for determining a motion for summary judgment in a patent infringement case is the same as in any other type of action. See Alloc, Inc. v. Norman D. Lifton Co., 653 F.Supp.2d 469, 473 (S.D.N.Y.2009) (citing Union Carbide Corp. v. Am. Can Co., 724 F.2d 1567, 1571 (Fed.Cir.1984)). Summary judgment is appropriate “if the pleadings, the discovery and disclosure materials on file, and any affidavits show that there is no genuine issue as to any material fact and that the movant is entitled to judgment as a matter of law.” Fed.R.Civ.P. 56(c). A genuine issue of material fact exists if “the evidence is such that a reasonable jury could return a verdict for the nonmoving party.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). “Where the record taken as a whole could not lead a rational trier of fact to find for the non-moving party, there is no genuine issue for trial.” Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 587, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986) (citation and internal quotation marks omitted).

The moving party initially bears the burden of demonstrating that no genuine issues of material fact remain to be tried. Celotex Corp. v. Catrett, 477 U.S. 317, 323, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). Once this showing is made, the non-moving party may not rely solely on “[c]onclusory allegations, conjecture, and speculation,” but must come forward with specific facts demonstrating that there is a genuine issue for trial. Niagara Mohawk Power Corp. v. Jones Chem. Inc., 315 F.3d 171, 175 (2d Cir.2003) (citations and internal quotation marks omitted); see also Fed.R.Civ.P. 56(e)(2). The court resolves all ambiguities and draws all factual inferences in favor of the non-moving party, but “only if there is a ‘genuine’ dispute as to those facts.” Scott v. Harris, 550 U.S. 372, 380, 127 S.Ct. 1769, 167 L.Ed.2d 686 (2007) (citing Fed.R.Civ.P. 56(c)).

In this case, there can be no dispute that the '936 Patent has been adjudged valid and enforceable by the court in the consent order of December 14, 2007. Cf. Stein Industries, Inc. v. Jarco Industries, Inc., 33 F.Supp.2d 163, 171 (E.D.N.Y.1999) (consent judgment conclusively established issues of patent validity and infringement); Wallace Clark & Company, Inc. v. Acheson Industries, Inc., 394 F.Supp. 393, 400-02 (S.D.N.Y.1975) (consent decree was res judicata as to issues of validity and infringement of patent) aff'd, 532 F.2d 846 (2d Cir.) cert. denied, 425 U.S. 976, 96 S.Ct. 2177, 48 L.Ed.2d 800 (1976). Accordingly, the only issues remaining for determination with respect to the '936 Patent are infringement and damages, including whether enhanced damages for willful infringement are warranted. Plaintiff contends that he is entitled to entry of summary judgment on these remaining issues.

B. Patent Infringement

Pursuant to 35 U.S.C. § 271(a), “whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented invention during the term of the patent therefor, infringes the patent.” Because patent infringement is “a strict liability offense,” In re Seagate Technology, LLC, 497 F.3d 1360, 1368 (Fed.Cir.2007) cert. denied sub nom. Convolve, Inc. v. Seagate Technology, LLC, 552 U.S. 1230, 128 S.Ct. 1445, 170 L.Ed.2d 275 (2008); see also Hilton Davis Chemical Co. v. Warner-Jenkinson Co., Inc., 62 F.3d 1512, 1527 (Fed.Cir.1995), the courts have found that intent is not an element of a direct infringement claim, and neither ignorance of the patent nor good faith belief in non-infringement is a defense to a charge of infringement under section 271(a). See In re Omeprazole Patent Litigation, 490 F.Supp.2d 381, 413 (S.D.N.Y.2007) (“Making, using, selling, or offering to sell matter covered by a patent without authority of the owner constitutes infringement regardless of knowledge or intent.”) aff'd, 281 Fed.Appx. 974 (Fed.Cir.2008) cert.denied sub nom. Apotex Corp. v. Astrazeneca AB, ---U.S. ----, 129 S.Ct. 1593, 173 L.Ed.2d 677 (2009); see also Metal Film Co. v. Metlon Corp., 316 F.Supp. 96, 111 n. 15 (S.D.N.Y.1970) (“neither lack of knowledge of the patent nor lack of intent to infringe is a defense on the issue of infringement.”).

Generally, patent infringement analysis involves two steps. The first step involves construction of the patent claims by establishing the scope and boundaries of the subject matter covered by the patent, and the second step involves comparing the properly construed claims to the...