DCT

7:09-cv-06943

Cardow Inc v. Berkowitz

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Key Events
Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 7:09-cv-06943, S.D.N.Y., 08/06/2009
  • Venue Allegations: Venue is alleged to be proper in the Southern District of New York because Defendant Jeffrey Berkowitz resides in the judicial district.
  • Core Dispute: Plaintiff Cardow, Inc. seeks a declaratory judgment that its "reversible" jewelry rings do not infringe, and that the asserted patents are invalid.
  • Technical Context: The dispute centers on the mechanical design and ornamental appearance of jewelry, specifically rings capable of displaying one of two different gemstones by reversing or flipping a central setting.
  • Key Procedural History: The complaint notes that this action follows a pre-suit notice letter from Defendants' counsel dated April 28, 2009, which alleged infringement and offered a license. The letter also referenced a prior settlement agreement between Defendant Tanory and J.C. Penney Co., Inc. involving the same patents. Plaintiff initially filed an identical declaratory judgment action in the U.S. Virgin Islands on May 12, 2009, which it voluntarily dismissed without prejudice after Defendants challenged personal jurisdiction.

Case Timeline

Date Event
1993-01-08 ’608 Patent Priority Date
1993-12-03 ’410 Patent Priority Date
1994-10-11 ’608 Patent Issue Date
1996-10-08 ’410 Patent Issue Date
2009-04-28 Date of pre-suit notice letter from Defendants to Cardow
2009-05-12 Plaintiff files initial legal action in U.S. Virgin Islands
2009-08-06 Complaint Filing Date

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 5,353,608 - “Multi-Use Jewelry Piece,” Issued October 11, 1994

The Invention Explained

  • Problem Addressed: The patent background identifies a market desire for jewelry that can be configured in different ways for different displays, but notes that prior art solutions were often complex or involved multiple separate pieces that could be snapped on or off ('608 Patent, col. 1:4-19).
  • The Patented Solution: The invention is a single, integrated jewelry piece with a central "setting means" that holds two different display objects (e.g., gemstones) back-to-back ('608 Patent, col. 2:6-14). This central setting is connected to a pair of hoops. The wearer can pivot the hoops approximately 180 degrees in opposite directions, which flips the central setting to reveal the alternative gemstone. The hoops then align adjacent to one another to form a complete ring, bracelet, or other piece of jewelry ('608 Patent, Abstract; col. 2:63-67).
  • Technical Importance: The design provides a "two-in-one" functionality within a single article of jewelry, eliminating the need for separate, attachable components to change its appearance ('608 Patent, col. 1:21-25).

Key Claims at a Glance

  • The complaint seeks a declaratory judgment of non-infringement of "any valid claims" (Compl. p. 5, Prayer ¶A). Independent claim 1 is representative:
    • A "setting means for holding first and second separate and different display objects opposite each other and each with a portion thereof extending outwardly of said setting means,"
    • "first and second continuous hoops each with a truss extending radially outwardly therefrom, said trusses being connected to said setting means between the two display objects,"
    • "each of said hoops is pivotable by substantially 180° in opposite directions above and below said setting means to be adjacent to each other for selectively orienting said first and second display objects for selective display of the extending portion thereof."
  • The complaint implicitly puts all dependent claims at issue as well.

U.S. Patent No. D374,410 - “Finger Ring,” Issued October 8, 1996

Technology Synopsis

The ’410 Patent is a design patent that protects the specific ornamental, non-functional appearance of a finger ring as illustrated in its figures. The drawings show a ring with a central, prominent gemstone setting and a dual-band shank that appears consistent with the mechanical structure disclosed in the ’608 Patent.

Asserted Claims

The patent contains a single claim for "The ornamental design for a finger ring, as shown and described" (’410 Patent, [57]).

Accused Features

The overall visual appearance of Plaintiff's "reversible" rings are accused of infringing the patented design (Compl. ¶14; App. A, p. 7-8).

III. The Accused Instrumentality

Product Identification

Plaintiff's line of "reversible" jewelry rings, including various gemstone and metal combinations such as "14k White Gold Tanzanite & Diamond Reversible Ring" (Compl. ¶14; App. A, p. 7; Compl. p. 22, 24).

Functionality and Market Context

The complaint and its exhibits describe the accused products as "TWO RINGS IN ONE!" where a user can "Simply remove the ring and reverse it!" (Compl. p. 22). This marketing language suggests a mechanism that allows the central setting of the ring to be flipped or reversed to display an alternative stone. A screenshot from Plaintiff's website displays various 'Reversible Rings' and includes the text 'TWO RINGS IN ONE! Simply remove the ring and reverse it!' (Compl. p. 22). The products are marketed as jewelry providing versatility through this reversible feature.

IV. Analysis of Infringement Allegations

The complaint seeks a declaratory judgment of non-infringement, based on infringement allegations made by the Defendants in a pre-suit letter attached as Appendix A (Compl. ¶10). The following chart summarizes the infringement theory for the ’608 Patent as presented in that letter.

’608 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
setting means for holding first and second separate and different display objects opposite each other and each with a portion thereof extending outwardly of said setting means, and The pre-suit letter asserts that Cardow's rings include "the claimed setting means" and "the claimed two display objects" (Compl. ¶10, App. A, p. 8). The products are described as "double sided" rings (Compl. p. 22). ¶10, ¶14 col. 2:6-14
first and second continuous hoops each with a truss extending radially outwardly therefrom, said trusses being connected to said setting means between the two display objects, The letter asserts the accused rings include "the claimed first and second continuous hoops" (Compl. ¶10, App. A, p. 8). Product images show a dual-band structure connected to the central setting (Compl. p. 24). ¶10, ¶14 col. 2:20-29
each of said hoops is pivotable by substantially 180° in opposite directions above and below said setting means to be adjacent to each other for selectively orienting said first and second display objects for selective display of the extending portion thereof. The product marketing invites users to "reverse" the ring, implying a pivoting or flipping mechanism that reorients the central setting to display an alternative stone (Compl. p. 22). ¶14 col. 2:63-67

Identified Points of Contention

  • Scope Questions: A primary question for the ’608 Patent will be the interpretation of the term "truss." It is unclear from the complaint whether the accused rings' shanks embody the specific structure of a "truss" as described in the patent (composed of straight and angled pieces), or if the term can be construed more broadly to cover other connecting structures.
  • Technical Questions: A key factual question will be whether the mechanism of the accused rings functions as claimed. While marketing materials suggest the rings "reverse," discovery will be needed to determine if this is achieved by two hoops pivoting "substantially 180° in opposite directions" or through some other mechanical means.
  • Legal Questions: For the ’410 design patent, the dispute will turn on the "ordinary observer" test. The core legal question is whether the accused Cardow rings are "substantially the same" in ornamental appearance as the patented design, considering the prior art, such that an ordinary observer would be deceived (Compl., App. A, p. 7-8).

V. Key Claim Terms for Construction

The Term: "setting means" (Claim 1)

  • Context and Importance: This term is drafted in means-plus-function format under 35 U.S.C. § 112(f). Its construction is critical because its scope is not determined by its plain meaning, but is limited to the specific structure disclosed in the specification for performing the function of "holding" the display objects, and equivalents thereof.
  • Intrinsic Evidence for a Broader Interpretation: A party may argue that statements like "The type, size and shape of the display item 12 used also is not critical to the invention" suggest the patentee did not intend to limit the invention to a single, specific setting structure ('608 Patent, col. 2:15-17).
  • Intrinsic Evidence for a Narrower Interpretation: The scope is legally confined to the corresponding structures disclosed. The specification describes the setting as a "central setting 10 which can be, for example, a wire hoop or solid member" that holds two display items that are "fused or joined together" or held within a wide hoop ('608 Patent, col. 2:1-14). A party will argue the term's scope is strictly limited to these disclosed examples and their structural equivalents.

The Term: "truss" (Claim 1)

  • Context and Importance: The presence or absence of a "truss" in the accused rings will be a dispositive issue for literal infringement. Practitioners may focus on this term because the patent's specific description of the truss may not match the appearance of the shank on the accused products.
  • Intrinsic Evidence for a Broader Interpretation: The patent does not provide a formal definition of "truss," which could support an argument that the term should be given its ordinary and customary meaning in the art at the time, which may be broader than the specific embodiment shown.
  • Intrinsic Evidence for a Narrower Interpretation: The detailed description explicitly links the term to a specific structure: "Each hoop 14 has a pair of truss members (FIG. 2A) 16 at the top thereof which are formed by straight pieces 17 and an angled piece 18" ('608 Patent, col. 2:21-25). This language provides a strong basis for arguing that the term is limited to this disclosed configuration.

VI. Other Allegations

Indirect Infringement

The prayer for relief seeks a declaration of non-infringement of "contributed to" or "induced" infringement (Compl. p. 5, Prayer ¶A). The basis for such a potential claim by Defendants would likely be that Cardow's marketing materials and website, which instruct users to "reverse" the ring, actively encourage customers to perform the infringing use of the patented device.

Willful Infringement

The complaint does not allege willfulness. However, the complaint establishes that Plaintiff Cardow received a detailed notice-of-infringement letter from Defendants' counsel on April 28, 2009 (Compl. ¶8). This letter would serve as the basis for a claim of post-suit willful infringement by the Defendants should infringement be found.

VII. Analyst’s Conclusion: Key Questions for the Case

  • A core issue will be one of claim scope and structural equivalence: Does the shank of the accused Cardow rings constitute a "truss" as that term is used and described in the ’608 Patent’s specification, or is there a fundamental structural difference that places the rings outside the scope of the claims?
  • A second key question will be one of design similarity: For the ’410 design patent, is the overall ornamental appearance of the Cardow rings "substantially the same" as the patented design from the perspective of an ordinary observer, or are the visual differences sufficient to avoid infringement?
  • Finally, a central question for the case will be patent validity: Plaintiff seeks a declaration that both patents are invalid (Compl. ¶19). The case will likely involve a significant dispute over whether the claimed inventions were anticipated or rendered obvious by jewelry designs existing prior to the patents' priority dates.