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Plaintiffs, Godinger Silver Art Ltd. (“Godinger Silver”) and P&W Gifts LLC (“P&W
Gifts,” and with Godinger Silver, “Plaintiffs”) for their Amended Complaint against Defendant
THE PARTIES
1. Godinger Silver is a New York limited partnership with a place of business at 63-
2. P&W Gifts is a New York limited liability company with a place of business at 20
Bond Street, Central Valley, New York 10917. P&W Gifts sells Plaintiffs’ Globe
Decanter and Plaintiffs’ Skull Decanter that are the subject of this First Amended
Complaint.
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4. This action arises under the Patent Act of 1952, 35 U.S.C. §§ 1 et seq., and under
the Declaratory Judgment Act, 28 U.S.C. §§ 2201, et seq. This Court has subject
matter jurisdiction to hear this action under 28 U.S.C. §§ 1331, 1338(a), 2201, and
Globe Decanter and Plaintiffs’ Skull Decanter (photographs of which are attached
5. Upon information and belief, Hirschkorn resides in this judicial district, is currently
doing business in this judicial district, has purposefully availed himself of the
privilege of conducting business with residents of this judicial district, and/or has
established sufficient minimum contacts with New York such that Hirschkorn
should reasonably and fairly anticipate being hauled into court in New York.
6. Venue is proper in this judicial district at least under 28 U.S.C. §§ 1391 and
1400(b).
BACKGROUND
7. P&W Gifts began offering a globe-shaped gift decanter (“Plaintiffs’ Original Globe
8. On July 31, 2017, U.S. Design Patent No. D824,263 issued to Hirschkorn (“the
‘263 patent,” attached hereto as Exhibit 3), and on information and belief, on that
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same date Hirschkorn requested that Amazon remove Plaintiffs’ Original Globe
Decanter from Amazon’s website because it allegedly infringed the ‘263 patent.
Hirschkorn’s “take down” request, Amazon was removing the listing for Plaintiffs’
Original Globe Decanter from Amazon’s website, and that listing was in fact
10. On or about August 8, 2018, Plaintiffs’ counsel provided Hirschkorn’s counsel with
prior art which Plaintiffs believed rendered the ‘263 patent invalid.
11. Notwithstanding this invalidating prior art, Godinger Silver modified Plaintiffs’
Original Globe Decanter (this modified design is the accused Plaintiffs’ Globe
Decanter of Exhibit 1 hereto) to further distinguish Plaintiffs’ product from the ‘263
patent.
12. On or about October 13, 2018, P&W Gifts began offering Plaintiffs’ Globe
13. On or about October 21, 2018, Hirschkorn made a new request that Amazon remove
allegedly infringed Hirschkorn’s ‘263 patent, and on or about October 22, 2018,
Amazon notified P&W Gifts that as a result of Hirschkorn’s new “take down”
request, Amazon was removing the listing for Plaintiffs’ Globe Decanter from
Amazon’s website, and that listing was in fact removed on or about October 22,
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14. P&W Gifts began offering a skull-shaped gift decanter (“Plaintiffs’ Skull
15. On information and belief, on or about November 20, 2018, defendant Hirschkorn
requested that Amazon remove Plaintiffs’ Skull Decanter from Amazon’s website
Patent No. D826,640 (“the ‘640 patent,” copy attached hereto as Exhibit 4).
16. On or about November 21, 2018, Amazon notified P&W Gifts that as a result of
Plaintiffs’ Skull Decanter from Amazon’s website, and that listing was in fact
Amazon that Plaintiffs’ Skull Decanter does not infringe Hirschkorn’s ‘640 patent
Amazon agreed and on November 22, 2018, Amazon reinstated Plaintiffs’ Skull
Amazon for Plaintiffs’ Skull Decanter based on Hirschkorn’s ‘640 patent, and still
on November 22, 2018, Amazon notified P&W Gifts that Amazon was again
removing Plaintiffs’ Skull Decanter from Amazon’s website. Later that same day,
November 22, 2018, P&W Gifts again complained to Amazon that Plaintiffs’ Skull
Decanter did not infringe Hirschkorn’s ‘640 patent and therefore that Plaintiffs’
Skull Decanter should be reinstated on Amazon’s website, and still on that same
day, November 22, 2018, Amazon agreed and for a second time reinstated
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thereafter Amazon reversed course and notified P&W Gifts that it was not
18. Shortly thereafter, P&W Gifts complained yet again to Amazon that Plaintiffs’
Skull Decanter did not infringe Hirschkorn’s ‘640 patent and therefore that
again Amazon agreed and for a third time on November 23, 2018, Amazon
though the foregoing history suggests that Hirschkorn has attempted and/or will
attempt to have Plaintiffs’ Skull Decanter again removed from Amazon’s website.
Globe Decanter and Plaintiffs’ Skull Decanter, and Amazon’s delisting of those
infringement and validity of the ‘263 and ‘640 patents that is of sufficient
FIRST COUNT
20. Plaintiffs repeat and reallege each of the foregoing paragraphs of this Amended
Complaint.
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21. Hirschkorn’s ‘263 patent is invalid for failure to satisfy one or more provisions of
Title 35 of the United States Code, including but not limited to 35 U.S.C. §§ 102,
103.
22. For example, Hirschkorn’s ‘263 patent is invalid under 35 U.S.C. §§ 102, 103 in
view of the prior art, including but not limited to, a prior art globe-shaped decanter
23. Plaintiffs reserve the right to assert additional bases for invalidity of the ‘263 patent.
24. Accordingly, Plaintiffs are entitled to a declaratory judgment that the ‘263 patent is
invalid, that Hirschkorn should cease interfering with Plaintiffs’ sale of Plaintiffs’
Globe Decanter, and that Hirschkorn should be directed to forthwith retract his
“take-down” request to Amazon for Plaintiffs’ Globe Decanter and take all other
SECOND COUNT
25. Plaintiffs repeat and reallege each of the foregoing paragraphs of this Amended
Complaint.
26. The manufacture, use, offer for sale, sale, and/or importation of Plaintiffs’ Globe
Decanter does not infringe and will not infringe, directly or indirectly, Hirschkorn’s
‘263 patent because the accused Plaintiffs’ Globe Decanter and the article depicted
in the ‘263 patent are sufficiently different from each other that there can be no
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and the ‘263 patent are considered in light of the prior art.
27. Plaintiffs are therefore entitled to a declaration that Hirschkorn has no claim for
relief from or against Plaintiffs for infringement of the ‘263 patent, that Hirschkorn
should cease interfering with Plaintiffs’ sale of Plaintiffs’ Globe Decanter, and that
Amazon for Plaintiffs’ Globe Decanter and take all other steps necessary to ensure
THIRD COUNT
28. Plaintiffs repeat and reallege each of the foregoing paragraphs of this Amended
Complaint.
29. Hirschkorn’s ‘640 patent is invalid for failure to satisfy one or more provisions of
Title 35 of the United States Code, including but not limited to 35 U.S.C. §§ 102,
103.
30. For example, Hirschkorn’s ‘640 patent is invalid under 35 U.S.C. §§ 102, 103 in
view of the prior art, including but not limited to, a prior art skull-shaped decanter
sold by FromKelly LLC, alone or in combination with the aforementioned prior art
31. Plaintiffs reserve the right to assert additional bases for invalidity of the ‘640 patent.
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32. Accordingly, Plaintiffs are entitled to a declaratory judgment that the ‘640 patent is
invalid, that Hirschkorn should cease interfering with Plaintiffs’ sale of Plaintiffs’
Skull Decanter, and that Hirschkorn should be enjoined from taking any future
FOURTH COUNT
33. Plaintiffs repeat and reallege each of the foregoing paragraphs of this Amended
Complaint.
34. The manufacture, use, offer for sale, sale, and/or importation of Plaintiffs’ Skull
Decanter does not infringe and will not infringe, directly or indirectly, the ‘640
patent because Plaintiffs’ Skull Decanter and the article depicted in the ‘640 patent
are sufficiently different from each other that there can be no infringement,
35. Plaintiffs are therefore entitled to a declaration that Hirschkorn has no claim for
relief from or against Plaintiffs for infringement of the ‘640 patent, that Hirschkorn
should cease interfering with Plaintiffs’ sale of Plaintiffs’ Skull Decanter, and that
Hirschkorn should be enjoined from taking any future action to remove Plaintiffs’
FIFTH COUNT
36. Plaintiffs repeat and reallege each of the foregoing paragraphs of this Amended
Complaint.
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37. Hirschkorn, through a company named Royal Decanters, offers for sale on Amazon
38. Prior to Hirschkorn’s actions that precipitated the removal of Plaintiffs’ Globe
Decanter and Plaintiffs’ Skull Decanter from Amazon, P&W Gifts had a business
40. Hirschkorn misused the Amazon “take-down” policy by making wrongful and
baseless claims that Plaintiffs’ Globe Decanter and Plaintiffs’ Skull Decanter
41. Hirschkorn’s actions were done with the intent to interfere with P&W Gifts’
relationship with Amazon, P&W Gifts’ potential customers that buy P&W Gifts’
products on Amazon, and with Godinger Silver’s relationship with its retail
customers, including P&W Gifts, who sell Godinger Silver’s products on the
Amazon website.
Hirschkorn used dishonest, unfair and improper means to interfere with Plaintiffs’
businesses.
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44. Absent Hirschkorn’s actions, P&W Gifts had the expectation of selling Plaintiffs’
Globe Decanter and Plaintiffs’ Skull Decanter to the public via the Amazon
website, and Godinger Silver had the expectation of selling those decanters to
Godinger Silver’s retail customers, including P&W Gifts, who sell Godinger
45. Hirschkorn was aware of P&W Gifts’ expectation of selling Plaintiffs’ Globe
Decanter and Plaintiffs’ Skull Decanter to the public via the Amazon website and
customers, including P&W Gifts, who sell Godinger Silver’s products on the
Plaintiffs and enhance sales of Hirschkorn’s competing products, which are also
WHEREFORE, Plaintiffs respectfully request that this Court enter judgment in Plaintiffs’
B. Declaring that Plaintiffs’ Globe Decanter does not infringe the ‘263 patent;
D. Declaring that Plaintiffs’ Skull Decanter does not infringe the ‘640 patent;
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H. Declaring this case exceptional and awarding Plaintiffs their reasonable attorneys’
fees under 35 U.S.C. § 285;
K. Awarding Plaintiffs such other and further relief as the Court deems just and
proper.
Respectfully submitted,
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Within 21 days after service of this summons on you (not counting the day you received it) — or 60 days if you
are the United States or a United States agency, or an officer or employee of the United States described in Fed. R. Civ.
P. 12 (a)(2) or (3) — you must serve on the plaintiff an answer to the attached complaint or a motion under Rule 12 of
the Federal Rules of Civil Procedure. The answer or motion must be served on the plaintiff or plaintiff’s attorney,
whose name and address are: Martin B. Pavane
Lisa A. Ferrari
Cozen O'Connor
277 Park Avenue
New York, NY 10172
Tel. (212) 883-4900; Fax (212) 986-0604
If you fail to respond, judgment by default will be entered against you for the relief demanded in the complaint.
You also must file your answer or motion with the court.
CLERK OF COURT
Date:
Signature of Clerk or Deputy Clerk
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PROOF OF SERVICE
(This section should not be filed with the court unless required by Fed. R. Civ. P. 4 (l))
u I left the summons at the individual’s residence or usual place of abode with (name)
, a person of suitable age and discretion who resides there,
on (date) , and mailed a copy to the individual’s last known address; or
u Other (specify):
.
My fees are $ for travel and $ for services, for a total of $ 0.00 .
Date:
Server’s signature
Server’s address
EXHIBIT 1
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