IN THE UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF NEW YORK

)
GODINGER SILVER ART, LTD. ) Civil Action No.: _______________
)
Plaintiff ) COMPLAINT
)
)
v. )
)
LIRAN HIRSCHKORN, )
)
Defendant. )
)

Plaintiff, Godinger Silver Art, Ltd. (“Plaintiff” or “Godinger Silver”), for its Complaint

against Defendant Liran Hirschkorn (“Defendant” or “Hirschkorn”), alleges as follows:

THE PARTIES

1. Godinger Silver is a New York limited partnership with a place of business at 63-

15 Traffic Avenue, Ridgewood, New York 11385.

2. Upon Information and belief, Hirschkorn is an individual residing at 6753 173rd

Street, Fresh Meadows, New York 11365.

JURISDICTION AND VENUE

3. 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

2202 based on an actual controversy between Godinger Silver and Hirschkorn

created when Hirschkorn instructed Amazon.com, Inc., (“Amazon”) to no longer

allow the sale of Godinger Silver’s accused product (the “Godinger Silver Product,”

LEGAL\38940149\1
 attached hereto as Exhibit A) due to alleged patent infringement of a design patent

owned by Hirschkorn.

4. Upon information and belief, Hirschkorn 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.

5. Venue is proper in this judicial district at least under 28 U.S.C. §§ 1391 and

1400(b).

BACKGROUND

6. Godinger Silver first sold its initially accused product (the “Godinger Silver

Original Product”), on Amazon on or about December 19, 2017.

7. On information and belief, Hirschkorn contacted Amazon on July 31, 2018

requesting the removal of the Godinger Silver Original Product from Amazon.com

because the product allegedly infringed U.S. Design Patent No. D824,263 which

issued on July 31, 2018 (“the ‘263 patent,” attached hereto as Exhibit B) owned by

Hirschkorn.

8. On or about August 1, 2018, Amazon notified Godinger Silver that as a result of

the Hirschkorn “take down” request, it would be removing the listing for the

Godinger Silver Original Product.

2
LEGAL\38940149\1
 9. On or about August 2, 2018, Godinger Silver notified counsel for Hirschkorn of

prior art which Godinger Silver believes renders the ‘263 patent invalid.

10. Notwithstanding the existence of this invalidating prior art, Godinger Silver

modified the Godinger Silver Original Product (this modified design is the

Godinger Silver Product at Exhibit A) in a manner to further distinguish its product

from the design claimed in the ‘263 patent.

11. On or about October 22, 2018, Amazon notified Godinger Silver that as a result of

a new “take down” request by Hirschkorn based on the ‘263 patent, it had removed

the listing for the Godinger Silver Product.

12. Based on Hirschkorn’s new take down request to Amazon, and Amazon’s delisting

of the Godinger Silver Product, there is now an actual and justiciable controversy

between Plaintiff and Hirschkorn regarding, inter alia, infringement and invalidity

of the ‘263 patent that is of sufficient immediacy and reality to warrant the issuance

of a declaratory judgment.

FIRST COUNT

(DECLARATORY JUDGMENT OF INVALIDITY OF THE ‘263 PATENT)

13. Plaintiff repeats and realleges each of the foregoing paragraphs of this Complaint.

14. The ‘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.

3
LEGAL\38940149\1
 15. For example, the ‘263 patent is invalid under 35 U.S.C. §§ 102, 103 in view of the

prior art, including but not limited to, the World Globe on a wooden stand with 4

shot glasses. (See screenshots of the World Globe including customer reviews

showing the product was sold prior to the February 22, 2017 filing date of the ‘263

patent, attached hereto as Exhibit C.)

16. On information and belief, the World Globe on a wooden stand with 4 shot glasses

clearly shows a globe-shaped decanter with a square base with peripheral bevel to

the base claimed in the ‘263 patent. Accordingly, this prior art would have provided

a person of ordinary skill in the art with a motivation to develop the claimed

invention with a reasonable expectation of success.

17. Godinger reserves the right to provide additional bases for invalidity of the ‘263

patent in pleadings filed and/or served later in this action.

18. Accordingly, Godinger is entitled to a declaratory judgment that at the ‘263 patent

is invalid.

SECOND COUNT

(DECLARATORY JUDGMENT OF NON-INFRINGEMENT OF THE ‘263 PATENT)

19. Plaintiff repeats and realleges each of the foregoing paragraphs of this Complaint.

20. The use, manufacture, offer for sale, sale, and/or importation of the Godinger Silver

Product does not infringe and will not infringe, directly or indirectly, the ‘263 patent

because the accused Godinger Silver Product and the article depicted in the ‘263

4
LEGAL\38940149\1
 patent are sufficiently different in the eyes of the ordinary observer, particularly

when considered in the context of the prior art of Exhibit C.

21. The base of the Godinger Silver Product is significantly different than the base of

the patented design. The design patent shows a square base with a peripheral bevel.

In contrast, the base of the Godinger Silver Product is not square, rectangular, or

even a parallelogram. Rather, it is a base with curved side walls and no beveled

edge as shown in Exhibit A. When the differences between the ‘263 patent and the

Godinger Silver Product are viewed in light of the prior art of Exhibit C (which

shows a similar decanter), the attention of the hypothetical ordinary observer will

be drawn to those aspects of the claimed design that differ from the prior art, namely

the respective bases.

22. Applying the ordinary observer test in view of these differences, the Godinger

Silver Product does not infringe the ‘263 patent. Godinger Silver is therefore

entitled to a declaration that Hirschkorn has no claim for relief from or against

Godinger Silver for any alleged infringement of the ‘263 patent, and therefore

should cease interfering with Godinger Silver’s ability to market its product,

including withdrawing its take-down request to Amazon.

PLAINTIFF’S REQUEST FOR RELIEF

WHEREFORE, Plaintiff respectfully requests that this Court enter judgment in Plaintiff’s

favor and against Defendant Hirschkorn as follows:

A. Declaring that the ‘263 patent is invalid and unenforceable;

5
LEGAL\38940149\1
 B. Declaring that Godinger Silver’s Product has not and will not infringe the ‘263
patent;

C. Enjoining Defendant from continuing to maintain the takedown notice issued to

Amazon.com, Inc.:

D. Declaring this case exceptional and awarding Plaintiff its reasonable attorneys’
fees under 35 U.S.C. § 285;

E. Awarding Plaintiff its costs and expenses; and

F. Awarding Plaintiff such other and further relief as the Court deems just and
proper.

Respectfully submitted,

Dated: November 2, 2018 COZEN O’CONNOR

By: /s/ Lisa A. Ferrari__

Lisa A. Ferrari (LF8081)
Edward M. Weisz (EW4461)
Cozen O’Connor
277 Park Avenue
New York, NY 10172
Telephone: (212) 883-4900
Facsimile: (212) 986-0604
lferrari@cozen.com
eweisz@cozen.com

Attorneys for Plaintiff Godinger Silver Art, Ltd.

6
LEGAL\38940149\1
AO 440 (Rev. 06/12) Summons in a Civil Action

UNITED STATES DISTRICT COURT

for the
Eastern District
__________ of of
District New York
__________

GODINGER SILVER ART, LTD. )

)
)
)
Plaintiff(s) )
)
v. Civil Action No.
)
LIRAN HIRSCHKORN )
)
)
)
Defendant(s) )

SUMMONS IN A CIVIL ACTION

To: (Defendant’s name and address) Liran Hirschkorn

6753 173rd Street
Fresh Meadows, NY 11365

A lawsuit has been filed against you.

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: Lisa A. Ferrari
Edward M. Weisz
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
AO 440 (Rev. 06/12) Summons in a Civil Action (Page 2)

Civil Action No.

PROOF OF SERVICE
(This section should not be filed with the court unless required by Fed. R. Civ. P. 4 (l))

This summons for (name of individual and title, if any)

was received by me on (date) .

u I personally served the summons on the individual at (place)

on (date) ; or

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 I served the summons on (name of individual) , who is

designated by law to accept service of process on behalf of (name of organization)
on (date) ; or

u I returned the summons unexecuted because ; or

u Other (specify):
.

My fees are $ for travel and $ for services, for a total of $ 0.00 .

I declare under penalty of perjury that this information is true.

Date:
Server’s signature

Printed name and title

Server’s address

Additional information regarding attempted service, etc:

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