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Rpa International Pty Ltd, Doing Business As Nufurn Pty Ltd v. Compact Intl Inc; Lee Johnson

February 7, 2011

RPA INTERNATIONAL PTY LTD, DOING BUSINESS AS NUFURN PTY LTD; NUFURN INC; DENNIS MICHAEL KRAWCHUK, PLAINTIFFS,
v.
COMPACT INTL INC; LEE JOHNSON, AN INDIVIDUAL; PRE SALES INC; ERIC SEGAL, AN INDIVIDUAL; BZ GLOBAL SDN BHD; BZ GLOBAL HK LIMITED; CHEE CHOON CHEAH, AN INDIVIDUAL; KOK CHEONG SOO, AN INDIVIDUAL, DEFENDANTS.
CHEE CHOON CHEAH, AN INDIVIDUAL; KOK CHEONG SOO, AN INDIVIDUAL; COMPACT INTL INC; LEE JOHNSON, AN INDIVIDUAL; PRE SALES INC; ERIC SEGAL, AN INDIVIDUAL; BZ GLOBAL SDN BHD; BZ GLOBAL HK LIMITED, COUNTER CLAIMANT,
v.
RPA INTERNATIONAL PTY LTD, DOING BUSINESS AS NUFURN PTY LTD; NUFURN INC; DENNIS MICHAEL KRAWCHUK, COUNTER
DEFENDANTS.



The opinion of the court was delivered by: Hayes, Judge:

ORDER

The matters before the Court are the Motion for Reconsideration (ECF No. 177) by Defendant Kok Cheong Soo ("Soo"), the Motion for Attorney Fees (ECF No. 175) filed by Plaintiffs, and the Motion to Enter Judgment (ECF No. 179).

BACKGROUND

On May 26, 2006, Plaintiffs initiated this action by filing the Complaint. (ECF No.1). The Complaint alleged that Plaintiff Dennis Michael Krawchuck owns Plaintiff RPA International Pty Ltd. and Plaintiff Nufurn, Inc. (collectively "Plaintiffs"). The Complaint alleged that Krawchuck is the owner of U.S. Patent No. 6, 969, 113 ("the 113 patent"), entitled "Folding Chair with Metal Inserts," which was issued to Krawchuck on November 29, 2005. Id. at ¶ 4. The Complaint alleged that the 113 patent concerns a resin folding chair invented by Krawchuck known as the "Gladiator chair." Id. The Complaint alleged Defendant Kok Cheong Soo ("Soo") is a director of Defendant BZ Global Sdn. Bhd, and BZ Global (H.K.) Limited (the "BZ Defendants"). Id. The Complaint alleged that Soo and the BZ Defendants infringed the 113 patent "by knowingly and purposefully importing, using, offering to sell, and/or selling infringing chairs within the United States" and by inducing others to do the same. Id. at ¶ 51-52. The Complaint alleged that Plaintiffs have been harmed by this infringement and that they will continue to be harmed unless the Court enters an injunction which bars Soo and the BZ Defendants from further infringement. Id. at ¶ 53. The Complaint also sought damages to compensate Plaintiff for lost profits, as well as treble damages pursuant to 35 U.S.C. § 284, and attorneys' fees and costs. Id.

On May 31, 2007, Defendant Soo filed an Answer, Affirmative Defenses, and Counterclaim. (ECF No. 74). Soo alleged that Plaintiffs RPA and Nufurn lack standing to sue, that the patent is invalid, that the patent is being misused, that Plaintiffs are barred from recovery by unclean hands, that Soo is authorized to use the patent, that Defendants have not infringed, that Plaintiffs have not lost profits, and that the patent is unenforceable. Id. The Counterclaim alleged that Soo was an inventor of the patent, and that he reached an agreement with RPA to receive five percent of the sales price of the newly designed chairs, and ten percent if he was the source of the sale. Id. at ¶ 23. The Counterclaim alleged that Soo assisted RPA in seeking patent protection for the Gladiator chair with the understanding that he would be listed as an inventor. Id. at ¶ 24. The Counterclaim alleged that Soo is "the actual inventor and designer" of the Gladiator chair. Id. The Counterclaim alleged that Krawchuck listed himself as the sole inventor of the Gladiator chair, even though he was not, in fact, the inventor. Id. The Counterclaim alleged that RPA failed to make payments to Soo pursuant to the parties' agreement. Id.

On July 28, 2008, Soo filed a motion for summary judgment (ECF No. 112). On November 3, 2008, the Court issued an order denying the motion for summary judgment (ECF No. 118).

On April 27, 2009, Plaintiffs filed a Motion for Summary Judgment, pursuant to Rule 56(a) of the Federal Rules of Civil Procedure. (ECF No. 143). On July 14, 2009, the Court granted Plaintiffs' Motion for Summary Judgment. (ECF No.149). The Court held that Soo had willfully infringed on Plaintiffs' patent, and granted summary judgment in favor of Plaintiffs and against Soo. Id. at 11-12. The Court granted summary judgment in favor of Plaintiffs and against Soo on his counterclaims for his claims for correction of inventorship, declaration and transfer of ownership, declaration of invalidity, declaration of unenforceability, and infringement. Id. at 12. The Court held that "Soo does not dispute that these claims rely on Soo's assertion that he is an inventor of [the Gladiator chair,] yet Soo has failed to submit any evidence that Soo is" in fact the inventor. Id. The Court also granted summary judgment in favor of Plaintiffs and against Soo on his claim for unfair competition under federal law. Id. The Court held that there was no genuine issue of material fact as to whether Plaintiffs had misrepresented their rights under the 113 patent. Id. at 13. The Court declined to exercise supplemental jurisdiction over Soo's state law counterclaims.

On July 30, 2009, Plaintiffs filed their Motion to Revise the Court's Summary Judgment Order and to Enter a Permanent Injunction. (ECF No. 151). On December 14, 2009, Soo filed a response and numerous exhibits. (ECF Nos. 156-163). On December 14, 2009, Soo also filed a Motion for Reconsideration of the Summary Judgment Order. (ECF No. 163). On March 10, 2010, this Court issued an Order denying the Motion for Reconsideration (ECF No. 171) stating: "Soo's evidence and arguments are insufficient to rebut the presumption that Krawchuck, the named inventor on the patent, did not in fact invent the Gladiator chair. Soo has not presented any corroborating evidence that he was involved in the conception of the Gladiator chair, rather his evidence tends to establish that he was involved in putting the already-existing design into practice." (ECF No. 171 at 10).

On August 11, 2010, the Court issued an order finding that a permanent injunction should be entered and Plaintiffs are entitled to monetary judgment against Soo in the amount of $581,000 for compensatory damages and $1,162,000 of treble damages, as well as an award of attorney's fees. (ECF No. 174). The Court stated: "Soo conceded he was aware of the patent. Soo made repeated baseless assertion that he, not Krawchuck, was the true inventor of the chairs in question." Id. at 10 (citations omitted).

On September 1, 2010, Plaintiffs filed a Motion for Attorney's Fees. (ECF No. 175). Plaintiffs also filed a Motion to Enter Judgment. (ECF No. 179). To date, Soo has not filed a response to the Motion for Attorney's Fees or Motion to Enter Judgment.

On September 9, 2010, Soo filed a second Motion for Reconsideration of Summary Judgment and Consequently Reconsideration of the Court's Order on August 11, 2010. (ECF No. 177). On September 14, 2010, Plaintiffs filed an Opposition to Soo's Motion for Reconsideration. (ECF No. 178). Soo filed a Reply. (ECF No. 181).

I. Motion for Reconsideration

Defendant Soo contends that the Court committed clear error in denying his earlier Motion for Reconsideration due to "evidence that Plaintiff Dennis Krawchuk misrepresented himself as the sole inventor of the chair on his patent." (ECF No. 177-1 at 2). Soo contends that "[t]he Court misinterpreted and did not acknowledge, numerous compelling evidences (sic) designating specific facts ...." Id. at 4. Soo contends that he entered into a confidentiality agreement with May Plastics of Malaysia not RPA, that Soo improved the design of the chair by changing u-shaped inserts rather than adding metal reinforcement, that email correspondence shows that Krawchuk misrepresented himself as the sole inventor on the patents, that a fax from Krawchuk to the supplier of the ACE1 chair shows that Krawchuck was not aware of problems with the materials used in the chairs as early as he claimed, that Plaintiff tampered with evidence by making sketches on a fax, and that Plaintiffs submitted two copies of an email that contain dates a few hours apart from each other which may effect Soo's ability to present a proper defense.

Plaintiffs contend that although the title of Soo's Motion refers to the Court's Order of August 11, 2010, which found that monetary judgment and a permanent injunction should be entered against Soo, the Motion for Reconsideration is fatally overdue because it seeks to revisit the grant of summary judgment on July 14, 2009, and the denial of his previous request for reconsideration on March 10, 2010. Plaintiffs further contend that Soo fails to present any newly discovered evidence or evidence that was otherwise unavailable to him and has not explained why the facts could not have been raised earlier in this ...


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