Ottah v. BMW et al

Filing 178

MEMORANDUM OPINION AND ORDER: re: #154 SUPPLEMENTAL MOTION to Dismiss for Failure to State a Claim filed by Jaguar Land Rover North America, #144 MOTION to Dismiss Second Amended Complaint for Failure to State a Claim and Misjoinder by GM, Mazda, Nissan, Subaru and Toyota filed by General Motors LLC, #148 MOTION for Summary Judgment of Non-Infringement by Defendants FCA US LLC, Ford Motor Company, Hyundai Motor America, Jaguar Land Rover North America, LLC, and Kia Motors America, Inc.. filed by Ford Motor Company, #149 MOTION for Summary Judgment of Non-Infringement by Defendants FCA US LLC, Ford Motor Company, Hyundai Motor America, Jaguar Land Rover North America, LLC, and Kia Motors America, Inc. filed by Ford Motor Company. For the foregoing reasons, MTD Defendants' motion to dismiss the SAC is granted, with prejudice. MSJ Defendants' motion for summary judgment is also granted. This Memorandum Opinion and Order resolves docket entries numbers 144, 148, 149, 154 and 155.The Clerk of Court is requested to enter judgment and close the case. Sua sponte and in the interests of justice, the Court finds that, for the reasons set forth above in connection with MTD Defendants' motion, the SAC must be dismissed as against all of the remaining defendants. The plain language of the '840 patent demonstrates that the SAC cannot be amended to cure its fundamental defects, and accordingly, it is dismissed with prejudice in its entirety. SO ORDERED. (Signed by Judge Laura Taylor Swain on 2/01/2017) Copies Mailed By Chambers. (ama)

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
-------------------------------------------------------x
CHIKEZIE OTTAH,
Plaintiff,
-v-

No. 15 CV 02465-LTS

BMW et al.,
Defendants.
-------------------------------------------------------x
MEMORANDUM OPINION AND ORDER
Plaintiff Chikezie Ottah (“Plaintiff”) brings this patent infringement action pro se
against fifteen automobile companies (collectively, “Defendants”). This action concerns U.S.
Patent no. 7,152,840 (the “‘840 patent”), which is co-owned by Plaintiff.1 Five of the
defendants—General Motors LLC; Mazda Motor Corporation; Nissan Motors Company
Limited; Fuji Heavy Industries; and Toyota Motor Corporation (collectively, “MTD
Defendants”)—have moved to dismiss Plaintiff’s Second Amended Complaint for failure to state
a claim upon which relief may be granted and for misjoinder. Additionally, five other
defendants—FCA US LLC; Ford Motor Company; Hyundai Motor America; Jaguar Land Rover
North America, LLC; and Kia Motor America, Inc. (collectively, “MSJ Defendants”)—have
moved for summary judgment of non-infringement.2 The remaining five defendants—BMW,
1

Plaintiff’s co-owners (Chineye Ottah, and Kenneth Ottah) have given Plaintiff the
“unilateral right to sue for infringement of the patent at issue.” (Docket entry no.
142.)

2

The Court notes that Jaguar Land Rover North America, LLC has separately
renewed its prior motion to dismiss the complaint for failure to state a claim upon
which relief may be granted (see docket entry no. 154 (renewing docket entry no.

OTTAH.MSJ.WPD

VERSION FEBRUARY 1, 2017

1

Rolls Royce, Damier AG [sic], Citron/Peoget [sic], and Mitsubishi (collectively, “Nonmoving
Defendants”)—have not appeared in this action. The Court has subject matter jurisdiction of this
action pursuant to 28 U.S.C. § 1338. For the reasons set forth below, MTD Defendants’ motion
to dismiss for failure to state a claim is granted, MSJ Defendants’ motion for summary judgment
is also granted, and the action is dismissed as against the remaining defendants. The Court does
not reach the issue of misjoinder.

BACKGROUND
Plaintiff’s Second Amended Complaint (“SAC”) alleges generally that he
“invented a mobile camera” and that Defendants “are manufacturing/making the product, using
and selling it [sic],” thereby infringing on the ‘840 patent. (Docket entry no. 89 at ECF p. 7.)
The ‘840 patent, entitled “Book Holder,” was issued by the United States Patent and Trademark
Office on December 26, 2006. (Supko Decl. Ex. A, docket entry no. 146-1.)3 The ‘840 patent
was issued with a single claim directed to “[a] book holder for removable attachment,”
comprising an adjustable clasp for attachment of the device, an arm extending from the clasp to a
book platform, and several clamps to attach a book to the platform holder. (See id.)
The ‘840 patent’s single claim reads in its entirety as follows:
1.

A book holder for removable attachment, the book holder comprising:
a book support platform, the book support platform comprising a front
surface, a rear surface and a plurality of clamps, the front surface adapted

104)), and Kia Motor America, Inc. has separately renewed its prior motion to
dismiss for misjoinder (see docket entry no. 155 (renewing docket entry 104).)
3

OTTAH.MSJ.WPD

The Court can consider the patent, as it is referenced in and relied upon by the SAC.
Broder v. Cablevision Sys. Corp., 418 F.3d 187, 196 (2d Cir. 2005). Furthermore,
Plaintiff has attached an annotated version of the ‘840 patent to his submission in
opposition. (Docket entry no. 159 at ECF pp. 18-25.)
VERSION FEBRUARY 1, 2017

2

for supporting a book, the plurality of clamps disposed on the front
surface to engage and retain the book to the book support platform, the
rear surface separated from the front surface;
a clasp comprising a clip head, a clip body and a pair of resilient clip
arms, the clip arms adjustably mounted on the clip head, the clip head
attached to the clip body; and
an arm comprising a first end and a second end and a telescoping
arrangement, the clasp on the first end, the second end pivotally attached
to the book support platform, the telescoping arrangement interconnecting
the first end to [ ] the second end, the clasp spaced from the book support
platform wherein the book holder is removably attached and adjusted to a
reading position by the telescoping arrangement axially adjusting the
spaced relation between the book support platform and the clasp and the
pivotal connection on the book support platform pivotally adjusting the
front surface with respect to the arm.
(Supko Decl. Ex. A at 6.)
Plaintiff has attached to the SAC an image of a camera mounted on a vehicle.
(Docket entry no. 89 at ECF p. 34.)4 The SAC, however, does not proffer details as to how the
such apparently accused vehicle-mounted cameras infringe the ‘840 patent nor identify any
particular vehicle or camera model as infringing. He merely refers to cameras as items that
could be supported by the platform component of a book holder, and to the general availability
of light and affordable cameras. (See, e.g., SAC at ECF p. 10 (“the book platform [] may be
used to support such devices as audio/video equipment, mobile phones, CAMERA, computers,
DPA [sic], musical instruments, toys, puzzles, board games, and their elements.”); id. at ECF p.
11 (“Today innovated cameras are small, light, and affordable, everybody in the family have
camera for out door activities, this is truly stated by the book holder [sic] . . .”).
On March 2, 2016, MTD Defendants moved to dismiss the SAC, arguing
4

OTTAH.MSJ.WPD

Plaintiff has also attached to his opposition to the dispositive motions over a dozen
images of mounted cameras that appear to be on vehicles manufactured by some of
the Defendants. (See docket entry no. 159 at ECF pp. 32-37.)
VERSION FEBRUARY 1, 2017

3

principally that, contrary to Plaintiff’s claim that he invented a mobile camera, the ‘840 patent
does not claim a camera of any sort and thus Plaintiff cannot plead plausibly his claim of
infringement. MSJ Defendants similarly contend that the claim of ‘840 patent does not read on
their vehicle-mounted camera devices. MSJ Defendants further contend, on the basis of
evidentiary submissions, that because the cameras on their vehicles cannot be removed without
tools, the cameras fail the “removable attachment” limitation of the patent’s claim and there is
no genuine dispute as to non-infringement. (See docket entry nos. 109, 110, 111, 113 & 114.)
MSJ Defendants specifically request that their motion be treated as one for summary judgment.5
(Docket entry no. 151 at 12.)
Plaintiff has made several submissions in opposition to the motion to dismiss and
motion for summary judgment, including an April 1, 2016, letter in opposition to both motions
(docket entry no. 159), a supplemental exhibit on April 6, 2016 (docket entry no. 160), and
another letter filed April 21, 2016, in response to Defendants’ replies (docket entry no. 167).
Plaintiff, inter alia, invokes the doctrine of equivalents and argues that the ‘840 patent reads on
certain aspects of Defendants’ cameras; for instance, Plaintiff asserts that a “book” can refer to a
“camera” and that the screws and bolts holding Defendants’ mounted cameras in place should be
considered the equivalent of the removable clasps specified in the patent. (See docket entry no.
159 at ECF pp. 6, 8.)

5

OTTAH.MSJ.WPD

MSJ Defendants filed a notice titled as one pursuant to Local Rule 12.1 which
states, inter alia, that the Court could treat the motion as one for summary judgment
and that the claims asserted could be dismissed without a trial if Plaintiff does not
respond to the motion with sworn affidavits as required by Rule 56(c) or other
documents. The notice included a copy of Rule 56. (Docket entry no. 150.)
VERSION FEBRUARY 1, 2017

4

DISCUSSION
Motion to Dismiss
A complaint will survive a motion to dismiss only when it pleads “enough facts to
state a claim to relief that is plausible on its face.” Bell Atlantic Corp. v. Twombly, 550 U.S.
544, 570 (2007). Such a pleading requires the complainant to proffer factual allegations that go
beyond “labels and conclusions.” Id. at 555. Although a document filed by a pro se litigant is to
be liberally construed, the factual allegations in support of an asserted claim must demonstrate
“facial plausibility” and “raise a right to relief beyond the speculative level” to withstand a
motion to dismiss. See Colida v. Nokia, Inc., 347 F. App’x 568, 570 (Fed. Cir. 2009) (citations
omitted). Moreover, “[t]he court need not accept as true an allegation that is contradicted by
documents on which the complaint relies.” In re Bristol-Myers Squibb Sec. Litig., 312 F. Supp.
2d 549, 555 (S.D.N.Y. 2004).
Plaintiff alleges that he has “invented a mobile camera,” that this invention is
covered by the ‘840 patent and that Defendants’ vehicle-mounted camera devices infringe the
‘840 patent. Determination of patent infringement requires two steps: “[t]he first step is
determining the meaning and scope of the patent claims asserted to be infringed. The second
step is comparing the properly construed claims to the device accused of infringing.” Markman
v. Westview Instruments, Inc., 52 F.3d 967, 976 (Fed. Cir. 1995) (internal citations omitted).
Here, step one is straightforward: the ‘840 patent is labeled “Book Holder,” and the first
sentence of the patent’s claim describes “[a] book holder for removable attachment.” (Supko
Decl. Ex. A at 6); see Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (“In some
cases, the ordinary meaning of claim language as understood by a person of skill in the art may
be readily apparent even to lay judges, and claim construction in such cases involves little more
OTTAH.MSJ.WPD

VERSION FEBRUARY 1, 2017

5

than the application of the widely accepted meaning of commonly understood words.”).
The ‘840 patent’s single claim does not mention the word “camera” and
enumerates no features typical of the components or functions of a camera, instead describing a
support platform, with clips to hold a book, and attached to a telescoping rod that can removably
attached to another object. (See Supko Decl. Ex. A at 6:14-38.) Plaintiff, however, invokes the
doctrine of equivalents and attempts to analogize MTD Defendants’ vehicle-mounted cameras to
his book holder on the basis that both are technically detachable from other things, and that his
book holder can hold items like a camera. “The substantial equivalent of a thing is, in the sense
of the patent law, the same as the thing itself. Two devices which perform the same function in
substantially the same way, and accomplish substantially the same result, are therefore the same,
though they may differ in name or form.” Union Paper-Bag Mach. Co., 97 U.S. 120, 121
(1877).
Plaintiff’s equivalency arguments are foreclosed by the language of the patent and
are legally implausible. The ‘840 patent’s claim describes a detachable, adjustable and pivoting
mechanism used to hold items, namely books, in place for reading. The claim states that “the
book holder is removably attached and adjusted to a reading position by the telescoping
arrangement axially adjusting the spaced relation between the book support platform and the
clasp and the pivotal connection on the book support platform pivotally adjusting the front
surface with respect to the arm.” (Supko Decl. Ex. A at 6.) The ‘840 patent contains no claim
that can be plausibly construed to cover a mobile camera device, a mounted camera, or any kind
of camera. The fact that Plaintiff’s book holder could be used to hold a camera does not make it
the equivalent of a mobile camera. Plaintiff also argues in his opposition to the motion that the
Court should consider the claims and prosecution history of an Australian patent application, as
OTTAH.MSJ.WPD

VERSION FEBRUARY 1, 2017

6

incorporated by reference into the ‘840 patent. This argument is unavailing. The ‘840 patent
makes no reference whatsoever to the Australian application. Plaintiff’s unsupported,
conclusory assertions of infringement, which are inconsistent with the plain language of the ‘840
patent, fail to plead plausibly that MTD Defendants’ vehicle-mounted cameras infringe upon the
‘840 patent. Accordingly, MTD Defendants’ motion to dismiss the SAC for failure to state a
claim is granted, and the Court need not reach the issue of misjoinder.

Motion for Summary Judgment
Summary judgment is appropriate when “there is no genuine issue as to any
material fact and that the movant is therefore entitled to judgment as a matter of law.” Fed. R.
Civ. P. 56(c). The moving party bears the burden of demonstrating that there are no genuine
issues of material fact. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 256 (1986). In
determining whether the moving party has met its burden, “the district court must resolve all
ambiguities, and credit all factual inferences that could rationally be drawn, in favor of the party
opposing summary judgment.” Citra v. G.E. Co., 252 F.3d 205, 216 (2d Cir. 2001). “If the
moving party meets its burden, the opposing party must produce evidentiary proof in admissible
form sufficient to raise a material question of fact to defeat the motion for summary judgment.”
Fantasia Accessories, Ltd. v. N. Assurance Co. of Am., No. 01 Civ. 663, 2001 WL 1478807, at
*2 (S.D.N.Y. Nov. 20, 2001). “[M]ere conjecture or speculation by the party resisting summary
judgment does not provide a basis upon which to deny the motion.” Quarles v. General Motors
Corp. (Motors Holding Division), 758 F.2d 839, 840 (2d Cir. 1985).
To find patent infringement, “the accused device must contain each limitation of
the claim, either literally or by an equivalent.” TIP Sys., LLC v. Phillips & Brooks/Gladwin,
OTTAH.MSJ.WPD

VERSION FEBRUARY 1, 2017

7

Inc., 529 F.3d 1364, 1379 (Fed. Cir. 2008) (internal quotation marks omitted). “If, however,
even one claim limitation is missing or not met, there is no literal infringement.” MicroStrategy
Inc. v. Bus. Objects, S.A., 429 F.3d 1344, 1352 (Fed. Cir. 2005). The Federal Circuit has
already ruled on the scope of the ‘840 patent, finding that any infringing device must be capable
of being “removed without tools.” Ottah v. VeriFone Sys., Inc., 524 F. App’x 627, 629 (Fed.
Cir. 2013); see also Ottah v. First Mobile Techs., No. 10 CV 7296, 2012 WL 527200, at *5-6
(S.D.N.Y. Feb. 17, 2012) (holding that “only a product which can be attached quickly,
removably, and without tools, in a manner akin to that of the ‘840 Patent, can infringe that
patent”).
MSJ Defendants have proffered uncontroverted evidence that the accused
cameras are mounted in a fixed fashion both to their supporting structures and to Defendants’
vehicles and that tools (and, in some cases, disassembly of other vehicle components) are
necessary to remove them. (See Harris Decl. Exs. 3-7.) This evidence demonstrates that the
accused cameras do not meet the “removable attachment” limitation of the ‘840 patent’s claim
and thus do not literally infringe on the patent. Plaintiff also invokes the doctrine of equivalents,
arguing, inter alia, that a screw is a “clamp,” and that the mounted cameras therefore infringe on
the ‘840 patent. This argument, however, fails for two reasons: first, Plaintiff has not proffered
any evidence to support this assertion, instead relying exclusively on his own conclusory
statements; second, one would need a tool (a screwdriver) to remove the camera. The Federal
Circuit has already construed the ‘840 patent in a manner that forecloses Plaintiff’s equivalency
argument, holding that a device whose attachment “cannot be removed without tools” does not
literally infringe the ‘840 patent and further holding that, given Plaintiff’s representations in the
course of prosecuting the patent, “[h]e cannot . . . , under the doctrine of equivalents, seek to
OTTAH.MSJ.WPD

VERSION FEBRUARY 1, 2017

8

broaden his claim to include mounts that are fixed as well as mounts that are removable.” See
Verifone, 524 F. App’x at 629-30.
Thus, the removability limitation of the ‘840 patent does not, as a matter of law,
read on MSJ Defendants’ accused devices and those defendants are entitled to summary
judgment on the basis of non-infringement.6

CONCLUSION
For the foregoing reasons, MTD Defendants’ motion to dismiss the SAC is
granted, with prejudice. MSJ Defendants’ motion for summary judgment is also granted. This
Memorandum Opinion and Order resolves docket entries numbers 144, 148, 149, 154 and 155.
The Clerk of Court is requested to enter judgment and close the case.
Sua sponte and in the interests of justice, the Court finds that, for the reasons set
forth above in connection with MTD Defendants’ motion, the SAC must be dismissed as against
all of the remaining defendants. The plain language of the ‘840 patent demonstrates that the
SAC cannot be amended to cure its fundamental defects, and accordingly, it is dismissed with

6

OTTAH.MSJ.WPD

MSJ Defendants have also proffered uncontroverted evidence that their camera
devices fail to meet the telescoping arm and adjustability limitations of the ‘840
patent. (See Harris Decl. Exs. 3-7.) These undisputed facts require judgment in
MSJ Defendants’ favor as well.
VERSION FEBRUARY 1, 2017

9

prejudice in its entirety.

SO ORDERED.

Dated: New York, New York
February 1, 2017
/s/ Laura Taylor Swain
LAURA TAYLOR SWAIN
United States District Judge

Copy mailed to:
Mr. Chikezie Ottah
170 Portland Ave.
Apt 14F
Brooklyn, NY 11217

OTTAH.MSJ.WPD

VERSION FEBRUARY 1, 2017

10