Ottah v. Fiat Chrysler , 884 F.3d 1135 ( 2018 )

United States Court of Appeals
for the Federal Circuit
______________________
CHIKEZIE OTTAH,
Plaintiff-Appellant
v.
FIAT CHRYSLER, TOYOTA, NISSAN MOTORS CO.
LIMITED, HYUNDAI MOTOR AMERICA, FORD
MOTOR COMPANY, JAGUAR LAND ROVER
NORTH AMERICA, GENERAL MOTORS LLC, KIA
MOTORS AMERICA, INC.,
Defendants-Appellees
DAIMLER AG (MERCEDES BENZ),
CITROËN/PEUGEOT MOTOR COMPANY ARNESS
PARIS 6 CITY, MITSUBISHI MOTOR
CORPORATION, BMW MOTOR CORPORATION,
ROLLS ROYCE CORPORATION, MAZDA MOTOR,
SUBURU MOTOR CORPORATION,
Defendant
______________________
2017-1842
______________________
Appeal from the United States District Court for the
Southern District of New York in No. 1:15-cv-02465-LTS,
Judge Laura Taylor Swain.
______________________
Decided: March 7, 2018
______________________
2 OTTAH v. FIAT CHRYSLER
CHIKEZIE OTTAH, Brooklyn, NY, pro se.
FRANK C. CIMINO, JR., Venable LLP, Washington, DC,
for defendant-appellee Fiat Chrysler. Also represented by
MEGAN S. WOODWORTH; TODD M. NOSHER, New York, NY.
PETER THOMAS EWALD, Oliff PLC, Alexandria, VA, for
defendant-appellee Toyota. Also represented by JOHN W.
O’MEARA, JAMES OLIFF.
REGINALD J. HILL, Jenner & Block LLP, Chicago, IL,
for defendant-appellee Nissan Motors Co. Limited. Also
represented by PETER J. BRENNAN.
JUN-SUK PARK, Arnold & Porter Kaye Scholer LLP,
Washington, DC, for defendant-appellee Hyundai Motor
America. Also represented by JAMES ALEXANDER KAISER;
NICHOLAS LEE, Los Angeles, CA.
JASON R. MUDD, Erise IP, P.A., Overland Park, KS,
for defendant-appellee Ford Motor Company. Also repre-
sented by ERIC ALLAN BURESH.
MATTHEW J. MOORE, Lathan & Watkins LLP, Wash-
ington, DC, for defendant-appellee Jaguar Land Rover
North America. Also represented by GABRIEL BELL;
CLEMENT J. NAPLES, New York, NY.
MARK MICHAEL SUPKO, Crowell & Moring, LLP,
Washington, DC, for defendant-appellee General Motors
LLC. Also represented by SCOTT BITTMAN, New York, NY.
DANIEL GRUNFELD, Morgan, Lewis & Bockius LLP,
Los Angeles, CA, for defendant-appellee Kia Motors
America, Inc. Also represented by JASON EVAN
GETTLEMAN, MICHAEL JOHN LYONS, JACOB JOSEPH ORION
MINNE, Palo Alto, CA.
______________________
OTTAH v. FIAT CHRYSLER 3
Before NEWMAN, HUGHES, and STOLL, Circuit Judges.
NEWMAN, Circuit Judge.
Chikezie Ottah (herein “Ottah”) appeals the decision
of the United States District Court for the Southern
District of New York. 1 The district court granted sum-
mary judgment of non-infringement to several defendant
automobile companies with respect to U.S. Patent No.
7,152,840 (“the ’840 Patent”), and dismissed the complaint
with prejudice as to several other automobile companies.
We have reviewed, and now affirm, the district court’s
rulings.
BACKGROUND
The ’840 Patent is entitled “Book Holder,” and de-
scribes the invention as “a removable book holder assem-
bly for use by a person in a protective or mobile structure
such as a car seat, wheelchair, walker, or stroller.” ’840
Patent at col. 1, ll. 6–9. The book holder is described as
“having an adjustable, releasable clipping means and a
support arm configured for . . . adjustment of the book
supporting surface of the book holder to hold a book in a
readable position in front of the user.” Id. at col. 1, ll. 9–
13.
In the “Background of the Invention” the ’840 Patent
recites disadvantages associated with prior art book
holders, such as “[t]he book holders in the prior art lack
the ease of application to a mobile vehicle such as a
wheelchair or stroller to allow the reader to have mobility
to explore their environment in a stationary sitting or
reclining position while reading a book supported on the
mobile device.” Id. at col. 1, ll. 48–53. The ’840 Patent
1 Ottah v. BMW, 230 F. Supp. 3d 192 (S.D.N.Y.
2017) (“Dist. Ct. Op.”).
4 OTTAH v. FIAT CHRYSLER
recites ten “object[s] of the present invention,” including
“provid[ing] a book holder that can be easily and remova-
bly attached to and removed from a bar or portion of the
mobile vehicle without tools.” Id. at col. 1, ll. 64–67.
Eight of the ten objects refer to the advantages of a holder
for books, one refers to a writing board, and one refers to
the removable attachment of the mounting structures. Id.
at col. 1, l. 64 – col. 2, l. 34.
Claim 1, the only claim of the ’840 Patent, reads:
1. A book holder for removable attachment, the
book holder comprising:
a book support platform, the book support plat-
form comprising a front surface, a rear surface
and a plurality of clamps, the front surface
adapted 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 adjusta-
bly mounted on the clip head, the clip head at-
tached 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 arrange-
ment interconnecting the first end [to] the second
end, the clasp spaced from the book support plat-
form wherein the book holder is removably at-
tached and adjusted to a reading position by the
telescoping arrangement axially adjusting the
spaced relation between the book support plat-
form and the clasp and the pivotal connection on
the book support platform pivotally adjusting the
front surface with respect to the arm.
OTTAH v. FIAT CHRYSLER 5
Id. at col. 6, ll. 14–38.
The specification describes the claimed book holder
and its removable attachment. Relevant to this suit, the
specification concludes with the statement that the book
holder may be used to hold items other than books: “The
book platform 12 may also be used to support such items
as audio/video equipment, PDAs, or mobile phones, cam-
eras, computers, musical instruments, toys, puzzles and
games. The panel 16 may be provided with a set of
mounting positions for receiving and/or mounting the
above items (NOT SHOWN).” Id. at col. 5, ll. 35–40. The
specification further states:
Although the invention has been described above
in connection with particular embodiments and
examples, it will be appreciated by those skilled in
the art that the invention is not necessarily so
limited, and that numerous other embodiments,
examples, uses, modification and departures from
the embodiments, examples, and uses are intend-
ed to be encompassed by the claims attached here-
to.
Id. at col. 6, ll. 1–7. The only embodiment that is de-
scribed and illustrated is for use as a book holder.
In the Second Amended Complaint filed in the district
court, Ottah states “I invented a mobile camera,” and
“[t]he defendant BMW et al are manufacturing us-
ing/making the product. Using and selling it. Whereby
infringing on the patent.” Second Amended Complaint
¶ C, Appellee’s Appx80.
Several defendants, including General Motors LLC;
Mazda Motor Corporation; Nissan Motors Company
Limited; Fuji Heavy Industries; Daimler AG; and Toyota
Motor Corporation (collectively, the “MTD Defendants”),
moved to dismiss on the grounds of failure to state a claim
upon which relief may be granted and for misjoinder. The
6 OTTAH v. FIAT CHRYSLER
MTD Defendants argued that the ’840 Patent’s claim is
explicit to a book holder, and thus Ottah cannot plead a
plausible claim for infringement by a camera holder.
Several other defendants, including Fiat Chrysler;
Ford Motor Company; Hyundai Motor America; Jaguar
Land Rover North America; and Kia Motor America,
(collectively, the “MSJ Defendants”), moved for summary
judgment of non-infringement. The MSJ Defendants
argued that their camera holders did not meet the “re-
movable attachment” limitation of claim 1, because the
camera holders on their vehicles cannot be removed
without tools.
The district court granted the MTD Defendants’ mo-
tion to dismiss with prejudice, characterizing Ottah’s
arguments as “legally implausible.” Dist. Ct. Op., 230 F.
Supp. 3d at 196. The court observed that the ’840 Pa-
tent’s claim is for a book holder and does not claim a
camera holder or any of a camera’s components or func-
tions.
The district court also granted the MSJ Defendants’
motion for summary judgment of non-infringement. Id. at
198. The court observed that the Federal Circuit has
previously ruled on the scope of the ’840 Patent’s claim,
holding that the claim requires that any infringing device
must be capable of being “removed without tools.” Id. at
197 (citing Ottah v. VeriFone Sys., Inc., 524 F. App’x 627,
629 (Fed. Cir. 2013) (“VeriFone”). The court observed that
the MSJ Defendants submitted uncontroverted evidence
that their accused cameras were mounted in such a way
that tools were necessary to remove them. Id. at 197.
The district court also rejected Ottah’s argument of
infringement under the doctrine of equivalents, finding
that this equivalency argument was foreclosed by this
court’s prior claim construction, which was informed by
Ottah’s representations during prosecution. Id. at 197–
98. Additionally, the district court found that the MSJ
OTTAH v. FIAT CHRYSLER 7
Defendants submitted uncontroverted evidence that their
accused cameras did not meet the telescoping arm and
adjustability limitations of the ’840 Patent. Id. at 198 n.6.
The court held that these undisputed facts also require
summary judgment of non-infringement in favor of the
MSJ Defendants.
Ottah appeals as to all defendants, arguing that the
district court erred in all respects.
DISCUSSION
I. Summary Judgment of Non-Infringement
A summary judgment of noninfringement receives de
novo review on appeal. Comput. Docking Station Corp. v.
Dell, Inc., 519 F.3d 1366, 1373 (Fed. Cir. 2008). Our
review “requires two steps—claim construction, which we
review without deference, and infringement, which we
review to determine whether there was no genuine issue
of material fact.” Ormco Corp. v. Align Tech., Inc., 498
F.3d 1307, 1312 (Fed. Cir. 2007).
Ottah argues that the district court erred in constru-
ing the claim to exclude “fixed mounts” from its scope.
Ottah also argues that the mention of cameras in the ’840
Patent specification establishes equivalency of a book
platform and a camera platform.
This court had previously reviewed claim construction
of the ’840 Patent, and ruled that several claim limita-
tions require that the claimed book holder has a “remova-
ble mounting.” VeriFone, 524 F. App’x at 629 (construing
the “removably attached” term). The VeriFone court held
that mounts that cannot be removed without tools do not
literally infringe claim 1, stating that claim 1 “is clear on
its face” and that “nothing in the specification suggests
that the claim language should be interpreted in a way at
variance with its ordinary meaning.” Id.
8 OTTAH v. FIAT CHRYSLER
The ruling on claim scope is a matter of “claim con-
struction,” which is ultimately a question of law. See
Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831,
836–38, 841–42 (2015). The issue was finally decided and
is not subject to collateral review. See Markman v.
Westview Indus., Inc., 517 U.S. 370, 390–91 (1996) (recog-
nizing the need for “uniformity in the treatment of a given
patent” and noting that “treating interpretive issues as
purely legal will promote (though it will not guarantee)
intrajurisdictional certainty through the application of
stare decisis on those questions not yet subject to inter-
jurisdictional uniformity under the authority of the single
appeals court”); see also Restatement (First) of Judgments
§ 70, cmt. a (Am. Law Inst. 1942), (“Under the doctrine of
stare decisis, where a court has in one case decided a
question of law it will in subsequent cases in which the
same question of law arises ordinarily decide it in the
same way. The doctrine is not rigidly applied, and a court
will sometimes overrule its prior decisions. The doctrine
of stare decisis is applicable although the parties in the
later action are different from those in the prior actions.”);
Stare Decisis, Black’s Law Dictionary (10th ed. 2014).
No error has been shown in this claim construction,
and no reason for departing from the rules of collateral
estoppel or stare decisis as to this claim term. Miken
Composites, L.L.C. v. Wilson Sporting Goods Co., 515 F.3d
1331, 1338 n.1 (Fed. Cir. 2008) (“[F]or us not to adopt the
same claim construction in a case such as this, in which
the construction of the claim term in question was a
necessary predicate to the determination of a prior litiga-
tion before this court and is evident from the face of the
intrinsic record without resort to expert testimony, would
run counter to the Supreme Court’s guidance on stare
decisis in Markman . . . .”); Key Pharm. v. Hercon Labs.
Corp., 161 F.3d 709, 716 (Fed. Cir. 1998) (“We do not take
our task lightly in this regard, as we recognize the na-
tional stare decisis effect that this court’s decisions on
OTTAH v. FIAT CHRYSLER 9
claim construction have.”); see also Brady Const. Innova-
tions, Inc. v. Perfect Wall, Inc., 290 F. A’ppx 358, 363 (Fed.
Cir. 2008) (“Under the principles of stare decisis and the
Supreme Court’s guidance in Markman, this court follows
the claim construction of prior panels absent exceptional
circumstances.”). Here, it was shown that the MSJ De-
fendants’ accused cameras utilize fixed mounts that
require tools for removal. As such, the accused devices
are outside the literal scope of claim 1.
This court in VeriFone also held that prosecution his-
tory estoppel prevents claim 1 from encompassing, under
the doctrine of equivalents, “fixed mounts” that require
tools for removal. VeriFone, 524 F. App’x at 630. As
discussed in VeriFone, Ottah argued during prosecution
that patentability of claim 1 was based on the removable
structure of the mount. Id. at 629–30. Claim 1 was only
allowed over the prior art after Ottah’s argument empha-
sizing removability. See Appl. No. 10/366,779, Reply
dated July 25, 2005, at 13 (“[T]he use of adjustable,
resilient clip arms on the clasp for clasping the book
holder to the movable vehicle providing quick removal
without tools . . . is not obvious in light of the prior art.”)
(Appellee’s Appx268). Subject matter surrendered to
acquire the patent cannot be recaptured by the doctrine of
equivalents. Duramed Pharm., Inc. v. Paddock Labs.,
Inc., 644 F.3d 1376, 1380 (Fed. Cir. 2011).
We discern no error in the district court’s grant of
summary judgment of non-infringement, for no reasona-
ble fact finder could find that the accused cameras meet
the “removably attached” limitation of claim 1. See IMS
Tech., Inc. v. Haas Automation, Inc., 206 F.3d 1422, 1429
(Fed. Cir. 2000) (“[O]n appeal from a grant of summary
judgment of noninfringement, we must determine wheth-
er, after resolving reasonable factual inferences in favor of
the patentee, the district court correctly concluded that no
reasonable jury could find infringement.”); Intellicall, Inc.
v. Phonometrics, Inc., 952 F.2d 1384, 1388 (Fed. Cir. 1992)
10 OTTAH v. FIAT CHRYSLER
(“No genuine issue of material fact exists as to claim
interpretation to preclude summary judgment and, there-
fore, the district court’s correct interpretation stands.”).
The summary judgment is affirmed.
II. The Dismissal with Prejudice
In accordance with Fed. R. Civ. P. 12(b)(6), a com-
plaint may be dismissed for “failure to state a claim upon
which relief can be granted.” See generally Bell Atl. Corp.
v. Twombly, 550 U.S. 544, 555–56 (2007). In the Second
Circuit, grant of a motion to dismiss is reviewed de novo
to determine whether the claim is plausible on its face,
accepting the material factual allegations in the com-
plaint and drawing all reasonable inferences in favor of
the plaintiff. See Ashcroft v. Iqbal, 556 U.S. 662, 678
(2009) (“To survive a motion to dismiss, a complaint must
contain sufficient factual matter, accepted as true, to
state a claim to relief that is plausible on its face. A claim
has facial plausibility when the plaintiff pleads factual
content that allows the court to draw the reasonable
inference that the defendant is liable for the misconduct
alleged.”) (internal citations and quotations omitted);
Johnson v. Priceline.com, Inc., 711 F.3d 271, 275 (2d Cir.
2013).
Ottah is a pro se plaintiff. Pro se complaints are “to
be liberally construed, and . . . held to less stringent
standards than formal pleadings drafted by lawyers.”
Erickson v. Pardus, 551 U.S. 89, 94 (2007) (internal
quotation marks and citation omitted). However, a pro se
plaintiff must still meet minimal standards to avoid
dismissal under Rule 12(b)(6). See Walker v. Schult, 717
F.3d 119, 124 (2d Cir. 2013) (“Where, as here, the com-
plaint was filed pro se, it must be construed liberally to
raise the strongest arguments it suggests. Nonetheless, a
pro se complaint must state a plausible claim for relief.”)
(internal citations, brackets, and quotation omitted); see
OTTAH v. FIAT CHRYSLER 11
also Anderson v. Kimberly-Clark Corp., 570 F. App’x 927,
931–32 (Fed. Cir. 2014).
The district court found that “[t]he ’840 patent con-
tains no claim that can be plausibly construed to cover a
mobile camera device, a mounted camera, or any kind of
camera.” Dist. Ct. Op., 230 F. Supp. 3d at 197. The
district court found that the ’840 Patent’s single claim
does not mention a camera or recite typical functions or
components of a camera. Id. at 196. The court also found
that “[t]he fact that [Ottah’s] book holder could be used to
hold a camera does not make it the equivalent of a mobile
camera.” Id. at 197.
Ottah argues that the district court erred, and that
the MTD Defendants’ “back up camera” infringes claim 1.
Ottah Reply Br. at 5. Ottah’s only support for this argu-
ment are the general statements from the specification,
quoted ante, that the book holder can hold items other
than books, whereby cameras should be deemed the
equivalent of books. However, claim 1 is explicitly limited
to books, although Ottah states, and the specification
supports, that other items may be supported by the book
platform. The record suggests that the limitation of claim
1 to books served to limit the scope of examination to
prior art book holders, as reflected in the prosecution
history. Thus, the record negates access to equivalency of
cameras and books. See Johnson & Johnston Assocs. Inc.
v. R.E. Serv. Co., 285 F.3d 1046, 1054 (Fed. Cir. 2002) (en
banc) (“[A] patentee cannot narrowly claim an invention
to avoid prosecution scrutiny by the PTO, and then, after
patent issuance, use the doctrine of equivalents to estab-
lish infringement because the specification discloses
equivalents.”). The district court correctly found that the
“book holder” cannot plausibly be construed to include or
be the equivalent of a camera holder, in view of the speci-
fication and the prosecution history.
12 OTTAH v. FIAT CHRYSLER
In addition to requiring tools for removal, contrary to
the prosecution history and express claim language that
the book holder must be “removably attached,” the ac-
cused camera structures were not alleged to have the
claimed “telescoping arrangement” or to possess a “front
surface adapted for supporting a book,” as required by
claim 1. These differences are not insubstantial, and are
reflected in the limitations in claim 1. See Catalina Mktg.
Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 812 (Fed.
Cir. 2002) (“[T]he patentee must show that the accused
device meets each claim limitation either literally or
under the doctrine of equivalents.”). We have liberally
construed the pleadings, but have concluded that the
Second Amended Complaint’s accusation of infringement
lacks plausibility. The district court correctly dismissed
Ottah’s complaint with prejudice.
CONCLUSION
We have considered all of Ottah’s arguments, and af-
firm the judgment of the district court.
AFFIRMED