Opinion
22-CV-2935 (PAE) (RWL)
08-16-2022
CHIKEZIE OTTAH, Plaintiff, v. NATIONAL GRID, Defendant.
REPORT AND RECOMMENDATION TO HON. PAUL A. ENGELMAYER: MOTION TO DISMISS
ROBERT W. LEHRBURGER, United States Magistrate Judge.
Plaintiff Chikezie Ottah (“Ottah” or “Plaintiff”), proceeding pro se, seeks damages for alleged patent infringement by Defendant The Brooklyn Union Gas Company d/b/a National Grid NY s/h/a National Grid (“National Grid” or “Defendant”). Ottah has filed multiple previous actions in this District based upon substantially similar claims against various defendants, including a prior action against National Grid, all of which have been dismissed. Before the Court is National Grid's motion to dismiss this action, which has been referred to the undersigned for purposes of a Report and Recommendation. For the reasons that follow, I recommend that the motion be GRANTED and the action dismissed.
BACKGROUND
A. The Patent At Issue
This case concerns alleged infringement of U.S. Patent 7,152,840 (the “Patent” or “'840 Patent”). The Patent, titled “BOOK HOLDER,” was filed on April 24, 2003 and issued on December 26, 2006. (Ronneburger Decl. Ex. B at 1.) It lists three inventors:
“Ronneburger Decl.” refers to the Attorney Declaration of Ariel E. Ronneburger in Support of Defendant's Motion to Dismiss the Complaint (Dkt. 13).
Plaintiff Chikezie Ottah, Chineye Ottah, and Kenneth Ottah. (Id.) The '840 Patent covers a book holder removably attachable to a vehicle or structure with an adjustable clasp for attachment, an arm extending from the clasp to a book platform, and several clamps to attach a book to the platform holder. (Id. at 1.) There is a single claim, which reads in its entirety as follows:
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 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.(Id. at 8.)
B. Ottah's Prior Action Asserting The Same Patent Against National Grid
In September 2019, Ottah filed a suit against National Grid for alleged infringement of the '840 Patent (the “Prior Action”). Ottah v. National Grid, No. 19-CV-8289, 2020 WL 2543105, at *1 (S.D.N.Y. April 27, 2020), R. & R. adopted, 2020 WL 2539075 (S.D.N.Y. May 19, 2020) (“National Grid I”). Ottah alleged that at some point in 2018 he “accidentally came across” one of National Grid's vehicles in Coney Island, New York and saw that a “book holder was mounted inside the vehicle.” Id. at *2. As one of the photographs annexed to the complaint showed, the device was situated between the driver's seat and the passenger's seat and supported a laptop-style computer. Id. Ottah alleged that that device violated his rights under the Patent. Id. National Grid filed a motion to dismiss arguing dismissal was required for two reasons. First, Ottah lacked standing to bring the action on his own because he is not the sole owner of the Patent, and thus the Court lacked jurisdiction to hear the case. Second, the Complaint did not assert a plausible cause of action because Ottah's intellectual property rights under the Patent are not broad enough to cover Defendant's device. Id. at *6. The Court disagreed on the standing issue but dismissed the complaint on the merits based on National Grid's second argument. Id. at *11-14.
The Court explained that, at its core, the case was about the scope of Ottah's rights under the Patent and that his claim was foreclosed because the very same issue had “already been repeatedly, decisively and consistently adjudicated by courts in this District as well as the Federal Circuit.” Id. at *11; see Ottah v. VeriFone Systems, Inc., No. 11-CV-6187, 2012 WL 4841755, at *1 (S.D.N.Y. Oct. 10, 2012), aff'd, 524 Fed.Appx. 627 (Fed. Cir. 2013) (“VeriFone”); Ottah v. First Mobile Technologies, No. 10-CV-7296, 2012 WL 527200, at *1 (S.D.N.Y. Feb. 17, 2012) (“First Mobile”); Ottah v. BMW, 230 F.Supp.3d 192, 193-94 (S.D.N.Y. 2017), aff'd sub nom., Ottah v. Fiat Chrysler, 884 F.3d 1135 (Fed. Cir. 2018) (“BMW”). The Court dismissed the case for failure to state a plausible claim for infringement because the “the Patent language is clear and plainly does not include a bolted-on, in-vehicle technology holder.” National Grid I, 2020 WL 2543105, at *11. The Court also held Ottah was precluded from asserting the doctrine of equivalents based on prosecution history estoppel, which he already had asserted to no avail in his three previous lawsuits alleging infringement of the '840 Patent. Id. at *13.
Ottah failed to file a timely notice of appeal, and Judge Engelmayer denied Ottah's belated motion for an extension based on Ottah's failure to show excusable neglect or good cause. (Ronneburger Decl., Ex. G.)
C. Ottah's Other Actions Asserting The Same Patent
As alluded to above, in addition to the instant action and the Prior Action, Ottah filed at least three earlier actions concerning the same Patent. None of those lawsuits have been successful. See First Mobile (granting summary judgment and dismissing action); VeriFone (same); BMW (same).
On a motion to dismiss, courts may take notice of other lawsuits, judicial decisions, and litigation filings. Koch v. Christie's International PLC, 785 F.Supp.2d 105, 112 (S.D.N.Y. 2011) (“courts can consider court documents or matters of public record at the motion to dismiss stage where both parties had notice of their contents and the documents are integral to the complaint”), aff'd, 699 F.3d 141 (2d Cir. 2012); Munno v. Town of Orangetown, 391 F.Supp.2d 263, 269 (S.D.N.Y. 2005) (taking judicial notice of submissions from a related court action in considering motion to dismiss as they allegedly contained statements that contradicted the allegations contained in the complaint at issue); Silver Line Building Products LLC v. J-Channel Industries Corp., 12 F.Supp.3d 320, 323 (E.D.N.Y. 2014) (taking judicial notice of “similar lawsuits” filed by patent holder against other defendants).
In First Mobile, Ottah asserted that the '840 Patent was infringed by a vehicular computer docking station. The court granted summary judgment for the defendant, holding that the accused product did not infringe the Patent either literally or under the doctrine of equivalents. 2012 WL 527200 at *5-7. As the court explained, the '840 Patent applies only to “book holders” and not a vehicular mounted laptop holder. Id. at *1 (“The purpose of the '840 Patent is to provide a platform to support books which can be attached easily to a moving object”), and *5 (explaining that defendant's vehicular computer docking station does not infringe on the '840 Patent because it does not include a clasp to make it easily removable). In VeriFone, Ottah alleged VeriFone's fixed mounts for electronic displays in New York City taxicabs infringed the '840 Patent. The court held that the mounts did not infringe the Patent because they did not contain several of the limitations in the patent claim. The mounts are “anything but removable” because they are “riveted into place to the taxi's partition or seat,” and are not “book holder[s].” 2012 WL 4841755 at *2-3. And, as in First Mobile, prosecution history estoppel barred Ottah's claim of infringement under the doctrine of equivalents. Id. at *3-4.
In BMW, Ottah asserted infringement claims against fifteen automobile companies, claiming that they infringed the '840 Patent by having a “camera mounted on a vehicle.” BMW, 230 F.Supp.3d at 195. The court held that the '840 Patent does not cover items, specifically cameras, mounted in a fixed fashion to their supporting structures, and again rejected Ottah's assertion of the doctrine equivalents. Id. at 19798. The Court dismissed Ottah's claims against all defendants.
D. The Instant Action
Despite the earlier dismissal of his claims against National Grid in the Prior Action against National Grid, Ottah filed this action on April 8, 2022, almost two years after dismissal of the Prior Action with prejudice. (Dkt. 1 (the “Complaint”).) On April 28, 2022, Defendant filed a letter requesting that the matter be assigned to the District Judge Paul A. Engelmayer and Magistrate Judge Robert W. Lehrburger as the claims in the instant action are “virtually identical” to those in the Prior Action. (Dkt. 6.) The request was accepted, and on May 9, 2022, the case was reassigned to Judge Engelmayer and Judge Lehrburger.
Judge Engelmayer initially referred this case to the undersigned for general pretrial management. (Dkt. 9.) On June 3, 2022, he expanded the scope of the referral to include a Report and Recommendation on Defendant's Motion to Dismiss. (Dkt. 24.)
The Complaint is quite difficult to follow, combining allegations of infringement (Complaint at ECF 9-10), repeated assertions that prior cases filed by Ottah in the Southern District of New York were erroneously decided (id. at ECF 11-12), followed by another disjointed discussion of the claimed infringement and accused product. (Id. at ECF 12-15.) The Complaint attaches numerous unlabeled exhibits (see Id. at ECF 1678) including: two photographs of the back and interior of a National Grid van (id. ECF at 16-17); dictionary entries for the words ‘adjustable,' ‘adaptable,' ‘connector' (id. at ECF 18-20); two photographs of screws and tools (id. at ECF 21-22); and a letter from the patent's co-owners filed in the Prior Action (id. at ECF 25).
Beginning on ECF 26 of the Complaint, Ottah attaches two identical twenty-five-page documents. (See id. at ECF 26-51; 52-77.) That portion of the Complaint is just as disjointed and largely duplicative of the allegations made in the first part of the Complaint. It includes another narrative account, a listing of the Patent claim's elements, definitions and dictionary screenshots of words relevant to the alleged infringement, a statement of the legal elements of patent infringement, and repeated assertions that the Southern District of New York and Federal Circuit's previous rulings about Ottah's patent infringement claims are incorrect. (See id. at ECF 26-51.)
At bottom, Ottah's Complaint in the instant action asserts the same Patent claim as in the Prior Action, against the same defendant as in the Prior Action, and does not identify any accused device other than what was at issue in the Prior Action.
E. Defendant's Motion To Dismiss
On May 10, 2022, National Grid filed a motion to dismiss the Complaint. (Dkt. 12.) The motion is supported by the Declaration of Ariel E. Ronneburger, Esq. (“Ronneburger Decl.”), attaching Exhibits A-L (Dkt. 13) and a Memorandum of Law in Support of the motion. (Dkt. 14, “Def. Mem.”) On June 2, 2022, Ottah filed his opposition (Dkt. 23); National Grid filed its reply on June 7, 2022. (Dkt. 25.)
Two days before filing his opposition to the motion, Ottah filed two documents titled “Claims In Support Of Defendant Infringement” and “Conjunction Word In Support Of Defendant Infringement.” (Dkts. 20-21.) The information contained in the two filings is essentially duplicative of the allegations in Ottah's Complaint.
Ottah also filed a letter from his “co-owners” of the Patent, Kenneth Ottah and Chinyene Ottah, stating that the two co-owners “have given Chikezie Ottah unilateral right to sue the accused product (s) of the defendant, National Grid,” and they have “drawn [their] rights to sue the defendant in the same matter in the future.” (Dkt. 22.)
LEGAL STANDARDS
A. Review Of Pro Se Pleadings
“Pro se complaints ‘must be construed liberally and interpreted to raise the strongest arguments that they suggest.'” Sykes v. Bank of America, 723 F.3d 399, 403 (2d Cir. 2013) (quoting Triestman v. Federal Bureau of Prisons, 470 F.3d 471, 474 (2d Cir. 2006)). “[T]he Second Circuit, as a general matter, is solicitous of pro se litigants, enforcing standards of procedural leniency rather than holding them to the rigidities of federal practice.” Massie v. Metropolitan Museum of Art, 651 F.Supp.2d 88, 93 (S.D.N.Y. 2009); see also Weixel v. Board of Education, 287 F.3d 138, 147-48 (2d Cir. 2002) (reversing dismissal where district court failed to construe pro se plaintiff's complaint liberally); Ortiz v. Cornetta, 867 F.2d 146, 148 (2d Cir. 1989) (“Once a pro se litigant has done everything possible to bring his action, he should not be penalized by strict rules which might otherwise apply if he were represented by counsel”).
That said, “even pro se plaintiffs cannot withstand a motion to dismiss unless their pleadings contain factual allegations sufficient to raise a ‘right to relief above the speculative level,'” Martinez v. Ravikumar, 536 F.Supp.2d 369, 370 (S.D.N.Y. 2008) (quoting Twombly, 550 U.S. at 555, 127 S.Ct. at 1965), and must allege “'enough facts to state a claim to relief that is plausible on its face.'” Perry v. Mary Ann Liebert, Inc., 765 Fed.Appx. 470, 473 (2d Cir. 2019) (quoting Twombly, 550 U.S. at 570, 127 S.Ct. at 1960).
B. Motion To Dismiss For Lack Of Subject Matter Jurisdiction
On a motion to dismiss pursuant to Rule 12(b)(1) for lack of subject matter jurisdiction, a court must dismiss a claim if it “lacks the statutory or constitutional power to adjudicate it.” Morrison v. National Australia Bank Ltd., 547 F.3d 167, 170 (2d Cir. 2008) (internal quotation marks omitted), aff'd, 561 U.S. 247, 130 S.Ct. 2869 (2010). “The plaintiff bears the burden of proving subject matter jurisdiction by a preponderance of the evidence.” Aurecchione v. Schoolman Transportation System, Inc., 426 F.3d 635, 638 (2d Cir. 2005). In deciding a Rule 12(b)(1) motion to dismiss, the Court “‘must take all facts alleged in the complaint as true and draw all reasonable inferences in favor of plaintiff.'” Morrison, 547 F.3d at 170 (quoting Natural Resources Defense Council v. Johnson, 461 F.3d 164, 171 (2d Cir. 2006) (internal quotation marks omitted)). The Court “may consider affidavits and other materials beyond the pleadings to resolve the jurisdictional issue.” J.S. ex rel. N.S. v. Attica Central Schools, 386 F.3d 107, 110 (2d Cir. 2004); see also Makarova v. United States, 201 F.3d 110, 113 (2d Cir. 2000) (“In resolving a motion to dismiss for lack of subject matter jurisdiction under Rule 12(b)(1), a district court ... may refer to evidence outside the pleadings”).
C. Motion To Dismiss For Failure To State A Claim
Under Federal Rule of Civil Procedure 12(b)(6), a pleading may be dismissed for “failure to state a claim upon which relief can be granted.” Fed.R.Civ.P. 12(b)(6) (“Rule 12(b)(6)”). To survive a Rule 12(b)(6) motion, a complaint must plead “enough facts to state a claim to relief that is plausible on its face.” Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 570, 127 S.Ct. 1955, 1974 (2007). A claim is facially plausible when the factual content pleaded allows a court “to draw the reasonable inference that the defendant is liable for the misconduct alleged.” Ashcroft v. Iqbal, 556 U.S. 662, 678, 129 S.Ct. 1937, 1949 (2009).
“Where a complaint pleads facts that are ‘merely consistent with' a defendant's liability, it ‘stops short of the line between possibility and plausibility of entitlement to relief.” Id., 556 U.S. at 678, 129 S.Ct. at 1949 (quoting Twombly, 550 U.S. at 557, 127 S.Ct. at 1965). In considering a motion to dismiss, a district court “accept[s] all factual claims in the complaint as true, and draw[s] all reasonable inferences in the plaintiff's favor.” Lotes Co. v. Hon Hai Precision Industry Co., 753 F.3d 395, 403 (2d Cir. 2014). However, this tenet is “inapplicable to legal conclusions. Threadbare recitals of the elements of a cause of action, supported by mere conclusory statements, do not suffice.” Iqbal, 556 U.S. at 678, 129 S.Ct. at 1949. “[R]ather, the complaint's factual allegations must be enough to raise a right to relief above the speculative level ... i.e., enough to make the claim plausible.” Arista Records, LLC v. Doe 3, 604 F.3d 110, 120 (2d Cir. 2010) (internal quotation marks and brackets omitted). A complaint is properly dismissed where, as a matter of law, “the allegations in [the] complaint, however true, could not raise a claim of entitlement to relief.” Twombly, 550 U.S. at 558, 127 S.Ct at 1966.
For the purposes of considering a motion to dismiss pursuant to Rule 12(b)(6), a court generally is confined to the facts alleged in the complaint. See Cortec Industries v. Sum Holding L.P., 949 F.2d 42, 47 (2d Cir. 1991). A court may, however, consider additional materials, including documents attached to the complaint, documents incorporated into the complaint by reference, public records, and documents that the plaintiff either possessed or knew about, and relied upon, in bringing the suit. See Kleinman v. Elan Corp., 706 F.3d 145, 152 (2d Cir. 2013) (quoting ATSI Communications, Inc. v. Shaar Fund, Ltd., 493 F.3d 87, 98 (2d Cir. 2007)). In that regard, if “a document relied on in the complaint contradicts allegations in the complaint, the document, not the allegations, control, and the court need not accept the allegations in the complaint as true.” Poindexter v. EMI Record Group Inc., No. 11-CV-559, 2012 WL 1027639, at *2 (S.D.N.Y. March 27, 2012) (quoting Barnum v. Millbrook Care Ltd. Partnership, 850 F.Supp. 1227, 1232-33 (S.D.N.Y.1994)).
DISCUSSION
National Grid advances three arguments why Ottah's complaint should be dismissed: (1) Ottah lacks standing to assert the patent as his own, and the Court thus lacks subject matter jurisdiction, because he failed to join his co-owners to the action; (2) Ottah has failed to state a plausible infringement claim because the Patent does not cover a vehicular mounting device for a laptop computer; and (3) in the alternative, Ottah's request for damages for patent infringement must be partially dismissed as time-barred. The Court disagrees with National Grid's standing argument, agrees with its second argument, and does not address its third argument. Ottah's claims are barred by the doctrine of res judicata and should be dismissed on that basis.
A. Ottah's Failure To Join Co-Owners Does Not Require Dismissal
Ottah concedes that he is not the sole inventor of the Patent. (Dkt. 22.) The Patent also lists Chineye Ottah and Kenneth Ottah as co-inventors. (Ronneburger Decl. Ex. B.) National Grid argues that Plaintiff lacks subject matter jurisdiction to assert his claims because the two co-owners are not joined in this suit. The Court disagrees. Ottah filed a letter signed by Ottah's co-owners, and the letter, or its substantive equivalent, has already been determined sufficient in two prior cases brought by Ottah in this District; namely, BMW and the Prior Action.
As a general matter, “United States patent law ... requires that all co-owners normally must join as plaintiffs in an infringement suit.” International Nutrition Co. v. Horphag Research Ltd., 257 F.3d 1324, 1331 (Fed. Cir. 2001); see also Ethicon, Inc. v. United States Surgical Corp., 135 F.3d 1456, 1467-68 (Fed. Cir. 1998) (describing as a “settled principle” that “as a matter of substantive patent law, all co-owners must ordinarily consent to join as plaintiff in an infringement suit”), cert. denied, 525 U.S. 923, 119 S.Ct. 278 (1998); Adams v. Westminster International Co., No. 98-CV-2489, 1999 WL 596272, at *2 (S.D.N.Y. Aug. 9, 1999) (“it is a settled principle that an action for patent infringement must join as plaintiffs all co-owners”).
This rule aims to avoid duplicative litigation or conflicting results; since “‘all coowners have standing to sue for infringement, if all the co-owners are not joined in an infringement suit, there may be a risk that the defendant will be subject to multiple suits.'” E.Z. Bowz, L.L.C. v. Professional Product Research Co., Inc., No. 00-CV-8670, 2003 WL 22064257, at *3 (S.D.N.Y. Sept. 5, 2003) (quoting International Business Machines Corp. v. Conner Peripherals, Inc., No. 93-CV-20591, 1994 WL 409493, at *3 (N.D.Cal. Jan. 28, 1994)); see also Union Trust National Bank v. Audio Devices, Inc., 295 F.Supp. 25, 27 (S.D.N.Y.1969) (“That all co-owners be parties to a suit is a necessary requirement if conflicting decisions about the same patent (for example, its validity) are to be avoided”); Vaupel Textilmaschinen KG v. Meccanica Euro Italia S.P.A., 944 F.2d 870, 875 (Fed. Cir. 1991) (“The policy underlying the requirement to join the owner when an exclusive licensee brings suit is to prevent the possibility of two suits on the same patent against a single infringer”).
The requirement to join patent co-owners as parties is not absolute. “Since the introduction of Fed.R.Civ.P. 19 ... courts are less concerned with abstract characterizations of the parties and more concerned with whether the rights of the parties can be fairly adjudicated absent joinder of the patent co-owner.” Agilent Technologies, Inc. v. Micromuse, Inc., No. 04-CV-3090, 2004 WL 2346152, at *7 (S.D.N.Y. Oct. 19, 2004) (internal citations omitted). Rather, “where the co-owner of a patent or other entity or individual whose interest in a patent might be directly affected by litigation has specifically disclaimed all interest in pursuing litigation related to the patent in favor of the party who has brought the suit, courts have held that joinder of the co-owner or other entity or individual is not necessary.” Agilent Technologies, Inc., 2004 WL 2346152 at *7 (citing Vaupel Textilmaschinen KG, 944 F.2d at 875).
The requirement to join co-owners and the consequences of co-owners relinquishing their rights have been addressed in two of Ottah's prior lawsuits claiming infringement of the Patent. In BMW, Ottah did not include his co-owners in the suit, and Defendant BMW moved to dismiss for lack of subject matter jurisdiction. Following dismissal, Ottah filed a motion to re-open the case along with two purported declarations from the co-owners stating that each was “in support of the above caption litigation.” (BMW, Motion to Reopen, Dkt. 136.) The court initially rejected the declarations as sufficient to cure the jurisdictional defect. (BMW, Order, Dkt. 138.) But Ottah filed another set of sworn statements from Kenneth Ottah and Chineye Ottah. (BMW, Dkt. 141.) In the revised statements, each co-owner stated that “I am in support of the above caption [sic] litigation” and that “I give [Plaintiff] the explicit right to sue for infringement [of the Patent].” (Id. at 3.) The court found those statements sufficient to establish that the co-owners had given “Plaintiff Chikezie Ottah the unilateral right to sue for infringement of the patent at issue.” (BMW, Order, Dkt. 142 at 1.)
Similar to BMW, Ottah again failed to join his two co-owners in the Prior Action. In response to National Grid's motion to dismiss in that case, Ottah filed letters from Kenneth Ottah and Chineye Ottah providing in relevant part: “I respectfully state my name as chineye ottah [sic] [.] I am a co-owner of the U.S. patent 7,152,840[.] I respectfully submit this affidavit as a fact[.] That I support the right of Chikezie Ottah and the U.S. Patent 7,152,840 in law suit [sic]. That I have withdrawn [sic] my right to sues [sic] the defendant in the same matter in the future. That I depose to this affidavit conscientiously and in good faith believing in the Laws of the United States of America.” (Prior Action, Dkt. 23 at 2.) This Court found that “while National Grid is correct that Ottah should have joined his co-owners from the start, the subsequent submission of signed letters from both individuals is enough to show that they are, once again, giving Ottah the unilateral right to sue for infringement of the Patent and waiving their individual rights to do the same in the future. Dismissal for lack of standing and subject matter jurisdiction is accordingly not warranted.” Prior Action, at *9.
Here, yet again, Ottah did not join his two co-owners in the litigation. On May 31, 2022, however, Ottah filed a nearly identical sworn letter to that filed in the Prior Action. It provides in relevant part that Kenneth Ottah and Chinyene Ottah “are co-owner of the U.S. patent 7,152,840[.] We respectful [sic] submit this affidavit as a fact that we have given Chikezie Ottah unilateral right to sue the accused product (s) of the defendant, National Grid, that we have with drawn [sic] our rights to sue the defendant in the same matter in the future... [T]hat we depose to this affidavit conscientiously and in good faith, believing in the laws of the United States of America” and was signed by signed by Kenneth Ottah and Chinyene Ottah. (Dkt. 22.) Despite the grammatical errors, the letter clearly indicates that Ottah's co-owners support the instant lawsuit and withdraw their own personal rights to later sue National Grid in connection with the Patent. Just as in BMW and the Prior Action, the co-owners' sworn statement is sufficient to confer standing. Accordingly, the case should not be dismissed based on lack of subject matter jurisdiction. As discussed next, however, Ottah's present claim is barred by res judicata.
B. Ottah's Claim Is Barred By Res Judicata
Although less than fully intelligible, Ottah's claim asserts the same Patent asserted in the Prior Action, against the same defendant, and does not identify a new accused device. As such, the claim is barred by the doctrine of res judicata. Ottah already brought and lost his claim against National Grid. Any new arguments or theories of infringement are foreclosed.
The doctrine of res judicata dictates “that a final judgment on the merits of an action precludes the parties or their privies from relitigating issues that were or could have been raised in that action.” Burgos v. Hopkins, 14 F.3d 787, 789 (2d Cir. 1994) (internal quotations omitted). The common law doctrines of res judicata and collateral estoppel are “related but distinct [and] operate to prevent parties from contesting matters that they have had a full and fair opportunity to litigate, thereby conserving judicial resources and protecting parties from the expense and vexation of multiple lawsuits.” Marvel Characters, Inc. v. Simon, 310 F.3d 280, 286 (2d Cir. 2002) (citing Montana v. United States, 440 U.S. 147, 153-54, 99 S.Ct. 970, 973-74 (1979)).
“Res judicata [or claim preclusion] precludes parties from litigating issues ‘that were or could have been raised' in a prior proceeding.” Perez v. Danbury Hospital, 347 F.3d 419, 426 (2d Cir. 2000) (quoting Monahan v. New York City Department of Corrections, 214 F.3d 275, 284-85 (2d Cir. 2000)); see also Irish Lesbian and Gay Organization v. Giuliani, 143 F.3d 638, 644 (2d Cir. 1998). “To prove that a claim is precluded under this doctrine, ‘a party must show that (1) the previous action involved an adjudication on the merits; (2) the previous action involved the parties or those in privity with them; and (3) the claims asserted in the subsequent action were, or could have been, raised in the prior action.'” Pike v. Freeman, 266 F.3d 78, 91 (2d Cir. 2001) (brackets omitted) (quoting Monahan, 214 F.3d at 284-85); see also Truong v. Hung Thi Nguyen, No 10-CV-386, 2011 WL 1198254, at *3 (S.D.N.Y. March 3, 2011). All three requisites exist here.
First, the Prior Action concluded with an adjudication on the merits. On April 27, 2020, this Court issued a Report and Recommendation recommending dismissal of Plaintiff's complaint in its entirety for failure to state a claim, and on May 19, 2020, Judge Engelmayer issued an Opinion and Order adopting the Report and Recommendation in full. “For purposes of the doctrine of res judicata, a dismissal for failure to state a claim is a final judgment on the merits.” Brodsky v. New York City Campaign Finance Board by Weisman, 796 Fed.Appx. 1, 4 (2d Cir. 2019) (internal quotation marks omitted). Second, the parties involved are identical to the Prior Action: Chikezie Ottah as Plaintiff and National Grid as Defendant. Third, Ottah does not point to any new facts or arguments that could not have been raised in the Prior Action. To the contrary, Ottah's Complaint is no more than a rehash of his previous claim against National Grid and a challenge to the courts' decisions in the Prior Action and other cases he lost.
Once again, Ottah challenges National Grid's computer laptop holding device.Yet, in the Prior Action, the Court determined - based on what other courts previously held - that the Patent does not cover a computer holding device such as that used by National Grid. As this Court stated in dismissing the Prior Action, “[m]ultiple decisions from this District and the Federal Circuit have already rejected Ottah's expansive reading of his Patent rights, along with his related argument under the doctrine of equivalents. As a matter of law, the Patent's scope cannot support a finding of infringement based upon Ottah's allegations.” 2020 WL 2543105, at *9.
The photos of the accused device attached to the Complaint in the instant action are not identical to the photos in the complaint Ottah filed in the Prior Action - they apparently were shot at a different angle. (Compare Complaint at ECF 14-17, 51 with Prior Action Complaint, Dkt. 1 at ECF 22, 25, 26, 47).)
In addition to specifically being claimed and described as a book holder, the Patent requires “resilient clip arms,” which facilitate easy attachment and removal: “the purpose of the ‘840 Patent is to provide a platform to support books which can be attached easily to a moving object” and the “ability to attach and remove quickly... is a primary feature of the ‘840 Patent.” First Mobile, 2012 WL 527200, at *1, *7; see also BMW, 230 F.Supp.3d at 197 (“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.'” (quoting VeriFone, 524 Fed.Appx. at 629). Despite attempting to disguise the accused product as something other than what it is, (see Compl. at ECF 13 (Ottah states “that the accused product is a “computer or book holder”)), the focus of the Complaint appears to be trained on the accused device having a secured coil designed to hold a laptop computer in a vehicle. (See Compl. at ECF 12, 14, 15.) The Complaint then strains to bring the well-secured accused device under the meaning of the term “resilient clip” by noting “Clearly Resilient clip will comprise: a screw, a screwdriver, a corkscrew, a cork screwdriver, a cork grove, a grove screwdriver, base, nut, nut screwdriver, bolt rivet, rivet screwdriver. .” (Compl. at ECF 14.) All of those, however, require tools to attach or remove the device, thus indicating that the accused device does not have a “resilient” clip that permits easy attachment and removal. The Court does not, however, rest this Report and Recommendation on that analysis, which ultimately is a factual one.
Ottah repeatedly suggests that he filed the Complaint because he believes dismissal of the Prior Action and dismissal of his other actions were in error and contrary to law. (Compl. at ECF 11, 27-30.) Ottah essentially is using the Complaint filed in this action to challenge the rulings made in the Prior Action and other earlier actions. But the instant action is not the forum to do so. Rather, Ottah would have had to file a timely appeal of the judgment of dismissal in the Prior Action. See Federal Rule of Appellate Procedure 3 & 4; Bouchard v. New York Archdiocese, 458 Fed.Appx. 37, 38 (2d Cir. 2012) (Pursuant to Fed. R. App. P. 4(a)(1)(A), a notice of appeal in a civil case in which the United States or its officer or agency is not a party must be filed within 30 days after entry of the judgment”). Ottah did not timely appeal, and he cannot use the instant action as an end run around that bar to reasserting the same claims or claims that could have been asserted in the Prior Action.
Ottah is well aware of the procedural requirements for a proper appeal, having unsuccessfully appealed three of the District Court's rulings in BMW, First Mobile, and VeriFone to the Federal Circuit. The appeal in First Mobile was dismissed on June 14, 2012 for “failure to prosecute” because Ottah never filed an appellate brief. See Dkt. 7, Ottah v. First Mobile Technologies, No. 12-1405 (Fed. Cir. Jun. 14, 2012). In VeriFone, the Federal Circuit affirmed the court's finding that the Patent's sole claim was: (1) “clear on its face”; (2) did not cover mounts that were fixed in place; and (3) could not be infringed by the defendant's devices because those devices were “riveted in place and [could not] be removed without tools.” VeriFone, 524 Fed. App'x at 629-30. And in BMW, the most recent of the three, the Federal Circuit similarly affirmed dismissal in full. Ottah v. Fiat Chrysler, 884 F.3d 1135, 1140 (Fed. Cir. 2018) (“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”).
CONCLUSION
For the reasons discussed above, I recommend that Defendants' motion be GRANTED, and the complaint be DISMISSED with prejudice.
DEADLINE TO OBJECT AND PRESERVE APPEAL
Pursuant to 28 U.S.C. § 636(b)(1) and Rules 72, 6(a), and 6(d) of the Federal Rules of Civil Procedure, the parties have fourteen (14) days to file written objections to this Report and Recommendation. Such objections shall be filed with the Clerk of Court, with extra copies delivered to the Chambers of the Honorable Paul A. Engelmayer, United States Courthouse, 40 Foley Street, New York, New York 10007, and to the Chambers of the undersigned, 500 Pearl Street, New York, New York 1007.
Failure to file timely objections will result in waiver of objections and preclude appellate review.
Respectfully Submitted,