Ottah v. Fiat Chrysler

• Decision Date: 07 March 2018
• Docket Number: 2017-1842
• Citation: 884 F.3d 1135
• Parties: 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
• Court: U.S. Court of Appeals — Federal Circuit

884 F.3d 1135

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

United States Court of Appeals, Federal Circuit.

Decided: March 7, 2018

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 represented by Eric Allan Buresh.

Matthew J. Moore, Lathan & Watkins LLP, Washington, 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.

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 summary 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 describes the invention as "a removable book holder assembly 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 recites ten "object[s] of the present invention," including "provid[ing] a book holder that can be easily and removably 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 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 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, cameras, 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 intended to be encompassed by the claims attached hereto.

Id . at col. 6, ll. 1–7. The only embodiment that is described 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 using/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 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 "removable attachment" limitation of claim 1, because the camera holders on their vehicles cannot be removed without tools.

The district court granted the MTD Defendants' motion 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 Patent's claim is for a book holder and does not claim a camera holder or any of a camera's components or functions.

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 Fed.Appx. 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 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 construing 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 limitations require that the claimed book holder has a "removable mounting." VeriFone , 524 Fed.Appx. at 629 (construing the "removably attached" term). The VeriFone court held that...