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February 2, 2005.

TONY COLIDA, Plaintiff,
NEC USA, INC., Defendant.

The opinion of the court was delivered by: RICHARD HOLWELL, District Judge


Tony Colida brought this pro se action for patent infringement against NEC USA, Inc. ("NEC"), alleging that NEC's sales of its Model 515 mobile phones infringed on his U.S. Design Patent Nos. D321,347 ("`347 patent") and D321,349 ("`349 patent"). This case is one of a series of actions brought against cell phone manufacturers alleging infringement of the same patents. Several courts have already found plaintiff's claims to be meritless.*fn1

NEC now moves for summary judgment on all of plaintiff's claims in this case. For the reasons set forth below, the Court grants defendant's motion in its entirety, thereby dismissing plaintiff's complaint. Page 2


  NEC, through its subsidiary company, NEC America, Inc., sells mobile phones in the United States, including the allegedly infringing Model 515 mobile phone. (Defs.' 56.1 ¶¶ 2, 3.) Colida is an inventor who owns the `347 patent and '349 patent. (Masters Decl., Exs. A and C.)

  On November 5, 1991, the United States Patent Commission granted Colida two design patents issued as '347 for his product, "Portable Cellular Handset Telephone," and '349 for his product, "Cellular Portable Handset Telephone." (Id.) The claim attributed to the '347 patent provides "[t]he ornamental design for a portable handset telephone, as shown and described." (Id., Ex. A.) The '347 patent includes eight illustrations entitled Figures 1-8 showing various angles of his patented phone design. (Id.) Similarly, the entire claim for the '349 patent states "[t]he ornamental design of a cellular portable handset telephone, as shown and described. (Id., Ex. C.) The `349 patent includes six illustrations labeled as Figures 1-6 showing the phone design in various open and shut positions, as well as sideshots of the phone.


  I. Summary Judgment Standard

  Summary judgment is appropriate "if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law." R.B. Ventures, Ltd. v. Shane, 112 F.3d 54, 57 (2d Cir. 1997) (quoting Fed.R.Civ.P. 56(c)). Summary judgment may also be granted when the Page 3 opposing party fails to establish an element essential to that party's case and on which that party would bear the burden of proof at trial. See Celotex Corp. v. Catrett, 477 U.S. 317, 321 (1986); Distasio v. Perkin Elmer Corp., 157 F.3d 55, 61 (2d Cir. 1998) (summary judgment is "mandated" when "the evidence is insufficient to support the non-moving party's case.")

  In reviewing the record, the district court must assess the evidence in "the light most favorable to the non-moving party," resolve all ambiguities, and "draw all reasonable inferences" in its favor. Am. Cas. Co. v. Nordic Leasing, Inc., 42 F.3d 725, 728 (2d Cir. 1994); see Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255, 106 S. Ct. 2505, 91 L. Ed. 2d 202 (1986). Nevertheless, an alleged factual dispute between the parties will not by itself defeat a motion for summary judgment, since "the requirement is that there be no genuine issue of material fact." Anderson, 477 U.S. at 247-48 (emphasis in original). "A fact issue is `genuine' if `the evidence is such that a reasonable jury could return a verdict for the nonmoving party.'" Mitchell v. Shane, 350 F.3d 39, 47 (2d Cir. 2003) (quoting Anderson, 477 U.S. at 248). "A fact is `material' if it might affect the outcome of the suit under governing law." Id. (quoting Anderson, 477 U.S. at 248).

  Because Colida is proceeding pro se, the Court is cautious in fulfilling its obligation "to construe his pleadings liberally, particularly when they allege civil rights violations." Hemphill v. New York, 380 F.3d 680, 687 (2d Cir. 2004) (internal citations and quotations omitted). Moreover, the Court has broad discretion in overlooking a party's failure to comply with Local Rule 56.1, such as is the case here. Holtz v. Rockefeller & Co., Inc., 258 F.3d 62, 73-74 (2d Cir. 2001) (excusing pro se plaintiff's failure to submit 56.1 statement). While Colida's pleadings and submissions regarding Page 4 his Local Rule 56.1 obligations are woefully inadequate, the Court exercises its discretion in overlooking these defects and proceeds to the merits of his claims.

  II. Plaintiff's Claims of Patent Infringement

  35 U.S.C. § 171 grants design patents to individuals who invent "any new, original and ornamental design for an article of manufacture." 35 U.S.C. § 171. A design patent encompasses those features that are ornamental, thus excluding any features that are "functional" in use or purpose. Power Controls Corp. v. Hybrinetics, Inc., 806 F.2d 234, 238 (Fed. Cir. 1986). The scope of the claim must therefore be limited in order to separate and identify the non-functional aspects of the design as shown in the patent. Lee v. Dayton-Hudson Corp., 838 F.2d 1186, 1188 (Fed. Cir. 1988).

  Determining whether a design patent has been infringed requires "(1) construction of the claim, and (2) comparison of the construed claim to the accused product." Contessa Food Products v. Conagra, Inc., 282 F.3d 1370, 1376 (Fed. Cir. 2002) (citing Elmer v. ICC Fabricating, Inc., 67 F.3d 1571, 1577 (Fed Cir. 1995); Omega Engineering, Inc. v. Raytek Corp., 334 F.3d 1314, 1320 (Fed. Cir. 2003). When construing a design patent claim, the "scope of the claimed design encompasses its visual appearance as a whole, and in particular, the visual impression it creates." Contessa, 282 F.3d at 1376 (internal citations and quotations omitted). The second step, comparison to the accused product, "includes two distinct ...

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