The opinion of the court was delivered by: RICHARD HOLWELL, District Judge
MEMORANDUM OPINION AND ORDER
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
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.
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
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
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
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 ...