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United States District Court, S.D. New York

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 tests, both of which must be satisfied in order to find infringement: (a) the `ordinary observer' test, and (b) the `point of novelty' test." Id. at 1377 (internal citations omitted).

  The "ordinary observer" test has been articulated as follows: Page 5


if, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one, supposing it to be the other, the first one patented is infringed by the other.
Gorham Mfg. Co. v. White, 81 U.S. 511, 528 (1871). While the patented and accused designs need not be identical to find design patent infringement, it is the "appearance of the design as a whole which is controlling." Oddzon Products, Inc. v. Just Toys, Inc., 122 F.3d 1396, 1405 (Fed. Cir. 1996). The "point of novelty" test, a legally distinct analysis from the "ordinary observer" test, requires "proof that the accused design appropriates the novelty which distinguishes the patented design from the prior art." Contessa, 282 F.3d at 1377. However, if the overall appearances of the designs under the "ordinary observer" test are dissimilar, the accused product does not infringe, and the inquiry ends. Oddzon Products, Inc., 122 F.3d at 1405; Keystone Retaining Wall Sys., Inc. v. Westrock, Inc., 997 F.2d 1444, 1451 (Fed. Cir. 1993).

  A. Claim Construction

  A proper construction of plaintiff's claimed design focuses on the visual impression it creates — e.g., its "overall ornamental visual impression" — rather than on the "broader general design concept" of a flip-phone. Id. Moreover, the '347 patent and '349 patent assert claims over the "ornamental design . . . as shown and described." (Masters Decl., Exs. A and C (emphasis added).) Accordingly, the "claim[s] at bar, as in all design cases, [are] limited to what is shown in the application drawings." In re Mann, 861 F.2d 1581, 1582 (Fed. Cir. 1988). Page 6

  1. The '347 Patent

  The '347 patent displays a flip-phone design that has been roughly described as a "clam-shell" or "whale's mouth" when closed and viewed from the side angle. (Masters Decl. ¶¶ 12-14.)*fn2 As Figure 1 demonstrates, each half of the phone is substantially thicker at the hinge portion and gradually curves inward toward the distal ends. (Id., Ex. A.) The earpiece is formed by an oval depression containing eight small holes across a raised section in the upper half of the phone. (Id.) The recessed portion of the upper half includes a rectangular-shaped display deeply recessed between protruding sidewalls. (Id.)

  The bottom half contains a keypad deeply recessed "between S-shaped sidewalls and with 21 keys of the same size and shape arranged in a 3X7 grid pattern over a planar surface." (Def.'s 56.1 ¶ 18.) There are three small holes below the keypad. (Masters Decl., Ex. A.) Figures 3, 5 and 7 illustrate the rear of the phone, which appears to be featureless and adopts a rectangular periphery on each half. (Id.)

  2. The '349 Patent

  As diagrammed in Figures 1, 3 and 6, the '349 patent is a phone with a large, cylindrical hinge and an upper half which is considerably longer than the bottom half when closed. The upper half consists of "protruding sidewalls extending from the large hinge to the inwardly slanting end," (Defs.' Mem. in Supp. of Mot. for Summary J. at 16), as well as a recessed keypad comprised of 15 oval-shaped keys. An oval shaped earpiece depression is provided at the top of the inwardly slanting end of the upper half. (Id.) Page 7

  The bottom half is generally rectangular, with an oval shaped microphone depression. (Masters Decl., Ex. C.) The rear of the phone, shown in Figure 2, is also rectangular in shape and featureless. (Id.)

  B. Comparison of the '347 Patent and '349 Patent to NEC's Model 515 Phone

  The features of the '347 patent and the '349 patent, each viewed as a whole, create a visual impression that is strikingly dissimilar to the overall appearance of NEC's Model 515 phone.*fn3 As an initial matter, the '347 patent's general shape and curvature are quite distinctive when compared to the thin and consistently flat shape of each halves of the Model 515 phone. (Def.'s 56.1 ¶ 4.) In contrast to the '347 patent, the upper half of the Model 515 phone is covered almost entirely by a display that is an elongated rectangular shape. (Masters Decl., Ex. G.) Additionally, the earpiece on the Model 515 phone consists of a "small hole and slit formed in a central, trapezoidally shaped, depression" (Def.'s 56.1 ¶ 23), while the '347 patent provides a large oval shaped depression containing slit formed in a "central, rectangularly shaped, depression." (Id.)

  The keypad contained on the bottom half of the Model 515 phone is also distinctive in that the phone provides a large, circular multi-function button near the hinge, as well as four smaller buttons of various shapes. (Masters Decl., Ex. G.) The '347 patent, however, provides 21 keys of the same size and shape on the bottom half of the phone. (Id., Ex. A.) Moreover, while the rear of the '347 patent is featureless and Page 8 rectangular, the rear of the Model 515 phone is contoured at the ends and provides a silver, carrot-shaped emblem on the top half of the phone. (Id., Ex. G.)

  With respect to the '349 patent, the Court similarly finds strikingly dissimilar differences in the overall appearance of the phones. Significantly, the large, cylindrical hinge on the '349 patent is noticeably absent on the Model 515 phone. (Id.) While the upper half of the '349 patent inwardly slants towards the distal end, the Model 515 phone is, as stated above, flat and consistently thin. (Id.) Finally, the keypad is recessed and placed at the upper half of the '349 patent with circular keys of the same size and shape, while the keypad on the Model 515 phone is, as noted above, characterized by keys and buttons of various shapes and sizes. (Id.)

  Although plaintiff has attached a chart demonstrating the purported similarities between the '349 patent and the Model 515 phone (Pl.'s Contestation of Defendant's Mot. for Summary J., Ex. A), plaintiff attempts to prove too much by describing, for instance, the body shape of both phones as "Two piece." Ultimately, the only conceivable similarity between plaintiff's patents and the Model 515 phone is the fact that all of the designs may be characterized as flip-phones.*fn4 Nevertheless, it cannot be said by any measure that the resemblance "is such as to deceive such an observer, inducing him to purchase one supposing it to be the other." Gorman, 81 U.S. at 528. In light of the substantial differences in their overall appearances, the Court finds that no reasonable juror could find infringement of either the '347 patent or '349 patent by the Page 9 Model 515 phone based on the "ordinary observer" test.*fn5 Accordingly, the Court grants summary judgment to defendant on all of plaintiff's claims of patent infringement.*fn6

  III. Conclusion

  The Court grants defendant's motion for summary judgment [26], thereby dismissing this patent infringement in its entirety. The Clerk of the Court is directed to close this case.

  SO ORDERED. Page 10










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