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United States District Court, S.D. New York

February 2, 2005.

TONY COLIDA, Plaintiff,

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


Tony Colida brought this pro se action for patent infringement against Sony Corporation of America ("Sony") and Sony Ericsson Mobile Communications (USA) Inc. ("Sony Ericsson") (collectively "defendants"), alleging that defendants' sales of its Z-600 mobile phones infringed on his U.S. Design Patent Nos. D321,347 ("'347 patent") and D321,349 ("'349 patent"). Following Sony's dismissal from this action,*fn1 the remaining defendant Sony Ericsson moved for sanctions pursuant to Rule 11 of the Federal Rules of Civil Procedure. Defendant now moves for summary judgment on all of plaintiff's claims. For the reasons set forth below, the Court grants defendant's motion for summary judgment in its entirety, thereby dismissing plaintiff's complaint. Defendant's motion for sanctions is denied.


  Defendant Sony Ericsson manufactures, markets and sells the Z-600 mobile phone (the "Z-600 phone"). (Pyon Decl. ¶ 2.) Colida is the putative owner of the '347 patent and '349 patent. (Def.'s 56.1 ¶ 2.) Page 2

  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." (Feinsilver Decl., Exs. T and U.) The claim attributed to the '347 patent provides "[t]he ornamental design for a portable handset telephone, as shown and described." (Id., Ex. T.) 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. U.) 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. (Id.)


  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 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 nonmoving party's case.") Page 3

  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. Page 4

  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:

  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 Page 5 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." (Feinsilver Decl., Exs. T and U (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).

  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. Page 6 (Feinsilver Decl., Exs. M and O.)*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. T.) 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 containing 21 keys of same size and shape deeply recessed between two S-shaped walls. (Id.) There are three small holes below the keypad. (Id.) 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. (Id., Ex. U.) The upper half slants inwards towards the top and has protruding sidewalls extending from the large hinge, as well as a recessed keypad comprised of 15 oval-shaped keys. (Id.) An oval shaped earpiece depression is provided at the top of the inwardly slanting end of the upper half. (Id.)

  The bottom half is generally rectangular, with an oval shaped microphone depression. (Id.) The rear of the phone, shown in Figure 2, is rectangular in shape and featureless. (Id.) Page 7

  B. Comparison of the '347 Patent and '349 Patent to Sony Ericsson's Z-600 Phone

  The features of the '347 patent and '349 patent, each viewed as a whole, create a visual impression that is strikingly dissimilar to the overall appearance of Sony Ericsson's Z-600 phone. 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 Z-600 phone. (Pyon Decl., Ex. A.)*fn3 In contrast to the '347 patent, the upper half of the Z-600 phone is covered almost entirely by an LCD color display that is an elongated rectangular shape with the Sony Ericsson logo above it. (Id.)

  Unlike the '347 patent, the keypad contained on the bottom half of the Z-600 phone provides a large, circular navigation button near the hinge, as well as four smaller volume buttons of various shapes. (Id.) 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 rectangular, the rear of the Z-600 phone is designed to include an external display, camera and the Sony Ericsson trademark and logo. (Id.)

  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 Z-600 phone. (Id.) While the upper half of the '349 patent inwardly slants towards the distal end, the Z-600 phone is, as Page 8 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 Z-600 phone is, as noted above, characterized by a large navigation button, as well as keys and buttons of various shapes and sizes. (Id.)

  Ultimately, the only conceivable similarity between plaintiff's patents and the Z-600 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 the '349 patent by the Z-600 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. Defendant's Motion for Sanctions

  Defendant has also moved for sanctions pursuant to Rule 11, charging that Colida's claims are "meritless and should not have been brought had a reasonably inquiry and analysis of his patent claims been performed as required by law." (Def.'s Mem. in Supp. of Mot. for Sanctions at 1.) Rule 11 applies to both attorneys and pro se litigants Page 9 in guarding against frivolous, vexatious or scurrilous lawsuits. Maduakolam v. Columbia University, 866 F.2d 53, 56 (2d Cir. 1989). Indeed, the fact that a litigant appears pro se "does not shield him from Rule 11 sanctions because one acting pro se has no license to harass others, clog the judicial machinery with meritless litigation, and abuse already overloaded court dockets." Malley v. New York City Bd. of Educ., 207 F. Supp.2d 256, 258 (S.D.N.Y. 2002) (internal citations and quotations omitted). Nevertheless, a court may take into consideration "special circumstances of litigants untutored in the law." Maduakolam, 866 F.2d at 56 (declining to impose sanctions on pro se litigant who was unversed in law).

  Ultimately, the decision to impose Rule 11 sanctions rests in the sound discretion of the court. Perez v. Posse Comitatus, 373 F.3d 221, 325 (2d Cir. 2004). While plaintiff's assertion of patent infringement claims in this and other cases*fn7 borders on the vexatious, the Court finds that imposing Rule 11 sanctions on plaintiff is unwarranted. Accordingly, the Court denies defendant's motion for sanctions.

  IV. Conclusion

  The Court grants defendant's motion for summary judgment [30], thereby dismissing this patent infringement in its entirety. The Court denies defendant's motion for sanctions [27]. The Clerk of the Court is directed to close this case. Page 10

  SO ORDERED Page 11







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