The opinion of the court was delivered by: Honorable Paul A. Crotty, United States District Judge
MEMORANDUM OPINION & ORDER
Pro se Plaintiff Tony Colida ("Plaintiff" or "Colida") sued Defendant Sony Ericsson Mobile Communications USA, Inc. ("Defendant" or "Sony Ericsson") for infringement of United States Design Patent No. 321,347 ("'347 patent"),*fn1 a cellular phone design. Specifically, he alleges that Sony Ericsson infringed his patent by manufacturing and marketing its model Z-500 cellular phone ("Z-500"),*fn2 resulting in damages of approximately $1,000,000. When Colida brought this action on January 11, 2006, he was also granted in forma pauperis status.*fn3 On April 4, 2006, Defendant moved to dismiss Plaintiff's complaint on various grounds.
For the reasons stated below, the Court holds that Plaintiff's claim is barred by principles of res judicata and grants Defendant's motion to dismiss.
Colida is the owner of the now-expired '347 patent for a "Portable Cellular Handset Telephone," issued by the United States Patent Commission on November 5, 1991. Defendant Sony Ericsson manufactures, markets and sells cellular phones, including the Z-500 model at issue. Colida is no stranger to patent infringement litigation. He has previously filed at least twenty lawsuits against Sony Ericsson*fn4 and other cellular phone manufacturers*fn5 alleging patent infringement; no court has ever found in his favor on such a claim. Recently, the Court of Appeals for the Federal Circuit sanctioned Colida for "repeatedly filing non-meritorious infringement complaints and then repeatedly prosecuting non-meritorious appeals." Colida v. Sanyo N. Am. Corp., Civ. No. 04-1287 (Fed. Cir. 2004) (nonprecedential opinion). The current case is the second action Colida has filed against Sony Ericsson for infringement of the '347 patent. In the first case, Colida alleged that Sony Ericsson's model Z-600 cellular phone ("Z-600") infringed the '347 patent. United States District Court Judge Richard Holwell granted summary judgment in favor of Sony Ericsson and stated that Plaintiff's allegations of patent infringement bordered "on the vexatious." Colida v. Sony Corp. of Am., et al., Civ. No.04 CV 2093 (RJH), 2005 WL 267231 (S.D.N.Y. Feb. 3, 2005). Defendant argues that res judicata bars Colida from bringing the instant action because the Z-500 is essentially the same product as the Z-600, which Judge Holwell found to be non-infringing. Upon reviewing the applicable case law and the two products, the Court agrees.
The doctrine of res judicata, or claim preclusion, provides that a final judgment in an action precludes the parties from litigating issues that were already litigated or could have been raised in that action. See Interoceanica Corp. v. Sound Pilots, Inc., 107 F.3d 86, 90 (2d Cir. 1997). In assessing whether res judicata applies, "[i]t must first be determined that the second suit involves the same 'claim'-or 'nucleus of operative fact'-as the first suit." Interoceanica, 107 F.3d at 90 (quoting Apparel Art Int'l, Inc. v. Amertex Enters. Ltd., 48 F.3d 576, 583 (1st Cir. 1995)). This determination, in turn, involves consideration of whether the underlying facts are "related in time, space, origin, or motivation, whether they form a convenient trial unit, and whether their treatment as a unit conforms to the parties' expectations or business understanding or usage." Id. at 90-91 (quoting Restatement (Second) of Judgments § 24(b) (1982)).
The Second Circuit narrowly reads the scope of a "claim" for purposes of applying claim preclusion. See Interoceanica, 107 F.3d at 90-92 (citing Foster v. Hallco Mfg. Co., Inc., 947 F.2d 469, 477 n.7 (Fed. Cir. 1991). This view accords with that of the United States Court of Appeals for the Federal Circuit. In Foster, the court held that failure to raise challenges to the validity of a patent in prior litigation does not preclude assertion of those defenses in subsequent litigation involving the same patent, where different products are at issue. See 947 F.2d at 478-79. Furthermore, the relevant inquiry in applying res judicata principles is whether the claim of infringement is identical, not whether the alleged basis for the claim (i.e., the patent) is the same. See id. Thus, "for claim preclusion to apply [where the same patent underlies both lawsuits], the devices in the two suits must be essentially the same." HCC, Inc. v. R H & M Mach. Co., 39 F. Supp. 2d 317, 323-24 (S.D.N.Y. 1999). Since the action before Judge Howell involved the Z-600 phone, for claim preclusion to apply, the Z-500 phone at issue must be "essentially the same," or any changes must be merely "colorable" or "unrelated to the limitations in the claims of the patent." Id. at 1295.
Judge Howell granted summary judgment in favor of Sony Ericsson where Colida alleged that Sony Ericsson's Z-600 cellular phone infringed the '347 patent. In a detailed comparison of the Z-600 model to Defendant's '347 patent and another of Defendant's patents, Judge Holwell found that 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," and given the clear lack of similarity, admonished that the complaint "border[ed] on the vexatious."*fn6 Sony Corp., 2005 WL 267231, at *8.
A comparison of the Z-500 phone and the Z-600 phone reveal that they are "essentially the same" for the purposes of claim preclusion.*fn7 Indeed, they are so near identical that Judge Holwell's reasoning as to why the Z-600 does not infringe the '347 patent is equally applicable to the Z-500:
The features of the '347 patent.create a visual impression that is strikingly dissimilar to the overall appearance of Sony Ericsson's Z-600 phone.[T]he '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. 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. 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. The '347 patent, however, provides 21 keys of the same size and shape on the bottom half of the phone. 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. 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. 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." Gorham Mfg. Co. v. White, 81 U.S. 511, 528 (1871).
Sony Corp., 2005 WL 267231, at *3-4 (internal citations omitted). The minuscule difference between the Z-500 and Z-600 involves the location of the LCD screen and camera on the outside of the phones. The '347 patent contains neither camer nor LCD features, however, and so the changes from the Z-600 to the Z-500 phone are "unrelated to the limitations in the claims of the patent," and do not prevent the application of claim preclusion. See Hallco Mfg. Co., Inc. v. Foster, 256 F.3d 1290, 1294 (Fed. Cir. 2001). Plaintiff has already had a full and fair opportunity to litigate his "claim" against a product which is essentially the same as the Z-500 model phone. Accordingly, the doctrine of res judicata precludes him from litigating issues in this action that were previously adjudicated.
For the foregoing reasons, Defendant's motino to dismiss is GRANTED. The Clerk of the Court is ...