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Victor M. Serby v. First Alert

September 26, 2011


The opinion of the court was delivered by: Roslynn R. Mauskopf, United States District Judge.


Plaintiff Victor M. Serby, an attorney proceeding pro se, brought this action against defendants First Alert, Inc. ("First Alert") and its subsidiary BRK Brands, Inc. ("BRK"). Plaintiff alleges that defendants deal in various smoke detectors without payment of royalties to plaintiff, in breach of a pre-existing agreement reached in settlement of a 1995 patent infringement litigation. (Notice of Removal (Doc. No. 1) at 7--10 ("Compl.") ¶¶ 10--16.) Presently before the Court is defendants' joint motion for partial summary judgment pursuant to Rule 56 of the Federal Rules of Civil Procedure. (Defs.' Mot. for Summ. J. (Doc. No. 22) at 1.) Defendants claim that the manufacture and sale of two product lines at issue does not violate the settlement agreement as a matter of law.*fn1 (Id.) For the reasons set forth below, defendants' motion is GRANTED in part and DENIED in part.


The following facts are either undisputed or described in the light most favorable to the plaintiff. See Capobianco v. City of N.Y., 422 F.3d 47, 50 n.1 (2d Cir. 2001). Plaintiff is a professional engineer and the owner of U.S. Patent No. 5,444,434 (" 434 Patent"), entitled "Extended Life Smoke Detector." (Serby Decl. (Doc. No. 22-9) ¶ 3; Pl.'s 56.1 Cntrstmt. (Doc. No. 22-15) ¶ 2; U.S. Patent No. 5,444,434 (filed June 15, 1992).) As described more fully below, the 434 Patent involved smoke detectors with unopenable housing that contained 10-year lithium batteries. 434 Patent col.2 l.25--40. Defendant First Alert is the parent company of defendant BRK. (Defs.' 56.1 Stmt. (Doc. No. 22-6) ¶ 2.) BRK is a manufacturer and distributor of home safety and security products, including smoke detectors. (Defs.' Mot. for Summ. J. at 8 (Devine Decl.), at ¶ 2.) BRK sells smoke detectors under the "First Alert" brand name. (Id.)

I.Previous litigation and settlement

In 1995, plaintiff brought an action in the Eastern District of New York alleging, inter alia, that BRK's SA10YR model smoke detector infringed the 434 Patent. (Pl.'s 56.1 Cntrstmt. ¶ 3.) The SA10YR model smoke detector had a cover attached to a base that could not be removed and a battery compartment containing a ten-year lithium battery.*fn3 (Id. ¶¶ 9--11.) In April 1997, plaintiff and defendants entered into a Settlement, License and Mutual Release Agreement ("Settlement Agreement"), requiring defendants to pay plaintiff a 5% royalty based upon the net sales of the SA10YR model and other smoke detectors that "incorporate a lithium battery, meet all other limitations of Claims 5 or 10 of the ['434] Patent[, and] have a battery compartment that is unopenable as is defined in Claims 5 or 10 of the ['434] Patent." (Defs.' Mot. for Summ. J. Ex. A (Settlement Agreement) (Doc. No. 22-2), at ¶ 4.) The Settlement Agreement further stated that defendants may deal in lithium batteries for use in smoke detectors, as well as smoke detectors with openable battery compartments that require lithium batteries, without paying royalties. (Id.).

II.Disputed models

Defendants made royalty payments under the Settlement Agreement until 2008. (Compl. ¶ 12--13.) Defendants claim to have ceased production of the SA10YR smoke detector and contend that no models produced after 2007 required royalty payments under the Settlement Agreement.*fn4 (Devine Decl. ¶ 7; Defs.' 56.1 Stmt. ¶ 16.) Plaintiff asserts that at least five of the post-2007 models require royalty payments under the Settlement Agreement.*fn5 (Pl.'s 56.1 Cntrstmt. ¶ 17.) As described more fully below, plaintiff alleges that manufacture and sale of the SA340 model smoke detector and the "E-Z Access" line of smoke detectors without payment of royalties violates the terms of the Settlement Agreement. The "E-Z Access" models contain a battery compartment that slides or pivots open, but can be locked by inserting optional "locking pins." (Id. ¶ 25.) The SA340 model smoke detector attaches to the mounting device and may be opened by applying pressure to three latches. (Serby Decl. Ex. 1 (SA340 User's Manual) (Doc. No. 22-10), at 5.) The parties disagree with respect to the extent to which the powercell within the SA340's internal battery compartment is accessible. (See Defs.' 56.1 Stmt. ¶¶ 34--36; Pl.'s 56.1 Cntrstmt. ¶¶ 34--36.)

In August 2009, plaintiff filed this action for breach of the Settlement Agreement in Kings County Supreme Court seeking $5 million in damages. (Compl. ¶ 18.) Defendants removed the action to this Court pursuant to 28 U.S.C. § 1446(a) on the basis of diversity jurisdiction under 28 U.S.C. § 1332. (Notice of Removal (Doc. No. 1) ¶ 5). Defendants answered, and the parties proceeded with discovery limited to the issues presented in the instant motion: whether the SA340 and "E-Z Access" models are "unopenable" under the Settlement Agreement.


Summary judgment is appropriate when the pleadings, depositions, interrogatories, admissions, and affidavits demonstrate that there are no genuine issues of material fact in dispute and that one party is entitled to judgment as a matter of law. See Fed. R. Civ. P. 56(c); Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986). A genuine issue of material fact exists "if the evidence is such that a reasonable jury could return a verdict for the nonmoving party." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986).

In deciding a summary judgment motion, a district court must draw all reasonable inferences in favor of the nonmoving party. See id. at 249 (citing Adickes v. S.H. Kress & Co., 398 U.S. 144, 158--59 (1970)); Castle Rock Entm't, Inc. v. Carol Publ'g Grp., Inc.,150 F.3d 132, 137 (2d Cir. 1998). The court must not "weigh the evidence but is instead required to view the evidence in the light most favorable to the party opposing summary judgment, to draw all reasonable inferences in favor of that party, and to eschew credibility assessments." Amnesty Am. v. Town of W. Hartford, 361 F.3d 113, 122 (2d Cir. 2007) (quoting Weyant v. Okst, 101 F.3d 845, 854 (2d Cir. 1996)). Any evidence in the record of a material fact from which an inference could be drawn in favor of the non-moving party precludes summary judgment. See Castle Rock Entm't, 150 F.3d at 137.

Once the movant has demonstrated that no genuine issue of material fact exists, then "the nonmoving party must come forward with 'specific facts showing that there is a genuine issue for trial.' " Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 587 (quoting Fed. R. Civ. P. 56(e)) (emphasis in original). However, there must exist more than mere "metaphysical doubt as to the material facts" to defeat a summary judgment motion. Id. at 586. Instead, the non-moving party must present "concrete evidence from which a reasonable juror could return a verdict in his favor." Anderson, 477 U.S. at 256. Only disputes over material facts "that might affect the outcome of the suit under the governing law" will properly preclude the entry of summary judgment. Id. at 248; see also Matsushita, 475 U.S. at 586.

Ordinarily, the complaint of a pro se plaintiff must be liberally construed and held to a less rigorous standard of review than pleadings drafted by an attorney. Hughes v. Rowe, 449 U.S. 5, 9 (1980). However, plaintiff is an experienced attorney licensed to practice in this Court, as well as the Southern District of New York, the District of New Jersey, the District of Connecticut, the Court of Appeals for the Federal Circuit, and the Second Circuit Court of Appeals. (Defs.' Mot. for Summ. J. Ex. K (Conf. Tr., Jan. 14, 2010) ("Conf. Tr.") (Doc. No. 22-4), at 2; Serby Decl. ΒΆ 4.) Although the Court normally will hold the pleadings of a pro se plaintiff to a less rigorous standard of review, "as an experienced attorney the plaintiff's ...

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