Judge Failla “Closes the Book” on Patentholder’s Inducement Claim Against Law Firm
On December 10, 2021, Judge Katherine Polk Failla (S.D.N.Y.) dismissed with prejudice a pro se plaintiff’s claim that the law firm Bracewell LLP induced infringement of his patent by providing legal advice to a direct infringer. See Ottah v. Bracewell LLP, No. 21 Civ. 455, 2021 BL 472911 (S.D.N.Y. Dec. 10, 2021).
The plaintiff, Chikezie Ottah, holds a patent (U.S. Patent No. 7,152,840, or the “’840 Patent”) for a removable book holder device that can be attached to vehicles. Defendant Bracewell once represented the supplier of a camera mount used by the New York Metropolitan Transit Authority (MTA) in its buses and other vehicles, which Mr. Ottah believes infringes his patent. Mr. Ottah claimed that Bracewell indirectly infringed the ’840 Patent by providing legal advice to the supplier. This suit against Bracewell is one of many seeking to enforce the ’840 Patent against vehicle camera mounts and other similar devices, all unsuccessful.
As with previous judges, Mr. Ottah failed to convince Judge Failla that the defendant induced infringement of his patent. Judge Failla recognized that pro se pleadings are subject to a more liberal standard, and are ordinarily not dismissed with prejudice unless there is no possibility they could be succeed. But, even so, she found that Mr. Ottah could not state a plausible claim for either direct infringement against the camera mount supplier or indirect infringement against Bracewell.
As for direct infringement, Judge Failla found that Mr. Ottah’s claim was definitively barred by the “myriad court decisions reviewing and interpreting the claim limitations in the ’840 Patent to ‘require that the book holder have a removable mounting.’” See 2021 BL 472911 at *9 (quoting Ottah v. Verifone Sys., Inc., 524 F. App’x 627, 629 (2013) (emphasis added)); see also Ottah v. Fiat Chrystler, 884 F.3d 1135, 1140 (Fed. Cir. 2018) (upholding district court’s finding of non-infringement by maker of similar, non-removable camera holder). Because the camera mount in the MTA vehicles could not be removed without tools, Failla found, it did not infringe the ’840 Patent. Id. at *7. Relatedly, Failla found that Mr. Ottah did not impliedly state a claim under the doctrine of equivalents, because he had previously narrowed the scope of the ’840 Patent to include only devices removable without tools. Every other court to consider Mr. Ottah’s claims has found the same. See 2021 BL 472911 at *10–11 (citing cases).
Because Mr. Ottah did not state a claim for direct infringement, Failla found that he could not show Bracewell indirectly infringed the’840 Patent by inducing the camera mount maker to supply its product. Furthermore, as attorneys, Bracewell “cannot be held liable to third parties for injuries caused by services performed on behalf of a client or advice offered to that client, absent a showing of fraud, collusion, or a malicious or tortious act.” Id. at *11 (citing Farrah v. Hellen, No. 03 Civ. 4083 (JCF), 2004 WL 433802, at *5 (S.D.N.Y. Mar. 10, 2004)).