No Two Bites at the Apple: Judge Gorenstein Finds Claim Preclusion Prevents Lawsuit

Patterson Belknap Webb & Tyler LLP

Patterson Belknap Webb & Tyler LLP

On June 21, 2022, Judge Gabriel W. Gorenstein (S.D.N.Y.) granted Defendant Verifone System Inc.’s (“Verifone”) motion to dismiss the complaint of Plaintiff Chikezie Ottah (“Ottah”) yet again. Ottah alleged that Verifone infringed claim 1 of U.S. Patent No. 7,152,840 (“the ’840 patent”) directed to a “removable” book holder.

Ottah previously filed several patent infringement lawsuits alleging infringement of the ’840 patent, including a lawsuit against Verifone in September 2011. In that case, the Court granted Verifone’s motion for summary judgment of non-infringement because, among other things, the accused mounts for electronic displays were neither removable nor a book holder. Additionally, the Court found that Ottah was estopped from arguing Verifone’s products infringed under the doctrine of equivalents due to prosecution history estoppel. Specifically, the Court found that because Ottah had argued that the novelty of his invention was the “quick removal and attachment without tools,” he could not now argue that a device with “permanent rivet attachments” is equivalent. Ottah appealed the prior decision to the Court of Appeals for the Federal Circuit, and the decision was affirmed. In 2015, Ottah filed a motion to re-open the case, and the Court denied the motion.

On November 22, 2021, Ottah filed a new patent infringement lawsuit against Verifone, but did not provide any specific details as to the allegedly infringing product. Verifone filed a motion to dismiss, arguing that Ottah was precluded from bringing suit. The Court agreed. Under the doctrine of claim preclusion, if a previous action was adjudicated on the merits, the previous action involved the same Plaintiff (or those in privity with them), and the claims were or could have been raised in the prior action, claim preclusion applies. Specifically, in a patent dispute, claim preclusion applies if the case involves the same patents and the accused products in the lawsuits are “essentially the same.” The Court found that “claim preclusion applies here because Ottah advances the same infringement claim that this Court previously adjudicated… [and] found no infringement of the ’840 Patent and granted summary judgment to Verifone.” The previous case was adjudicated on the merits, the matter involves the same Plaintiff, and the “complaint gives every indication that the devices are the same for purposes of Verifone’s invocation of claim preclusion.” The Verifone products at issue “consist of fixed mounts installed in taxicabs, and the record does not indicate any features distinguishing them from one another.”

The case is Ottah v. Verifone Sys., Inc., Case No. 21-cv-9645-AT (S.D.N.Y. June 21, 2022)

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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