Chikezie Ottah v. Verifone System Inc.

N OTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
CHIKEZIE OTTAH,
Plaintiff-Appellant
v.
VERIFONE SYSTEM INC.,
Defendant-Appellee
______________________
2023-1219
______________________
Appeal from the United States District Court for the
Southern District of New York in No. 1:21-cv-09645-AT-
GWG, Judge Analisa Torres.
______________________
Decided: October 18, 2023
______________________
CHIKEZIE O TTAH , Elmont, NY, pro se.
CAROLYN CHANG, Marton Ribera Schumann & Chang
LLP, San Francisco, CA, for defendant-appellee.
______________________
Before REYNA, HUGHES , and STARK, Circuit Judges.
P ER CURIAM .
Case: 23-1219 Document: 48 Page: 1 Filed: 10/18/2023

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OTTAH v. VERIFONE SYSTEM INC. 2
Chikezie Ottah appeals a decision from the United
States District Court for the Southern District of New York
dismissing his patent infringement claim as barred by
claim preclusion. For the following reasons, we affirm.
I
Mr. Ottah is the inventor and owner of U.S. Patent No.
7,152,840 (“’840 patent”), titled “Book Holder,” which is di-
rected to “a removable book holder assembly for use by a
person in a protective or mobile structure such as a car
seat, wheelchair, walker, or stroller.” ’840 patent at 1:6-9.
On September 2, 2011, Mr. Ottah filed suit in the Southern
District of New York against VeriFone Systems, Inc. (“Ver-
ifone”), alleging that Verifone’s mounts for electronic dis-
play screens used in New York City taxi cabs infringed the
’840 patent. The district court granted summary judgment
of non-infringement as to literal infringement and infringe-
ment under the doctrine of equivalents. See Ottah v. Veri-
Fone Sys., Inc., No. 1:11-cv-06187, 2012 WL 4841755, at *2-
4 (S.D.N.Y. Oct. 10, 2012) (“2012 decision”). Mr. Ottah ap-
pealed the 2012 decision and we affirmed. See Ottah
v. VeriFone Sys., Inc., 524 F. App’x 627, 629-30 (Fed. Cir.
2013).
Eight years later, on November 22, 2021, Mr. Ottah
filed a new suit against Verifone, again in the Southern
District of New York and again alleging infringement of the
’840 patent by Verifone’s mounts used in New York City
taxi cabs. Verifone filed a motion to dismiss based on the
doctrine of claim preclusion. On July 11, 2022, the district
court granted the motion to dismiss. See Ottah v. Verifone
Sys. Inc., No. 1:21-cv-09645, 2022 WL 3031119, at *1
(S.D.N.Y. July 11, 2022).
Mr. Ottah timely appealed. We have jurisdiction pur-
suant to 28 U.S.C. § 1295(a)(1).
II
We review a district court’s grant of a motion to dismiss
under the standards applicable in the regional circuit in
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OTTAH v. VERIFONE SYSTEM INC. 3
which the district court is located, which here is the Second
Circuit. See In re PersonalWeb Techs. LLC, 961 F.3d 1365,
1374 (Fed. Cir. 2020). A dismissal order based on claim
preclusion is reviewed de novo. See Simmons v. Trans Ex-
press, Inc., 16 F.4th 357, 360 (2d Cir. 2021); accord Hallco
Mfg. Co. v. Foster, 256 F.3d 1290, 1294 (Fed. Cir. 2001).1
Claim preclusion bars a cause of action when (1) a prior
suit resulted in a judgment on the merits, (2) the second
suit involves the same parties as the prior suit or parties
in privity with them, and (3) the second suit is “based on
the same cause of action” as the prior suit. Parklane Hosi-
ery Co. v. Shore, 439 U.S. 322, 326 n.5 (1979); see also
Brown Media Corp. v. K&L Gates, LLP, 854 F.3d 150, 157
(2d Cir. 2017).
Determining whether multiple causes of action for pa-
tent infringement are the same is an issue “particular to
patent law” that we analyze under Federal Circuit law.
Hallco, 256 F.3d at 1294. For patent infringement cases,
causes of action are the same if the accused products are
“essentially the same” and “the same patents are involved
in both suits.” PersonalWeb, 961 F.3d at 1375.
III
The district court correctly concluded that the require-
ments for application of claim preclusion are satisfied here.
Both lawsuits involved the same parties: Mr. Ottah and
Verifone. The district court’s 2012 decision granting sum-
mary judgment of non-infringement is a “judgment on the
merits” – it addressed all arguments made by the parties,
including by concluding that Mr. Ottah had failed to
1 Our precedent applies the law of the regional cir-
cuit to the general principles of claim preclusion and Fed-
eral Circuit law to the patent-specific portions of claim
preclusion (i.e., whether patent infringement causes of ac-
tion are the same). See Acumed LLC v. Stryker Corp., 525
F.3d 1319, 1323 (Fed. Cir. 2008).
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OTTAH v. VERIFONE SYSTEM INC. 4
adduce sufficient evidence to sustain a judgment of in-
fringement, and closed the case. See 2012 decision at *4
(“Accordingly, the VeriFone mounts do not infringe the ’840
patent and summary judgment is granted.”). Both law-
suits also involve the same cause of action since both allege
infringement of the ’840 patent by the same taxi display
mount product. Compare Appellee Appx. 29 (2021 com-
plaint), with Appellee Appx. 149 (2011 complaint). Since
Mr. Ottah’s later-filed suit involves the same parties, as-
serts the same cause of action, and follows a final judgment
on that cause of action, we agree with the district court that
claim preclusion bars adjudication of Mr. Ottah’s 2021 law-
suit.
Even if Mr. Ottah raised new arguments or infringe-
ment theories in his 2021 complaint, an issue we need not
– and do not – decide, he was still barred from bringing a
second claim alleging infringement of the same patent ac-
cusing the same product. See PersonalWeb, 961 F.3d at
1375 (“Regardless of the number of substantive theories
available . . . a party may not split a single claim into sep-
arate grounds of recovery and raise those separate grounds
in successive lawsuits.”). Therefore, any new arguments or
theories, even if Mr. Ottah asserted them, do not provide a
meritorious basis to avoid application of claim preclusion.
For the foregoing reasons, the district court properly
concluded that Mr. Ottah’s cause of action was barred by
claim preclusion.
IV
The district court’s dismissal of Mr. Ottah’s complaint
is affirmed.
AFFIRMED
COSTS
No costs.
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