Chikezie Ottah v. Bracewell Llp

N OTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
CHIKEZIE OTTAH,
Plaintiff-Appellant
v.
BRACEWELL LLP,
Defendant-Appellee
______________________
2022-1876
______________________
Appeal from the United States District Court for the
Southern District of New York in No. 1:21-cv-00455-KPF,
Judge Katherine Polk Failla.
______________________
Decided: November 8, 2022
______________________
CHIKEZIE O TTAH , Elmont, NY, pro se.
D AVID J OHN BALL , Bracewell LLP, New York, NY, for
defendant-appellee.
______________________
Before M OORE, Chief Judge, L OURIE and P ROST , Circuit
Judges.
L OURIE, Circuit Judge.
Case: 22-1876 Document: 26 Page: 1 Filed: 11/08/2022

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OTTAH v. BRACEWELL LLP 2
Chikezie Ottah appeals from a decision of the United
States District Court for the Southern District of New York
granting Bracewell LLP’s (“Bracewell’s”) motion to dismiss
for failure to state a claim of patent infringement and dis-
missing Ottah’s complaint with prejudice. Bracewell is a
law firm representing an entity asserted to have been in-
volved in infringing activity. See Ottah v. Bracewell LLP,
No. 21 Civ. 455, 2021 WL 5910065 (S.D.N.Y. Dec. 10, 2021)
(“Decision”). We affirm.
BACKGROUND
Ottah owns U.S. Patent 7,152,840 (“the ’840 patent”),
which is directed to a “book holder removably attachable to
a vehicle or structure such as a stroller, walker, wheelchair
or car seat for mobile applications.” ’840 patent, abstract;
S.A. 94.1 Claim 1 of the ’840 patent reads as follows:
1. A book holder for removeable attachment, the book
holder comprising:
a book support platform, the book support platform
comprising a front surface, a rear surface and a plu-
rality of clamps, the front surface adapted for sup-
porting a book, the plurality of clamps disposed on
the front surface to engage and retain the book to
the book support platform, the rear surface sepa-
rated from the front surface;
a clasp comprising a clip head, a clip body and a pair
of resilient clip arms, the clip arms adjustably
mounted on the clip head, the clip head attached to
the clip body; and
an arm comprising a first end and a second end and
a telescoping arrangement, the clasp on the first
end, the second end pivotally attached to the book
1 “S.A.” refers to the Supplemental Appendix filed
with Bracewell’s brief.
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OTTAH v. BRACEWELL LLP 3
support platform, the telescoping arrangement in-
terconnecting the first end to[] the second end, the
clasp spaced from the book support platform
wherein the book holder is removably attached and
adjusted to a reading position by the telescoping ar-
rangement axially adjusting the spaced relation be-
tween the book support platform and the clasp and
the pivotal connection on the book support platform
pivotally adjusting the front surface with respect to
the arm.
’840 patent col. 6 ll. 14–38.
In March 2014, Ottah sent a letter to the New York
Metropolitan Transit Authority (“MTA”) alleging that a
camera mounting system he had observed on MTA buses
and other vehicles infringed the ’840 patent. S.A. 37. In
August 2014, a Bracewell partner sent a letter to Ottah on
behalf of Bracewell’s client, UTC Building & Industrial
Systems (“UTC”), the entity responsible for supplying to
MTA the mobile camera mounting systems that Ottah had
identified in his letter. S.A. 84–86. In the August 2014
letter, Bracewell refuted Ottah’s claims that UTC or MTA
should have acquired a license to the ’840 patent for the
camera systems and highlighted that at least two federal
courts had already found that the ’840 patent did not cover
“a camera mounting system [that] is fixed in place and can-
not be removed without tools.” Id.; See Decision, 2021 WL
5910065, at *2 (compiling unsuccessful lawsuits brought by
Ottah relating to alleged infringement of the ’840 patent).
On January 15, 2021, Ottah sued Bracewell in the Dis-
trict Court for the Southern District of New York, alleging
infringement of the ’840 patent. Bracewell filed a motion
to dismiss on July 23, 2021. The court granted the motion,
dismissing Ottah’s infringement claims with prejudice.
Specifically, the court held that the plain terms of the ’840
patent contradicted Ottah’s proffered construction of the
claim language, and that similar arguments had been
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OTTAH v. BRACEWELL LLP 4
unequivocally rejected by multiple courts that had already
adjudicated the scope of the ’840 patent. Decision, 2021
WL 5910065, at *7.
The district court separately dismissed Ottah’s claim
for induced patent infringement under 35 U.S.C. § 271(b),
that claim being based on Bracewell’s failure to acquire a
license to the ’840 patent for its then-client UTC. In its
explanation, the court held that Ottah had failed to state a
claim for direct infringement, which necessarily foreclosed
an inducement claim. The court further held that Brace-
well could not be held liable for legal advice that it rendered
to UTC, absent allegations of misconduct that were not pre-
sent in the complaint. Id. at *10. The court dismissed the
action with prejudice after determining that any amend-
ment to the complaint, although not requested by Ottah,
would be futile. Id. at *11.
Ottah appeals the district court’s grant of Bracewell’s
motion to dismiss. We have jurisdiction under 28 U.S.C.
§ 1295(a)(1).
D ISCUSSION
We review a grant or denial of a motion to dismiss by
applying the law of the regional circuit. See Lyda v. CBS
Corp., 838 F.3d 1331, 1337 (Fed. Cir. 2016). In the Second
Circuit, “[t]o survive a motion to dismiss under Fed. R. Civ.
P. 12(b)(6), a complaint must allege sufficient facts, taken
as true, to state a plausible claim for relief.” Johnson v.
Priceline.com, Inc., 711 F.3d 271, 275 (2d Cir. 2013) (citing
Bell Atl. Corp. v. Twombly, 550 U.S. 544, 555–56 (2007)).
A plaintiff must plead “factual content that allows the
court to draw the reasonable inference that the defendant
is liable for the misconduct alleged” to satisfy the plausibil-
ity standard. Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009).
For a pro se litigant, the pleadings must be “con-
strue[d] . . . broadly, and interpret[ed] . . . ‘to raise the
strongest arguments that they suggest.’” Cruz v. Gomez,
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OTTAH v. BRACEWELL LLP 5
202 F.3d 593, 597 (2d Cir. 2000) (quoting Graham v. Hen-
derson, 89 F.3d 75, 79 (2d Cir. 1996)). But a pro se litigant’s
factual allegations must still “be enough to raise a right to
relief above the speculative level.” Twombly, 550 U.S. at
555.
To prove direct infringement, “one or more claims of the
patent [must] read on the accused device literally or under
the doctrine of equivalents.” Cross Med. Prods., Inc. v.
Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1310 (Fed.
Cir. 2005). A finding of literal patent infringement “re-
quires that each and every limitation set forth in a claim
appear in an accused product.” V-Formation, Inc. v. Benet-
ton Grp. SpA, 401 F.3d 1307, 1312 (Fed. Cir. 2005). But,
under the doctrine of equivalents, “a product or process
that does not literally infringe upon the express terms of a
patent claim may nonetheless be found to infringe if there
is ‘equivalence’ between the elements of the accused prod-
uct or process and the claimed elements of the patented in-
vention.” DePuy Spine, Inc. v. Medtronic Sofamore Danek,
Inc., 469 F.3d 1005, 1016 (Fed. Cir. 2006) (citing Warner-
Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 21
(1997)).
Under 35 U.S.C. § 271(b), “[w]hoever actively induces
infringement of a patent shall be liable as an infringer.”
But finding liability for induced infringement requires a
predicate finding of direct patent infringement. See Vanda
Pharms Inc. v. W.-Ward Pharms. Int’l Ltd., 887 F.3d 1117,
1129 (Fed. Cir. 2018).
On appeal, it appears that Ottah argues that Bracewell
is liable for direct and induced patent infringement under
35 U.S.C. § 271.
As a threshold matter, Bracewell contends that Ottah’s
allegations do not satisfy the Twombly plausibility stand-
ard and that Ottah’s complaint contains no plausible alle-
gations that Bracewell, a law firm, infringed the ’840
patent. Even interpreting Ottah’s pleadings “broadly. . . to
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OTTAH v. BRACEWELL LLP 6
raise the strongest arguments that they suggest,” Cruz,
202 F.3d at 597, we agree with Bracewell, but address the
direct and induced infringement arguments by a pro se ap-
pellant anyway.
Regarding Ottah’s apparent assertion of direct in-
fringement of the ’840 patent, Bracewell responds that the
district court correctly held that the plain language of the
claims does not literally cover the MTA device identified by
Ottah. Bracewell contends that the ’840 patent’s single
claim describes a “book holder for removeable attachment”
that includes “a book support platform comprising a front
surface, a rear surface and a plurality of clamps, the front
surface adapted for supporting a book.” ’840 patent, col. 6
ll. 14–18. Bracewell correctly highlights that the allegedly
infringing device is a camera mounting system which is
necessarily not the book holder described in the claim. We
agree with Bracewell.
The single claim in the ’840 patent is clearly directed
to “a book holder,” which, by its plain language, does not
cover a camera mounting system, such as the allegedly in-
fringing system used by MTA, or a “holder” that can hold
any object other than a book. Claim 1 of the ’840 patent
clearly states that the book holder is for “removeable at-
tachment,” ’840 patent, col. 6 l. 14, and the removable na-
ture of the book holder was emphasized by Ottah during
prosecution in response to a prior art rejection. See Ottah
v. VeriFone Sys., Inc., 524 F. App’x 627 (Fed. Cir. 2013). In
contrast, the district court found, and Bracewell asserts,
that the allegedly infringing camera mounting system is
fixed and cannot be easily attached or removed. Thus, the
allegedly infringing system is neither (1) a book holder nor
(2) secured by “removeable attachment,” and so “each and
every limitation set forth in the claim” does not appear in
the accused product. V-Formation, 401 F.3d at 1312. The
claim of literal infringement must fail. We accordingly af-
firm the court’s holding that Ottah’s claim of literal patent
infringement fails as a matter of law.
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OTTAH v. BRACEWELL LLP 7
Bracewell further asserts that Ottah’s apparent claim
of direct patent infringement also fails under the doctrine
of equivalents. Again, we agree with Bracewell.
The doctrine of equivalents is limited by prosecution
history estoppel, under which a patentee cannot reclaim
through the doctrine of equivalents that which was surren-
dered or disclaimed in order to obtain the patent. Festo
Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S.
722, 734 (2002); Loral Fairchild Corp. v. Sony Corp., 181
F.3d 1313, 1322 (Fed. Cir. 1999).
As noted by Bracewell, we have explained in a related
case brought by Ottah, that, in response to a prior art re-
jection during prosecution of the ’840 patent, Ottah empha-
sized that the patentability of the single claim in the ’840
patent was based on the removable nature of the book
holder. Ottah, 524 F. App’x at 627. Ottah is estopped, now
as he was then, from broadening the scope of claim 1 to
cover fixed mounts for any device, including the allegedly
infringing camera mount systems, because he expressly
disclaimed this feature during prosecution. Accordingly,
we affirm the district court’s holding that, even under the
doctrine of equivalents, Ottah’s direct infringement claim
fails.
Regarding Ottah’s apparent argument of induced in-
fringement, Bracewell responds that the district court was
correct in holding that Bracewell, a law firm, cannot be
held liable for induced patent infringement based on legal
advice that it rendered to its then-client UTC absent a
showing of “either malicious intent or personal interest.”
Ray Legal Consulting Grp. v. DiJoseph, No. 13 Civ. 6867,
2016 WL 1451547, at *8 (S.D.N.Y. Apr. 12, 2016). We agree
with Bracewell.
Here, we have affirmed the district court’s grant of
Bracewell’s motion to dismiss for failure to state a claim of
direct infringement of the ’840 patent either literally or un-
der the doctrine of equivalents. Without a “predicate
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OTTAH v. BRACEWELL LLP 8
finding” of direct infringement, there can be no finding of
induced infringement, and so Ottah’s induced infringement
claim likewise fails. Finally, we affirm the district court’s
finding that Ottah’s complaint contains no allegations of
malicious intent or personal interest by Bracewell that
would constitute a plausible allegation of any wrongful con-
duct by Bracewell, and that any attempt by Ottah to amend
the complaint would be futile.
CONCLUSION
We have considered Ottah’s remaining arguments but
find them unpersuasive. For the forgoing reasons, we af-
firm the district court.
AFFIRMED
COSTS
No costs.
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