DCT
1:11-cv-06187
Ottah v. VeriFone System Inc
Key Events
Amended Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Chikezie Ottah (New York), Pro Se
- Defendant: VeriFone System Inc. (California)
- Plaintiff’s Counsel: Pro Se
- Case Identification: 1:11-cv-06187, S.D.N.Y., 11/15/2011
- Venue Allegations: Plaintiff alleges that the events giving rise to the claim occurred in New York City, where the accused products are installed in taxi cabs.
- Core Dispute: Plaintiff alleges that Defendant’s in-vehicle payment and display systems infringe U.S. and Australian patents related to a mobile and adjustable holder for books or electronic devices.
- Technical Context: The technology concerns mechanical assemblies designed to securely and adjustably mount a viewing surface, such as a book or electronic screen, within a mobile environment like a vehicle or stroller.
- Key Procedural History: The complaint attaches pre-suit correspondence in which Plaintiff notified Defendant of the alleged infringement. Defendant responded by denying infringement, asserting the patent is directed to a "book holder," and requesting a claim chart identifying the specific products and mapping claim elements to their functions.
Case Timeline
| Date | Event |
|---|---|
| 2002-08-07 | AU Patent 2003231638 Priority Date |
| 2003-04-24 | U.S. Patent 7,152,840 Priority Date (Application Filing) |
| 2006-12-26 | U.S. Patent 7,152,840 Issue Date |
| 2008 | Alleged Infringement Begins |
| 2009-12-10 | AU Patent 2003231638 Accepted Date |
| 2011-01-05 | Defendant VeriFone sends letter responding to infringement notice |
| 2011-11-15 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,152,840, *"BOOK HOLDER"* (Issued Dec. 26, 2006)
The Invention Explained
- Problem Addressed: The patent addresses the lack of adequate book holders for mobile use by young children or mobility-limited adults, noting that conventional holders are primarily for indoor, stationary use and lack easy, quick attachment to structures like a wheelchair or stroller (’840 Patent, col. 1:46-59).
- The Patented Solution: The invention is a removable and highly adjustable holder. It consists of a platform for holding a book, connected via an adjustable arm to a clasp that attaches to a mobile structure (’840 Patent, Abstract). The arm is described as having telescoping, rotational, and pivotal adjustments, allowing the platform to be positioned for optimal viewing by the user (’840 Patent, col. 2:8-23; Fig. 1).
- Technical Importance: The invention sought to provide a versatile and portable solution for reading or using devices in environments where a person is mobile but seated, such as in a stroller or car seat (’840 Patent, col. 1:5-8).
Key Claims at a Glance
- The complaint does not specify asserted claims, but pre-suit correspondence focuses on Claim 1, which is the sole independent claim (Compl. p. 57-58).
- Independent Claim 1 requires:
- A book support platform with a front surface, a rear surface, and a plurality of clamps on the front surface to hold a book.
- A clasp comprising a clip head, a clip body, and a pair of resilient clip arms adjustably mounted on the clip head.
- An arm with a first end, a second end, and a telescoping arrangement.
- The arm connects the clasp (at its first end) to the book support platform (to which its second end is pivotally attached).
- The entire holder is removably attached and adjusted via the telescoping arrangement and pivotal connection.
Multi-Patent Capsule: Australian Patent No. AU 2003231638 B2
- Patent Identification: AU 2003231638 B2, "Book Holder," Accepted Dec. 10, 2009.
- Technology Synopsis: As the Australian counterpart to the ’840 Patent, this document describes a book holder assembly for removable attachment to objects like a pram, stroller, or car seat (’638 Patent, p. 29, lines 1-4). The invention aims to overcome the limitations of stationary book holders by providing a mobile, adjustable solution for children or handicapped persons, and discloses that the platform can be used to support items like audio/video equipment or computers (’638 Patent, p. 27, lines 5-10; p. 31, lines 26-31).
- Asserted Claims: The complaint mentions "Claim 16," which specifies that the object of attachment can be a "car seat or a wheelchair" (Compl. p. 63; ’638 Patent, p. 41). Claim 1 is the independent claim.
- Accused Features: The complaint accuses Defendant's "audio/video holder" installed in the back of taxi cab seats (Compl. p. 3).
III. The Accused Instrumentality
- Product Identification: The accused products are the "Verifone mobile audio/video, TV holder" systems installed in New York City taxi cabs (Compl. p. 3, 68). The complaint includes photographs of the accused systems, which consist of a passenger-facing display screen and an adjacent payment terminal (Compl. p. 13-15).
- Functionality and Market Context: The accused devices are described as providing audio/video content and having computer-like capabilities, such as browsing, email, and entertainment (Compl. p. 4). The complaint alleges that Defendant has multi-billion dollar contracts to equip taxi fleets with these systems (Compl. p. 4). A photograph provided in the complaint shows the accused VeriFone device mounted in a vehicle and displaying a map (Compl. p. 13).
IV. Analysis of Infringement Allegations
The pro se complaint does not contain a formal claim chart. The following table summarizes the infringement theory for U.S. Patent 7,152,840 based on the narrative allegations in the section titled "CONSTRUCTION OF AUDIO/VIDEO AND CLAIMS" and other sections (Compl. p. 8-12, 64).
’840 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a book support platform, the book support platform comprising a front surface... | The complaint alleges that the "flat screen HD TV" or "audio/video equipment" itself serves as the claimed "book platform 12" (Compl. p. 9). | ¶C (p. 9) | col. 5:35-38 |
| a plurality of clamps... disposed on the front surface to engage and retain the book to the book support platform... | The complaint does not provide sufficient detail for analysis of this element. | N/A | col. 3:5-10 |
| a clasp comprising a clip head, a clip body and a pair of resilient clip arms... | The complaint alleges that the mounting hardware used to "install 12 to a skeleton 104 inside a colum of a car seat" constitutes the clasp, referencing "brackets, nuts, clamps and screws" (Compl. p. 10). | ¶_ (p. 10) | col. 4:26-30 |
| an arm comprising a first end and a second end and a telescoping arrangement... | The complaint alleges the structure connecting the display to the mounting hardware is the claimed "support arm," which allows the device to be positioned for the user (Compl. p. 8). A diagram provided by the plaintiff depicts this structure as the infringing arm (Compl. p. 60). | ¶_ (p. 8) | col. 3:15-23 |
- Identified Points of Contention:
- Scope Questions: A primary dispute will be whether the term "book support platform", which the patent describes as holding a book, can be interpreted to read on an integrated electronic display screen. Further, a question exists as to whether the commercial, fixed-installation mounting hardware of the accused device constitutes a "clasp" with "resilient clip arms" as described in the patent.
- Technical Questions: A key evidentiary question is whether the accused device contains the "plurality of clamps... to engage and retain the book" required by the claim. The complaint provides no allegations or evidence of this feature. Another technical question is whether the accused device's mounting structure includes a "telescoping arrangement" for axial adjustment, as the provided photographs suggest a static mount.
V. Key Claim Terms for Construction
The Term: "book support platform"
Context and Importance: The case hinges on whether this term can cover an integrated electronic device like the accused VeriFone screen. Defendant’s pre-suit letter argues the patent is limited to a "book holder," while Plaintiff’s case relies on a broader interpretation (Compl. p. 57).
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification explicitly states, "The book platform 12 may also be used to support such items as audio/video equipment, PDAs, or mobile phones, cameras, computers..." (’840 Patent, col. 5:35-38).
- Evidence for a Narrower Interpretation: The patent is titled "BOOK HOLDER," and its sole independent claim requires "a plurality of clamps... to engage and retain the book to the book support platform," suggesting the platform is a distinct structure upon which a separate item (a book) is placed (’840 Patent, Title; col. 6:20-22).
The Term: "a plurality of clamps"
Context and Importance: This element appears to be absent from the accused device, making its construction potentially dispositive. Practitioners may focus on this term because if it is construed to require separate mechanical components for securing an external object to the platform, the infringement case may fail.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The complaint does not provide a basis for a broader interpretation of this term.
- Evidence for a Narrower Interpretation: The specification describes "two pairs of spring biased book clamps 22 for securing a book (not shown) to the book holder 10" and depicts them as distinct C-shaped or spring-loaded grips on the platform's face (’840 Patent, col. 3:5-10; Fig. 1, 6).
VI. Other Allegations
- Indirect Infringement: The complaint does not plead specific facts to support claims for either induced or contributory infringement, focusing instead on allegations of direct infringement by Defendant making and selling the accused systems (Compl. p. 3).
- Willful Infringement: The complaint alleges facts that may support a claim for willfulness. It attaches pre-suit correspondence, including a letter from Defendant dated January 5, 2011, which acknowledges receipt of Plaintiff’s infringement notice and confirms a review of the ’840 patent (Compl. p. 57-58). This correspondence establishes alleged pre-suit knowledge of the patent.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the term "book support platform", which originates in a patent for holding physical books, be construed to cover the integrated electronic screen of the accused payment system? The specification's mention of "audio/video equipment" will be central to this dispute.
- A critical evidentiary question will be one of a missing element: can the plaintiff provide any evidence that the accused VeriFone system includes the "plurality of clamps... to engage and retain the book" as explicitly required by the independent claim? The complaint currently provides no factual basis for this limitation.
- The case may also turn on a question of functional mismatch: does the accused product's static, permanently-installed mounting hardware perform the functions of the claimed "clasp" with "resilient clip arms" and an "arm" with a "telescoping arrangement", which the patent describes as features for user-operated, temporary, and versatile adjustment?