Opinion
23-cv-04409 (JPC) (JW)
03-04-2024
ANDREW WALKER, JR., Plaintiff, v. MONICA RICH KOSANN, AMAZON ADVERTISING LLC, EBAY, INC., FISHER-PRICE, INC., PROVENANCE GEMS, and WOODROW JEWELERS, Defendants.
TO THE HONORABLE JOHN P. CRONAN, UNITED STATES DISTRICT JUDGE
REPORT & RECOMMENDATION
JENNIFER E. WILLIS, UNITED STATES MAGISTRATE JUDGE.
Plaintiff Andrew Walker, Jr. (“Walker” or “Plaintiff”) owns the United States Design Patent No. U.S. D593,191 known as “Fragrant Oil Burning Lamp” (“D191 Patent”). Dkt. No. 5-1 at 2. He commenced this patent infringement action pro se on May 25, 2023, and filed the Amended Complaint on June 3, 2023. Dkt. Nos. 1, 5. Walker's patent infringement claim against multiple Defendants asserts that their creation and/or sale of alleged products has infringed on his D191 Patent. Dkt. No. 5 (the “Am. Compl.”). Before the Court are motions to dismiss from each Defendant:
(1) Defendant Provenance Gems, LLC (“Provenance”) moved to dismiss this case pursuant to Federal Rule of Civil Procedure 12(b)(2) for lack of personal jurisdiction. Dkt. No. 62 (“Provenance's Motion”), and
(2) the other Defendants, including eBay, Inc. (“eBay”), Fisher-Price, Inc. (“Fisher-Price”), Monica Rich Kosann (“Kosann”), Woodrow Jewelers (“Woodrow”), and Amazon Advertising LLC (“Amazon”) moved to dismiss this case pursuant to Federal Rule of Civil Procedure 12(b)(6) for failure to state a claim. Dkt. Nos. 20, 45, 52, 56 (respectively, “eBay's Motion”, “Fisher-Price's Motion”, “Kosann and Woodrow's Motion”, and “Amazon's Motion”).
This Court recommends all motions to dismiss be GRANTED.
BACKGROUND
A. The Parties
Plaintiff is a citizen of the State of California. Am. Compl. at 2.
Defendant Kosann is a company incorporated under the laws of the State of New York and has its principal place of business in the State of New York. Id. at 3.
Defendant Woodrow is a company incorporated under the laws of the State of New York and has its principal place of business in the State of New York. Id. at 5.
Defendant Amazon is a company incorporated under the laws of the State of Washington and has its principal place of business in the State of Washington. Id. at 7.
Defendant eBay is a company incorporated under the laws of the State of Delaware and has its principal place of business in the State of Delaware. Id. at 6.
Defendant Fisher-Price is a company incorporated under the laws of the State of New York and has its principal place of business in the State of New York. Id. at 4.
Defendant Provenance is a company incorporated under the laws of the State of Florida and has its principal place of business in the State of Florida. Id. at 8.
B. The D191 Patent
The D191 Patent was issued to Plaintiff on May 25, 2009 with a term of 14 years. Dkt. No. 5-1 at 2. The D191 Patent is titled “Fragrant Oil Burning Lamp” and describes “a fragrant oil burning lamp” with “a top portion removable from a base portion and a fragrant oil reservoir tube that normally rests in the base portion.” Id.
(Image omitted)
C. The Accused Products
The accused products are as follows:
Plaintiff alleges that Defendant Kosann created and sold a product line of genie bottle jewelry on its website. Per Plaintiff, the various products are all marketed under the name “Genie Bottle.” Am Compl. at 17. In identifying alleged infringing products, Plaintiff only specifically names a product titled “Genie Bottle" necklace (“Accused Product 1”). Id. at 18; Dkt No. 5-1 at 4, 9. Further, Plaintiff alleges that Defendant Woodrow, a retail customer of Defendant Kosann, sold the same Accused Product 1. Am. Compl. at 19; Dkt. No. 5-1 at 14.
Plaintiff alleges that Defendant Amazon has offered for sale an “I dream of Jeannie Bottle Reusable Sturdy Stencil Clear Custom Cut Plastic Sheet Template Cutout Sign DIY Supplies for Airbrush Painting Drawing 1-3x8 inch” (“Accused Product 2”). Am. Compl. at 19; Dkt. No. 5-1 at 12.
Plaintiff alleges that Defendants Fisher-Price and Amazon have offered for sale a “Fisher-Price Nickelodeon Shimmer & Shine, Wish & Wear Genie Necklace” (“Accused Product 3”). Am. Compl. at 20; Dkt. No. 5-1 at 26, 28.
Plaintiff alleges that Defendant eBay has offered for sale a “5 Five Genie Bottles Silver and Shiny [a]s You Wish Charm for Necklace or Bracelet” (“Accused Product 4”). Am. Compl. at 19; Dkt. No. 5-1 at 24.
Plaintiff alleges that Defendant Provenance has offered for sale a “Genie In the Bottle” necklace and “Genie Earrings” (“Accused Products 5 and 6”). Am. Compl. at 19; Dkt. No. 5-1 at 21 - 22.
Lastly, Plaintiff's Amended Complaint lists various products by their titles, such as coffee cups, dolls, and DVD sets of the original “I Dream of Jeannie” television show. Dkt. No. 5-1 at 28 - 30. Plaintiff also generally accuses multiple Defendants of selling or manufacturing “a variety of ‘genie bottle' items.” Id.
LEGAL STANDARD
A. Legal Standards Governing Motion to Dismiss
As a general matter, “[i]t is well established that the submissions of a pro se litigant must be construed liberally and interpreted to raise the strongest arguments that they suggest.” Triestman v. Fed. Bureau of Prisons, 470 F.3d 471, 474 (2d Cir. 2006) (citation omitted).
1. Rule 12(b)(2) Standard of Review
“In order to survive a motion to dismiss for lack of personal jurisdiction, a plaintiff must make a prima facie showing that jurisdiction exists.” Penguin Group (USA) Inc. v. Am. Buddha, 609 F.3d 30, 34 - 35 (2d Cir. 2010). A plaintiff bears the burden of raising facts that, “if credited by the ultimate trier of fact, would suffice to establish jurisdiction over the defendant.” Chloe v. Queen Bee of Beverly Hills, LLC, 616 F.3d 158, 163 (2d Cir. 2010) (internal quotation marks and alterations omitted). If jurisdictional discovery has not occurred, a plaintiff's prima facie showing of jurisdiction “may be established solely by allegations.” Ball v. Metallurgie Hoboken-Overpelt, S.A., 902 F.2d 194, 197 (2d Cir. 1990).
The lawful exercise of personal jurisdiction by courts requires satisfaction of three primary elements: (1) “procedurally proper” “service of process”; (2) “a statutory basis for personal jurisdiction that renders such service of process effective”; and (3) “exercise of personal jurisdiction must comport with constitutional due process principles.” Licci ex rel. Licci v. Lebanese Canadian Bank, SAL, 673 F.3d 50, 60 (2d Cir. 2012). The due process analysis has two related components: the “minimum contacts” inquiry and the “reasonableness” inquiry. Id. “With respect to minimum contacts, [courts] must determine whether the defendant has sufficient contacts with the forum state to justify the court's exercise of personal jurisdiction.” Chloe, 616 F.3d at 164.
In assessing a plaintiff's showing, the Court applies a “standard ... akin to that on a motion for summary judgment,” construing the “pleadings, documents, and other evidentiary materials ... in the light most favorable to the plaintiff” and resolving all doubts in the plaintiff's favor. Melnick v. Adelson-Melnick, No. 04-CV-5993(LAK), 346 F.Supp.2d 499, 503 (S.D.N.Y. 2004).
Generally, the Court “will limit its jurisdictional analysis to the facts presented and ... assume that the Plaintiff ha[s] provided all the evidence [he] possess[es] to support [his] jurisdictional claims.” Jacobs v. Felix Block Erben Verlag fur Buhne Film und Funk KG, No. 98-CV-6623 (LBS), 160 F.Supp.2d 722, 731 (S.D.N.Y. 2001).
2. Rule 12(b)(6) Standard of Review
To survive a motion to dismiss under Rule 12(b)(6), a complaint must plead “enough facts to state a claim to relief that is plausible on its face.” Bell Atl. Corp. v. Twombly, 550 U.S. 544, 547 (2007). A claim will only have “facial plausibility when the plaintiff pleads factual content that allows the court to draw the reasonable inference that the defendant is liable for the misconduct alleged.” Ashcroft v. Iqbal, 556 U.S. 662, 663 (2009).
A complaint is properly dismissed where, as a matter of law, “the allegations in a complaint, however true, could not raise a claim of entitlement to relief.” Twombly, 550 U.S. at 558. Although the Court must accept as true all well-pled factual allegations in the complaint and draw all reasonable inferences in the plaintiff's favor, Steginsky v. Xcelera Inc., 741 F.3d 365, 368 (2d Cir. 2014), that tenet is “inapplicable to legal conclusions.” Ashcroft, 556 U.S. 662, 678.
B. Legal Standards for Design Patent Infringement
“[D]esign patents have almost no scope beyond the precise images shown in the drawings.” MRC Innovations, Inc. v. Hunter Mfg., LLP, 747 F.3d 1326, 1333 n.1 (Fed. Cir. 2014) (citation omitted). “[A] design patent, unlike a utility patent, limits protection to the ornamental design of the [product].” Richardson v. Stanley Works, Inc., 597 F.3d 1288, 1293 (Fed. Cir. 2010). Therefore, when a patent is for an “ornamental design” “as shown and described”, the claimed design covers only the ornamental aspects of the drawings. See Elmer v. ICC Fabricating, Inc., 67 F.3d 1571, 1577-78 (Fed. Cir. 1995) (applying the “as shown and described” language in a design patent to “limit[ ] the scope of [a] patent claim”).
“In determining whether an accused product infringes a patented design, [the] court applies the ‘ordinary observer' test.” Crocs, Inc. v. Int'l Trade Comm'n, 598 F.3d 1294, 1303 (Fed. Cir. 2010) (citing Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 681 (Fed. Cir. 2008)). The ordinary observer test states, “if, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other.” Egyptian Goddess, 543 F.3d at 670 (quoting Gorham Co. v. White, 81 U.S. 511, 528 (1871)). The ordinary observer test “applies to the patented design in its entirety, as it is claimed.” Crocs, 598 F.3d at 1303.
Plainly, a plaintiff must demonstrate that an ordinary observer would be “deceived into believing that the accused product is the same as the patented design.” Crocs, 598 F.3d at 1303. “Where the claimed and accused designs are ‘sufficiently distinct' and ‘plainly dissimilar,' the [plaintiff] fails to meet its burden of proving infringement as a matter of law.” Ethicon Endo-Surgery, Inc. v. Covidien, Inc., 796 F.3d 1312, 1335 (Fed. Cir. 2015).
Courts often conduct side-by-side visual comparisons to determine whether a patent has been infringed because “misplaced reliance on a detailed verbal description of the claimed design risks undue emphasis on particular features of the design rather than examination of the design as a whole.” Crocs, 598 F.3d at 1302.
DISCUSSION
A. Provenance's Motion to Dismiss for Lack of Personal Jurisdiction under Rule 12(b)(2)
Provenance is the sole Defendant challenging personal jurisdiction in this action. The issue in contention is whether Plaintiff has sufficiently made a prima facie showing that this Court has personal jurisdiction over Provenance. The lawful exercise of personal jurisdiction by the Court requires three elements: (1) procedurally proper service of process; (2) a statutory basis for personal jurisdiction; and (3) satisfaction of constitutional due process requirements. See Licci, 673 F.3d at 59-60. In analyzing whether personal jurisdiction comports with constitutional due process principles, two related components are necessary: the “minimum contacts” inquiry and the “reasonableness” inquiry. Chloe, 616 F.3d at 164. Plaintiff bears the burden of raising facts to establish a prima facie showing of personal jurisdiction. See, e.g., Penguin, 609 F.3d at 34-35; Chloe, 616 F.3d at 164.
Provenance only disputes the third element. Provenance argues that Plaintiff failed to articulate the required factual support for personal jurisdiction and that Provenance lacks minimum contacts with this District and has not purposefully availed itself to this District's jurisdiction. Dkt. No. 62-1 at 7-8.
This Court has reviewed the pleadings, documents, and any evidentiary material that Plaintiff has provided. The only statements related to personal jurisdiction are as follows:
“Plaintiff specifically identified Provenance Gems LLC as Defendant in his Amended Complaint. The process [w]as [p]roperly [s]erved upon Provenance Gems LLC[.] There [i]s [a] [s]tatutory [b]asis for Plaintiff's [p]ersonal [j]urisdiction over Defendant. Provenance Gems LLC maintains minimum contact in New York sufficient to establish personal jurisdiction over Defendant. Plaintiff's assertion of personal jurisdiction is reasonable and comports with fair play and substantial justice.” Dkt. No. 74 at 4 - 5.
Plaintiff in opposing a 12(b)(2) motion cannot rely merely on conclusory statements or allegations; rather, the prima facie showing must be factually supported. Sullivan v. Jersey Strong Licensing LLC, No. 18-CV-7753 (RA), 2019 WL 3066492, at *2 (S.D.N.Y. 2019). Here, Plaintiff provides no factual allegations and instead relies solely on conclusory statements. Plaintiff offers no information from which the Court could reasonably conclude that Provenance Gems has minimum contacts with the state of New York such that the exercise of jurisdiction is proper.
Therefore, this Court recommends that Provenance's motion to dismiss under Rule 12(b)(2) be GRANTED.
B. Remaining Motions to Dismiss for Failure to State a Claim under Rule 12 (b)(6)
1. Accused Product 1
Plaintiff alleges that Defendant Kosann created and sold a product line of genie bottle jewelry on its website, including Accused Product 1, a genie bottle-shaped necklace. See Am. Compl. at 18. Additionally, Plaintiff alleges that Defendant Woodrow, a retail customer of Kosann, also sold the same product. Id. at 19. Plaintiff does not specify how Accused Product 1 is substantially similar to the D191 Patent. However, construed liberally, the Court believes that the Plaintiff's main argument is that Accused Product 1 is in the shape or style of a genie bottle. See Id. at 17 (“Specifically, and particularly relevant to this action, [Kosann] and Defendants, ha[ve] engaged in the creation, the use, the importing, the offering for sale, and the sale of product line that has a genie bottle [j]ewelry. This product line can be commonly described as a [g]enie [b]ottle / [j]eannie [b]ottle, and is reflected by products marketed under the names “[g]enie [b]ottle” and “|j]eannie |b]ottle...”).
Kosann and Woodrow argue that the D191 Patent is limited to a “fragrant oil burning lamp,” and does not cover the design for a genie bottle per se or for jewelry that is shaped like a genie bottle. Dkt. 53 at 10 (citing Curver Luxembourg, SARL v. Home Expressions Inc., 938 F.3d 1334 (Fed. Cir. 2019)). They argue a patent cannot be so broad as to merely conceptualize an expansive and abstract design. See Gorham, 81 U.S. at 524-525 (1871) (“the grant of patents for designs” contemplate “not an abstract impression, or picture, but an aspect given to those objects mentioned in the acts”); see also Curver, 938 F.3d at 1340 (Fed. Cir. 2019) (“Given that long-standing precedent, unchallenged regulation, and agency practice all consistently support the view that design patents are granted only for a design applied to an article of manufacture, and not a design per se, we hold that claim language can limit the scope of a design patent where the claim language supplies the only instance of an article of manufacture that appears nowhere in the figures.”).
Plaintiff counters that the Court should consider the overall impression of the D191 Patent's ornamental features and contends that because the D191 Patent depicts the overall appearance of a genie-bottle shape, products in the shape or style of a genie bottle would infringe upon the D191 Patent. See Am. Compl. at 17; Dkt. No. 74 at 5-6.
Here, this Court concludes that the D191 Patent is not so broad as to cover all products in the general shape or style of a genie bottle. In Colida v. Sony Corp. of Am, No. 04-CV-2093 (RJH), 2005 WL 267231, at *3 (S.D.N.Y. Feb 3, 2005), the Court held that a proper construction of a plaintiff's claimed design focused on the visual impression it created, and its “overall ornamental visual impression,” rather than the “broader general design concept of a flip-phone.” Similarly, the Federal Circuit has affirmed that claim construction “properly limits the scope of the patent to its overall ornamental visual impression, rather than to [a] broader general design concept.” OddzOn Products, Inc. v. Just. Toys, Inc., 122 F.3d 1396, 1405 (Fed. Cir. 1997).
While Plaintiff claims Accused Product 1 infringes on his patent simply by virtue of the “genie bottle” design, this Court disagrees. This interpretation aligns with the ruling in Colida where the Court noted that plaintiff's patent infringement complaint “border[ed] on the vexatious” because the “only conceivable similarity between [p]laintiff's patents and the [allegedly infringing] Z-600 phone [was] the fact that all of the designs [could] be characterized as flip-phones.” Colida, supra at *4. Similarly, in OddzOn, 122 F.3d at 1405, the Federal Circuit rejected a plaintiff's contention that the “overall similarity of the ‘rocket-like' appearance” between a patented product and an alleged infringed product was sufficient to show infringement. Plaintiff cannot rely solely on the “genie bottle” shape of alleged infringing products, and must instead show that based on the overall similarities, an ordinary observer would be “deceived into believing that the accused product is the same as the patented design.” Crocs, 598 F.3d at 1303.
Kosann and Woodrow further argue that a side-by-side visual comparison of the D191 Patent and Accused Product 1 demonstrates that no ordinary observer would think the two designs are substantially similar, because:
(1) the D191 patent design consists of three separable features, -namely, “[i] a top portion removable from [ii] a base portion and [iii] a fragment oil reservoir tube that normally rests in the base portion;” while Accused Product 1 is a one-piece “necklace style pendant” that does not contain separate parts; See Dkt. No. 53 at 9; see also Dkt. No. 5-1 at 2;
(2) the “top portion” of the D191 patent design lamp features a triangularshaped protrusion on top and base that has a plethora of vertical half-oval wedges going all around it; while the top of Accused Product 1 is not triangle-shaped, but instead a sphere connected to a hook; Dkt. No. 53 at 9;
(3) the “fragrant oil reservoir tube” of the D191 patent is shaped like a funnel and appears to go between the “top portion;” while Accused Product 1 does not include a funnel shape and consists of carnelian beads; Id. at 9; and
(4) the “base portion” of the D191 patent has an oval shaped window at the bottom, while Accused Product 1 does not. Id. at 9 - 10.
Accordingly, Kosann and Woodrow state that Accused Product 1 is “sufficiently distinct” and “plainly dissimilar” from the D191 Patent.
Conversely, Plaintiff raises a conclusory argument that Accused Product 1 infringes on the D191 Patent based on a side-by-side observation. Dkt. No. 74 at 9.
(Image Omitted)
The Federal Circuit has routinely employed a side-by-side comparison in order to determine whether two products are “substantially the same.” See, e.g., Richardson v. Stanley Works, Inc., 597 F.3d 1288, 1296 (Fed. Cir. 2010) (“In a side-by-side comparison with the 161 patent design the overall effect of this streamlined theme makes the Fubar tools significantly different from Richardson's design.”); Crocs, Inc. v. Intl. Trade Commn., 598 F.3d 1294, 1304 (Fed. Cir. 2010) (“The proper comparison requires a side-by-side view of the drawings of the ‘789 patent design and the accused products.”); Armink & Assocs., Inc. v. Saint-Gobain Calmar, Inc., 501 F.3d 1314 (Fed. Cir. 2007).
Again, substantial similarity exists where “in the eye of an ordinary observer, giving such attention as a purchaser usually gives . . . the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other.” Gorham, 81 U.S. at 528. An “ordinary observer” is not an expert in the field, id., but rather someone who has seen, shopped for, or purchased items of similar design. Hutzler Mfg. Co., Inc. v. Bradshaw Intern., Inc., No. 11-CV-7211 (PGG), 2012 WL 3031150, at *6 (S.D.N.Y. 2012).
Applying the ordinary observer test here, this Court finds that Accused Product 1 and the D191 Patent are plainly dissimilar. All of the differences, taken together, would leave an ordinary observer with the overall impression that the two products are clearly distinct from each other, and a purchaser would not be deceived into purchasing Accused Product 1 supposing it to be the D191 Patent. Other than the generic genie bottle shape (which this Court has already analyzed to be insufficient), Accused Product 1 is very different from the D191 Patent.
Some ornamental features of the D191 Patent include a triangular-shaped protrusion on top, a stripe with evenly-spaced dots spiraling diagonally down the base, and a large horizontal/oval-shaped window at the bottom of the base portion of the lamp. Accused Product 1 has none of these features.
Additionally, the descriptive language in the D191 Patent describes “a fragrant oil burning lamp, showing [the] new design and illustrating a top portion removable from a base portion and a fragrant oil reservoir tube that normally rests in the base portion.” Dkt. No. 5-1 at 2. The D191 Patent consists of three separable features, namely a top portion, a base portion, and a fragment oil reservoir tube, id. (emphasis added), while Accused Product 1 is a one-piece “necklace style pendant” that does not contain separate parts, see Dkt. No. 53 at 9. This is a clear distinction.
The D191 Patent and Accused Product 1 are sufficiently distinct such that no ordinary purchaser would confuse Accused Product 1 for the D191 Patent. Accordingly, this Court concludes that Plaintiff does not meet his burden to state a claim for patent infringement with respect to Accused Product 1. In the case of a pro se plaintiff, the Court is obligated to construe the complaint liberally, Hill v. Curcione, 657 F.3d 116, 122 (2d Cir. 2011), and to interpret the claims as raising the strongest arguments that they suggest. Triestman, 470 F.3d at 474. However, even pro se plaintiffs' claims cannot withstand a motion to dismiss unless their pleadings contain factual allegations sufficient to raise a “right to relief above the speculative level.” Id. (quoting Twombly, 550 U.S. at 555).
Therefore, Defendants Kosann and Woodrow's motion to dismiss pursuant to Rule 12(b)(6) should be GRANTED.
2. Accused Products 2, 3, and 4
Accused Products 2, 3, and 4 are likewise not substantially similar to the D191 Patent. Each of Accused Products 2, 3, and 4 are sufficiently different from the D191
Patent such that they leave a clearly distinct overall impression. Further, no ordinary observer would be induced to buy any of the products mistaking them for the D191 Patent.
(Image Omitted)
Amazon maintains that (1) Accused Product 2 does not include a fragrant oil reservoir tube, a helical strip running down the base portion, or a single oval-shaped window in the bottom; and (2) the D191 Patent is a three-dimensional oil burning lamp, while the Accused Product 2 is a flat piece of plastic used to draw or paint genie lamps on paper or other surfaces. Dkt. No. 57 at 13-14.
This Court has already analyzed that the general genie bottle shape is insufficient to state a claim for infringement absent substantial similarity. See supra Part B(1). Like with the analysis of Accused Product 1, this Court agrees that the differences, taken together, leave an ordinary observer with the overall impression that Accused Product 2 and the D191 Patent are clearly distinct from each other. The D191 Patent has three parts, while Accused Product 2 is a singular flat stencil. Additionally, Accused Product 2 does not include a horizontal/oval-shaped window at the bottom of the base featured in the D191 Patent. Finally, Accused Product 2 does not have a diagonal spiral. Plainly, an ordinary observer, “giving such attention as a purchaser usually gives,” would not be induced to purchase the Accused Product 2 Stencil here, supposing it to be the Fragrant Oil Burning Lamp as illustrated in the D191 Patent. See generally Gorham, 81 U.S. at 528.
(Image Omitted)
The Court finds significant differences in the overall impressions of Accused Product 3 and the D191 Patent. Amazon and Fisher-Price argue that a side-by-side comparison reveals significant differences between the products, including: (1) the top of Accused Product 3 features a flat-topped button shaped like a faceted gem, unlike the removable pointed top and series of vertical ridges depicted in the D191 Patent; (2) Accused Product 3 lacks a smooth-shaped oil reservoir that fits into the bottle neck; (3) there is no helical ribbon design leading up the neck of Accused Product 3, and the neck's height matches the base's width; and (4) the base of Accused Product 3 has no surrounding ridges or bottom opening as claimed in the D191 Patent. See Dkt. No. 46 at 8-9, 14-17; Dkt. No. 57 at 13-14.
As the Defendants detail, there are many differences between Accused Product 3 and the D191 Patent, and the overall impressions are distinct. From a side-by-side comparison, it is clear that an ordinary observer of Accused Product 3 would be left with the impression that it is substantially different from the D191 Patent. No ordinary observer would be induced to purchase the Accused Product 3 Necklace here, supposing it to be the Fragrant Oil Burning Lamp as illustrated in the D191 Patent. See generally Gorham, 81 U.S. at 528.
(Image Omitted)
As for Accused Product 4, Plaintiff did not include a clear image, nor did Plaintiff provide any factual allegation related to the claim of patent infringement. See generally Am. Compl. However, based on the image provided, the features of Plaintiff's D191 Patent are not present in Accused Product 4, and it is not substantially similar to the D191 Patent. Additionally, eBay has included an image that this Court will consider “integral” to the Complaint such that it can be evaluated with respect to eBay's Motion to Dismiss. DiFolco v. MSNBC Cable L.L.C., 622 F.3d 104, 111 (2d Cir. 2010). eBay argues that Accused Product 4 is sufficiently distinct from the D191 Patent because “Accused Product [4] does not contain any separable parts, nor does it contain any helical stripes . . . running down any portion of the structure.” Dkt. No. 11 at 14.
This Court finds that the overall impression of Accused Product 4 and the D191 Patent are clearly distinct. Further, an ordinary observer with the attention of a purchaser would not be induced to purchase Accused Product 4 supposing it to be the Fragrant Oil Burning Lamp as illustrated in the D191 Patent. See generally Gorham, 81 U.S. at 528.
For the foregoing reasons, this Court does not believe Plaintiff met his burden to state a claim for patent infringement based on the Accused Products. Therefore, Defendants Amazon, eBay, and Fisher-Price's motion to dismiss pursuant to Rule 12(b)(6) should be GRANTED.
C. Possible Utility Patent
This Court notes that during the initial case management conference on October 16, 2023, Plaintiff stated he was seeking a utility patent. See Transcript, Dkt. No. 71 at 16. As Plaintiff has not pled a utility patent in the Amended Complaint, this Court does not analyze those claims here. See generally Am. Compl. However, this Court notes for Plaintiff's benefit that a utility patent protects “any ‘new and useful' invention or improvement[.]” Steven Madden, Ltd. v. Yves Saint Laurent, No. 18-CV-7592 (VEC), 2019 WL 2023766, at *2 (S.D.N.Y. May 8, 2019). Therefore, vague allegations of products infringing on the general genie bottle shape would also be insufficient to support a claim of infringement for a utility patent.
D. Leave to Amend
Each Defendant asks that the dismissal be with prejudice. See Provenance's Motion at 1; eBay's Motion at 12; Fisher-Price's Motion at 17; Kosann and Woodrow's Motion at 1; and Amazon's Motion at 4. Plaintiff asks for leave to amend noting that “leave to amend should be freely given, and a pro se litigant in particular should be afforded every reasonable opportunity to demonstrate that he has a valid claim.” Dkt. No. 74 at 1 (citing Nielsen v. Rabin, 746 F.3d 58, 62 (2d Cir. 2014)).
“[L]eave to amend . . . shall be ‘freely' given when ‘justice so requires.'” Alicea v. City of New York, No. 16-CV-7347 (JLR), 2023 WL 3724131, at *2 (S.D.N.Y. May 30, 2023); Fed.R.Civ.P. 15(a)(2). This rule “reflects two essential principles: that pleadings are to serve the limited role of providing the opposing party with notice of the claim or defense to be litigated, and ‘mere technicalities' should not prevent cases from being decided on the merits.” Id. (citing Monahan v. N.Y.C. Dep't of Corr., 214 F.3d 275, 283 (2d Cir. 2000)). It is “within the sound discretion of the district court to grant or deny leave to amend.” McCarthy v. Dun & Bradstreet Corp., 482 F.3d 184, 200 (2d Cir. 2007). “Leave may be denied ‘for good reason, including futility, bad faith, undue delay, or undue prejudice to the opposing party.'” TechnoMarine SA v. Giftports, Inc., 758 F.3d 493, 505 (2d Cir. 2014).
In this Court's view, Plaintiff is a pro se litigant, and should be afforded every reasonable opportunity to demonstrate that he has a valid claim. Nielsen v. Rabin, 746 F.3d 58, 62 (2d Cir. 2014). Additionally, the Second Circuit has reaffirmed the “liberal spirit” of Rule 15 and counseled strongly against the dismissal of claims with prejudice prior to “the benefit of a ruling” that highlights “the precise defects” of a plaintiff's claims. See Loreley Financing (Jersey) No. 3 Ltd. v. Wells Fargo Securities, LLC, 797 F.3d 160 (2d Cir. 2015). Here, Plaintiff was not previously provided notice of the deficiencies in his first Amended Complaint, and he has not been given an opportunity to correct these deficiencies. Finally, this Court has not found any good reason to deny leave to amend.
As such, this Court recommends that Plaintiff be GRANTED leave to amend the Amended Complaint.
RECOMMENDATION
For the reasons stated above, this Court recommends that the motions to dismiss be GRANTED.
FILING OF OBJECTIONS TO THIS REPORT AND RECOMMENDATION
Pursuant to 28 U.S.C. § 636(b)(1) and Rule 72(b) of the Federal Rules of Civil Procedure, the parties shall have fourteen days from service of this Report to file written objections. See also Fed.R.Civ.P. 6. Such objections, and any responses to objections shall be filed with the Clerk of Court and on ECF. Any requests for an extension of time for filing objections must be directed to Judge John P. Cronan. Failure to file objections within fourteen days will result in a waiver of objections and will preclude appellate review. See Thomas v. Arn, 474 U.S. 140 (1985); Cephas v. Nash, 328 F.3d 98, 107 (2d Cir. 2003).
SO ORDERED.