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15-3787-cv 

Serby v. First Alert, Inc. 

UNITED STATES COURT OF APPEALS 

FOR THE SECOND CIRCUIT

SUMMARY ORDER

RULINGS BY SUMMARY ORDER DO NOT HAVE PRECEDENTIAL EFFECT. CITATION TO A 

SUMMARY ORDER FILED ON OR AFTER JANUARY 1, 2007, IS PERMITTED AND IS GOVERNED 

BY FEDERAL RULE OF APPELLATE PROCEDURE 32.1 AND THIS COURT’S LOCAL RULE 32.1.1. 

WHEN CITING A SUMMARY ORDER IN A DOCUMENT FILED WITH THIS COURT, A PARTY 

MUST CITE EITHER THE FEDERAL APPENDIX OR AN ELECTRONIC DATABASE (WITH THE 

NOTATION “SUMMARY ORDER”). A PARTY CITING A SUMMARY ORDER MUST SERVE A COPY 

OF IT ON ANY PARTY NOT REPRESENTED BY COUNSEL.

At a stated term of the United States Court of Appeals for the Second Circuit, held 

at the Thurgood Marshall United States Courthouse, 40 Foley Square, in the City of New 

York, on the 22nd day of November, two thousand sixteen. 

PRESENT: JON O. NEWMAN, 

 GERARD E. LYNCH, 

CHRISTOPHER F. DRONEY, 

Circuit Judges. 

---------------------------------------------------------------------- 

VICTOR M. SERBY,

Plaintiff-CounterDefendant-Appellant, 

v. No. 15-3787-cv 

 

FIRST ALERT, INC., BRK BRANDS, INC., 

Defendants-CounterClaimants-Appellees. 

---------------------------------------------------------------------- 

 FOR PLAINTIFF-COUNTERDEFENDANT-APPELLANT: 

Victor M. Serby, Esq., pro se, 

Woodmere, NY. 

FOR DEFENDANTS-COUNTERCLAIMANTS-APPELLEES: 

Gerard Schiano-Strain, Jeffrey H. 

Daichman, Kane Kessler, P.C., New 

York, NY. 

Appeal from a judgment of the United States District Court for the Eastern District 

of New York (Mauskopf, J. and Kuntz, J.). 
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UPON DUE CONSIDERATION, IT IS HEREBY ORDERED, ADJUDGED, 

AND DECREED that the judgment of the district court is VACATED and

REMANDED for further proceedings consistent with this order. 

Appellant Victor Serby, an inventor and attorney proceeding pro se, appeals from 

a final judgment dismissing his complaint against First Alert, Inc. and its subsidiary, 

BRK Brands, Inc. (collectively “BRK”). In 1992, Serby designed a home smoke detector, 

the purpose of which was to deter consumers from removing smoke detector batteries and 

failing to replace them. Serby’s smoke detector accomplished this purpose by utilizing a 

lithium battery, with an approximate lifespan of ten years, and housing it in an 

“unopenable” case. Serby received a patent on his design in 1995 (the “’434 Patent”). 

Serby later discovered that BRK was marketing similar smoke detectors, and sued BRK 

for patent infringement. Serby and BRK subsequently entered into a Settlement 

Agreement, which required BRK to pay royalties to Serby on all smoke detectors that 

“incorporate a lithium battery, . . . and which have a battery compartment that is 

unopenable as is defined in Claims 5 or 10 of the [’434] Patent.” J. App’x at 51 

(emphasis added). 

In September 2009, Serby filed the instant suit in Kings County, NY, Supreme 

Court, alleging that BRK was manufacturing, distributing, and selling various smoke 

detectors without paying Serby royalties, in breach of the parties’ Settlement Agreement. 

After BRK removed the case to federal court, the district court (Mauskopf, J.) concluded 

that four of BRK’s smoke detector models (the “E-Z Access Models”) were “openable” 

and therefore not covered by the Settlement Agreement, and granted partial summary 

judgment to BRK. However, the court found a genuine dispute of material fact as to 

whether BRK’s remaining smoke detector model (the “SA340 Model”) was 

“unopenable.” Following that decision, the district court (Kuntz, J.) held a bench trial and 

concluded that the SA340 model was also “openable.” As a result of those decisions, 

Serby’s claim for royalties was dismissed. 

The threshold inquiry on appeal, therefore, concerns the proper definition of the 

term “unopenable.” In deciding this question below, the district court held that a “smoke 

detector is ‘unopenable’ when the housing of the smoke detector cannot be opened by a 

consumer without damaging the structure of the case, as necessary to deter physical 

access to the battery, i.e., a smoke detector with a housing that, once assembled, will not 

come apart, so as to deter physical access to the battery.” Serby v. First Alert, Inc., No. 

09-CV-4229 (RRM) (ALC), 2011 WL 4464494, at *6 (E.D.N.Y. Sept. 26, 2011). Serby 

contends that this was error, and urges us to instead construe “unopenable” as referring to 
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a “housing which prevents physical access to the battery to deter removal of the battery.” 

Appellant’s Br. at 11.1

 

We review de novo a district court’s partial grant of summary judgment. 

Weintraub v. Bd. of Educ. of Sch. Dist. of N.Y.C., 593 F.3d 196, 200 (2d Cir. 2010). We 

review a district court’s findings of fact, following a bench trial, for clear error and its 

conclusions of law de novo. Carco Grp., Inc., v. Maconachy, 718 F.3d 72, 79 (2d Cir. 

2013) (per curiam). We likewise review a district court’s interpretation of contract and 

patent terms de novo. Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 841 (2015) 

(holding that, where no subsidiary factual dispute exists, appellate court reviews district 

court’s construction of patent de novo); id. at 837 (confirming that construction of 

contract generally presents question of law and is reviewed de novo). 

Courts look to principles of patent and contract law to interpret settlement 

agreements arising out of earlier claims of patent infringement. See Panduit Corp. v. 

Hellermann Tyton Corp., 451 F.3d 819, 827–30 (Fed. Cir. 2006). To determine the 

meaning of a particular term, a court must look to the term’s plain meaning in the context 

of the agreement as a whole. See Olin Corp. v. Am. Home Assurance Co., 704 F.3d 89, 99 

(2d Cir. 2012). A court may also look to the underlying patent itself, see Aceros 

Prefabricados, S.A. v. TradeArbed, Inc., 282 F.3d 92, 97 (2d Cir. 2002) (“Parties to a 

contract are plainly free to incorporate by reference, and bind themselves inter sese to, 

terms that may be found in other agreements.” (internal quotation marks omitted)), 

including its claims, specification, and prosecution history, Vitronics Corp. v. 

Conceptronic, Inc., 90 F.3d 1576, 1582–83 (Fed. Cir. 1996). If, after examining the plain 

meaning of a term, a court concludes that the term is ambiguous, it may consider 

extrinsic evidence of the parties’ intent. Olin Corp., 704 F.3d at 99. 

We begin by examining the district court’s definition of “unopenable,” and 

conclude that it is incorrect. At trial, Serby demonstrated that he could open one of 

BRK’s earlier models, the SA10YR, easily and without damage to the model’s case. 

Under the district court’s definition, Serby’s actions would render the SA10YR 

“openable” for purposes of the Settlement Agreement. Yet BRK paid royalties on the 

SA10YR for approximately ten years, leading to the inescapable conclusion that both 

parties considered it “unopenable.” Indeed, the SA10YR gave rise to Serby’s initial 

patent infringement suit, and BRK’s own brief states that the Settlement Agreement—and 

 

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 Serby also argues that BRK breached the implied covenant of good faith and fair dealing. However, Serby failed 

to plead this claim in his complaint. Because he was represented by counsel at the time, we decline to consider this 

issue on appeal. See Bouboulis v. Transp. Workers Union of Am., 442 F.3d 55, 67 (2d Cir. 2006) (stating that 

appellate court will not consider new claim that is absent from complaint). 
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specifically the term “unopenable”—includes the SA10YR design “by implication.” 

Appellee’s Br. at 26. The district court’s definition, then, cannot stand. 

We next look to the plain meaning of the term “unopenable,” and conclude that it 

is ambiguous. “Contract language is ambiguous if it is capable of more than one meaning 

when viewed objectively by a reasonably intelligent person who has examined the 

context of the entire integrated agreement.” Collins v. Harrison-Bode, 303 F.3d 429, 433 

(2d Cir. 2002) (internal quotation marks omitted). Here, the term “unopenable” appears 

only once in the Settlement Agreement, in section four. As described above, that section 

requires BRK to pay royalties on smoke detectors that “have a battery compartment that 

is unopenable as is defined in Claims 5 or 10 of the [’434] Patent.” J. App’x at 51. Claims 

5 and 10, in turn, describe the smoke detector as “comprising a case . . . [that is] 

unopenable to deter physical access to [the] battery,” id. at 39, but give no further 

explanation of the term “unopenable.” The specification similarly calls for a case that is 

“unopenable” in order to “prevent[] physical access” to the battery and to “deter battery 

removal,” id. at 38, but otherwise provides no guidance as to the term’s precise 

definition. 

In light of the language of the Settlement Agreement and the underlying patent, we 

are left with the impression that any definition of the term “unopenable” must center on 

the ’434 patent’s purpose of deterring access to and removal of the batteries by 

consumers. And, under any such definition, BRK’s E-Z Access models—which plainly 

instruct consumers how to remove and replace the models’ batteries—are unlikely to fall 

within the scope of the Settlement Agreement.2

 Nonetheless, we conclude, based on the 

present record, that the term “unopenable” remains capable of more than one meaning. 

For example, “unopenable” might mean “not capable of being opened by a consumer for 

the purpose of accessing, removing, and replacing the battery for continued use of the 

smoke detector.” Or, as Serby alleges, it might refer more broadly to a “housing which 

prevents physical access to the battery to deter removal of the battery.” Appellant’s Br. at 

11. Thus, the term “unopenable” lacks a “definite and precise meaning,” rendering it 

ambiguous. See Law Debenture Trust Co. v. Maverick Tube Corp., 595 F.3d 458, 467 (2d 

Cir. 2010). 

When faced with ambiguous contractual language, an appellate court has two 

options: it may resolve the ambiguity in the contract language “as a matter of law if there 

is no extrinsic evidence to support one party’s interpretation of the ambiguous language 

or if the extrinsic evidence is so one-sided that no reasonable factfinder could decide 

 

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 Both the SA10YR and SA340 models allow access to the compartments that hold the batteries, but, 

because the batteries are soldered to the compartments, the batteries cannot be removed or replaced. Thus, 

in our view, these models would appear to achieve the goal of the ’434 patent. 
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contrary to one party’s interpretation,” or, it “may remand for the [district] court to 

consider and weigh extrinsic evidence to determine what the parties intended.” Collins, 

303 F.3d at 433 (internal quotation marks omitted). Here, because the district court found 

the term “unopenable” to be unambiguous, it did not offer the parties an opportunity to 

present extrinsic evidence of their intent. Accordingly, we cannot resolve the ambiguity 

on appeal. See id. at 434. We therefore remand the case to the district court to consider 

and weigh the parties’ extrinsic evidence as to the meaning of the term “unopenable.” 

* * * 

For the foregoing reasons, we VACATE the judgment of the district court and 

REMAND for further proceedings consistent with this order. 

FOR THE COURT: 

Catherine O’Hagan Wolfe, Clerk of Court