Moss v. Moss et al

Filing 28

DECISION & ORDER granting # 15 Defendant's Motion to Dismiss. Count II of Plaintiff's Complaint is DISMISSED for lack of subject-matter jurisdiction. The remainder of Plaintiff's complaint is DISMISSED without prejudice to the refiling in state court. Signed by Judge Glenn T. Suddaby on 9/18/14. (lmw)

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF NEW YORK
__________________________________________
GERALD MOSS, Individually,
Plaintiff,
1:13-CV-1137
(GTS/RFT)

v.
KATHERINE MOSS, Individually;
MICHAEL MOSS; and MOSS TUBES, INC.,
a New York Corporation,
Defendants.
__________________________________________
APPEARANCES:

OF COUNSEL:

SCHMEISER, OLSEN & WATTS LLP
Counsel for Plaintiff
22 Century Hill Drive, Suite 302
Latham, NY 12110

ALBERT L. SCHMEISER, ESQ.
AUTONDRIA S. MINOR, ESQ.
NICHOLAS R. VALENTI, ESQ.

HESLIN ROTHENBERG FARLEY & MESITI P.C.
Counsel for Defendants
5 Columbia Circle
Albany, NY 12203

SUSAN E. FARLEY, ESQ.
SHANNA K. SANDERS, ESQ.

GLENN T. SUDDABY, United States District Judge
DECISION and ORDER
Currently before the Court, in this patent action filed by Gerald Moss (“Plaintiff”) against
Katherine Moss, Michael Moss, and Moss Tubes, Inc. (“Defendants”), is Defendants' motion to
dismiss Plaintiff’s Complaint for lack of subject-matter jurisdiction pursuant to Fed. R. Civ. P.
12(b)(1), and/or for failure to state a claim upon which relief can be granted pursuant to Fed. R.
Civ. P. 12(b)(6). (Dkt. No. 15.) For the reasons set forth below, Defendants’ motion is granted.

I.

RELEVANT BACKGROUND
A.

Plaintiff’s Complaint

Generally, Plaintiff’s Complaint asserts three claims arising from the interpretation and
enforcement of a 1999 New York State divorce agreement and decree (“Divorce Agreement”),
which settled certain property rights between, and set forth the associated business interests of,
Plaintiff (a medical doctor and experienced designer of products for gastrointestinal feeding and
decompression) and Defendant Katherine Moss (his second wife). (See generally Dkt. No. 1.)
More specifically, Count I of the Complaint asserts a claim for a judgment declaring that
Plaintiff is not in material breach of the Divorce Agreement by, inter alia, engaging in
biomedical engineering activities, applying for new patents covering new inventions and/or
improvements to technologies associated with gastro enteral medicine, and commercializing his
patented inventions (and that the Divorce Agreement does not impose a lifetime ban preventing
Plaintiff from ever conducting any business in the entire field of gastro enteral medicine). (Id.)
Count II of the Complaint asserts a claim for a judgment declaring that Defendants have
misused several expired patents that were assigned to them by Plaintiff in the Divorce
Agreement (by repeatedly using them to intimidate Plaintiff and unlawfully coerce him to never
engage in any activity in the broad field of medical feeding technology). (Id.)
Count III of the Complaint asserts a claim for a judgment declaring that Defendants’
threatened breach-of-contract claims are barred by the applicable statute of limitations to the
extent that they are based on events occurring in or before 2002 and 2003. (Id.)
Familiarity with these three claims, and the factual allegations supporting them, is
assumed in this Decision and Order, which is intended primarily for the review of the parties.

2

B.

Parties’ Arguments on Defendants’ Motion
1.

Defendants’ Memorandum-of-Law-in-Chief

Generally, in their motion to dismiss, Defendants assert three arguments. (Dkt. No. 15,
Attach. 6 [Def.’s Memo. of Law].)
First, Defendants argue, Plaintiff's declaratory judgment claim of patent misuse should be
dismissed for lack of subject-matter jurisdiction under Fed. R. Civ. P. 12(b)(1), because there is
no "actual controversy" sufficient to confer declaratory judgment jurisdiction over the claim;
rather than threatening to enforce any patent rights against Plaintiff, Defendants have merely
attempted to enforce their contract rights under the Divorce Agreement, including Plaintiff’s
covenant not to interfere with the business of Defendant Moss Tubes, Inc. (Id. at 8-9 [attaching
pages “4” and “4” of Def.’s Memo. of Law].)
Second, Defendants argue, in the alternative, Plaintiff's declaratory judgment claim of
patent misuse should be dismissed for failure to state a claim upon which relief can be granted
under Fed. R. Civ. P. 12(b)(6), because Plaintiff has failed to allege facts plausibly suggesting a
claim of patent misuse, in that (a) by its very definition, the claim is merely an affirmative
defense or counterclaim in response to a claim of patent infringement (and Plaintiff has not
alleged that Defendants have asserted such a patent-infringement claim against Plaintiff, nor has
Plaintiff even identified the specific patent or patents owned by Defendants and asserted against
Plaintiff), and (b) the claim requires that the defendants possess monopoly power in the relevant
market (which has not been alleged here). (Id. at 9-10 [attaching pages “5” and “6” of Def.’s
Memo. of Law].)

3

Third, Defendants argue, the Court should decline to exercise supplemental jurisdiction
over Plaintiff’s remaining claims (for declaratory judgment regarding breach of contract), over
which the Court does not possess either federal-question jurisdiction or diversity jurisdiction.
(Id. at 10-11 [attaching pages “6” and “7” of Def.’s Memo. of Law].)
2.

Plaintiff’s Opposition Memorandum of Law

Generally, in response, Plaintiff asserts the following three arguments. (Dkt. No. 20
[Plf.’s Opp’n Memo. of Law].)
First, Plaintiff argues, the Prayer for Relief in his Complaint has a scope that far exceeds
his three claims, extending to a declaratory judgment that his conduct does not (as charged by
Defendants in their threatening letters) violate multiple federal laws, namely, trademark
infringement in violation of Sections 32 and 43 of the Lanham Act (15 U. S.C. §§ 1114 and
1125), and unfair competition and false advertising in violation of Section 43 of the Lanham Act
(15 U.S.C. §1125). (Id. at 4, 6, 7, 8 [attaching pages “1,” “3,” “4” and “5” of Plf.’s Opp’n
Memo. of Law].)
Second, Plaintiff argues, in the alternative, should the Court find that his federal claims
must be supported by more factual allegations, it should permit him to file an Amended
Complaint (a proposed version of which he has provided). (Id.)
Third, Plaintiff argues, the Court has supplemental jurisdiction over any common law and
state statutory claims under 28 U.S.C. § 1367. (Id.)
3.

Defendants’ Reply Memorandum of Law

Generally, in reply to Plaintiff’s response, Defendants assert three arguments. (Dkt. No.
23 [Def.’s Reply Memo. of Law].)

4

First, Defendants argue, Plaintiff’s claim of patent misuse should be dismissed, because
(a) his failure to oppose Defendants’ legal arguments challenging the sufficiency of that claim is
a tacit admission the claim in insufficient, and (b) indeed, Plaintiff does not even bother to assert
that claim in his proposed Amended Complaint. (Id. at 5-7 [attaching pages “1” through “3” of
Def.’s Reply Memo. of Law].)
Second, Defendants argue, without claim of patent misused, the Court lacks subjectmatter jurisdiction over the remaining state-law breach-of-contract claims asserted in Plaintiff’s
Complaint. (Id. at 5, 7-8 [attaching pages, “1,” “3” and “4” of Def.’s Reply Memo. of Law].)
Third, Defendants argue, Plaintiff cannot rely on the Prayer for Relief in his original
Complaint or assert a new federal claim to establish subject-matter jurisdiction in an Amended
Complaint, because (a) Paragraph 12 of the “Prayer” section of Plaintiff’s Complaint (which
vaguely requests a declaratory judgment that unspecified conduct does not constitute trademark
infringement, unfair competition and false advertising, without any supporting factual
allegations) is an insufficient basis for subject-matter jurisdiction, (b) a plaintiff cannot move to
amend his complaint to (retroactively) create subject-matter jurisdiction where none already
exists over the original complaint, as recognized in Pressroom Unions-Printers League Income
Sec. Fund v. Cont’l Assurance Co., 700 F.2d 889, 893-94 (2d Cir. 1983), cert. denied, 464 U.S.
845 (1983), and Broad v. DKP Corp., 97-CV-2029, 1998 WL 516113, at *5 (S.D.N.Y. Aug. 19.
1998), and (c) in any event, he has not properly requested (or received) leave to file an Amended
Complaint, because he has not filed a proper cross-motion for leave to amend (i.e., one supported
by a memorandum of law applying the applicable legal standard and an affidavit as required by
Local Rule 7.1[a][1],[2]). (Id. at 5, 6, 8-11 [attaching pages “1,” “2,” “4,” “5,” “6” and “7” of
Def.’s Reply Memo. of Law].)

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II.

GOVERNING LEGAL STANDARDS
A.

Standard Governing Motion to Dismiss for Lack of Subject-Matter
Jurisdiction

“It is a fundamental precept that federal courts are courts of limited jurisdiction.” Owen
Equipment & Erection Co. v. Kroger, 437 U.S. 365, 374 (1978). Generally, a claim may be
properly dismissed for lack of subject-matter jurisdiction where a district court lacks
constitutional or statutory power to adjudicate it. Makarova v. U.S., 201 F.3d 110, 113 (2d Cir.
2000).
On a motion to dismiss for lack of subject-matter jurisdiction, the plaintiff bears the
burden of proving subject-matter jurisdiction by a preponderance of the evidence. Makarova,
201 F.3d at 113 (citing Malik v. Meissner, 82 F.3d 560, 562 [2d Cir. 1996]). As a result, when
deciding such a motion, a district court may look to evidence outside of the pleadings.
Makarova, 201 F.3d at 113. However, the court may not rely on conclusory or hearsay
statements contained in an affidavit. J.S. ex rel N.S. v. Attica Cent. Sch., 386 F. 3d 107, 110 (2d
Cir. 2004).
In addition, when deciding such a motion, the court must accept as true all material
factual allegations in the complaint, resolve all ambiguities in favor of plaintiff, and draw all
inferences in favor of plaintiff. J.S. ex rel N.S. v. Attica Cent. Sch., 386 F. 3d at 110. Morrison
v. Nat'l Austl. Bank Ltd., 547 F.3d 167, 170 (2d Cir.2008), aff'd on other grounds, 561 U.S. 247
(2010); Triestman v. Fed. Bureau of Prisons, 470 F.3d 471, 474 (2d Cir. 2006); Aurecchione v.
Schoolman Transp. Sys., Inc., 426 F.3d 635, 638 (2d Cir. 2005) (citing Makarova, 201 F.3d at
113). However, jurisdiction must be shown affirmatively, and that showing is not made merely
by drawing from the complaint inferences favorable to plaintiff. Morrison, 547 F.3d at 170;
APWU v. Potter, 343 F.3d 619, 623 (2d Cir. 2003).
6

In determining whether subject-matter jurisdiction exists over a claim for declaratory
judgment under the federal Declaratory Judgment Act, 28 U.S.C. § 2201, it is necessary to
consider the following: (1) whether there is an “actual controversy” between the parties, within
the meaning of Article III; and (2) whether subject-matter jurisdiction would exist over that
controversy, were it brought as a coercive action. Franchise Tax Bd. v. Construction Laborers
Vacation Trust, 463 U.S. 1, 16 (1983). The plaintiff bears the burden of "'establishing the
existence of an actual case or controversy.'" Nike, Inc. v. Already, LLC, 663 F.3d 89, 98 (2d Cir.
2011) (quoting Cardinal Chem. Co. v. Morton Int'l, Inc., 508 U.S. 83, 95 [1993]).
In the context of patent disputes, an actual controversy requires “an injury in fact
traceable to the patentee,” which exists only if the plaintiff has alleged both of the following: (1)
an affirmative act by the patentee related to the enforcement of its patent rights, and (2) at least
meaningful preparation to conduct potentially infringing activity. Ass’n for Molecular Pathology
v. U.S. Patent & Trademark Office, 653 F.3d 1329, 1343 (Fed. Cir. 2011); Cat Tech LLC v.
TubeMaster, Inc., 528 F.3d 871, 880 (Fed. Cir. 2008); SanDisk Corp. v. STMicroelectronics,
Inc., 480 F.3d 1372, 1380-81 (Fed. Cir. 2007).
B.

Standard Governing Motion to Dismiss for Failure to State a Claim

It has long been understood that a dismissal for failure to state a claim upon which relief
can be granted, pursuant to Fed. R. Civ. P. 12(b)(6), can be based on one or both of two grounds:
(1) a challenge to the "sufficiency of the pleading" under Fed. R. Civ. P. 8(a)(2); or (2) a
challenge to the legal cognizability of the claim. Jackson v. Onondaga Cnty., 549 F. Supp.2d
204, 211, nn. 15-16 (N.D.N.Y. 2008) (McAvoy, J., adopting Report-Recommendation on de
novo review).

7

Because such dismissals are often based on the first ground, a few words regarding that
ground are appropriate. Rule 8(a)(2) of the Federal Rules of Civil Procedure requires that a
pleading contain "a short and plain statement of the claim showing that the pleader is entitled to
relief." Fed. R. Civ. P. 8(a)(2) [emphasis added]. In the Court’s view, this tension between
permitting a “short and plain statement” and requiring that the statement “show[]” an entitlement
to relief is often at the heart of misunderstandings that occur regarding the pleading standard
established by Fed. R. Civ. P. 8(a)(2).
On the one hand, the Supreme Court has long characterized the “short and plain”
pleading standard under Fed. R. Civ. P. 8(a)(2) as "simplified" and "liberal." Jackson, 549 F.
Supp.2d at 212, n.20 (citing Supreme Court case). On the other hand, the Supreme Court has
held that, by requiring the above-described "showing," the pleading standard under Fed. R. Civ.
P. 8(a)(2) requires that the pleading contain a statement that "give[s] the defendant fair notice of
what the plaintiff’s claim is and the grounds upon which it rests." Jackson, 549 F. Supp.2d at
212, n.17 (citing Supreme Court cases) (emphasis added).
The Supreme Court has explained that such fair notice has the important purpose of
“enabl[ing] the adverse party to answer and prepare for trial” and “facilitat[ing] a proper decision
on the merits” by the court. Jackson, 549 F. Supp.2d at 212, n.18 (citing Supreme Court cases);
Rusyniak v. Gensini, 629 F. Supp.2d 203, 213 & n.32 (N.D.N.Y. 2009) (Suddaby, J.) (citing
Second Circuit cases). For this reason, as one commentator has correctly observed, the “liberal”
notice pleading standard "has its limits." 2 Moore’s Federal Practice § 12.34[1][b] at 12-61 (3d
ed. 2003). For example, numerous Supreme Court and Second Circuit decisions exist holding
that a pleading has failed to meet the “liberal” notice pleading standard. Rusyniak, 629 F.

8

Supp.2d at 213, n.22 (citing Supreme Court and Second Circuit cases); see also Ashcroft v.
Iqbal, 129 S. Ct. 1937, 1949-52 (2009).
Most notably, in Bell Atlantic Corp. v. Twombly, the Supreme Court reversed an
appellate decision holding that a complaint had stated an actionable antitrust claim under 15
U.S.C. § 1. Bell Atlantic Corp. v. Twombly, 127 S. Ct. 1955 (2007). In doing so, the Court
"retire[d]" the famous statement by the Court in Conley v. Gibson, 355 U.S. 41, 45-46 (1957),
that "a complaint should not be dismissed for failure to state a claim unless it appears beyond
doubt that the plaintiff can prove no set of facts in support of his claim which would entitle him
to relief." Twombly, 127 S. Ct. at 1968-69. Rather than turn on the conceivability of an
actionable claim, the Court clarified, the "fair notice" standard turns on the plausibility of an
actionable claim. Id. at 1965-74. The Court explained that, while this does not mean that a
pleading need "set out in detail the facts upon which [the claim is based]," it does mean that the
pleading must contain at least "some factual allegation[s]." Id. at 1965. More specifically, the
"[f]actual allegations must be enough to raise a right to relief above the speculative level [to a
plausible level]," assuming (of course) that all the allegations in the complaint are true. Id.
As for the nature of what is “plausible,” the Supreme Court explained that “[a] claim has
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,
129 S.Ct. 1937, 1949 (2009). “[D]etermining whether a complaint states a plausible claim for
relief . . . [is] a context-specific task that requires the reviewing court to draw on its judicial
experience and common sense. . . . [W]here the well-pleaded facts do not permit the court to
infer more than the mere possibility of misconduct, the complaint has alleged–but it has not

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show[n]–that the pleader is entitled to relief.” Iqbal, 129 S.Ct. at 1950 [internal quotation marks
and citations omitted]. However, while the plausibility standard “asks for more than a sheer
possibility that a defendant has acted unlawfully,” id., it “does not impose a probability
requirement.” Twombly, 550 U.S. at 556.
Because of this requirement of factual allegations plausibly suggesting an entitlement to
relief, “the tenet that a court must accept as true all of the allegations contained in the complaint
is inapplicable to legal conclusions. Threadbare recitals of the elements of a cause of action,
supported by merely conclusory statements, do not suffice.” Iqbal, 129 S. Ct. at 1949.
Similarly, a pleading that only “tenders naked assertions devoid of further factual enhancement”
will not suffice. Iqbal, 129 S.Ct. at 1949 (internal citations and alterations omitted). Rule 8
“demands more than an unadorned, the-defendant-unlawfully-harmed-me accusation.” Id.
(citations omitted).
Finally, a few words are appropriate regarding what documents are considered when a
dismissal for failure to state a claim is contemplated. Generally, when contemplating a dismissal
pursuant to Fed. R. Civ. P. 12(b)(6) or Fed. R. Civ. P. 12(c), the following matters outside the
four corners of the complaint may be considered without triggering the standard governing a
motion for summary judgment: (1) documents attached as an exhibit to the complaint or answer,
(2) documents incorporated by reference in the complaint (and provided by the parties), (3)
documents that, although not incorporated by reference, are “integral” to the complaint, or (4)
any matter of which the court can take judicial notice for the factual background of the case.1
1

See Fed. R. Civ. P. 10(c) (“A copy of any written instrument which is an exhibit
to a pleading is a part thereof for all purposes.”); L-7 Designs, Inc. v. Old Navy, LLC, No. 10573, 2011 WL 2135734, at *1 (2d Cir. June 1, 2011) (explaining that conversion from a motion
to dismiss for failure to state a claim to a motion for summary judgment is not necessary under
10

Moreover, in the Second Circuit, a pro se plaintiff’s papers in response to a defendant’s motion
to dismiss for failure to state a claim may be considered as effectively amending the allegations
of his complaint–to the extent those papers are consistent with the allegations in the complaint.
C.

Standards Governing Plaintiff’s Claims

Because the parties to this action have demonstrated, in their memoranda of law, an
accurate understanding of the relevant points of law contained in the legal standards governing
Plaintiff’s claims in this action, the Court will not recite, in detail, those legal standards in this
Decision and Order, which (again) is intended primarily for review by the parties. (See
generally Dkt. No. 15, Attach. 6 [Defs.’ Memo. of Law]; Dkt. No. 20 [Plf.’s Opp’n Memo. of
Law]; Dkt. No. 23 [Defs.’ Reply Memo. of Law].)
Rather, the Court would merely add that, with regard to the nature of Plaintiff’s second
Fed. R. Civ. P. 12[d] if the “matters outside the pleadings” in consist of [1] documents attached
to the complaint or answer, [2] documents incorporated by reference in the complaint (and
provided by the parties), [3] documents that, although not incorporated by reference, are
“integral” to the complaint, or [4] any matter of which the court can take judicial notice for the
factual background of the case); DiFolco v. MSNBC Cable L.L.C., 622 F.3d 104, 111 (2d Cir.
2010) (explaining that a district court considering a dismissal pursuant to Fed. R. Civ. 12(b)(6)
“may consider the facts alleged in the complaint, documents attached to the complaint as
exhibits, and documents incorporated by reference in the complaint. . . . Where a document is
not incorporated by reference, the court may neverless consider it where the complaint relies
heavily upon its terms and effect, thereby rendering the document ‘integral’ to the complaint. . . .
However, even if a document is ‘integral’ to the complaint, it must be clear on the record that no
dispute exists regarding the authenticity or accuracy of the document. It must also be clear that
there exist no material disputed issues of fact regarding the relevance of the document.”)
[internal quotation marks and citations omitted]; Chambers v. Time Warner, Inc., 282 F.3d 147,
152 (2d Cir. 2009) (“The complaint is deemed to include any written instrument attached to it as
an exhibit or any statements or documents incorporated in it by reference.”) (internal quotation
marks and citations omitted); Int'l Audiotext Network, Inc. v. Am. Tel. & Tel. Co., 62 F.3d 69, 72
(2d Cir.1995) (per curiam) (“[W]hen a plaintiff chooses not to attach to the complaint or
incorporate by reference a [document] upon which it solely relies and which is integral to the
complaint,” the court may nevertheless take the document into consideration in deciding [a]
defendant's motion to dismiss, without converting the proceeding to one for summary
judgment.”) (internal quotation marks and citation omitted).
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declaratory judgment claim, generally, patent misuse is not an affirmative claim but merely a
defense or counterclaim. Max Impact, L.L.C. v. Sherwood Group, Inc., 09-CV-0902, 2011 WL
507600, at *5 (S.D.N.Y. Feb. 14, 2011); Aktiebolag v. Kremers Urban Dev. Co., 99-CV-8928,
2001WL 1807917, at *1 (S.D.N.Y. Oct. 31, 2001); Va. Panel Corp. v. MAC Panel Co., 133 F.3d
860, 868 (Fed. Cir. 1997).
There are two elements of a defense or counterclaim of patent misuse: (1) an
impermissible use of a patent to broaden the physical or temporal scope of the patent with an
anti-competitive effect, and (2) bad faith and some improper purpose. 35 U.S.C. § 271(d);
Aktiebolag, 2001WL 1807917, at *1; Monsanto Co. v. McFarling, 363 F.3d 1336, 1341 (Fed.
Cir. 2004); Va. Panel Corp., 133 F.3d at 868-69; Glaverbel Societe Anonyme v. Northlake Mktg.
& Supply, Inc., 45 F.3d 1550, 1558 (Fed. Cir. 1995); Windsurfing Int'l, Inc. v. AMF, Inc., 782
F.2d 995, 1001 (Fed. Cir. 1986).
With regard to the first element, a party must allege, inter alia, that the patentee has
monopoly power in the relevant market. Linzer Prods. Corp. v. Sekar, 499 F. Supp.2d 540, 553
(S.D.N.Y. 2007); Orion Elec. Co., Ltd. v. Funai Elec. Co., Ltd., 01-CV-3501, 2002 WL 377541,
at *6 (S.D.N.Y. March 11, 2002); cf. Monsanto Co., 363 F.3d at 1341 (explaining that the policy
underlying the patent-misuse doctrine is to “prevent a patentee from using the patent to obtain
market benefit beyond that which inures in the statutory patent right”); accord, Mallinckrodt,
Inc. v. Medipart, Inc., 976 F.2d 700, 704 (Fed. Cir.1992). With regard to the second element,
“[a] purpose is improper if its goal is not to win a favorable judgment, but to harass a competitor
and deter others from competition, by engaging the litigation process itself, regardless of the
outcome.” Glaverbel Societe Anonyme, 45 F.3d at 1558.

12

When patent misuse is successfully asserted, the patent is rendered unenforceable until
the misuse is purged; damages are not awarded to the accused infringer. Max Impact, L.L.C.,
2011 WL 507600, at *5; Aktiebolag, 2001WL 1807917, at *1; Qualcomm Inc. v. Broadcom
Corp., 548 F.3d 1004, 1025 (Fed. Cir. 2008); C.R. Bard. Inc. v. M3 Sys., Inc., 157 F.3d 1340,
1372 (Fed. Cir. 1998); B. Braun Med., Inc. v. Abbott Labs., 124 F.3d 1419, 1427 (Fed. Cir.
1997).
III.

ANALYSIS
A.

Whether Plaintiff's Declaratory Judgment Claim of Patent Misuse Should Be
Dismissed for Lack of Subject-Matter Jurisdiction

After carefully considering the matter, the Court answers this question in the affirmative
for the reasons stated in Defendants’ memoranda of law. See, supra, Parts I.B.1 and I.B.3. of
this Decision and Order. The Court would add only one point.
In this District, when a non-movant fails to oppose a legal argument asserted by a movant
in support of a motion, the movant's burden with regard to that argument has been lightened such
that, in order to succeed on that argument, the movant need only show that the argument
possesses facial merit, which has appropriately been characterized as a “modest” burden.2 Here,
Defendants have met that modest burden for the reasons stated in their memorandum of law in
chief.

2

See N.D.N.Y. L.R. 7.1(b) (3) (“Where a properly filed motion is unopposed and
the Court determines that the moving party has met its burden to demonstrate entitlement to the
relief requested therein . . . .”); Rusyniak v. Gensini, 07-CV-0279, 2009 WL 3672105, at *1, n. 1
(N.D.N.Y. Oct. 30, 2009) (Suddaby, J.) (collecting cases); Este-Green v. Astrue, 09-CV-0722,
2009 WL 2473509, at *2 & n. 3 (N.D.N.Y.Aug.7, 2009) (Suddaby, J.) (collecting cases).
13

B.

Whether, in the Alternative, Plaintiff's Declaratory Judgment Claim of
Patent Misuse Should Be Dismissed for Failure to State a Claim

After carefully considering the matter, the Court answers this question in the affirmative
for the reasons stated in Defendants’ memoranda of law. See, supra, Parts I.B.1 and I.B.3. of
this Decision and Order. The Court would add only one point.
As stated above in Part III.A. of this Decision and Order, because Plaintiff has failed to
oppose Defendants’ alternative argument for the dismissal of his claim of patent misuse,
Defendants’ burden with regard to that argument has been lightened such that, in order to
succeed on that argument, they need only show that the argument possesses facial merit.
Defendants have met that modest burden for the reasons stated in their memorandum of law in
chief.
C.

Whether Plaintiff’s Proposed Amended Complaint Cures the Defects in His
Original Complaint

After carefully considering the matter, the Court answers this question in the negative for
the reasons stated in Defendants’ reply memorandum of law. See, supra, Part I.B.3. of this
Decision and Order. The Court would add only two points.
First, in addition to the two cases relied on by Defendants for the point of law that a
plaintiff cannot move to amend his complaint to retroactively create subject-matter jurisdiction
where none already exists over the original complaint (see, supra, Part I.B.3. of this Decision
and Order), the Court relies on a third such case. See Falise v. Am. Tobacco Co., 241 B.R. 63,
67 (E.D.N.Y. 1999) (rejecting plaintiffs’ attempt to retroactively create subject-matter
jurisdiction through civil RICO claim in amended complaint where court lacked “related to”
bankruptcy jurisdiction over original complaint).

14

The Court notes that it cannot find that Plaintiff’s Amended Complaint is merely curing a
technical defect in his original Complaint. Setting aside the fact that Count II of the Complaint
is based only on patent misuse, the original Complaint alleges no facts plausibly suggesting the
precise trademarks infringed, unfair competition engaged in, and false advertising engaged in by
Plaintiff: rather, Paragraph 40 of the Complaint merely references a conclusory (and superfluous)
allegation contained in Defendants’ letter to him dated August 30, 2013. (Dkt. No. 1, at ¶ 40
[Plf.’s Compl.]; Dkt. No. 1, Attach. 6, at 4 [Ex. F. to Plf.’s Compl.].)
Second, the Court rejects Plaintiff’s attempt to assert the federal claim in question (i.e.,
for a judgment declaring that Plaintiff has not committed trademark infringement, unfair
competition and/or false advertising) based on the alternative ground of futility. See Foman v.
Davis, 371 U.S. 178, 182 (1962) (explaining that permissible grounds upon which to base the
denial of a motion for leave to file an amended complaint include “undue delay, bad faith or
dilatory motive on the part of the movant, repeated failure to cure deficiencies by amendments
previously allowed, undue prejudice to the opposing party by virtue of allowance of the
amendment, futility of amendment, etc.”). More specifically, the Court finds that there is no
"actual controversy" sufficient to confer declaratory judgment jurisdiction over the proposed
amended claim for the same reason that there is no "actual controversy" sufficient to confer
declaratory judgment jurisdiction over Plaintiff’s original claim of patent misuse: rather than
threatening to enforce any trademark rights (or rights to be free from unfair competition or false
advertising), Defendants have merely attempted to enforce their contract rights under the
Divorce Agreement, including Plaintiff’s covenant not to interfere with the business of
Defendant Moss Tubes, Inc. (See, e.g., Dkt. No. 1, Attach. 6, at 4 [Ex. F of Plf.’s Compl.,

15

attaching page “3” of letter of Aug. 30, 2013, stating that Plaintiff’s failure to comply with
Defendants’ request to cease unlawful conduct will subject him to a “motion for contempt of the
Court Order” incorporating the Divorce Agreement].)
In this way, the totality of the circumstances do not reasonably suggest that suit by
Defendants (for trademark infringement, unfair competition and/or false advertising) is
imminent. See, e.g., Trippe Mfg. v. Am. Power Conversion Corp., 46 F.3d 624, 627 (7th Cir.
1995) (holding that no actual controversy existed because declaratory judgment defendant had
not threatened trademark infringement suit, and totality of circumstances did not reasonably
suggest that suit was imminent); United Am. Indus., Inc. v. Cumberland, 06-CV-1833, 2007 WL
38279, at *1-2 (D. Ariz. Jan. 5, 2007) (“[P]laintiff fails to demonstrate defendant's present
activity of [trademark] infringement or concrete steps taken with intent to conduct such activity
[to support a declaratory-judgment claim].”).
D.

Whether the Court Should Decline to Exercise Supplemental Jurisdiction
Over Plaintiff’s Remaining Claims

After carefully considering the matter, the Court answers this question in the affirmative
for the reasons stated in Defendants’ memoranda of law. See, supra, Parts I.B.1 and I.B.3. of
this Decision and Order. As a result, Plaintiff’s first and third claims are dismissed without
prejudice pursuant to 28 U.S.C. § 1367(c)(3).
ACCORDINGLY, it is
ORDERED that Defendants’ motion to dismiss (Dkt. No. 15) is GRANTED; and it is
further
ORDERED that Count II of Plaintiff’s Complaint (Dkt. No. 1) is DISMISSED for lack
of subject-matter jurisdiction; and it is further
16

ORDERED that the remainder of Plaintiff’s Complaint (Dkt. No. 1) is DISMISSED
without prejudice to refiling in state court.3 The Clerk of the Court is directed to enter judgment
and close this case.
Dated: September 18, 2014
Syracuse, New York

3

Plaintiff is advised that, pursuant to 28 U.S.C. § 1367(d), the statute of limitations
for his state law claims, to the extent those claims were timely filed in this Court, is tolled for a
period of thirty (30) days after the date of this Decision and Order, unless a longer tolling period
is provided under state law.
17