Adirondack Cookie Company Inc. v. Monaco Baking Company

Filing 18

MEMORANDUM-DECISION AND ORDER granting 8 Motion to Dismiss. Signed by U.S. District Judge Mae A. D'Agostino on 5/9/12. (ban)

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF NEW YORK
____________________________________________
ADIRONDACK COOKIE COMPANY INC.,
doing business as CORSO'S COOKIES,
Plaintiff,
vs.
5:11-cv-1048
(MAD/DEP)
MONACO BAKING COMPANY,
Defendant.
____________________________________________
APPEARANCES:

OF COUNSEL:

HANCOCK & ESTABROOK, LLP
1500 AXA Tower I
Syracuse, New York 13221
Attorneys for Plaintiff

ASHLEY D. HAYES, ESQ.
JAMES P. YOUNGS, ESQ.

LEE PALMATEER LAW OFFICE, LLC
90 State Street, Suite 700
Albany, New York 12207
Attorneys for Defendant

LEE PALMATEER, ESQ.

LAUSON & TARVER, LLP
880 Apollo Street, Suite 301
El Segundo, California 90245
Attorneys for Defendant

ROBERT J. LAUSON, ESQ.

Mae A. D'Agostino, U.S. District Judge:

MEMORANDUM-DECISION AND ORDER
I. INTRODUCTION
Plaintiff commenced this action on September 1, 2011, pursuant to the Declaratory
Judgment Act. Currently before the Court is Defendant's motion to dismiss for lack of personal
and subject-matter jurisdiction. See Dkt. No. 8.

II. BACKGROUND
A.

Underlying conduct
Plaintiff is a New York corporation, with its principal place of business at 314 Lakeside

Road, Syracuse, New York. See Dkt. No. 5 at ¶ 2. Defendant is a California corporation, with its
principal place of business at 14700 Marquardt Avenue, Santa Fe Springs, California. See id. at ¶
3.
Plaintiff is in the business of manufacturing, decorating and selling handmade, highquality cookies. See id. at ¶ 9. Plaintiff's cookies are packaged and sold in a variety of ways, one
of which is as a "Cookie Bouquet." See id. at ¶ 10. A Cookie Bouquet is comprised of several
components that are combined in a way so as to display the cookies in a manner reminiscent of a
flower arrangement or bouquet. See id. at ¶ 11. The Cookie Bouquet is comprised of decorative
cookies, each one resting on a clear plastic pedestal attached to a wood post (the "Stand"), which
is inserted into a hole cut into a rounded base, for display in a manner similar to a flower
arrangement. See id. at ¶ 12.
The plastic pedestals of the Stands used in the Cookie Bouquets are manufactured from a
mold. See id. at ¶ 13. At the time the mold for the Cookie Bouquet Stand was created, Plaintiff
intended to apply for a patent covering its design and, therefore, the words "Patent Pending" were
incorporated into the mold during the design phase. See id. Plaintiff, however, never applied for
a patent and the Patent Pending imprint was inadvertently retained on the mold due to an
oversight, resulting in the imprint of Patent Pending on a limited number of the Cookie Bouquet
Stands. See id. at ¶ 14.
On August 3, 2011, Defendant, through its attorney, contacted Plaintiff and informed
Plaintiff that it was aware that Plaintiff 's Cookie Bouquet Stand is nearly identical to a cookie
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support stand used by Defendant. See id. at ¶ 19. In its letter, Defendant claimed to be "'the
inventor of the cookie support stand packaging concept.'" See id. Defendant further accused
Plaintiff of copying its design for the Stand and filing a fraudulent patent application with the
Patent Office, considering that Defendant is the actual inventor of the Cookie Support Stand. See
id.; see also Dkt. No. 8-5.
On August 31, 2011, Defendant sent Plaintiff an additional letter informing Plaintiff that it
believed that it has a claim for false marking pursuant to 35 U.S.C. § 292 (the "False Marking
Statute") and that, "if a patent application is pending, [Plaintiff's] letter does not address the false
declaration that must have been filed, meaning [Defendant] has a cause[ ] of action in the
alternative for the fraud practiced on the Patent Office." See Dkt. No. 8-9.
In response to this correspondence, Plaintiff brought this action against Defendant
pursuant to the Declaratory Judgment Act, 28 U.S.C. § 2201, seeking a judicial declaration that it
is not liable for false marking under the Patent Act, 35 U.S.C. § 292. See Dkt. No. 5 at ¶ 1.

B.

Relevant statutory provisions
The False Marking Statute was enacted on August 29, 1842. See 5 Stat. 544, § 5. The

statute provided for a fine of "not more than $500" for each article a defendant falsely marked as
patented "for the purpose of deceiving the public." Id. For over a hundred years, "the fine was
levied only once on each scheme to falsely mark, rather than once on each item falsely marked."
Advanced Cartridge Technologies, LLC v. Lexmark International, Inc., No. 8:10-cv-486, 2011
WL 6719725, *1 (M.D. Fla. Dec. 21, 2011) (citing Odin B. Roberts, Actions Qui Tam Under the
Patent Statutes of the United States, 10 HARV. L. REV. 265, 272–73 (1896)).

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The False Marking Statute's qui tam provision "authorize[d] someone to pursue an action
on behalf of the government as well as himself." Stauffer v. Brooks Brothers, Inc., 619 F.3d
1321, 1325 (Fed. Cir. 2010) (internal quotation mark omitted). According to the Federal Circuit
Court of Appeals,
[f]alse marking can injure the public interest in full and free
competition because the act of false marking misleads the public
into believing that a patentee controls the article in question (as well
as like articles), externalizes the risk of error in the determination,
placing it on the public rather than the manufacturer or seller of the
article, and increases the cost to the public of ascertaining whether a
patentee in fact controls the intellectual property embodied in an
article.
Juniper Networks, Inc. v. Shipley, 643 F.3d 1346, 1351 (Fed. Cir. 2011) (quoting Clontech Labs.,
Inc. v. Invitrogen Corp., 406 F.3d 1347, 1356–57 (Fed. Cir. 2005)). As an incentive to qui tam
plaintiffs, the statute enabled "any person to sue for the statutory penalty and retain one-half of
the recovery." Boyd v. Schildkraut Giftware Corp., 936 F.2d 76, 79 (2d Cir. 1991).
By assigning a portion of the United States' damages claim to "any person," Congress
effectively granted qui tam plaintiffs Article III standing to sue under the False Marking Statute.
See Stauffer, 619 F.3d at 1325 (holding that "Congress has, by enacting section 292, defined an
injury in fact to the United States. . . . Because the government would have standing to enforce
its own law, [a qui tam plaintiff], as the government's assignee, also has standing to enforce the
[False Marking Statute]"). "[E]ven though a [qui tam plaintiff] may suffer no injury himself, a
qui tam provision operates as a statutory assignment of the United States' rights, and 'the assignee
of a claim has standing to assert the injury in fact suffered by the assignor.'" Id. (quoting Vermont
Agency of Natural Resources v. United States ex rel. Stevens, 529 U.S. 765, 773 (2000)).
Accordingly, a qui tam plaintiff proceeding under the original False Marking Statute did not need

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to allege injury to himself or injury to competition in order to have standing to sue. See id. at
1327.
Despite the provision for qui tam suits in the original statute, the False Marking Statute
remained largely dormant until 2010, when the effects of the Federal Circuit's decision in Forest
Group, Inc. v. Bon Tool Co., 590 F.3d 1295, 1301-04 (Fed. Cir. 2009), were realized. See
Berkeley Technology Law Journal Annual Review 2011, Patent Law: Additional Developments,
26 BERKELEY TECH. L.J. 367, 368 (2011). The Federal Circuit in Forest Group, Inc., held that a
plaintiff bringing suit under the False Marking Statute could recover a distinct fine for each
falsely marked item. This holding led to a rapid increase in the number of large false marking
awards. See Advanced Cartridge Technologies, LLC, 2011 WL 6719725, at *2.
On September 16, 2011, President Barack Obama signed into law the Leahy–Smith
America Invents Act. See Leahy–Smith America Invents Act, Pub. L. No. 112–29, 125 Stat. 284
(Sep. 16, 2011). Part of this new legislation amended 35 U.S.C. § 292 to, among other things,
eliminate the qui tam provisions of the False Marking Statute and institute a "competitive injury"
requirement for false marking suits. See id. Specifically, this new provision provides that "a
person who has suffered a competitive injury as a result of a violation of this section may file a
civil action in a district court of the United States for recovery of damages adequate to
compensate for the injury." 35 U.S.C. § 292(b). As such, a private party may now sue under the
provisions of the False Marking Statute if they have suffered a "competitive injury" from the
defendant's actions. See id.

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III. DISCUSSION
Defendant argues that the Court should decline to exercise jurisdiction over this matter
because Plaintiff is simply using the Declaratory Judgment Act to "attempt to preserve the local
forum and gain a strategic advantage over [Defendant], trying to force it to agree to a general
release of all claims (including as to its pending patent) to make the nuisance lawsuit go away."
See Dkt. No. 8-1 at 21. Further, Defendant asserts that the 2011 amendments to the False
Marking Statute make Plaintiff's action premature, since Defendant can no longer bring a qui tam
action and because its patent application is only pending and, therefore, it does not yet have any
proprietary rights in the invention. See Dkt. No. 15 at 3-4. Plaintiff, however, claims that this
matter is ripe for review because, in patent infringement cases, "'there is not even a need for a
party to have a reasonable apprehension of suit.'" See Dkt. No. 13 at 20 (quotation and other
citation omitted). Plaintiff argues that "the questions of [its] liability for false marking and the
existence of 'competitive injury' suffered by [Defendant] are ripe for adjudication." See id. at 21.
Finally, Plaintiff asserts that the Court should exercise its discretion to hear this justiciable
controversy. See id. at 22.

A.

Standard of review
When a party moves to dismiss a claim pursuant to Rule 12(b)(1), "the movant is deemed

to be challenging the factual basis for the court's subject matter jurisdiction." Cedars-Sinai Med.
Ctr. v. Watkins, 11 F.3d 1573, 1583 (Fed. Cir. 1993) (citations omitted). For purposes of such a
motion, "the allegations in the complaint are not controlling . . . and only uncontroverted factual
allegations are accepted as true. . . ." Id. (internal citations omitted). Both the movant and the
pleader are permitted to use affidavits and other pleading materials to support and oppose the
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motion to dismiss for lack of subject matter jurisdiction. See Makarova v. United States, 201 F.3d
110, 113 (2d Cir. 2000) (citation omitted). "Furthermore, 'jurisdiction must be shown
affirmatively, and that showing is not made by drawing from the pleadings inferences favorable to
the party asserting it.'" Gunst v. Seaga, No. 05 Civ. 2626, 2007 WL 1032265, *2 (S.D.N.Y. Mar.
30, 2007) (quoting Shipping Financial Services Corp. v. Drakos, 140 F.3d 129, 131 (2d Cir.
1998)); see also State Employees Bargaining Agent Coal. v. Rowland, 494 F.3d 71, 77 n.4 (2d
Cir. 2007) (holding that, in a motion to dismiss for lack of subject matter jurisdiction, a court
"may resolve disputed factual issues by reference to evidence outside the pleadings, including
affidavits").

B.

Declaratory judgment jurisdiction
The Declaratory Judgment Act provides, in part, that "[i]n a case of actual controversy

within its jurisdiction . . . any court of the United States, upon the filing of an appropriate
pleading, may declare the rights and other legal relations of any interested party seeking such
declaration, whether or not further relief is or could be sought." 28 U.S.C. § 2201(a). The "actual
controversy" requirement under the Declaratory Judgment Act is coextensive with Article III's
case or controversy requirement. See Teva Pharm. USA, Inc. v. Novartis Pharm. Corp., 482 F.3d
1330, 1338 (Fed. Cir. 2007) (citing Aetna Life Ins. Co. v. Haworth, 300 U.S. 227, 239–41, 57 S.
Ct. 461, 463–64, 81 L. Ed. 617 (1937)). "The requirement of an actual controversy encompasses
concepts such as ripeness, standing, and the prohibition against advisory rulings." BP Chems.
Ltd. v. Union Carbide Corp., 4 F.3d 975, 977 (Fed. Cir. 1993); see also Caraco Pharm. Labs.,
Ltd. v. Forest Labs., Inc., 527 F.3d 1278, 1291 (Fed. Cir. 2008) (noting that the concepts of

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standing, ripeness, and mootness bear on whether a case is justiciable under Article III of the
Constitution) (citation omitted).
The existence of a case or controversy is highly dependent upon the particular facts at
issue. The difference between an actual controversy and an abstract question in a given case "is
necessarily one of degree," and must be ascertained by examining the totality of the
circumstances to determine whether there is a "substantial controversy between parties having
adverse legal interests, of sufficient immediacy and reality to warrant the issuance of a
declaratory judgment." Golden v. Zwickler, 394 U.S. 103, 108 (1969) (quoting Md. Cas. Co. v.
Pac. Coal & Oil Co., 312 U.S. 270, 273, 61 S. Ct. 510, 512, 85 L. Ed. 826 (1941)).
In MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118 (2007), the Supreme Court
reiterated that the proper inquiry "'is whether the facts alleged, under all the circumstances, show
that there is a substantial controversy, between parties having adverse legal interests, of sufficient
immediacy and reality to warrant the issuance of a declaratory judgment.'" Id. at 127 (quotation
and footnote omitted). Moreover, the Court rejected the Federal Circuit's prior, more strict,
"reasonable apprehension of imminent suit" test for declaratory judgment standing as inconsistent
with the Court's prior decisions. See id. at 132 n.11.1
Since MedImmune, the Federal Circuit has applied the "under all the circumstances"
standard, while recognizing that a reasonable apprehension of suit is "only one of many ways a
patentee can satisfy the . . . all-the-circumstances test." Caraco Pharm. Labs., 527 F.3d at 1291.
Moreover, the Federal Circuit has held that MedImmune did not disturb many of its previous

The reasonable apprehension test required "both (1) an explicit threat or other action by
the patentee, which creates a reasonable apprehension on the part of the declaratory plaintiff that
it will face an infringement suit and (2) present activity which could constitute infringement or
concrete steps taken with the intent to conduct such activity." Novartis, 482 F.3d at 1339.
1

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patent-related case or controversy principles, including that "declaratory judgment jurisdiction
generally will not arise merely on the basis that a party learns of the existence of a patent owned
by another or even perceives such a patent to pose a risk of infringement, without some
affirmative act by the patentee." SanDisk Corp. v. STMicroelectronics, Inc., 480 F.3d 1372, 1381
(Fed. Cir. 2007). Therefore, the existence of an adverse patent or a subjective fear of potential
legal ramifications, without more, is insufficient to invoke declaratory judgment jurisdiction. See
Prasco, LLC v. Medicis Pharm. Corp., 537 F.3d 1329, 1339 (Fed. Cir. 2008) (citation omitted).
Rather, a justiciable controversy requires some affirmative act by the patentee, such as "creating a
reasonable apprehension of an infringement suit," "demanding the right to royalty payments," "or
creating a barrier to the regulatory approval of a product that is necessary for marketing." Id.
(citation omitted).
In the present matter, Plaintiff asks the Court to declare (1) that "its marking of the Stands
. . . does not give rise to liability under the False Marking Statute" and (2) that Defendant lacks
standing to bring a 35 U.S.C. § 292 claim against Plaintiff because Defendant has not suffered a
competitive injury. See Dkt. No. 5 at ¶¶ 27-31.
In Defendant's first letter to Plaintiff, Defendant stated that, since it "is the inventor of the
cookie support stick packaging concept, someone associated with [Plaintiff's] company must have
copied the design and filed a false declaration claiming inventorship, assuming one or more
patent applications are actually pending and your product is not being falsely marked in violation
of the federal false marking statute, 35 U.S.C. 292." See Dkt. No. 8-5. Plaintiff, however, admits
in their complaint that, although it intended to apply for a patent for its Cookie Bouquet Stand, no
such patent was ever applied for. See Dkt. No. 5 at ¶ 14. As such, Plaintiff acknowledges that

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there is no legitimate possibility of suit regarding Defendant's initial indication that Plaintiff may
have committed a "fraud practiced on the Patent Office." See Dkt. No. 8-9.
Moreover, Defendant's counsel first contacted Plaintiff regarding their potential false
marking claim on August 3, 2011, prior to the September 16, 2011 change in the False Marking
Statute that eliminated the qui tam provision. See Dkt. No. 8-5. The final letter Defendant's
counsel sent to Plaintiff was on August 31, 2011. See Dkt. No. 8-9. Again, this was prior to the
changes made to the False Marking Statute. Although an actual "controversy" was clear under
the qui tam provision of the prior version of the False Marking Statute, such a controversy is no
longer obvious. Specifically, the Court cannot discern what possible "competitive injury"
Defendant has suffered because Plaintiff marked their Cookie Bouquet Stand as "Patent Pending"
for a short period of time, prior to Defendant obtaining a valid patent. If Defendant had a valid
patent, with the enforceable rights that accompany such a valid patent, instead of a patent
application pending, such "competitive injury" would be clear. Since Defendant's patent
application was and is still pending, the Court fails to comprehend what injury Defendant could
claim if it decided to bring a suit under the newly enacted False Marking statute.
In certain cases, declaratory judgment jurisdiction can be found where the owner of an
allegedly valid patent has restrained the right of the alleged infringer in "its right to freely market"
the alleged infringing product. See Prasco, LLC v. MEDICIS Pharmaceutical Corp., 537 F.3d
1329, 1339 (Fed. Cir. 2008). The Federal Circuit has made clear that, "[r]ather than a purely
subjective fear or the mere existence of a potentially adverse patent alone, the alleged injury at the
root of most justiciable declaratory judgment controversies in the patent context is a 'restraint on
the free exploitation of non-infringing goods,' or an imminent threat of such restraint." Id.
(quotation and other citation omitted). In the present matter, Plaintiff does not allege that it can
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no longer use its Cookie Bouquet Stand and, therefore, it is not claiming that it can no longer
freely market its product.
Plaintiff is correct that, "in the patent infringement context, there is not even a need for a
party to have a 'reasonable apprehension of suit.'" Green Edge Enterprises, LLC v. Rubber Mulch
Etc., LLC, 620 F.3d 1287, 1300 (Fed. Cir. 2010) (quotation omitted). In the present matter,
however, unlike the cases relied upon by Plaintiff, Defendant does not yet, and may never, have a
valid patent for its own cookie support stand. Defendant simply has an application for a patent
pending. Defendant did not allege in its letters that Plaintiff had infringed on its patent because
no such patent exists. Without a valid patent, Defendant cannot bring a patent infringement suit
because it does not yet have any proprietary rights in its cookie support stand and the Court
cannot discern what possible competitive injury Defendant has suffered as a result of Plaintiff's
conduct, as required under the newly revised False Marking Statute. Therefore, although Plaintiff
may not even need a "'reasonable apprehension of suit,'" the possible controversy between the
parties must still be "of sufficient immediacy and reality to warrant the issuance of a declaratory
judgment.'" MedImmune, 549 U.S. at 127. No such controversy "of sufficient immediacy" exists
in the present matter.
Although Defendant did send Plaintiff letters discussing possible legal issues, these letters
simply indicated that Plaintiff may have committed a fraud on the Patent Office by filing a
fraudulent patent application, or that Plaintiff may have been in violation of the former version of
the False Marking Statute. Defendant never asserted that it planned to bring suit against Plaintiff
for infringing on its patent rights, nor could it since its patent application was and is still pending.
Considering all of the circumstances of Plaintiff's action – including the changes made to the
False Marking Statute, the fact that Defendant's patent application was and is still pending, the
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fact that the letters discussing the possibility of legal ramifications were made prior to the changes
made to the False Marking Statute, and that Plaintiff never filed a patent application for its
Cookie Bouquet Stand – the Court finds that Plaintiff's complaint fails to present an actual
justiciable controversy; and, therefore, the Court lacks jurisdiction over this Declaratory
Judgment action.

C.

Discretion to decline jurisdiction
In the alternative, even if the Court had jurisdiction over this matter, it would, in its

discretion, decline to exercise such jurisdiction to hear Plaintiff's complaint under the Declaratory
Judgment Act. The Declaratory Judgment Act "confers a discretion on the courts rather than an
absolute right upon the litigant." Wilton v. Seven Falls Co., 515 U.S. 277, 287 (1995). In
deciding whether to exercise its permissive jurisdiction, district courts may consider "equitable,
prudential, and policy arguments." MedImmune, Inc., 549 U.S. at 136 (2007).
"Anticipatory judgments of non-liability are particularly appropriate where there are
'claims asserting unaccrued or undefined rights or obligations arising under contractual relations
such as insurance and intellectual property.'" National Union Fire Ins. Co of Pittsburgh, P.A. v.
International Wire Group, Inc., No. 02 Civ. 10338, 2003 WL 21277114, *5 (S.D.N.Y. June 2,
2003) (quotation omitted). '"However, where the purported use of the [Declaratory Judgment
Act] seeks a declaration of non-liability to preemptively defeat actions grounded on tort claims
involving rights already accrued by reason of alleged wrongful conduct, various courts have held
that [such an] application is not a warranted purpose of the [Declaratory Judgment Act].'" Id.
(quotation and other citations omitted); see also John Wiley & Sons, Inc. v. Visuals Unlimited,
Inc., No. 11-CV-5453, 2011 WL 5245192, *4-*5 (S.D.N.Y. Nov. 2, 2011). "'The reason for this
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rule is clear: declaratory relief is intended to operate prospectively. There is no basis for
declaratory relief where only past acts are involved[.]'" John Wiley & Sons, Inc., 2011 WL
5245192, at *4 (quotation omitted).
In the present matter, Plaintiff admits that it "inadvertently" left the Patent Pending
imprint on the mold that it used to create a limited number of Cookie Bouquet Stands. See Dkt.
No. 5 at ¶ 14. Plaintiff claims that, when the mold was formed, it intended to apply for a patent,
but no such application was ever filed. See id. at ¶¶ 13-14. Plaintiff is not seeking prospective
relief, but merely a declaration that its past "inadvertent" use of the words "Patent Pending" on its
Cookie Bouquet Stand did not violate the False Marking Statute. Plaintiff is not seeking a
declaration that if it continues to label its Cookie Bouquet Stand with the words "Patent Pending"
that it would not violate the False Marking Statute because, clearly, without a patent application
pending, such a declaration could not be issued.
Moreover, Plaintiff commenced this action seeking a declaration that Defendant did not
suffer a competitive injury due to Plaintiff's actions. Essentially, Plaintiff is raising a defense to a
claim that it anticipates Defendant will possibly bring at some unknown time in the future. As
courts have repeatedly recognized, "'[t]he anticipation of defenses is not ordinarily a proper use of
the declaratory judgment procedure,'" as "'[i]t deprives the plaintiff of his traditional choice of
forum and timing, and it provokes a disorderly race to the courthouse.'" Hanes Corp. v. Millard,
531 F.2d 585, 592-93 (D.C. Cir. 1976), superceded by statute on other grounds; see also BASF
Corp. v. Symington, 50 F.3d 555, 559 (8th Cir. 1995). As such, "numerous courts have refused to
grant declaratory relief to a party who has come to court only to assert an anticipatory defense."
Veoh Networks, Inc. v. UMG Recordings, Inc., 522 F. Supp. 2d 1265, 1271 (S.D. Cal. 2007)

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(citing cases). Plaintiff is clearly asking the Court to rule on a defense it would present if
Defendant ever brought suit under the False Marking Statute.
Viewed collectively, the various considerations that guide the Court's exercise of its
Declaratory Judgment Act discretion weigh in favor of denying relief in this case; and, therefore,
the Court grants Defendant's motion to dismiss on this alternative basis.

IV. CONCLUSION
After carefully reviewing the entire record in this matter, the parties' submissions and the
applicable law, and for the above-stated reasons, the Court hereby
ORDERS that Defendant's motion to dismiss is GRANTED; and the Court further
ORDERS that the Clerk of the Court shall enter judgment in Defendant's favor and close
this case; and the Court further
ORDERS that the Clerk of the Court shall serve a copy of this Memorandum-Decision
and Order on all parties in accordance with the Local Rules.
IT IS SO ORDERED.

Dated: May 9, 2012
Albany, New York

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