The opinion of the court was delivered by: Paul G. Gardephe, U.S.D.J.:
MEMORANDUM OPINION & ORDER
Attorney and qui tam plaintiff Leonid Mikityanskiy brings this false patent marking action under 35 U.S.C. § 292, alleging that Defendants marketed a digital pacifier thermometer marked with an expired patent number with the intent to deceive the public about patent coverage for the product. (Cmplt. ¶¶ 3, 20) Defendants have moved to dismiss the Complaint pursuant to Fed. R. Civ. P. 9(b) and 12(b)(6), or, in the alternative, to transfer the venue of the action to the Northern District of Illinois pursuant to 28 U.S.C. § 1404(a). For the reasons stated below, Defendants' motion to dismiss will be granted.
Defendants manufacture and sell a digital pacifier thermometer, the "Tender Tykes Digital Pacifier Thermometer," which had been the subject of U.S. Patent No. 5,013,160. (Cmplt. ¶¶ 15, 20) This patent expired on May 7, 2003, due to non-payment of maintenance fees (Cmplt. ¶¶ 16-17; Ex. B), but Defendants continued to distribute and sell the pacifier in packaging marked with the expired patent. (Cmplt. ¶¶ 21-24; Ex. C) The packaging states "© 2008 MABIS Healthcare," which indicates that the packaging has been revised since the patent expired in 2003. (Cmplt. ¶ 29; Ex. C) Plaintiff purchased the thermometer at a Walgreens store in Philadelphia on February 19, 2011, but the thermometer is sold nationwide, including in this district. (Cmplt. ¶¶ 21, 51; Ex. E)
On May 2, 2011, this Court gave Plaintiff leave to amend his complaint in light of In re BP Lubricants USA Inc., 637 F.3d 1307 (Fed. Cir. 2011), a recent Federal Circuit case that addresses pleading requirements in false patent marking cases. (Dkt. No. 3) Plaintiff chose not to amend his complaint, and Defendants' motion to dismiss or transfer was filed thereafter.
"To survive a motion to dismiss, a complaint must contain sufficient factual matter, accepted as true, to 'state a claim to relief that is plausible on its face.'" Ashcroft v. Iqbal, 129 S. Ct. 1937, 1949 (2009) (quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007)). "In considering a motion to dismiss . . . the court is to accept as true all facts alleged in the complaint," Kassner v. 2nd Ave. Delicatessen Inc., 496 F.3d 229, 237 (2d Cir. 2007) (citing Dougherty v. Town of N. Hempstead Bd. of Zoning Appeals, 282 F.3d 83, 87 (2d Cir. 2002)), and must "draw all reasonable inferences in favor of the plaintiff." Id. (citing Fernandez v. Chertoff, 471 F.3d 45, 51 (2d Cir. 2006)).
A complaint is inadequately pled "if it tenders 'naked assertion[s]' devoid of 'further factual enhancement,'" Iqbal, 129 S. Ct. at 1949 (quoting Twombly, 550 U.S. at 557), and does not provide factual allegations sufficient "to give the defendant fair notice of what the claim is and the grounds upon which it rests." Port Dock & Stone Corp. v. Oldcastle Ne., Inc., 507 F.3d 117, 121 (2d Cir. 2007) (citing Twombly, 550 U.S. at 555).
"In considering a motion to dismiss for failure to state a claim pursuant to Rule 12(b)(6), a district court may consider the facts alleged in the complaint, documents attached to the complaint as exhibits, and documents incorporated by reference in the complaint." DiFolco
v. MSNBC Cable L.L.C., 622 F.3d 104, 111 (2d Cir. 2010) (citing Chambers v. Time Warner, Inc., 282 F.3d 147, 153 (2d Cir. 2002); Hayden v. County of Nassau, 180 F.3d 42, 54 (2d Cir. 1999)). Additionally, "[w]here a document is not incorporated by reference, the court may never[the]less consider it where the complaint 'relies heavily upon its terms and effect,' thereby rendering the document 'integral' to the complaint." Id. (quoting Mangiafico v. Blumenthal, 471 F.3d 391, 398 (2d Cir. 2006)).
II.DEFENDANTS' MOTION TO DISMISS WILL BE GRANTED
Under 35 U.S.C. § 292, (a) . . . Whoever marks upon, or affixes to, or uses in advertising in connection with any unpatented article, the word "patent" or any word or number importing that the same is patented for the purpose of deceiving the public . . . [s]hall be fined not more than $500 for every such offense. (b) Any person may sue for the penalty, in which event one-half shall go to the person suing and the other to the use of the United States.
To establish false marking, two elements must be shown: (1) marking an unpatented article, and (2) intent to deceive the public. Forest Grp., Inc. v. Bon Tool Co., 590 F.3d. 1295, 1300 (Fed. Cir. 2009). "An article covered by a now-expired patent qualifies as 'unpatented.'" San Francisco Tech v. Bayer Corp., No. 11 Civ. 402(LBS), 2011 WL 2207534, at *2 ...