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Moss v. Moss

United States District Court, N.D. New York

September 18, 2014

GERALD MOSS, Individually, Plaintiff,
v.
KATHERINE MOSS, Individually; MICHAEL MOSS; and MOSS TUBES, INC., a New York Corporation, Defendants.

SCHMEISER, OLSEN & WATTS LLP ALBERT L. SCHMEISER, ESQ., AUTONDRIA S. MINOR, ESQ., NICHOLAS R. VALENTI, ESQ., Latham, NY, Counsel for Plaintiff.

HESLIN ROTHENBERG FARLEY & MESITI P.C. SUSAN E. FARLEY, ESQ., SHANNA K. SANDERS, ESQ., Albany, NY, Counsel for Defendants.

DECISION and ORDER

GLENN T. SUDDABY, District Judge.

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.

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].)

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. ยงยง 1114 and 1125), and unfair competition and false advertising in violation of Section 43 of the ...


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