The opinion of the court was delivered by: Edward J. Davila United States District Judge
United States District Court For the Northern District of California
ORDER GRANTING MOTION TO DISMISS WITH LEAVE TO AMEND; TERMINATING MOTION TO STAY AS MOOT; AND DENYING MOTION TO TRANSFER [Re: Docket Item No. 11]
In this false patent marking action, Plaintiff Trent West ("West") alleges that Defendant Quality Gold, Inc. ("QGI") falsely has advertised to the public that QGI holds a patent covering 21 tungsten jewelry finger rings. West asserts a single claim of false marking in violation of 35 U.S.C. 22 § 292. On August 8, 2011, QGI filed a motion to dismiss the complaint pursuant to Federal Rule of 23 Civil Procedure 12(b)(6). QGI also raised a constitutional challenge to § 292*fn1 and asserted 24 alternative motions to stay the litigation pending enactment of patent reform law and to transfer the 25 action to the Southern District of Ohio pursuant to 28 U.S.C. § 1404(a). West filed an opposition on 26 August 22, 2011, and QGI filed a reply on August 29, 2011. The Court held a hearing on March 23, 27 2012. Having considered the parties' submissions and argument and the relevant law, the Court hereby GRANTS the motion to dismiss with leave to amend, TERMINATES the motion to stay as 2 moot, and DENIES the motion to transfer.
West alleges that in the late 1990s he began investigating ways to "utilize the unique esthetic and durability properties of tungsten carbide in jewelry finger rings." Complt. ¶ 7. He first applied 6 for a patent covering tungsten carbide jewelry finger rings in 1998 and he now owns several patents 7 in this field. Id. West began selling tungsten carbide jewelry finger rings in 2000, and he claims 8 that by 2002 he was recognized as a pioneer in the "previously unrecognized market for tungsten 9 carbide jewelry finger rings." Id. ¶ 8. West asserts that QGI has distributed finger rings covered by 10 his patents; on July 16, 2010, West filed suit against QGI for patent infringement. See Trent West v. Quality Gold, Inc., Case No. 5:10-cv-03124-EJD. That case is pending before the undersigned and it has been related to the present case under this Court's Civil Local Rules. patent application no. 12,141,791 has been "granted" when in fact that application has not been 15 granted. Complt. ¶¶ 12-13. 19 claim upon which relief may be granted. "Dismissal can be based on the lack of a cognizable legal 20 theory or the absence of sufficient facts alleged under a cognizable legal theory." Balistreri v. Pacifica Police Dep't, 901 F.2d 696, 699 (9th Cir. 1990). For purposes of evaluating a motion to 22 dismiss, the court "must presume all factual allegations of the complaint to be true and draw all reasonable inferences in favor of the nonmoving party." Usher v. City of Los Angeles, 828 F.2d However, mere conclusions couched as factual allegations are not sufficient to state a claim.
On May 24, 2011, West filed the present action, claiming that QGI falsely advertises that its
Pursuant to Fed. R. Civ. P. 12(b)(6), a complaint may be dismissed for failure to state a 556, 561 (9th Cir. 1987).
See Papasan v. Allain, 478 U.S. 265, 286 (1986); see also McGlinchy v. Shell Chem. Co., 845 F.2d 802, 810 (9th Cir. 1988). The complaint must plead "enough facts to state a claim to relief that isplausible on its face." Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007). A claim is plausible 2 on its face "when the plaintiff pleads factual content that allows the court to draw the reasonable 3 inference that the defendant is liable for the misconduct alleged." Ashcroft v. Iqbal, 129 S.Ct. 1937, 4 1949 (2009). Thus, "for a complaint to survive a motion to dismiss, the non-conclusory 'factual 5 content,' and reasonable inferences from that content, must be plausibly suggestive of a claim 6 entitling the plaintiff to relief. " Moss v. U.S. Secret Serv., 572 F.3d 962, 969 (9th Cir. 2009).
provision that allowed any private individual to sue manufacturers who labeled their products with 10 false or expired patent numbers 'for the purpose of deceiving the public.'" Brooks v. Dunlop Manufacturing Inc., No. C-10-04341-CRB, 2011 WL 6140912, at *1 n.1 (N.D. Cal. Dec. 9, 2011).
"If the plaintiff won the lawsuit, he would split the penalty or settlement proceeds with the 13 America Invents Act, H.R. 1249, 112th Cong. (1st Sess. 2011), amending 35 U.S.C. § 292 to 15 eliminate the qui tam provision" relied upon by West. FLFMC, LLC v. Wham-O, Inc., 444 Fed. 16 Appx. 447, 448 (Fed. Cir. 2011). The statute now provides that only the United States may sue for 17 the statutory penalty of $500 per false marking offense. See 35 U.S.C. § 292(a). However, the 18 amendment added a new subsection to § 292, providing that "[a] person who has suffered a 19 competitive injury as a result of a violation of ...