The opinion of the court was delivered by: A. Richard Caputo United States District
Presently before the Court is Defendants' Motion to Dismiss (Doc. 13). Defendants move to dismiss Plaintiff's Amended Complaint pursuant to Rules 12(b)(1), 12(b)(2) and 12(b)(6) of the Federal Rules of Civil Procedure. For the reasons set forth below, I will grant the motion.
Plaintiff, Noble Fiber Technologies ("Noble") markets and distributes a silver fiber which is incorporated into fabrics for medical uses. (Doc. 3, ¶ 1.) Noble is a Pennsylvania limited liability corporation with its principal place of business located in Scranton, Pennsylvania. Id.
Defendant Argentum Medical is a Delaware limited liability corporation which also sells products incorporating silver fiber, under the name Silverlon, and has its principal place of business in Willowbrook, Illinois. (Doc. 3, ¶ 2.) Defendant Argentum International is a Georgia limited liability corporation with its principal place of business in Lakemont, Georgia. (Doc. 3, ¶ 3.) Defendant Argentum Research is a Georgia corporation with its principal place of business in Lakemont, Georgia. (Doc. 3, ¶ 4.) Defendant Tom Miller is purportedly an agent of Argentum Medical, Argentum International, and Argentum Research. (Doc. 3, ¶ 5.)
Argentum International is alleged to be the current assignee of U.S. Patent No. 6,087,549 ("the '549 Patent"), U.S. Patent No. 6,861,570 ("the '570 Patent") and U.S. Patent Application 09/613,961 ("the '961 Application"). (Doc. 3, ¶ 3.) In addition, Argentum Medical is alleged to be the exclusive licensee of the '570 Patent and the '961 Application. (Doc. 3, ¶ 6.) The '570 Patent is a continuation of the '549 Patent, and the '961 Application is a child patent of the '549 Patent. (Doc. 3, ¶¶ 11-13, 25.) It is undisputed that the '961 Application had not issued as a patent as of September 13, 2005.
According to Plaintiff, the Defendants' conduct and correspondence pertaining to claims covered by the '549 Patent, the '570 Patent and the '961 Application have placed Noble in apprehension of an infringement suit. (Doc. 3, ¶ 31.) In particular, Noble alleges that Argentum Medical, Argentum Research, and Tom Miller accused Julius Zorn, Inc. ("Juzo") of infringing "Silverlon's patents" through Juzo's incorporation of silver fiber fabrics developed by Noble into Juzo's products. (Doc. 3, ¶¶ 17-18.) Plaintiff further alleges that Tom Miller represented to Juzo that William McNally, President and CEO of Noble Fiber, knows that Noble's products infringe "Silverlon's patents" but will not inform Juzo of the infringement. (Doc. 3, ¶¶ 19-20.) Tom Miller also stated, however, that Argentum would not pursue Juzo for infringement since it did not sell compression wound dressings. (Doc. 3, ¶ 21.) Further, Tom Miller is alleged to have stated to Juzo that Johnson & Johnson is infringing Argentum's patent rights, but that Argentum would not pursue Johnson & Johnson because it is too big to sue. Id.
Next, Noble alleges that on June 30, 2005, Tom Miller sent an email to J & D Wilkie, Ltd, a company who had considered utilizing Noble's silver fiber technology in some of its textile products. (Doc. 3, ¶¶ 22-23.) The email allegedly stated that "Noble Fiber will be infringing on Argentum's IP if they promote or sell a silver fiber for physiological condition." Id. The email did not clearly mention either the '570 patent or the '961 Application.
Then, on April 8, 2005, Argentum Medical allegedly sent a letter to Noble ("April 8th Letter"). (Doc. 3, ¶ 24.) The letter, as submitted by the Defendants, is addressed to Noble's affiliate, Sauquoit Industries, and states in relevant part:
[Your] product or products appear to share many if not all of the features of the subject matter claimed in U.S. Patent No. 6,861,570. Accordingly, Argentum Medical invites you or your representative to contact the undersigned to explore possible licensing opportunities with regard to U.S. Patent No. 6,861,570 and related patents and patent applications.
Alternatively, Argentum Medical invites you to provide written comments on which features of the subject matter claimed in U.S. Patent No. 6,861,570 are not found in your product or products. (Doc. 14, Ex. 1.) On May 11, 2005, Argentum Medical allegedly wrote Noble a virtually identical letter concerning the claims contained in the '961 Application ("May 11th Letter"). (Doc. 3, ¶¶ 26.) On September 13, 2005, Plaintiff filed a Complaint (Doc. 1) in this Court. On October 21, 2005, Plaintiff filed an Amended Complaint seeking a declaratory judgment regarding the '549 Patent and the '570 Patent; and alleging violations of the Lanham Act, 15 U.S.C. § 1125, and Pennsylvania law. (Doc. 3.)
According to Defendants on October 3, 2005, in the interim between complaints, Defendants' counsel wrote a letter to Plaintiff's counsel stating that Noble's single-layered silver nylon wound dressings "would not infringe Argentum's '570 Patent, which covers certain multi-layered wound dressings" ("October 3rd Letter"). (Doc. 14, Ex. 2.)
Following the filing of the Amended Complaint, on February 3, 2006, Defendants filed the present Motion to Dismiss (Doc. 13). Plaintiff filed a Brief in Opposition (Doc. 20), along with supporting Declarations from Vandana Koelsch (Doc. 18) and William McNally (Doc. 19) on March 6, 2006. Defendants submitted a Reply Brief (Doc. 30) on March 16, 2006. This motion is, therefore, fully briefed and ripe for disposition.