The opinion of the court was delivered by: Royce C. Lamberth, Chief Judge
Before the Court is defendants' motion  to dismiss plaintiffs' first amended complaint . Plaintiffs' complaint contains two distinct claims. First, plaintiffs seek a declaratory judgment under 28 U.S.C. § 2201 for patent noninfringement and invalidity. Defendants move to dismiss this claim for lack of subject matter jurisdiction and for failure to state a claim for relief. Second, plaintiffs assert a claim for false patent marking under 35 U.S.C. § 292. Defendants move to dismiss this claim for lack of personal jurisdiction and for failure to state a claim for relief. Having carefully considered the motion, opposition, reply, surreply, and response to the surreply, the Court will grant defendants' motion to dismiss.
Defendant Nutriset Societe Par Actions Cimplifiee ("Nutriset") is French company formed in 1986 and based in Malaunay, France. Defendant Institut de Recherche pour le Developpement ("IRD") is a French public science and technology research institute affiliated with various French ministries. In 1997, defendants applied for a patent in the United States concerning the preparation and use of foods or nutritional supplements in the treatment of malnutrition and later received United States Patent No. 6,346,284 (the "'284 Patent"). Subsequently, defendants received a number of related international patents. Nutriset administers the patents and the development of products under them pursuant to an agreement between the defendants. Pls.' Mot. to Dismiss 2-3.
Defendants jointly developed Plumpy'nut®, a Ready-to-Use Therapeutic Food ("RUTF") designed to treat severe acute malnutrition in children and vulnerable adults around the world. Plumpy'nut® is a peanut-based product that does not need to be mixed with water, has a two-year shelf life, and does not require refrigeration. These qualities make Plumpy'nut® a particularly effective tool in combating severe malnutrition in developing countries. Pls.' Mot. to Dismiss 2-3. The Plumpy'nut®'s packaging contains the marking "IRD-Nutriset patent/Brevet/Patente." Def. Mot. to Dismiss Ex. 8.
Plaintiffs Mama Cares Foundation and Breedlove Foods are not-for-profit companies who have developed their own peanut-based RUTF products designed to treat malnutrition. Compl. ¶¶1, 2, 20. Plaintiffs allege that they were somehow "made aware" of the '284 Patent and that defendants "have declined to license others in the United States to manufacture a product allegedly covered by the '284 Patent . . . ." Compl. ¶¶20-21. Plaintiffs further allege that defendants "sent letters to organizations interested in producing nut-based RUTFs that indicate [defendants'] unwillingness to license the '284 Patent. . . ." Compl. ¶22. Plaintiffs allege that these actions left them "no choice" but to file a claim under the Declaratory Judgment Act, 28 U.S.C. § 2201, for patent noninfringement and invalidity, as well as a claim under 35 U.S.C. § 292 for false patent marking. Compl. ¶ 23.
Defendants have moved to dismiss each of plaintiffs' two claims. First, defendants have moved under Federal Rule of Civil Procedure 12(b)(1) to dismiss plaintiffs' declaratory judgment claim for lack of subject matter jurisdiction. Defendants contend that this Court has no subject matter jurisdiction because plaintiffs do not present a justiciable "case" or "controversy" under Article III of the Constitution and under the Declaratory Judgment Act, 28 U.S.C. §2201 et seq. Second, defendants have moved to dismiss plaintiffs' false patent marking claim for lack of personal jurisdiction or, in the alternative, for failing state a claim for relief. Fed. R. Civ. Pro. 12(b)(2), (6). The Court addresses each of these two claims in turn.*fn1
A.Declaratory Judgment Claim
Plaintiffs seek a declaratory judgment holding that, inter alia, plaintiffs' have not infringed on the '284 Patent and that the '284 Patent is invalid. Defendants move to dismiss plaintiffs' non-infringement claim first for lack of subject matter jurisdiction. The Declaratory Judgment Act provides, in relevant 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 of the Declaratory Judgment Act is rooted in Article III of the Constitution, which provides for federal jurisdiction over only 'cases and controversies.'" SanDisk Corp. v. STMicroelectronics, 480 F.3d 1372, 1378 (Fed. Cir. 2007).
Until recently, the Federal Circuit applied a two-prong test for determining the existence of declaratory judgment authority. See, e.g., Teva Pharms. USA, Inc. v. Pfizer Inc., 395 F.3d 1324, 1332 (Fed. Cir. 2005); Super Sack Mfg. Corp. v. Chase Packaging Corp., 57 F.3d 1054, 1058 (Fed. Cir. 1995). The first prong examined whether conduct by the patentee created a "reasonable apprehension" of suit on the part of the declaratory judgment plaintiff. Super Sack, 57 F.3d at 1058. The second prong focused on the declaratory judgment plaintiff's conduct, and examined whether there had been "meaningful preparation" to conduct potentially infringing activity. DuPont Merck Pharm. Co. v. Bristol-Myers Squibb Co., 62 F.3d 1397, 1401 (Fed. Cir. 1995) (quoting Arrowhead Indus. Water, Inc. v. Echolochem, Inc., 846 F.2d 731, 736 (Fed. Cir. 1988)).
However, subsequent Federal Circuit cases have recognized that the Supreme Court's decision in MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118, 127 S. Ct. 764, 166 L. Ed. 2d 604 (2007), rejected the "reasonable apprehension" prong. See SanDisk, 480 F.3d at 1380; Teva Pharms. USA, Inc. v. Novartis Pharms. Corp., 482 F.3d 1330, 1339 (Fed. Cir. 2007). The MedImmune court adopted a broader test for determining declaratory judgment authority: "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." MedImmune, 549 U.S. at 127(quoting Maryland Casualty Co. v. Pacific Coal & Oil Co., 312 U.S. 270, 273 (1941)).
The Federal Circuit applied this totality of the circumstances test in SanDisk Corp. v. STMicroelectronics, Inc., 480 F.3d 1372 (Fed. Cir. 2007). There, STMicroelectronics ("ST") had entered negotiations with SanDisk over a cross-licensing agreement. Id. at 1374-76. During the negotiations, ST gave SanDisk a "packet of materials, over 300 pages in length, containing, for each of ST's fourteen patents under discussion, a copy of the patent, reverse engineering reports for certain of SanDisk's products, and diagrams showing a detailed infringement analysis of SanDisk's products." Id. at 1382. ST also used "seasoned litigation experts" to detail "on an element-by-element basis, the manner in which ST believed each of SanDisk's products infringed the specific claims of each of ST's patents." Id. ST provided SanDisk with "a studied and determined infringement determination and asserted the right to a royalty based on this determination." Id. In response to these assertions by ST, SanDisk "maintained that it could proceed in its conduct without the payment of royalties to ST." Id. In light of these facts, the SanDisk court held that "a substantial controversy" existed "between parties having adverse legal interest, of sufficient immediacy and reality to warrant the issuance of a declaratory judgment." Id. (quoting Md. Cas., 312 U.S. at 273).
The more recent Innovative Therapies decision sheds additional light on what the Federal Circuit considers a "substantial controversy" of "sufficient immediacy and reality." Innovative Therapies, Inc. v. Kinetic Concepts, Inc., 599 F.3d 1377 (Fed. Cir. 2010). In that case, the Federal Circuit upheld the dismissal of Innovative Therapies, Inc.'s ("ITI") declaratory judgment action against Kinetic Concepts, Inc. ("KCI"). ITI argued that the ...