Robert Bosch LLC v. Trico Products Corporation et al
MEMORANDUM OPINION Signed by the Honorable John F. Grady on July 24, 2013. Mailed notice(cdh, )
July 24, 2013
IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF ILLINOIS
ROBERT BOSCH LLC,
TRICO PRODUCTS CORPORATION, and
TRICO PRODUCTS CORPORATION,
ROBERT BOSCH LLC and ROBERT BOSCH )
No. 12 C 437
Before the court is counter-defendant Robert Bosch GmbH’s
(“Bosch GmbH”) motion to dismiss. For the reasons explained below,
we grant Bosch GmbH’s motion in part and deny it in part.
Counter-defendant Robert Bosch LLC (“Bosch USA”) is a whollyowned subsidiary of Bosch GmbH, a German company.
Bosch USA filed
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this lawsuit against Trico Products Corporation (“Trico”)1 for
infringement of seven patents relating to windshield wiper blades.
inventorship against Bosch USA and Bosch GmbH pursuant to 35 U.S.C.
Trico alleges that two individuals, Adriaan Swanepoel and
Johannes Fehrsen, invented a “beam-blade” windshield wiper in the
(Trico Counterclaim ¶ 27.)
Bosch GmbH, in an
attempt to commercialize the beam-blade concept, sought assistance
from Swanepoel and Fehrsen.
(Id. at ¶ 28.)
with Bosch GmbH, Swanepoel and Fehrsen conceived and disclosed to
Bosch GmbH certain inventions related to beam-blade wipers. (Id. at
¶¶ 29, 49.)
In 1998, without Swanepoel’s or Fehrsen’s permission,
applications in the United States claiming the same inventions
without naming Fehrsen and Swanepoel as inventors.
United States Patent and Trademark Office (“USPTO”) ultimately
granted those applications.
(See id. at ¶¶ 31, 51); see also U.S.
Patent Nos. 6,292,974 (the “‘974 Patent”) and 6,675,434 (the “‘434
Patent”). The patents, like the applications, list inventors other
than Fehrsen and Swanepoel.
(See Trico’s Counterclaim ¶¶ 31, 51.)
In its Third and Fourth Counterclaims, Trico seeks an order
Bosch USA also sued “Trico Products,” an entity that Trico contends
does not exist. (See Trico Answer, Dkt. 28, at 1 n.1.) Whether or not Trico
Products exists as a separate entity is irrelevant to the present motion.
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removing the named inventors from the ‘974 and ‘434 Patents and
substituting Fehrsen and Swanepoel.
(Id. at ¶¶ 42, 60.)
also seeks a declaration that it is the proper owner of the ‘974
(Id. at ¶¶ 43, 61.)
Bosch GmbH has moved to dismiss
Trico’s claims against it pursuant to Rule 12(b)(2) for lack of
In the alternative, it argues that it is
not a proper party to Trico’s § 256 claims because it assigned the
‘974 and ‘434 Patents to Bosch USA in 2008.
See Fed. R. Civ. P.
12(b)(6); see also Fed. R. Civ. P. 21 (“Misjoinder and Nonjoinder
Matters of personal jurisdiction in cases arising under the
patent laws are governed by Federal Circuit law.
LP v. GST AutoLeather, Inc., 799 F.Supp.2d 871, 874 (N.D. Ill.
2011) (Grady, J.) (citing Silent Drive, Inc. v. Strong Indus.,
Inc., 326 F.3d 1194, 1201 (Fed.Cir. 2003)).
“Rule 4 is the
starting point for any personal jurisdictional analysis in federal
Synthes (U.S.A.) v. G.M. Dos Reis Jr. Ind. Com de Equip.
Medico, 563 F.3d 1285, 1293 (Fed. Cir. 2009).
Pursuant to Rule
4(k)(1), serving a summons establishes personal jurisdiction over
a defendant “who is subject to the jurisdiction of a court of
general jurisdiction in the state where the district court is
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located[.]” See Fed. R. Civ. P. 4(k)(1)(A).
Rule 4(k)(2) provides
an alternative method of establishing personal jurisdiction over a
defendant where: “(1) the plaintiff’s claim arises under federal
law, (2) the defendant is not subject to jurisdiction in any
state’s courts of general jurisdiction, and (3) the exercise of
jurisdiction comports with due process.”
1294; see also Fed. R. Civ. P. 4(k)(2).
Synthes, 563 F.3d at
Under both provisions, we
apply the familiar “minimum contacts” due-process analysis.
Compensation and Placement, 326 U.S. 310, 316 (1945).
cases governed by Rule 4(k)(2), the relevant question is whether
the defendant has sufficient contacts “with the United States as a
whole” — rather than the forum state — to establish personal
Synthes, 563 F.3d at 1293.
We may presume that the
defendant is not subject to personal jurisdiction in any state
court if it does not identify an alternative state forum.
Touchcom, Inc. v. Bereskin & Parr, 574 F.3d 1403, 1415 (Fed. Cir.
2009) (“[I]f ‘the defendant contends that he cannot be sued in the
forum state and refuses to identify any other where suit is
4(k)(2).’”) (quoting ISI Int’l, Inc. v. Borden Ladner Gervais LLP,
256 F.3d 548, 552 (7th Cir. 2001)).
Here, Bosch GmbH has not
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identified any other state “where suit is possible,” therefore we
will proceed under Rule 4(k)(2).2
Trico focuses primarily on specific — rather than general —
To establish specific jurisdiction, Trico must show
that “(1) the defendant purposefully directed its activities at
residents of the forum, (2) the claim arises out of or relates to
the defendant’s activities with the forum, and (3) assertion of
personal jurisdiction is reasonable and fair.”
Synthes, 563 F.3d
Bosch GmbH purposefully directed its activities at the
United States by filing patent applications in this country.
Deprenyl Animal Health, Inc. v. University of Toronto Innovations
Foundation, 297 F.3d 1343, 1353 (Fed. Cir. 2002) (“Obtaining [a
United States Patent] is a meaningful contact with the United
States; it requires a patentee purposefully to avail him or herself
of a significant benefit of United States law.”).
And Trico’s §
256 claim arises directly from Bosch GmbH’s applications: Trico
alleges that Bosch GmbH misidentified the inventors of the devices
claimed in the ‘974 and ‘434 Patents.
(See Counterclaim ¶¶ 30-31,
The applications constitute only two contacts with the
United States, but even one contact may suffice where, as here, it
is “substantially related” to the plaintiff’s claim. Red Wing Shoe
The Federal Circuit has reserved ruling on whether a court must first
analyze personal jurisdiction under Rule 4(k)(1) before reaching Rule 4(k)(2).
See Synthes, 563 F.3d at 1296; Touchcom, 574 F.3d at 1415 n.5. Trico, which has
the burden of establishing personal jurisdiction, relies on Rule 4(k)(2)
exclusively. (See Trico Resp. at 4-7.) Under the circumstances, we think it is
appropriate to proceed directly to Rule 4(k)(2).
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Co., Inc. v. Hockerson-Halberstadt, Inc., 148 F.3d 1355, 1359 (Fed.
Cir. 1998); see also See Synthes, 563 F.3d at 1297.
As Bosch GmbH
points out, (see Bosch GmbH Reply at 9-10), some of the cases that
Trico relies on involved multiple contacts with the forum state.
See, e.g., Deprenyl, 297 F.3d at 1351-52 (the defendant’s relevant
contacts included negotiations by telephone and mail and one trip
to the forum state). But the claims in those cases were different.
See id. (declaratory judgment action asserting that the parties’
license agreement did not apply to sales of a certain drug and that
the sales did not infringe the licensed patent); see also Genetic
Implant Systems, Inc. v. Core-Vent Corp., 123 F.3d 1455, 1458-59
(Fed. Cir. 1997) (declaratory judgment action asserting invalidity
and noninfringement). The gravamen of a § 256 claim is the content
of the application and the patent itself.
We also conclude that exercising personal jurisdiction over
Bosch GmbH is “reasonable and fair.”
Synthes, 563 F.3d at 1297.
comport with fair play and substantial justice, we consider five
factors: (1) the burden on the defendant, (2) the forum’s interest
in adjudicating the dispute, (3) the plaintiff’s interest in
obtaining convenient and effective relief, (4) the interstate
resolution of controversies, and (5) the shared interest of the
states in furthering fundamental substantive social policies.” Id.
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at 1299 (internal quotation marks omitted).
While litigating in a
foreign jurisdiction would impose some burden on Bosch GmbH, we do
not believe that the burden would be onerous.
We take judicial
notice of the fact that federal lawsuits rarely proceed to trial,
so the likelihood that Bosch GmbH’s officers would have to appear
in Chicago for trial is small.
It is much more likely that Trico
would depose Bosch GmbH’s officers, but we would not require them
to travel to Chicago for that purpose.
As for written discovery,
litigants routinely exchange documents electronically even in
lawsuits between parties residing in the same district.
parties in this case are clearly sophisticated and resourceful, so
we are confident that they could manage the discovery process to
eliminate any unnecessary burden on Bosch GmbH.
With respect to
the second factor, the United States has a substantial interest in
enforcing its patent laws and ensuring that patents and patent
applications accurately disclose inventorship.
See id. at 1299
(“The United States has a ‘substantial interest’ in enforcing the
federal patent laws.”); see also Chou v. University of Chicago, 254
F.3d 1347, 1358 (Fed. Cir. 2001) (both individual inventors, and
the public, have an interest in “assuring correct inventorship
designations on patents”).
The third and fourth factors also
support exercising jurisdiction.
As we discuss below, Bosch GmbH
disclaims any continuing economic interest in the patents.
the same time, it denies Trico’s claim that Swanepoel and Fehrsen
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are the true inventors, (see Bosch GmbH Reply at 12), and it likely
possesses evidence relevant to Trico’s claim.
Indeed, it is
unclear at this stage of the case what basis Bosch USA has for
gleaned from Bosch GmbH, the party involved in the events that give
Counterclaims ¶ 31 (“Bosch [USA] states that Fehrsen was not named
as an inventor because he was not an inventor . . . .”).)
GmbH did not assign the patents to Bosch USA until June 2008, years
after the USPTO issued the ‘974 Patent (2001) and the ‘434 Patent
(See Assignment, dated June 17, 2008, attached as part of
defendants, it seems likely that Bosch GmbH will possess most if
not all of the information relevant to inventorship, and it would
be burdensome for Trico to obtain that information if Bosch GmbH is
not a party to this lawsuit.3
See, e.g., Lechoslaw v. Bank of
America, N.A., 618 F.3d 49, 57-58 (1st Cir. 2010) (recognizing the
delay and expense associated with seeking discovery through the
The delays that attend international third-
party discovery ultimately affect this court, impairing our ability
to efficiently adjudicate the parties’ dispute.
GmbH has not suggested that exercising jurisdiction will somehow
Trico may have no choice if it cannot amend its complaint to allege
that Bosch GmbH has a sufficient stake in the inventorship question to make it
But for purposes of
a proper party to Trico’s § 256 claim.
evaluating personal jurisdiction, we think that the burden of international
third-party discovery is a relevant consideration.
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impair any shared interest between the United States and Germany.
In sum, this is not the “rare” case where fairness dictates
declining jurisdiction over a defendant that has “purposefully
engaged in forum activities.”
Synthes, 563 F.3d at 1300 (citation
and internal quotation marks omitted).
Bosch GmbH’s motion to dismiss Trico’s counterclaims for lack
of personal jurisdiction is denied.
Whether Bosch GmbH is a Proper Party to Trico’s § 256 Claim
Section 256 provides a cause of action for parties seeking to
The error of omitting inventors or naming persons who are
not inventors shall not invalidate the patent in which
such error occurred if it can be corrected as provided in
this section. The court before which such matter is
called in question may order correction of the patent on
notice and hearing of all parties concerned and the
Director shall issue a certificate accordingly.
35 U.S.C. § 256(b); see also Chou, 254 F.3d at 1357 (Section 256
“provides a cause of action for judicial correction of inventorship
. . . .”).
Bosch GmbH argues that Trico cannot state a claim for
relief against it because it assigned the patents to Bosch USA.
The Federal Circuit has held that a party claiming an economic
interest in the patents at issue may be joined as a defendant to a
§ 256 claim, even over its objection.
See Chou, 254 F.3d at 1359.4
Two district courts, construing Chou, have held that ownership is
a sufficient, but not a necessary, condition to being sued under §
Neither Bosch GmbH nor Trico cite Chou or any other case directly
addressing the proper parties to a § 256 claim.
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See Schwindt v. Hologic, Inc., No. 1:11-cv-00110-JMS-MJD,
Datallegro, Inc., No. 10-CV-2552-IEG (WVG), 2011 WL 3300152, *7
(S.D. Cal. July 29, 2011).
In Schwindt, the plaintiff sued four
defendants under § 256: the assignee of the subject patent, the
Schwindt, 2011 WL 3806511, *2-3.
The named inventors moved to
dismiss the claim against them, arguing essentially what Bosch GmbH
argues here: “[b]ecause Defendants Miller and Mark assigned their
rights to the ‘824 patent to Defendant Suros, they argue, they have
no economic interest and are therefore not proper parties to this
argument, reasoning that “it would be absurd to suggest that the
notice requirement built into § 256 means that if two inventors
conspire to keep a third inventor’s name from a patent, and the two
inventors assign the patent to a third party, the non-named
inventor cannot add the two inventors in a § 256 [lawsuit].”
We think that Scwhindt’s reasoning is sound, but it is
The objecting defendants in Schwindt were the
named inventors, who necessarily had a stake in the outcome of the
plaintiff’s § 256 claim.
See, e.g., Jardin, 2011 WL 3300152, *8
(concluding that the named inventor was a proper party to the
plaintiff’s § 256 suit even though he no longer had an economic
interest in the patent).
Bosch GmbH is a material witness, but
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currently it does not appear to have any interest (economic or noneconomic) in the patents.5
Trico off-handedly suggests that Bosch
GmbH may be required to disgorge “ill-gotten revenue” from the
patents if we ultimately conclude that Swanepoel and Fehrsen are
the true inventors.
(See Trico Resp. at 10.)
But as Bosch GmbH
points out, (see Bosch GmbH Reply at 11-12), Trico does not request
this relief in its complaint or allege facts supporting such a
Bosch GmbH’s motion to dismiss Trico’s counterclaims for
failure to state a claim is granted.
Defendant Bosch GmbH’s motion to dismiss  is granted in
part and denied in part.
Insofar as the motion is predicated on
lack of personal jurisdiction, it is denied.
However, the motion
is granted on the ground that Trico has failed to state a claim for
Trico’s Third and Fourth Counterclaims against Bosch GmbH
are dismissed without prejudice.
Trico is given leave to file
amended counterclaims by August 16, 2013 that cure the deficiencies
we have identified with its claims, if it can do so. If Trico
chooses not to file amended counterclaims by that date, we will
dismiss its counterclaims against Bosch GmbH with prejudice.
Bosch GmbH is the sole owner of Bosch USA,
that this is sufficient to make it a proper defendant.
its ruling in part on the defendants’ ownership and
defendant, but the plaintiff alleged that the corporate
a shell company.
See Scwhwindt, 2011 WL 3806511,
comparable allegations here.
but we are not persuaded
The Schwindt court based
control of the corporate
defendant was essentially
There are no
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July 24, 2013
John F. Grady, United States District Judge