Snap-on Incorporated

Filing 89

MEMORANDUM OPINION signed by the Honorable Charles P. Kocoras on 8/16/2011.Mailed notice(sct, )

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION
SNAP-ON INCORPORATED,
Plaintiff,
vs.
ROBERT BOSCH, LLC,
Defendant.

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09 C 6914

MEMORANDUM OPINION
CHARLES P. KOCORAS, District Judge:
This case comes before the Court on the motion of Plaintiff Snap-on, Inc. (“Snapon”) for leave to file a First Amended Complaint pursuant to Federal Rule of Civil
Procedure 15(a). For the reasons stated below, the motion is granted.
BACKGROUND
On November 3, 2009, Snap-on filed a complaint against Defendant Robert
Bosch, LLC (“Bosch”), alleging numerous counts of patent infringement. Beissbarth
GmbH (“Beissbarth”) and Robert Bosch GmbH (“Bosch Germany”) (collectively, the
“German Entities”) are related to the current Defendant, Bosch. As of January 25,
2010, only three months after Snap-on filed its original complaint, Snap-on believed
that Bosch and the German Entities “worked as one unit to bring the infringing
[product] to market.” Snap-on, Inc. v. Robert Bosch, LLC, 09-CV-6914, Dkt. No. 30

(N.D. Ill. Jan. 25, 2010). Snap-on also acknowledged that “many of the tasks required
to bring the infringing [product] to market [were] assigned to Beissbarth.” Id.
On June 29, 2011, Snap-on moved for leave to file a First Amended Complaint,
which adds the German entities as defendants. While Snap-on’s motion is pending, the
Court continued Bosch’s recently filed motion for summary judgment. Discovery is
ongoing and the Court has not yet set a trial date.
LEGAL STANDARD
“The court should freely give leave [to amend] when justice so requires.” Fed.
R. Civ. P. 15(a)(2). District courts have wide discretion in deciding whether to grant
leave to amend. Johnson v. Cypress Hill, 641 F.3d 867, 871-72 (7th Cir. 2011). The
court may deny leave to amend where there is undue delay, bad faith, dilatory motive,
repeated failure to cure deficiencies, undue prejudice to the defendant, or where the
amendment would be futile. Id. Delay, alone, is generally insufficient reason to deny
a motion to amend, but the longer the delay, the greater the presumption against
granting leave to amend. Id.
DISCUSSION
Snap-on requests leave to file an amended complaint adding the German Entities
as defendants. Bosch responds that the Court should deny Snap-on’s request for the
reasons discussed below.

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I.

Undue Prejudice
Bosch opposes Snap-on’s request because the amendment unduly prejudices

Bosch by injecting a new infringement theory into the case, materially expanding
discovery, delaying the case while the German Entities are served through the Hague
Convention on the Service Abroad of Judicial and Extrajudicial Documents (the “Hague
Convention”), and prompting a dispute over personal jurisdiction.
Bosch’s argument lacks merit.

First, Bosch fails to articulate what new

infringement theory Snap-on purportedly introduces into the case. As before, Snap-on
claims direct infringement, but now makes that claim against three defendants rather
than a single defendant. Further, Bosch fails to substantiate how the amendment
materially expands discovery. For instance, Bosch fails to identify any documents not
previously produced which would become relevant and need to be produced if Snap-on
adds the German Entities as defendants. Additionally, while the case may conceivably
suffer some delay from service of the German Entities, Snap-on appropriately points out
that Bosch’s counsel, if representing the German Entities, could simply agree to accept
service without forcing Snap-on to proceed through the Hague Convention. See Fed.
R. Civ. P. 4(d) (discussing waiver of service). Finally, any dispute concerning personal
jurisdiction would not unduly prejudice Bosch, as it would be a controversy between

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Snap-on and the German Entities. Accordingly, Bosch does not demonstrate that the
amended complaint causes it undue prejudice.
II.

Futility of Proposed Amendment
Bosch further argues that the Court should deny Snap-on’s request to file an

amended complaint because the amendment is futile. In particular, Bosch claims that
Snap-on’s amended complaint fails to state a patent infringement claim against the
German Entities and fails to set forth facts demonstrating personal jurisdiction over the
German Entities. When evaluating whether the proposed complaint states a claim or
sets forth facts demonstrating personal jurisdiction, the Court accepts all well-pleaded
allegations as true. Hyatt Int’l Corp. v. Coco, 302 F.3d 707, 713 (7th Cir. 2002);
Hentosh v. Herman M. Finch Univ. Of Health Scis./The Chicago Med. Sch., 167 F.3d
1170, 1173 (7th Cir. 1999).
Patent infringement occurs when “whoever without authority makes, uses, offers
to sell, or sells any patented invention, within the United States . . . .” 35 U.S.C.
§ 271(a). Patent infringement “cannot be predicated on acts wholly done in a foreign
country.” Rotec Indus., Inc. v. Mitsubishi Corp., 215 F.3d 1246, 1251 (Fed. Cir. 2000).
Where a party controls or directs the infringement, the controlling or directing party is
liable for direct infringement. BMC Resources, Inc. v. Paymentech, L.P., 498 F.3d
1373, 1380-81 (Fed. Cir. 2007). Here, Snap-on alleges that Bosch and the German

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Entities met in the United States and that Bosch Germany directed the plan that resulted
in patent infringement. Such allegations state a plausible claim for patent infringement.
See Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007) (holding that the complaint
must contain sufficient facts to state a plausible claim for relief).
As to personal jurisdiction, Bosch states that it is not prematurely arguing against
personal jurisdiction, yet claims that the proposed complaint fails to set forth a factual
basis for personal jurisdiction over the German Entities. Snap-on alleges that the
German Entities knew the infringing product would be sold in Illinois, that
representatives of the German Entities came to Illinois for meetings regarding the
infringing product, and that Defendants chose Illinois as a location to install the
infringing product. Given that Bosch is not prematurely arguing against personal
jurisdiction, the Court finds that the proposed complaint states a factual basis for
personal jurisdiction over the German Entities.
III.

Dilatory Nature of Motion
Bosch also argues that Snap-on’s effort to add the German Entities is merely a

dilatory tactic. Bosch’s argument is underdeveloped and unsupported. No facts suggest
that Snap-on seeks to add the German Entities as defendants for the purpose of delaying
this case.

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IV.

Undue Delay
Finally, Bosch urges the Court to deny Snap-on’s motion because Snap-on

unduly delayed requesting leave to amend. Snap-on responds that it did not unduly
delay because it did not learn that Bosch and the German Entities worked together as
one enterprise until sometime between January and March 2011, when Bosch produced
e-mails. However, Snap-on knew of the relationship between Bosch and the German
Entities long before January or March 2011. Indeed, on January 25, 2010, Snap-on
filed a motion in which Snap-on represented to the Court that Bosch and the German
Entities “worked as one unit to bring the infringing [product] to market.” Snap-on, 09CV-6914 at Dkt. No. 30. Although Snap-on claims that it did not have documents to
substantiate its belief that Bosch and the German Entities worked together, Snap-on did
not need such documents to name the German Entities as defendants in the original
complaint. Since Snap-on filed its motion approximately one year and five months after
acknowledging the relationship between Bosch and the German Entities, Snap-on
unduly delayed seeking leave to add the German Entities as defendants. However,
delay, alone, is insufficient to deny a proposed amendment. George v. Kraft Foods
Global, Inc., 641 F.3d 786, 791 (7th Cir. 2011) (explaining that delay must be coupled
with some other reason, such as prejudice to the defendant). Because Bosch fails to

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identify any prejudice accompanying Snap-on’s excessive delay, the Court grants Snapon’s motion.
CONCLUSION
For the foregoing reasons, this Court grants Snap-on’s motion for leave to file a
First Amended Complaint.

Charles P. Kocoras
United States District Judge
Dated: August 16, 2011

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