Beacon Navigation GmbH v. Bayerische Motoren Werke AG et al

Filing 39

ORDER REGARDING: (1) DISMISSAL OF SPECIFIED CLAIMS; (2) LIMITATION ON REMAINING CLAIMS; (3) LITIGATION BEFORE THE UNITED STATES PATENT AND TRADEMARK OFFICE; (4) DENIAL OF MOTIONS TO DISMISS; (5) DELAYED GRANT OF THE REQUESTS TO CONSOLIDATE; AND (6) STAY Signed by District Judge Victoria A. Roberts. (CPin)

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF MICHIGAN
SOUTHERN DIVISION

BEACON NAVIGATION GMBH,
Case No. 2:13-cv-11378-VAR-EAS
Case No. 2:13-cv-11380-VAR-EAS

Plaintiff,
v.

Honorable Victoria A. Roberts
Magistrate Judge Elizabeth A. Stafford

FCA US LLC,
Defendant.
BEACON NAVIGATION GMBH,

Case No. 2:13-cv-11381-VAR-EAS
Case No. 2:13-cv-11382-VAR-EAS

Plaintiff,
v.

Honorable Victoria A. Roberts
Magistrate Judge Elizabeth A. Stafford

FORD MOTOR CO.,
Defendant.
BEACON NAVIGATION GMBH,

Case No. 2:13-cv-11386-VAR-EAS
Case No. 2:13-cv-11387-VAR-EAS

Plaintiff,
v.

Honorable Victoria A. Roberts
Magistrate Judge Elizabeth A. Stafford

GENERAL MOTORS LLC,
Defendant.
BEACON NAVIGATION GMBH,

Case No. 2:13-cv-11389-VAR-EAS
Case No. 2:13-cv-11405-VAR-EAS

Plaintiff,
v.

Honorable Victoria A. Roberts
Magistrate Judge Elizabeth A. Stafford

AUDI AG, AUDI OF AMERICA, INC.,
AND AUDI OF AMERICA LLC,
Defendants.
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BEACON NAVIGATION GMBH,
Case No. 2:13-cv-11407-VAR-EAS
Case No. 2:13-cv-11410-VAR-EAS

Plaintiff,
v.

Honorable Victoria A. Roberts
Magistrate Judge Elizabeth A. Stafford

BAYERISCHE MOTOREN WERKE AG,
BMW OF NORTH AMERICA, LLC, AND
BMW MANUFACTURING CO., LLC,
Defendants.
BEACON NAVIGATION GMBH,

Case No. 2:13-cv-11412-VAR-EAS
Case No. 2:13-cv-11413-VAR-EAS

Plaintiff,
v.

Honorable Victoria A. Roberts
Magistrate Judge Elizabeth A. Stafford

HONDA MOTOR CO., LTD., HONDA
NORTH AMERICA, INC., AMERICAN
HONDA MOTOR CO., INC., HONDA
MANUFACTURING OF ALABAMA,
LLC, HONDA MANUFACTURING OF
INDIANA, LLC, AND HONDA OF
AMERICA MANUFACTURING, INC.,
Defendants.
BEACON NAVIGATION GMBH,

Case No. 2:13-cv-11414-VAR-EAS
Case No. 2:13-cv-11416-VAR-EAS

Plaintiff,
v.

Honorable Victoria A. Roberts
Magistrate Judge Elizabeth A. Stafford

HYUNDAI MOTOR COMPANY,
HYUNDAI MOTOR AMERICA, AND
HYUNDAI MOTOR MANUFACTURING
ALABAMA, LLC,
Defendants.

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BEACON NAVIGATION GMBH,
Case No. 2:13-cv-11422-VAR-EAS
Case No. 2:13-cv-11424-VAR-EAS

Plaintiff,
v.

Honorable Victoria A. Roberts
Magistrate Judge Elizabeth A. Stafford

JAGUAR LAND ROVER NORTH
AMERICA, LLC, JAGUAR CARS LTD.,
AND LAND ROVER,
Defendants.
BEACON NAVIGATION GMBH,

Case No. 2:13-cv-11440-VAR-EAS
Case No. 2:13-cv-11441-VAR-EAS

Plaintiff,
v.

Honorable Victoria A. Roberts
Magistrate Judge Elizabeth A. Stafford

KIA MOTORS CORPORATION, KIA
MOTORS AMERICA, INC., AND KIA
MOTORS MANUFACTURING
GEORGIA, INC.,
Defendants.
BEACON NAVIGATION GMBH,

Case No. 2:13-cv-11444-VAR-EAS
Case No. 2:13-cv-11448-VAR-EAS

Plaintiff,
v.

Honorable Victoria A. Roberts
Magistrate Judge Elizabeth A. Stafford

MAZDA MOTOR CORPORATION AND
MAZDA MOTOR OF AMERICA, INC.,
Defendants.

3

BEACON NAVIGATION GMBH,
Case No. 2:13-cv-11452-VAR-EAS
Case No. 2:13-cv-11455-VAR-EAS

Plaintiff,
v.

Honorable Victoria A. Roberts
Magistrate Judge Elizabeth A. Stafford

DAIMLER AG, DAIMLER NORTH
AMERICA CORPORATION,
MERCEDES-BENZ USA, LLC, AND
MERCEDES-BENZ U.S.
INTERNATIONAL, INC.,
Defendants.
BEACON NAVIGATION GMBH,

Case No. 2:13-cv-11459-VAR-EAS
Case No. 2:13-cv-11497-VAR-EAS

Plaintiff,
v.

Honorable Victoria A. Roberts
Magistrate Judge Elizabeth A. Stafford

NISSAN MOTOR CO., LTD. AND
NISSAN NORTH AMERICA, INC.,
Defendants.
BEACON NAVIGATION GMBH,

Case No. 2:13-cv-11499-VAR-EAS
Case No. 2:13-cv-11504-VAR-EAS

Plaintiff,
v.

Honorable Victoria A. Roberts
Magistrate Judge Elizabeth A. Stafford

DR. ING. H.C. F. PORSCHE AG AND
PORSCHE CARS NORTH AMERICA
INC.,
Defendants.

4

BEACON NAVIGATION GMBH,
Case No. 2:13-cv-11507-VAR-EAS
Case No. 2:13-cv-11508-VAR-EAS

Plaintiff,
v.

Honorable Victoria A. Roberts
Magistrate Judge Elizabeth A. Stafford

FUJI HEAVY INDUSTRIES LTD, FUJI
HEAVY INDUSTRIES USA, INC., AND
SUBARU OF AMERICA, INC.,
Defendants.
BEACON NAVIGATION GMBH,

Case No. 2:13-cv-11509-VAR-EAS
Case No. 2:13-cv-11510-VAR-EAS

Plaintiff,
v.

Honorable Victoria A. Roberts
Magistrate Judge Elizabeth A. Stafford

TOYOTA MOTOR CORPORATION,
TOYOTA MOTOR NORTH AMERICA,
INC., TOYOTA MOTOR SALES U.S.A.,
INC., TOYOTA MOTOR ENGINEERING
& MANUFACTURING NORTH
AMERICA, INC., TOYOTA MOTOR
MANUFACTURING ALABAMA INC.,
TOYOTA MOTOR MANUFACTURING
INDIANA INC., TOYOTA MOTOR
MANUFACTURING KENTUCKY INC.,
TOYOTA MOTOR MANUFACTURING
MISSISSIPPI INC., TOYOTA MOTOR
MANUFACTURING TEXAS INC., AND
TOYOTA MOTOR MANUFACTURING
WEST VIRGINIA INC.,
Defendants.

5

BEACON NAVIGATION GMBH,
Case No. 2:13-cv-11511-VAR-EAS
Case No. 2:13-cv-11512-VAR-EAS

Plaintiff,
v.

Honorable Victoria A. Roberts
Magistrate Judge Elizabeth A. Stafford

VOLKSWAGEN AG, VOLKSWAGEN
GROUP OF AMERICA, INC.,
VOLKSWAGEN GROUP OF AMERICA
CHATTANOOGA OPERATIONS LLC,
Defendants.
BEACON NAVIGATION GMBH,

Case No. 2:13-cv-11513-VAR-EAS
Case No. 2:13-cv-11514-VAR-EAS

Plaintiff,
v.

Honorable Victoria A. Roberts
Magistrate Judge Elizabeth A. Stafford

VOLVO CAR CORPORATION AND
VOLVO CARS OF NORTH AMERICA
LLC,
Defendants.
BEACON NAVIGATION GMBH,

Case No. 2:13-cv-11516-VAR-EAS
Case No. 2:13-cv-11517-VAR-EAS

Plaintiff,
v.

Honorable Victoria A. Roberts
Magistrate Judge Elizabeth A. Stafford

SUZUKI MOTOR CORPORATION AND
AMERICAN SUZUKI MOTOR
CORPORATION,
Defendants.

ORDER REGARDING:
(1)
(2)
(3)

DISMISSAL OF SPECIFIED CLAIMS;
LIMITATION ON REMAINING CLAIMS;
LITIGATION BEFORE THE UNITED STATES PATENT AND
TRADEMARK OFFICE;

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(4)
(5)
(6)

I.

DENIAL OF MOTIONS TO DISMISS;
DELAYED GRANT OF THE REQUESTS TO CONSOLIDATE;
AND
STAY.

INTRODUCTION

Before the Court are thirty six cases brought by Beacon Navigation GmbH
(“Beacon”) against eighteen defendants. The suits allege infringement of several
patents pertaining to navigational systems. The cases were reassigned from the
Honorable Patrick J. Duggan to the Honorable Victoria A. Roberts on October 19, 2015.
On December 15, 2015, the Court held a status conf erence to discuss the procedural
posture of the cases and to set forth both substantive and scheduling orders that may
usher resolution of the pending matters.
This Order provides for: (1) dismissal of specified claims; (2) limitation on the
remaining claims to those referenced in the Table; (3) litigation before the United States
Patent and Trademark Office (“USPTO”), which must be initiated within 180 days of this
Order; (4) denial of motions to dismiss, without prejudice; (5) delayed grant of the
requests to consolidate; and (6) the stay to remain in effect on all cases until completion
of patent appeals.
These attorneys appeared at the status conference:
•

Kevin Jones and Jay Schloff, on behalf of Beacon Navigation GmbH

•

Patrick Seyferth, on behalf of FCA US LLC

•

Thomas Lewry and Thomas Cunningham, on behalf of Ford Motor Co.

•

Susan Smith and Michael Simoni, on behalf of Audi AG, et al., and

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Volkswagen AG, et al.
•

Lionel Lavenue and Michelle Alamo, on behalf of Bayerische Motoren
Werke AG, et al.

•

John Johnson and Thomas Branigan, on behalf of Honda Motor Co., Ltd.,
et al.

•

Thomas Bejin and Bryan Hart, on behalf of Hyundai Motor Co., et al., Kia
Motors Corp., et al., and Nissan Motor Co., Ltd., et al.

•

Matthew Satchwell, Ferlillia V. Roberson, and Robert Lenihan, on behalf of
General Motors LLC, Jaguar Land Rover NA, LLC, et al., Mazda Motor
Corp., et al., Fuji Heavy Industries Ltd., et al., Toyota Motor Corp., et al.,
Volvo Car Corp., et al.,

•

Celine Crowson and Dennis Barnes, on behalf of Daimler AG, et al.

•

Eugene LeDonne and Bruce Sendek, on behalf of Dr. Ing. h.c. F. Porsche
AG, et al.

•

Mike Palizzi, on behalf of Suzuki Motor Corp., et al.
II.

DISMISSED CLAIMS

Plaintiff’s original complaints filed in 2013 alleged infringement of “at least”
particular claims of specified patents. Subsequently, Defendants sought reexamination
of many of the stated claims with the USPTO. These reexaminations and subsequent
appeals resulted in denial of several of Plaintiff’s patents. In recognition of those rulings,
Plaintiff consented at the status conference to dismiss the following claims: (1) claim 1
of patent number 6,374,180; (2) claims 1, 26, and 29 of patent number 6,178,380; (3)

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claims 1, 2-3, 5-6, 10-13, 17-20, and 22 of patent number 6,029,111; (4) claims 1 and
32 of patent number 6,360,167; (5) claims 1, 12 and 18 of patent number 5,819,201; (6)
claims 1, 7 and 11 of patent number 6,163,269; and (7) claims 1 and 15 of patent
number 5,878,368.
Those claims are DISMISSED WITH PREJUDICE against all defendants.
III.

CLAIMS THAT WILL REMAIN IN SUIT

Claims 1 and 3 of patent number 5,862,511 survived USPTO review. Status
Conference Statement at 11, Beacon Navigation GmbH v. FCA US LLC, No. 13-11378
(E.D. Mich. Dec. 8, 2015), ECF No. 29. In addition, prior to the status conf erence,
Plaintiff sent defense counsel an updated list of all claims it intends to assert on each
patent and against each defendant. Id. at Ex. 1. That email refers to specific claims that
were not explicitly mentioned in the original complaints.
Defendants dispute Plaintiff’s ability to now add what they allege are new claims;
and, they seek to apply the heightened plausibility pleading standard of the Federal
Rules of Civil Procedure that was made effective on December 1, 2015, if Plaintiff is
allowed to allege new claims. Defendants also requested finality and fair notice about
the claims being brought.
Plaintiff says that in light of prior Form 18 of the Federal Rules of Civil Procedure
under which the cases were filed, it need not exhaustively specify the exact claims that
it would assert.
The Court need not resolve this issue today because of the concessions reached
by the parties. Plaintiff stipulated that it would now limit the scope of its suits to the

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claims and patents listed in its December 5, 2015 email. Defendants consented to this
limitation and agreed to pursue USPTO reexamination of listed claims and patents,
preserving their arguments concerning pleading standards and amendments until after
the reexamination process is complete.
Plaintiff may only pursue the exclusive and exhaustive list of claims set forth on
the Table below:

REMAINDER OF PAGE INTENTIONALLY LEFT BLANK

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Plaintiff will not be allowed leave to amend its complaints to add any other claims
not set forth on the Table. The Court reserves judgment on whether Plaintiff may or
must file amended complaints until matters before the USPTO are exhausted.
At the status conference, Defendants Audi AG, et al. expressed a belief that
other claims remained in the suit, in particular claims 5, 12 and 19 of patent number
6,029,111. Those claims were not alleged in Plaintiff’s original complaints against Audi
AG. Further, Plaintiff withdrew all motions to amend its complaints. Any claims that
were submitted in a proposed amended complaint that were not listed in Plaintiff’s
December 5, 2015 email, and thus excluded from this Order’s Table of remaining
claims in the suit, are DISMISSED WITH PREJUDICE. To be clear, the only claims
Defendants must address until this litigation is completed are those listed on the Table.
IV.

REEXAMINATION, INTER PARTES REVIEW, AND USPTO APPEALS

Defendants requested the opportunity to pursue various remedies to challenge
Beacon’s patents with the USPTO. Plaintiff suggested the Court instead proceed with
all claims still in the suit, allowing any USPTO proceedings to run in tandem.
While it would be possible to continue these civil actions in conjunction with
USPTO actions, such an approach presents obvious impairments in judicial economy.
Efforts spent investigating patent claims that are ultimately cancelled by the USPTO
would be futile. Moreover, in light of the claimed similarities between various patent
claims, beginning discovery on certain claims which survived USPTO review – while
waiting for official guidance on other claims – would only duplicate the work for all
parties.

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Plaintiff expressed concern that prejudice could result from undue delay in
pursuing reexamination. The Court finds this concern well grounded.
Defendants must initiate any USPTO reexamination or challenge processes
within 120 days of this Order. Failure to seek USPTO review within that time will result
in the Court reevaluating its position on stay, set forth in Section VI of this Order.
V.

PENDING MOTIONS
A.

MOTIONS TO DISMISS

Several motions are before the Court: (1) Motion to Dismiss by Audi AG, et al.,
No. 13-11405 (E.D. Mich. June 8, 2013), ECF No. 15; (2) Motion to Dism iss by
Volkswagen AG, et al., No. 13-11512 (E.D. Mich. June 8, 2013), ECF No. 15; (3)
Motion to Dismiss by Beacon, Nos. 13-11407 and 13-11410 (E.D. Mich. May 28, 2013),
ECF Nos. 12. Each motion refers to claims which are dismissed as a result of this
Order.
In addition, these motions refer to claims brought under patents 5,862,511 and
5,878,368, which remain in suit. Other claims might also be added via amended
complaints. Accordingly, these pending motions are DENIED WITHOUT PREJUDICE.
The parties may file renewed or amended motions at the conclusion of the USPTO
review proceedings.
B.

MOTION TO CONSOLIDATE

Beacon filed two cases against each defendant in order to bifurcate claims that
were under independent and parallel review at the International Trade Commission
(“ITC”) from those that were not. At the status conference, Beacon informed the Court

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that the ITC proceedings had concluded, and requested that the Court consolidate the
cases. Beacon initially sought consolidation of each pair of cases brought against each
defendant in conjunction with its motions for leave to file an amended complaints in
each case. See, e.g., Motion to Consolidate and for Leave to File Amended Complaint
at 5, Beacon Navigation GmbH v. FCA US LLC, No. 13-11378 (E.D. Mich. May 30,
2013), ECF No. 14. Beacon withdrew its request to amend the complaints on
September 9, 2015, but reiterated its consolidation request stating that “Beacon
maintains its request to consolidate the 36 co-pending cases, which was unopposed by
any defendant at the time the motions were filed.” See, e.g., id., ECF No. 25. This was
an erroneous statement of the consolidation motions before the Court, and the Court
declines to consider this request since it is not a pending motion.
At the status conference, Plaintiff did agree to consolidate each pair of cases
against each defendant into one case per defendant.
The Court declines to grant consolidation at this stage. It is possible that all
claims filed in particular cases or against particular defendants will be withdrawn or
dismissed following USPTO review. In addition, no pressing efficiency considerations
require consolidation at this juncture; the cases will remain stayed until the
reexamination process outlined in Section IV of this Order is completed. But, because
the parties agree that each pair of cases should be consolidated, the Court will enter
consolidation as a stipulation of the parties once the reexamination processes are
complete.
VI.

STAY

All cases are stayed pursuant to a stipulated order filed on September 17, 2013.
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The stay was intended to allow reexamination and inter partes review of the then
asserted patents to conclude.
All actions will continue to be stayed to allow Defendants to pursue USPTO
review.
IT IS ORDERED.

s/Victoria A. Roberts
Victoria A. Roberts
United States District Judge
Dated: December 22, 2015
The undersigned certifies that a copy of this
document was served on the attorneys of
record by electronic means or U.S. Mail on
December 22, 2015.
s/Linda Vertriest
Deputy Clerk

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