Orbital Australia Pty Ltd et al v. Daimler AG et al

Filing 118

MEMORANDUM OPINION. Signed by District Judge Robert E. Payne on 7/1/2015. (jsmi, )

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF VIRGINIA
Richmond Division

ORBITAL AUSTRALIA PTY LTD,

et al. ,

Plaintiffs,
Civil Action No.

V.

DAIMLER AG,

3:14CV808

et al. ,

Defendants.

MEMORANDUM OPINION

This

matter

is

before

the

LLC'S MOTION TO DISMISS OR,
THE

EASTERN

DISTRICT

MERCEDES-BENZ

USA,

INC.'S

TO

MOTION

TRANSFER
DEFENDANT

TO

THE

LLC

DISMISS

EASTERN

ROBERT

ALTERNATIVE,

OF

BOSCH

on

DEFENDANT

IN THE ALTERNATIVE,

MICHIGAN

AND

(Docket

FOR

LACK

DISTRICT
GMBH'S

OF

OF

MICHIGAN

MOTION

100);

TO

LLC'S

BOSCH

DEFENDANTS

INTERNATIONAL,
JURISDICTION AND

(Docket

DISMISS

OR,

DISTRICT

No.

34);

IN

THE

OF MICHIGAN

DEFENDANT DAIMLER AG'S MOTION TO TRANSFER TO

THE EASTERN DISTRICT OF MICHIGAN
BOSCH

27);

U.S.

PERSONAL

ROBERT

TO TRANSFER TO

No.

MERCEDES-BENZ

TO TRANSFER TO THE EASTERN

(Docket No.

ROBERT

Court

MOTION

FOR

(Docket No.
PROTECTIVE

105);
ORDER

and DEFENDANT
TO

RESPOND

TO

RESPOND [s^] TO JURISDICTIONAL DISCOVERY REQUESTS 12-24 (Docket
No.

85) .

For

the

reasons

stated

below,

granted in part and denied in part as moot.

the

motions

will

be

BACKGROUND

On December
Australia")

2,

and

2014,

Orbital

Fluid")

{collectively,

present

action

6,923,387

Orbital Australia
Fluid

Technologies,

''Orbital"

alleging

PTY LTD

or

Inc.

{''Orbital

"Plaintiffs")

infringement

of

U.S.

(^'Orbital

filed
Patent

the
Nos.

{"the '387 patent"), 5,655,365 ("the '365 patent") and

5,606,951

("the

'951

patent")

by

Defendants

("Daimler"), Mercedes-Benz USA, LLC {"MBUSA"),

U.S. International,

Inc.

AG

and Mercedes-Benz

("MBUSI") , as well as Robert Bosch GmbH

("Bosch GmbH") and Robert Bosch LLC ("Bosch LLC")
"Defendants").

Daimler

On February 2,

2015,

Complaint alleging that Daimler,

asserted patents by making,

Orbital filed its Amended

MBUSA,

using,

(collectively,

and MBUSI infringe the

importing,

selling,

and/or

offering for sale Mercedes-Benz automobiles, while limiting its
infringement allegations against Bosch GmbH and Bosch LLC to the
'387 patent.

(Docket No. 25 at 11 6, 9, 41, 46, 85, 129.)

Orbital Australia Pty Ltd is an Australian company having

its principal place of business in Australia.
Orbital Fluid Technologies,
Orbital Australia,
MBUSA

is

Montvale,
markets

(Id. )

a

Inc.,

New Jersey.
Mercedes-Benz

corporation

{Id.

at 1

vehicles

at SI 2.)

a wholly-owned subsidiary of

is incorporated in Delaware.

Delaware

{Id.

with

4.)

its

{Id. at 1 1.)
headquarters

in

MBUSA distributes

and

throughout

the

United

States.

MBUSI is an Alabama corporation with its headquarters in

Vance, Alabama.

{I^ at SI 5.)

MBUSI manufactures Mercedes-Benz

vehicles

United

(Id.)

in

the

States.

Bosch LLC

is

a

Delaware

headquarters

in

Farmington

limited liability company with

its

Hills, Michigan.

Daimler is a German corporation

(Id. at f 8.)

and Bosch Germany is a German limited liability company,

having their principal places of business in Germany.
Sl^ 3,

both

(Id. at

7.)

On February 20, 2015, Bosch LLC filed a motion to dismiss
the Amended Complaint or, in the alternative, transfer the case
out of the Eastern District of Virginia to the Eastern District

of Michigan.
MBUSA

filed

{Docket No. 27.)
a

motion

to

On February 27, 2015, MBUSI and

dismiss

for

lack

of

jurisdiction and

transfer to the Eastern District of Michigan.

(Docket No.

34.)

MBUSA did not challenge jurisdiction and only joined the Motion

with respect to transfer.

On

June

10,

2015,

Bosch

GmbH

filed a motion to dismiss or, in the alternative, to transfer to

the Eastern District of Michigan.

same day,

(Docket No.

100.)

On the

Daimler filed a motion to transfer to the Eastern

District of Michigan.

(Docket No. 105.)

In addition, Bosch LLC

has filed a motion for protective order. (Docket No. 85.)^

^

The

Bosch

proceedings,

defendants

(Docket

have

No.

also

107),

filed

which

a

motion

remains

to

stay

the

outstanding.

Resolution of this motion will rest with the Eastern District of
Michigan.

DISCUSSION

When evaluating a motion to transfer venue under 28 U.S.C.
§ 1404(a),

courts follow a two-step inquiry.

First,

the court

must determine whether the civil action could have been brought

in the proposed transferee forum.
F.

Supp.

2d 499,

should consider:

502

of

the

convenience

of

the

(5)

Inc. ,

Va.

2012).

parties;

(3)

witnesses,

access

including

the interest of justice.

386

F.

Second,

(1) the plaintiff's choice of

convenience

and

(E.D.

See Jaffe v. LSI Corp., 874

Supp.

2d 708,

(E.D.

(2)

the

evidence;

to

(4)

the

third-party

Va.

court

forum;

Samsung Elec.

716

the

Co.

2005).

witnesses;

v. Rambus,

One of the

purposes of Section 1404(a) is to "prevent the waste of 'time,
energy, and money' and to 'protect litigants, witnesses and the

public

against

unnecessary

inconvenience
v.

2d 564, 566

(quoting Van Dusen v. Barrack, 367

U.S.

612,

efficient
relevant

I.

616

(1964)).

adjudication

With

in

the

mind,

interests

the

387 F.

Supp.

justice

and

will

Court

of

examine

the

factors.

The Proposed Forum

For the domestic defendants,

jurisdiction

Michigan,
the

Inc.,

expense.'"

Original Creatine Patent Co.

(E.D. Va. 2005)

Met-Rx USA,

and

is

presently

there

proper

in

is

the

no

question whether

Eastern

as all defendants have consented to

transferee

forum.

However,

the

relevant

District

of

jurisdiction in

question is where

the action "could" have been brought at the time the suit was
commenced.

See Hoffman v.

Blaski,

363 U.S.

335,

342-43

{I960).

While later consent to in personam jurisdiction may be a valid
consideration
transfer

under

calculus,

the
it

''interests

cannot

District of Michigan a

of

justice"

retroactively

factor

render

the

of

the

Eastern

forum where the claim could have been

brought ab initio.

Bosch

claims

LLC

of

contends

patent

that

Orbital

infringement

in

could

the

have

Eastern

brought

its

District

of

Michigan, because the subject technology is at least minimally
supported by Bosch from Michigan and because Bosch is a resident
of Michigan.

Mem. in Supp. of Def. Robert Bosch LLC's Mot. to

Dismiss at 16

{Docket No.

28).

Orbital does not contest that

the action could have been brought in the Eastern District of

Michigan.
at

20

Pis.' 0pp. to Def. Robert Bosch LLC's Mot. to Dismiss

(Docket

jurisdiction

No.

in

45).

And

Virginia,^

while

MBUSI

Plaintiffs'

contests

theory

of

personal

personal

jurisdiction - the theory upon which the suit was commenced in
the Eastern District of Virginia - would seem to apply equally
in the Eastern

have

brought

brought

the

District of Michigan.

the

claim

here,

claim there.

then

Thus,

2

if

If the

the

Plaintiff could

Plaintiff

personal

could

have

jurisdiction

is

Mem. in Supp. of Defs. Mercedes-Benz USA LLC and Mercedes-Benz
U.S.
Int'l,
Inc.'s Mot,
to Dismiss for Lack of Personal
Jurisdiction at 9

{Docket No.

35)

proper in the Eastern District of Virginia -

a question this

Court need not, and does not, reach - then personal jurisdiction
would have been proper in the Eastern District of Michigan.
As

for

alternate
argues

foreign

Defendant

jurisdictional

that personal

been

in

To

Orbital

extent

the

available

offers

Orbital

in the Eastern

the same rationale discussed above holds

jurisdiction -

available

GmbH,

arguments.

jurisdiction is

District of Virginia,
and personal

Bosch

the

if available at

Eastern

District

of

all -

would have

Michigan

at

the

commencement of the suit.^
To

the extent that

upon Fed. R. Civ. P.

Plaintiffs alternately attempt

to rely

4(k)(2) and the burden-shifting framework

articulated by the Federal Circuit in Touchcom, Inc. v. Bereskin
& Parr,

574

F.3d 1403,

1415

(Fed.

Cir.

2009),

the Court also

finds jurisdiction in the Eastern District of Michigan proper.

Simply
applicable

put,
and

this

because

if

GmbH

Bosch

is

would

not

Rule
have

4(k)(2)
been

jurisdiction anywhere at the time of the suit,

is

truly

subject

to

then - by the

very operation of Rule 4(k)(2) itself - Orbital could have filed
the suit in any United States jurisdiction at the time of the
suit.

Thus,

the

first

would be satisfied.

^ For example,

facet

of the

Section 1404(a)

analysis

To argue that the choice of the plaintiff

Daimler does not contest jurisdiction here or in

the Eastern District of Michigan.
Daimler AG's Mot.

to Transfer at 3
6

Reply Mem.
(Docket No.

in Supp.
115).

of Def.

should govern in such instances is to conflate the question of
whether the plaintiff could have brought suit under the first

prong

of

1404(a)

and

the

question

of

whether

transfer

is

appropriate under the second prong of 1404(a).
The

Federal

Circuit's

decision

in

Merial

Ltd.

v.

Cipla

Ltd. , 681 F.3d 1283 (Fed. Cir. 2012), instructs no differently.
In Merial,

the defendant attempted to

challenge a previously

entered default judgment by the Middle District of Georgia by

consenting to jurisdiction in the Northern District of Illinois.
681 F.3d at 1294.

Unlike the ex post consent to suit presented

in that case, which was provided in an attempt to invalidate the

jurisdiction and judgment of the federal court in Georgia, the
consent here is in the present case with respect to a motion to

transfer and,

if Rule

4 (k) (2)

applies

at

all,

it would have

bestowed the choice of jurisdiction by the Plaintiffs upon both
federal district courts proposed.

See id. at 1295 (^^Absent some

independent basis for jurisdiction, neither forum is manifestly
more appropriate than the other[.]").

The Merial court quite explicitly limited its holding to
the

facts

before

it

and

expressly

declined

to

consider

^'the

general requirements for a defendant to prevent the application
of Rule 4(k)(2) by consenting to suit in another jurisdiction."
Id.

Because that court went out of its way to decline adopting

Orbital's

reading,

this

Court

views

the

issue

as

an

open

question and holds that,
under 1404(a),

upon a defendant's motion to transfer

the question as to whether the plaintiff might

have brought the claim in the proposed transferee jurisdiction
is satisfied where jurisdiction is initially premised upon Rule
4(k) (2) .

This

rule

also

functions

to

simultaneously

advance

purposes of both Section 1404(a) and Rule 4(k)(2).

the

With respect

to Section 1404(a),

the rule encourages both parties to seek a

forum that furthers

the

interests of justice and the efficient

adjudication of disputes.

The courts are well equipped under

the second prong of the 1404(a) analysis to evaluate the factors
in favor of transfer and make a determination as to whether the

plaintiff s choice is entitled to deference and whether transfer
is warranted.

The plaintiff is encouraged to avoid gamesmanship

and select a forum that is supported by good reasons from the
outset to avoid the risk that

its

initial choice is upset by a

well-supported motion to transfer.

Similarly, the defendant is

incentivized to move

for

an alternate

forum only

if plaintiff

has overreached and selected a clearly inferior forum where the

interests of justice and efficient adjudication weigh strongly
in

favor

Rule

of

transfer.

4(k)(2),

situation

wherein

^minimum

contacts'

on
"a

the

other

hand,

non-resident

with

any

was

defendant

individual
8

adopted
who

state

to

did

avoid
not

sufficient

a

have

to

support

exercise

contacts

with

of

the

jurisdiction,

United

but

States

as

jurisdiction in all fifty states."
But,

did

a

have

whole,

Touchcom,

sufficient

could

escape

574 F. 3d at 1414.

when a foreign defendant moves to transfer and consents to

jurisdiction in the transferee court, that purpose is satisfied.
Moreover, adopting Orbital's interpretation of Rule 4{k) (2)

would provide plaintiffs with an unreasonable amount of power by

largely

eliminating

jurisdiction.

the

Plaintiffs

burden

of

already

benefit

shifting framework adopted by the

establishing
from

personal

the

burden-

Federal Circuit in Touchcom

and do not need to "prove a negative" in all 50 states before
resorting
barred

to

power

of

Rule

any motion

from

the

4(k) (2) .

to

transfer

shop

without

jurisdiction

under

regard
4(k) (2),

to

were

consent

to

then the plaintiff could

personal

and

defendants

accompanied by

jurisdiction in the transferee forum,
forum

If

then

jurisdiction,

rely

upon

the

burden-

shifting framework to force the defendant to either (1)
to the plaintiff's artificial forum choice,

or

(2)

claim

submit

argue that

the action could have been brought elsewhere even in the absence

of

4{k)(2),

contrary.

notwithstanding

the

defendant's

belief

to

the

That approach to the burden-shifting rule is unjust

and unnecessary.

Finally,
between

the

the

proposed

Federal

approach

Circuit's

would

holding

in

thread

the

Touchcom

needle
and

its

holding in Merial.

The language in Touchcom seemed to hint that

a Defendant could defeat the operation of 4(k) (2)

consenting to jurisdiction.

altogether by

In adopting the Seventh Circuit's

burden-shifting approach to Rule 4(k)(2)(A), the Federal Circuit
noted:

A defendant who wants to preclude the use of
Rule 4{k)(2) has only to name some other
state

in

which

the

suit

could

proceed.

Naming a more appropriate state would amount
to a

consent to personal jurisdiction there.

,
that

and

If,

he

however,

cannot

refuses

be

to

the
sued

defendant
in

identify

the

any

contends

forum

other

state

state

where suit is possible, then the federal
court is entitled to use Rule 4 (k) (2). This

procedure makes it unnecessary to traipse
through the 50 states, asking whether each
could entertain the suit.

Touchcom,
Ladner

amended

574 F.3d at 1414

Gervais

LLP,

(July 2,

256

2001))

(quoting ISI Int'l,

F.3d

548,

552

(7th

(citations omitted)

Inc.

v.

Cir.

Borden

2001),

^

(emphasis added).

This has the merits of avoiding forum shopping by the plaintiff

and fulfilling the goals of Rule 4(k)(2), but gives free license
to

defendants

to

engage

in

forum

reconcilable with Section 1404(a)

shopping

and does

thesis,

if

adopted,

would

empower

a

District
Court,
upon
a
finding
of
convenience, to transfer an action to any
district desired by the defendants and in

which they were willing to waive their
statutory
defenses
as
to
venue
and
jurisdiction over their persons, regardless
10

seem

for the reasons stated by the

Supreme Court in Hoffman:
That

not

of

the

fact

that

such

transferee

was not one in which the action
been brought' by the plaintiff.

Hoffman,

363

commencement

U.S.

at

of

344.

the

district

^might have

A defendant's

action

cannot

consent

render

after

Rule

the

4{k) (2)

retroactively inapplicable because jurisdiction under 4(k)(2) is
created at the moment that the plaintiff commences the action,

assuming that the defendant is,

jurisdiction

in

any

particular

in fact,

forum

truly not subject to

at

the

time

the

suit

commences.

In contrast,
defendant

could

the language in Merial seemed to hint that a
not

defeat

the

operation

of

Rule

4{k) (2)

by

consenting to jurisdiction and that there was no reason why the
forum choice of the defendant should govern under the rule.
F.3d at 1294-95.

681

This has the merits of avoiding forum shopping

by the defendant and ensuring that the jurisdiction is one ''in
which the plaintiff could have brought suit," id. at 1294, but,
if taken to exclude any possibility of transfer, would give free
license to plaintiffs to engage in forum shopping.

The approach suggested by this Court is that, by operation
of

Rule

4{k)(2),

jurisdiction
defendant

could

jurisdiction.
is

not

in

cut

the

the

plaintiff

United States

similarly

Thus,
short

by

could

move

to

but,

bring

the

because

transfer

the

suit

of

in

any

this,

the

case

to

any

the plaintiff's choice under Rule 4{k) (2)
a

defendant's
11

belated

consent

after

the

cominencement

of the

action,

but

the plaintiff's choice

immune to evaluation of the transfer

court.

The

forum shop,

against

rule

avoids

giving

factors

is

not

by the transferor

either party

carte blanche

to

allows defendants to maintain a principled argument

personal

jurisdiction

in

jurisdiction
the

while

transferor

still

and

submitting

transferee

to

forum,

and

provides plaintiffs the initial choice of forum.

For these reasons, the Court finds that the civil action is
one

that

forum,

''could have

been brought"

in the proposed transferee

and that transfer to the Eastern District of Michigan is

permitted here.
II.

The Transfer Factors

A. P l a i n t i f f s '

The

first

Choice of Forum

factor

to

evaluate

in

weighing

transfer is the plaintiffs' choice of forum.

plaintiff s
weighing

choice

the

Durango Assoc.
However,

forum,'

''if

of

forum

transfer
Inc.,
the

is

entitled

factors.
662

chosen

F.

forum

is

348,
not

Lycos,

Inc.

2d

2007)

(quoting

V.

deference

America,
(E.D.

when

Inc.

Va.

v.

1996).

plaintiff's

'home

then the plaintiff's choice is not entitled

to substantial weight.

Inc.

to

and the cause of action bears little or no relation to

the chosen forum,"

685,

to

351
the

decision

In most cases, the

Furmanite

Supp.

a

692

(E.D.

Pickpoint

Va.

Corp.,

238

F.
12

v.

Supp.

TiVo,

Inc.,

4 99 F.

Telepharmacy
2d

741,

743

Supp.

Solutions,
(E.D.

Va.

2003)).

this

"[I]f there is little connection between the claims and

judicial

plaintiff's
venue

district,

chosen

with more

forum

that

and weigh

substantial

Inc., 250 F. Supp. 2d 627,
Both

Plaintiffs

would

are

in

militate
favor

contacts."

635

Koh

of
v.

against

transfer
Microtek

No.

of Def.

28).

Orbital

subsidiaries

Robert Bosch LLC's Mot.

Fluid

is

nor

a

Delaware

Orbital

of

Orbital

Corporation

to Dismiss at

corporation.

Fluid

Mem. in
2

45) .

Robert Bosch LLC's Mot.
Orbital

Fluid

Neither

Technologies

currently

operations or facilities in this District.
0pp. to Def.

owns

an

interest

in

Am.

Synerject

is

not

current

Synerject

does

not

in t h i s

appear

to

have

the
an

interest

(Docket

Virginia,

(Docket No.

to

any

LLC

Patent Infringement at SI 1

party

has

Synerject

Complaint for

named

and

Orbital

to Dismiss at 2-3

which is located in Newport News,

asserted

(Docket

Id. at 17-19; Pis.'

C'Synerject") ,

a

a

Int'l,

Orbital Australia is also an Australian company,

Australia

No.

to

(E.D. Va, 2003).

Limited {''Orbital Corporation") , an Australian company.
Supp.

a

25),

but

lawsuit,

and

in the patents

case.

Orbital alleges that it previously maintained operations in
Newport News

during the development of the

Bosch is accused of infringing.
LLC's

admits

Mot.

that

to

Dismiss

''economic

at

3

which

Pis.' 0pp. to Def. Robert Bosch

(Docket No.

pressure

^387 patent,

forced
13

45).

Orbital

However,

USA to

Orbital

cut

back

and eventually close its United States
indications,
in

over

a

Id.

By all

Orbital has not had any presence in this district

decade.

Given
choice

[o]ffice."

these
forum

of

facts,
is

the

Court

entitled

to

finds
no

that

weight

the

in

Plaintiffs'

balancing

the

factors regarding transfer.
B. Convenience of the Parties

The

second

parties.

factor

to

consider

is

the

convenience

of

Included within this consideration is the "the cost of

obtaining the attendance of witnesses,

compulsory process." Lycos,

499 F.

and the availability of

Supp.

Rambus, 386 F. Supp. 2d at 717 n. 13).

2d at

693

(quoting

With respect to Daimler

and Orbital, the potential fora are equally convenient.
is

the

located

in

Australia,

Daimler

is

located

in

Orbital

Germany,

and

neither would derive any particular convenience or efficiency
from a

trial held in Virginia as

respect to Bosch GmbH,
more

convenient.

domestic

With

travel to Michigan could be marginally

Because

subsidiary,

opposed to Michigan.

Michigan

potential

is

home

witnesses

from Bosch GmbH could combine travel

for

to

and

Bosch

GmbH's

representatives

litigation with other

work-related trips.

With respect to the domestic parties, Michigan would be a
far

more

convenient

and

cost

effective

location

for

Bosch

LLC

and would appear to be no more inconvenient or expensive than
14

Virginia for MBUSA and MBUSI.
this

litigation,

Between the districts proposed for

Michigan is the only "home forum"

available.

On balance, this factor weighs in favor of transfer.
C. Access

The

third

-bo Evidence

factor

in the transfer analysis

is

the

ease of

access to evidence.

In this case,

likely to be abroad.

Pis.' 0pp. to Def. Robert Bosch LLC's Mot.

to Dismiss at 24-25

analysis.

45),

and lends no weight in the

However, to the extent that any domestic evidence is

to be found,
Def.

(Docket No.

the majority of evidence is

Robert

it will be found in Michigan.
Bosch

LLC's

Mot.

to

Dismiss

Mem.

at

in Supp.

19-20

(Docket

of
No.

28} .

Orbital

protests

that

Bosch

LLC has

not

made

a

particularized showing as to this factor,

Pis.'

Robert Bosch LLC's Mot.

(Docket No.

to Dismiss at 24-25

Opp.

strong,

to Def.
45),

and

has even expressly disclaimed the presence of some documents and
information

in

Michigan

in

its

interrogatory

responses

and

responses to production. Pis.' Opp. to Def. Robert Bosch GmbH's
Mot.

to Dismiss at 22

claimed

that

it

whatsoever or that

the

contrary,

(Docket No.

has

no

i t has

Bosch

LLC

112) .

relevant
no

has

But Bosch LLC has not

information

relevant witnesses

agreed

to

or

evidence

whatsoever.

produce

relevant

On

and

requested documents and information and has put forth at least

one potential witness.

Reply Br. In Supp. of Def. Robert Bosch
15

GmbH's

Mot.

would

be

offering

to

Dismiss

astounding

no

at

if

evidence

7-8

(Docket

and

calling

no

114).

Frankly,

it

were

Plaintiffs

No.

truly

planning

on

witnesses

from

in

of

a

named

defendant - a party of their choosing.

Regardless,
Either

there

will

this

factor

be

no

weighs

evidence

equally suitable or there will

in Michigan

case

where

party.

transfer

^^shifts

transfer.

and the

fora

are

some evidence in Michigan and

this factor weighs in favor of transfer.
a

favor

the

Moreover, this is not

inconvenience"

to

the

other

Orbital exited the U.S. market over a decade ago.

The

only entity or individual seemingly inconvenienced would be a

single,

potential third-party witness.

Rather than ^^shifting

the inconvenience," transfer here would reduce the inconvenience

to

some

parties

other party.

without

increasing

the

inconvenience

to

any

This factor weighs in favor of transfer.

D. Convenience of Witnesses

The

fourth

convenience

factor

of witnesses,

in

the

transfer

analysis

is

the

including third-party witnesses.

As

with the documentary sources of evidence, most witnesses in the
case are likely to come from foreign countries.
however,

Bosch LLC has,

identified at least one potential witness in Michigan.

Reply Brief in Supp. of Def. Robert Bosch LLC's Mot. to Dismiss
at 10

(Docket No.

Bosch

LLC's

Mot.

52);
to

Decl. of Peter Tadros in Supp.

Dismiss

(Docket
16

No.

52-1).

of Robert

Moreover,

any

witnesses from Bosch GmbH are likely to find travel to the home

of

their

subsidiary

travel to Virginia.
are

required,

at

least

somewhat

more

convenient

than

To the extent that any of these witnesses

holding

the

trial

in

Michigan

will

be

more

convenient and will minimize the litigation's interference with
the activities of those individuals.

Orbital

has

identified

one

potential

third-party

witness

located in the Eastern District of Virginia for whom travel to
Richmond would be more
Bosch LLC's Mot.

convenient.

to Dismiss at

John Richard Mills in Supp.
Orbital

Fluid

Tech.,

District of Michigan
Mills

-

is

one

of

Inc.

23-24

0pp.

to

(Docket No.

Def.

45);

Robert

Decl.

of

of Orbital Australia Pty Ltd and
Opp.

to

(Docket No.
the

Pis.'

Transfer

45-1) .

inventors

of

to

the

Eastern

This witness -

the

^387

patent.

Although this fact is weighed in the final analysis,

John
Id.

this is

perhaps the only fact that weighs in favor of retention in the
Eastern District of Virginia.
The cost of attendance for and convenience of the witnesses

''is

probably

analysis."
Cir.

2009)

the

single

most

important

In re Genentech,

Inc.,

(citing Neil Bros.

Ltd.

566
v.

factor

in

F.3d 1338,

transfer

1343

(Fed.

World Wide Lines,

Inc.,

425 F. Supp. 2d 325, 329 (E.D.N.Y. 2006)).

''Additional distance

[from home] means additional travel time; additional travel time
increases

the

probability

for

meal
17

and

lodging

expenses;

and

additional travel time with overnight stays
which

these

fact

employment."

In

witnesses

re

must

Nintendo

be

Co.,

increases the time

away

Ltd.,

from

589

their

F.3d

regular

1194,

1199

(Fed. Cir. 2009)

(citing In re TS Tech USA Corp., 551 F.3d 1315,

1320

2008)).

(Fed.

required

Cir.

to

travel

to

It

is

true

Michigan

present an inconvenience.

and

that

that

Mr.

Mills

this

is

may

be

likely

to

However, the fact that one potential

third-party witness in Virginia might need to travel to Michigan
and be thereby inconvenienced is not a sufficient reason to hold
the trial in Richmond.

This factor weighs lightly in favor of

transfer.

E. Interests of Justice

The

fifth

and

final

factor

courts

must

transfer analysis is the interest of justice.

justice

focuses

on

"systemic

integrity

law,

controversies

decided

at

home,

fairness,"

knowledge

of

LLC,

467

2d
F.

at

505

Supp.

quotations omitted).

(quoting
2d

627,

Byerson
635

v.

(E.D.

Equifax
Va.

and

applicable

unfairness in burdening forum citizens with jury duty,

Supp.

the

interest in having

interest in avoiding unnecessary conflicts of law."
F.

in

The interest of

and

considers factors such as "docket congestion,
local

consider

Jaffe,

Info.

2006))

and

874

Servs.,
(internal

This factor weighs in favor of transfer to

the Eastern District of Michigan.

18

First,

it is fairer to burden jurors located in the Eastern

District of Michigan than jurors located in the Eastern District
of Virginia.

Bosch LLC is located in Michigan and none of the

parties call Virginia their home.

this

case

in

Virginia

interest

in

foreign

would

corporations

subsidiaries

Defs.'
Inc.

protecting

and

the

that

other

Orbital claims that ''keeping

be

consistent

rights

of

choose

interests

in

with

U.S.

to

Virginia's

subsidiaries

locate

Virginia."

their
Pis.'

U.S.

0pp.

to

[sic] Mercedes-Benz USA LLC and Mercedes-Benz U.S. Int'l,

Mot.

to Dismiss at 22

{Docket No.

46).

But Orbital has no

subsidiary in Virginia with any interest in this case.
on the other hand,

does

interest in the case.
H 8 {Docket No. 25).

Second,

that

have

a

subsidiary in Michigan with an

This argument favors transfer.

would

could

avoid

otherwise

a

contested

risk

Inc.,

245

F.

Supp.

2d

question

rendering

of

the

entire

See Tyler v.

litigation a moot and wasteful exercise.
Lines,

Bosch,

Am. Complaint for Patent Infringement at

transfer

jurisdiction

Motor

of

Gaines

730,

734

(D.

Md.

2003)

{transferring case because the question of personal jurisdiction
was a

''close one" and "would inject into the case an unnecessary

legal

issue

void,

if,

that

would

on appeal,

Supp.

446,

452

the

entire

jurisdiction were

Datasouth Computer Corp.

F.

render

v.

(W.D.N.C.

Three

1989)
19

litigation null

found

to be

Dimensional Tech.,

{"Courts

have

and

lacking");
Inc.,

held

719

that

a

change of venue may conserve

judicial resources,

interests of the parties as well,
a

forum

where

there

is

a

and serve the

if a case is transferred from

difficult

question

of

personal

jurisdiction or venue to a district in which there are not such
uncertainties.").

Defendants have agreed to jurisdiction in the

Eastern District of Michigan in order to have all of Orbital's
allegations addressed before a single court.

Finally,

docket congestion is only "a minor consideration,

which a court must view in light of other relevant factors,

and

which

and

will

receive

little

weight

if

all

other

reasonable

logical factors result in a transfer of venue."
Supp.

2d

Solutions

Va.

2002);

517,

at

639

Health

(citing
Servs.

Corp.,

GTE Wireless,

520

(E.D.

Facebook,

Inc.,

Va.

Inc.

1999)).

769 F.

Intranexus,

Supp.

277

v.

F.

Inc.
Supp.

Qualcomm,

S^
2d 991,

also
997

See Koh,
v.

2d

Inc.,

Siemens
581,

Va.

Med.

585

71 F.

Praqmatus
(E.D.

250 F.

(E.D.

Supp.

2d

LLC

v.

AV,
2011)

(^^When

a plaintiff with no significant ties to the Eastern District of
Virginia chooses to
it is

not

known as the

served.'")

litigate in the district primarily because
^rocket docket,'

(quoting

Original

the interest of justice

Creatine,

387

F.

Supp.

2d

^is

at

572) .

Based

interests

on

of

the

factors

justice

and

above,

the

efficient

Court

finds

that

adjudication

transferring the case to the Eastern District of Michigan.
20

the

warrant

CONCLUSION

For
MOTION

the

TO

EASTERN

foregoing

DISMISS

OR,

MERCEDES-BENZ

TO

TRANSFER

TO

DEFENDANT

THE

(Docket

TO

No.

AND

DISMISS

FOR

EASTERN

ROBERT

ALTERNATIVE,

LLC

THE

and

(Docket

TO

LACK

OF

OF

THE

DEFENDANT

Defendants
Michigan,

respect

consent
all

to

to

EASTERN

motions

dismiss

to

in
and

TO

THE

INTERNATIONAL,

JURISDICTION

DISMISS

Eastern

DEFENDANT

AND

34);

IN

THE

OF

MOTION

105)

No.

OR,

DISTRICT

transfer.

the

LLC'S

DEFENDANTS

(Docket

(Docket No.

the motions

to

U.S.

DAIMLER AG'S

jurisdiction

27);

MICHIGAN
TO

BOSCH

TRANSFER

No,

PERSONAL

MOTION

TO THE EASTERN DISTRICT OF MICHIGAN

granted with

TO

MERCEDES-BENZ

GMBH'S

TRANSFER

ROBERT

ALTERNATIVE,

DISTRICT

BOSCH

100);

DEFENDANT

MICHIGAN

USA,

INC.'S

IN

OF

DISTRICT

MOTION

reasons,

MICHIGAN

TO

TRANSFER

will all be

Because

District
ROBERT

the

of

BOSCH

LLC'S MOTION FOR PROTECTIVE ORDER TO RESPOND TO RESPOND [s^] TO
JURISDICTIONAL

DISCOVERY

REQUESTS

12-24

(Docket

No.

85)

will

denied as moot.
It

is

so ORDERED.

/s/

Robert E. Payne
Senior United States District Judge

Richmond, Virginia
Date:
July 1, 2015

21

be