United States District Court, E.D. Virginia, Richmond Division
ROBERT E. PAYNE, Senior District Judge.
This matter is before the Court on DEFENDANT ROBERT BOSCH LLC'S MOTION TO DISMISS OR, IN THE ALTERNATIVE, TO TRANSFER TO THE EASTERN DISTRICT OF MICHIGAN (Docket No. 27); DEFENDANTS MERCEDES-BENZ USA, LLC AND MERCEDES-BENZ U.S. INTERNATIONAL, INC.'S MOTION TO DISMISS FOR LACK OF PERSONAL JURISDICTION AND TRANSFER TO THE EASTERN DISTRICT OF MICHIGAN (Docket No. 34); DEFENDANT ROBERT BOSCH GMBH'S MOTION TO DISMISS OR, IN THE ALTERNATIVE, TO TRANSFER TO THE EASTERN DISTRICT OF MICHIGAN (Docket No. 100); DEFENDANT DAIMLER AG'S MOTION TO TRANSFER TO THE EASTERN DISTRICT OF MICHIGAN (Docket No. 105); and DEFENDANT ROBERT BOSCH LLC'S MOTION FOR PROTECTIVE ORDER TO RESPOND TO RESPOND [sic] TO JURISDICTIONAL DISCOVERY REQUESTS 12-24 (Docket No. 85). For the reasons stated below, the motions will be granted in part and denied in part as moot.
On December 2, 2014, Orbital Australia PTY LTD ("Orbital Australia") and Orbital Fluid Technologies, Inc. ("Orbital Fluid") (collectively, "Orbital" or "Plaintiffs") filed the present action alleging infringement of U.S. Patent Nos. 6, 923, 387 ("the '387 patent"), 5, 655, 365 ("the '365 patent") and 5, 606, 951 ("the '951 patent") by Defendants Daimler AG ("Daimler"), Mercedes-Benz USA, LLC ("MBUSA"), and Mercedes-Benz U.S. International, Inc. ("MBUSI"), as well as Robert Bosch GmbH ("Bosch GmbH") and Robert Bosch LLC ("Bosch LLC") (collectively, "Defendants"). On February 2, 2015, Orbital filed its Amended Complaint alleging that Daimler, MBUSA, and MBUSI infringe the asserted patents by making, using, 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 ¶¶ 6, 9, 41, 46, 85, 129.)
Orbital Australia Pty Ltd is an Australian company having its principal place of business in Australia. (Id. at ¶ 2.) Orbital Fluid Technologies, Inc., a wholly-owned subsidiary of Orbital Australia, is incorporated in Delaware. (Id. at ¶ 1.) MBUSA is a Delaware corporation with its headquarters in Montvale, New Jersey. (Id. at ¶ 4.) MBUSA distributes and markets Mercedes-Benz vehicles throughout the United States. (Id.) MBUSI is an Alabama corporation with its headquarters in Vance, Alabama. (Id. at ¶ 5.) MBUSI manufactures Mercedes-Benz vehicles in the United States. (Id.) Bosch LLC is a Delaware limited liability company with its headquarters in Farmington Hills, Michigan. (Id. at ¶ 8.) Daimler is a German corporation and Bosch Germany is a German limited liability company, both having their principal places of business in Germany. (Id. at ¶¶ 3, 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. (Docket No. 27.) On February 27, 2015, MBUSI and MBUSA filed a motion to 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. (Docket No. 100.) On the same day, 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.)
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. See Jaffe v. LSI Corp., 874 F.Supp.2d 499, 502 (E.D. Va. 2012). Second, the court should consider: (1) the plaintiff's choice of forum; (2) the convenience of the parties; (3) access to evidence; (4) the convenience of the witnesses, including third-party witnesses; and (5) the interest of justice. Samsung Elec. Co. v. Rambus, Inc., 386 F.Supp.2d 708, 716 (E.D. Va. 2005). 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 and expense.'" Original Creatine Patent Co. v. Met-Rx USA, Inc., 387 F.Supp.2d 564, 566 (E.D. Va. 2005) (quoting Van Dusen v. Barrack, 367 U.S. 612, 616 (1964)). With the interests of justice and efficient adjudication in mind, the Court will examine the relevant factors.
I. The Proposed Forum
For the domestic defendants, there is no question whether jurisdiction is presently proper in the Eastern District of Michigan, as all defendants have consented to jurisdiction in the transferee forum. However, the relevant 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 (1960). While later consent to in personam jurisdiction may be a valid consideration under the "interests of justice" factor of the transfer calculus, it cannot retroactively render the Eastern District of Michigan a forum where the claim could have been brought ab initio.
Bosch LLC contends that Orbital could have brought its claims of patent infringement in the Eastern 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. Pls.' Opp. to Def. Robert Bosch LLC's Mot. to Dismiss at 20 (Docket No. 45). And while MBUSI contests personal jurisdiction in Virginia,  Plaintiffs' theory of personal jurisdiction - the theory upon which the suit was commenced in the Eastern District of Virginia - would seem to apply equally in the Eastern District of Michigan. If the Plaintiff could have brought the claim here, then the Plaintiff could have brought the claim there. Thus, if personal jurisdiction is 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 foreign Defendant Bosch GmbH, Orbital offers alternate jurisdictional arguments. To the extent Orbital argues that personal jurisdiction is available in the Eastern District of Virginia, the same rationale discussed above holds and personal jurisdiction - if available at all - would have been available in the Eastern District of Michigan at the commencement of the suit.
To the extent that Plaintiffs alternately attempt to rely upon Fed.R.Civ.P. 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 put, this is because if Rule 4(k)(2) is truly applicable and Bosch GmbH would not have been subject to jurisdiction anywhere at the time of the suit, 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 facet of the Section 1404(a) analysis would be satisfied. To argue that the choice of the plaintiff 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 ...