United States District Court, D. Delaware
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[Copyrighted Material Omitted]
For Plaintiff: David E. Moore, POTTER ANDERSON & CORROON, LLP, Wilmington, DE; Mark A. Hannemann, KENYON & KENYON, LLP, New York, NY.
For Defendants: Sean T. O'Kelly, O'KELLY, ERNST, BIELLI & WALLEN, LLC, Wilmington, DE; Robert J. Kenney, Michael B. Marion, BIRCH, STEWART, KOLASCH & BIRCH, LLP, Falls Church, VA.
LEONARD P. STARK, United States District Judge.
Pending before the Court are Defendants Alberee Products, Inc. (" Alberee" ), API Korea Co., Ltd. (" API" ), and Saver Automotive Products, Inc.'s (" Saver" ) (collectively, " Defendants" ) motions to dismiss Robert Bosch LLC's (" Bosch" or " Plaintiff" ) patent infringement claims, pursuant to Federal Rule of Civil Procedure 12(b)(2) (D.I. 45, 46), as well as Plaintiff's request for jurisdictional discovery (D.I. 49 at 19-20).
I. The Parties
Bosch is a limited liability company organized under the laws of Delaware, which markets and sells beam wiper blades in the United States. (D.I. 39 at 2; D.I. 41 at ¶ 3) It asserts ownership of the various patents-in-suit in this matter: U.S. Patent Nos. 6,523,218 (" the '218 patent" ), 6,530,111 (" the '111 patent" ), 6,553,607 (" the '607 patent" ), 6,611,988 (" the '988 patent" ), 6,675,434 (" the '434 patent" ), 6,836,926 (" the '926 patent" ), 6,944,905 (" the '905 patent" ), 6,973,698 (" the '698 patent" ), 7,228,588 (" the '588 patent" ), 7,293,321 (" the '321 patent" ), 7,523,520 (" the '520 patent" ), 7,484,264 (" the '264 patent" ), and 8,099,823 (" the '823 patent" ) (collectively, " the Bosch patents" ). (D.I. 38 at ¶ ¶ 21, 47, 61, 75, 101, 127, 153, 179, 205, 231, 257, 283, 309). The Bosch patents are generally directed to improvements over conventional bracketed windshield wiper blades.
Alberee is a corporation organized under the laws of the state of Maryland with a place of business in Halethorpe, Maryland. (D.I. 38 at ¶ 2) API is a corporation organized under the laws of Korea with a place of business in Incheon, Korea. ( Id. at ¶ 3) Saver is a corporation organized under the laws of the state of Maryland with a place of business in Halethorpe, Maryland. ( Id. at ¶ 4) Each of the Defendants' businesses relate to the production, manufacture and/or sale of windshield wiper blades.
II. Procedural Background
On May 4, 2012, Bosch commenced this action, asserting that API and Alberee (doing business as Saver) each directly and indirectly infringed certain claims of all of the Bosch patents (except for the '823 patent, which was not referenced). (D.I. 1 at ¶ ¶ 5-160) On December 14, 2012, API and Alberee filed a motion to dismiss the Complaint, pursuant to Federal Rules of Civil Procedure 12(b)(2) and 12(b)(6). (D.I. 28) In doing so, they asserted that Alberee and Saver were separate entities. (D.I. 29 at 1-2)
Thereafter, on January 18, 2013, Bosch filed an Amended Complaint. (D.I. 38) In its Amended Complaint, Bosch added additional allegations regarding the alleged infringement, identified Saver as a separate defendant as to all claims, and added a count of infringement regarding the '823 patent. (D.I. 38)
In response to the filing of the Amended Complaint, Defendants filed the instant motions to dismiss pursuant to Rule 12(b)(2). (D.I. 45, 46) Briefing on these motions was completed on March 18, 2013. (D.I. 50)
III. Factual Background
In the Amended Complaint, Plaintiff asserts against Defendants thirteen counts of direct and indirect infringement of the Bosch patents. (D.I. 38 at ¶ ¶ 20-333) In the " Defendants And Accused Products" section of the Amended Complaint, Plaintiff sets out its factual allegations relating to personal jurisdiction. (D.I. 38 at ¶ ¶ 2-19) Plaintiff also points to other evidence of record in support of its jurisdictional allegations. The Court summarizes Plaintiff's relevant allegations and citations to facts of record below, noting where any
such facts appear to be disputed by Defendants.
API manufactures a large number of windshield wiper blade components in Korea and sells them to companies in the United States, including Alberee. (D.I. 29, Ex. A at ¶ 2; D.I. 38 at ¶ ¶ 9-10) Alberee takes possession of these components in Korea, and imports them into the United States through Los Angeles, California. (D.I. 29, Ex. A at ¶ 6) Plaintiff alleges that after receiving these components from API, Alberee and Saver work together at their offices in Maryland to assemble the components into automotive windshield wiper blades that are marketed and sold in the United States. (D.I. 29, Ex. A at ¶ 7; D.I. 38 at ¶ ¶ 9-10) Saver has offered for sale and sold these wiper blades in the United States to retail stores (which in turn sell them to end user customers). (D.I. 29, Ex. A at ¶ ¶ 3, 11; D.I. 38 at ¶ ¶ 11-12; D.I. 42, exs. C-E) Saver sells the wiper blades under various brand names, including Goodyear Assurance, Saver Arc Flex Ultra, and Touring Ultra (hereinafter, the " Accused Products" ). (D.I. 38 at ¶ 10)
In particular, Saver is the exclusive seller of the Goodyear Assurance wiper blades to the nationwide Costco Wholesale (" Costco" ) retail chain in the United States, and has been for at least three years. (D.I. 29, Ex. A at ¶ ¶ 3, 7, 11; D.I. 38 at ¶ ¶ 13-15; D.I. 41 at ¶ 4) Bosch estimates that Costco has sold several million units of these Goodyear Assurance wiper blades annually during this period. (D.I. 41 at ¶ 4) Among Costco's hundreds of retail locations is one located in Newark, Delaware, where Costco has sold " significant quantities"  of the Goodyear Assurance wiper blades, up through at least January 2013. (D.I. 38 at ¶ ¶ 13-15; D.I. 40 at ¶ 5; D.I. 42, Ex. B) Via Saver's sale of the Goodyear Assurance products to Costco, Saver purposefully ships wiper blades through an established distribution channel into the State of Delaware. (D.I. 29, Ex. A at ¶ ¶ 2-3, 11; D.I. 38 at ¶ 15; D.I. 41 at ¶ 4; D.I. 42, Ex. A)
As to the inter-relationship among Defendants, API and Alberee are alleged to have worked together on a joint development project, through which they developed the allegedly infringing wiper blades; the owner of API (Choon Bae Lee) and the owner and president of Alberee (Albert Lee) are also named as a co-inventors on a Korean patent application that relates to those wiper blades. (D.I. 38 at ¶ ¶ 17-18; D.I. 42, exs. J-K) Alberee and Saver are alleged to have held themselves out as related companies and to have business locations at the same address in Halethorpe, Maryland. (D.I. 38 at ¶ ¶ 2, 4, 5-7) The president and owner of Alberee,
Albert Lee, was also at one time the president of Saver and has long been associated with Saver. (D.I. 29, Ex. A at ¶ 2; D.I. 41 at ¶ ¶ 5-6; D.I. 42, Ex. I)
There is no evidence that any of the Defendants (1) have any offices, employees or property in Delaware; (2) manufacture anything in Delaware; (3) had employees attend trade shows or travel to engage in business in Delaware; or (4) hold bank accounts or are registered to do business in Delaware. ( See, e.g., D.I. 29, Ex. A at ¶ 8; D.I. 29, Ex. B at ¶ 5; D.I. 47 at 9-10) Nor is there any evidence that any of Defendants have ever directly transacted business or sold products in Delaware.
Pursuant to Federal Rule of Civil Procedure 12(b)(2), a party may move to dismiss a case based on the court's lack of personal jurisdiction over that party. Determining the existence of personal jurisdiction requires a two-part analysis -- one statutory and one constitutional. First, the court analyzes the long-arm statute of the state in which the court is located. See IMO Indus., Inc. v. Kiekert AG, 155 F.3d 254, 259 (3d Cir. 1998). Next, the court must determine whether exercising jurisdiction over the defendant in this state comports with the Due Process Clause of the Constitution. See id. Due Process is satisfied if the court finds the existence of " minimum contacts" between the non-resident defendant and the forum state, " such that the maintenance of the suit does not offend traditional notions of fair play and substantial justice." Int'l Shoe Co. v. Washington, 326 U.S. 310, 316, 66 S.Ct. 154, 90 L.Ed. 95 (1945) (internal quotation marks omitted).
When a defendant moves to dismiss a lawsuit for lack of personal jurisdiction, the plaintiff bears the burden of showing the basis for jurisdiction. See Power Integrations, Inc. v. BCD Semiconductor, 547 F.Supp.2d 365, 369 (D. Del. 2008). If no evidentiary hearing has been held, a plaintiff " need only establish a prima facie case of personal jurisdiction." O'Connor v. Sandy Lane Hotel Co., 496 F.3d 312, 316 (3d Cir. 2007). A plaintiff " presents a prima facie case for the exercise of personal jurisdiction by establishing with reasonable particularity sufficient contacts between the defendant and the forum state." Mellon Bank (E) PSFS, Nat'l Ass'n v. Farino, 960 F.2d 1217, 1223 (3d Cir. 1992). On a motion to dismiss for lack of personal jurisdiction, " the plaintiff is entitled to have its allegations taken as true and all factual disputes drawn in its favor." Miller Yacht Sales, Inc. v. Smith, 384 F.3d 93, 97 (3d Cir. 2004). A court is always free to revisit ...