12-437.131-RSK July 24, 2013

IN THE UNITED STATES DISTRICT COURT

FOR THE NORTHERN DISTRICT OF ILLINOIS

EASTERN DIVISION

ROBERT BOSCH LLC, )

)

Plaintiff, )

)

 v. ) No. 12 C 437

) 

TRICO PRODUCTS CORPORATION, and )

TRICO PRODUCTS, )

)

Defendants. )

___________________________________)

TRICO PRODUCTS CORPORATION, )

)

Counter-Plaintiff, )

)

v. )

)

ROBERT BOSCH LLC and ROBERT BOSCH )

GmbH, )

)

Counter-Defendants. )

MEMORANDUM OPINION

Before the court is counter-defendant Robert Bosch GmbH’s

(“Bosch GmbH”) motion to dismiss. For the reasons explained below,

we grant Bosch GmbH’s motion in part and deny it in part.

BACKGROUND

Counter-defendant Robert Bosch LLC (“Bosch USA”) is a whollyowned subsidiary of Bosch GmbH, a German company. Bosch USA filed

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this lawsuit against Trico Products Corporation (“Trico”)1 for

infringement of seven patents relating to windshield wiper blades. 

Trico’s counterclaims include two claims for correction of

inventorship against Bosch USA and Bosch GmbH pursuant to 35 U.S.C.

§ 256. Trico alleges that two individuals, Adriaan Swanepoel and

Johannes Fehrsen, invented a “beam-blade” windshield wiper in the

early 1990's. (Trico Counterclaim ¶ 27.) Bosch GmbH, in an

attempt to commercialize the beam-blade concept, sought assistance

from Swanepoel and Fehrsen. (Id. at ¶ 28.) During discussions

with Bosch GmbH, Swanepoel and Fehrsen conceived and disclosed to

Bosch GmbH certain inventions related to beam-blade wipers. (Id. at

¶¶ 29, 49.) In 1998, without Swanepoel’s or Fehrsen’s permission,

Bosch GmbH filed patent applications in Germany for those

inventions. (Id. at ¶¶ 30, 50.) It later filed patent

applications in the United States claiming the same inventions

without naming Fehrsen and Swanepoel as inventors. (Id.) The

United States Patent and Trademark Office (“USPTO”) ultimately

granted those applications. (See id. at ¶¶ 31, 51); see also U.S.

Patent Nos. 6,292,974 (the “‘974 Patent”) and 6,675,434 (the “‘434

Patent”). The patents, like the applications, list inventors other

than Fehrsen and Swanepoel. (See Trico’s Counterclaim ¶¶ 31, 51.) 

In its Third and Fourth Counterclaims, Trico seeks an order

1/ Bosch USA also sued “Trico Products,” an entity that Trico contends

does not exist. (See Trico Answer, Dkt. 28, at 1 n.1.) Whether or not Trico

Products exists as a separate entity is irrelevant to the present motion. 

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removing the named inventors from the ‘974 and ‘434 Patents and

substituting Fehrsen and Swanepoel. (Id. at ¶¶ 42, 60.) Trico

also seeks a declaration that it is the proper owner of the ‘974

and ‘434 Patents pursuant to assignments from Fehrsen and

Swanepoel. (Id. at ¶¶ 43, 61.) Bosch GmbH has moved to dismiss

Trico’s claims against it pursuant to Rule 12(b)(2) for lack of

personal jurisdiction. In the alternative, it argues that it is

not a proper party to Trico’s § 256 claims because it assigned the

‘974 and ‘434 Patents to Bosch USA in 2008. See Fed. R. Civ. P.

12(b)(6); see also Fed. R. Civ. P. 21 (“Misjoinder and Nonjoinder

of Parties”).

DISCUSSION

A. Personal Jurisdiction 

Matters of personal jurisdiction in cases arising under the

patent laws are governed by Federal Circuit law. See TechnoLines,

LP v. GST AutoLeather, Inc., 799 F.Supp.2d 871, 874 (N.D. Ill.

2011) (Grady, J.) (citing Silent Drive, Inc. v. Strong Indus.,

Inc., 326 F.3d 1194, 1201 (Fed.Cir. 2003)). “Rule 4 is the

starting point for any personal jurisdictional analysis in federal

court.” Synthes (U.S.A.) v. G.M. Dos Reis Jr. Ind. Com de Equip.

Medico, 563 F.3d 1285, 1293 (Fed. Cir. 2009). Pursuant to Rule

4(k)(1), serving a summons establishes personal jurisdiction over

a defendant “who is subject to the jurisdiction of a court of

general jurisdiction in the state where the district court is

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located[.]” See Fed. R. Civ. P. 4(k)(1)(A). Rule 4(k)(2) provides

an alternative method of establishing personal jurisdiction over a

defendant where: “(1) the plaintiff’s claim arises under federal

law, (2) the defendant is not subject to jurisdiction in any

state’s courts of general jurisdiction, and (3) the exercise of

jurisdiction comports with due process.” Synthes, 563 F.3d at

1294; see also Fed. R. Civ. P. 4(k)(2). Under both provisions, we

apply the familiar “minimum contacts” due-process analysis. See

Int’l Shoe Co. v. State of Wash., Office of Unemployment

Compensation and Placement, 326 U.S. 310, 316 (1945). But in

cases governed by Rule 4(k)(2), the relevant question is whether

the defendant has sufficient contacts “with the United States as a

whole” — rather than the forum state — to establish personal

jurisdiction. Synthes, 563 F.3d at 1293. We may presume that the

defendant is not subject to personal jurisdiction in any state

court if it does not identify an alternative state forum. See

Touchcom, Inc. v. Bereskin & Parr, 574 F.3d 1403, 1415 (Fed. Cir.

2009) (“[I]f ‘the defendant contends that he cannot be sued in the

forum state and refuses to identify any other where suit is

possible, then the federal court is entitled to use Rule

4(k)(2).’”) (quoting ISI Int’l, Inc. v. Borden Ladner Gervais LLP,

256 F.3d 548, 552 (7th Cir. 2001)). Here, Bosch GmbH has not

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identified any other state “where suit is possible,” therefore we

will proceed under Rule 4(k)(2).2 

Trico focuses primarily on specific — rather than general —

jurisdiction. To establish specific jurisdiction, Trico must show

that “(1) the defendant purposefully directed its activities at

residents of the forum, (2) the claim arises out of or relates to

the defendant’s activities with the forum, and (3) assertion of

personal jurisdiction is reasonable and fair.” Synthes, 563 F.3d

at 1297. Bosch GmbH purposefully directed its activities at the

United States by filing patent applications in this country. See

Deprenyl Animal Health, Inc. v. University of Toronto Innovations

Foundation, 297 F.3d 1343, 1353 (Fed. Cir. 2002) (“Obtaining [a

United States Patent] is a meaningful contact with the United

States; it requires a patentee purposefully to avail him or herself

of a significant benefit of United States law.”). And Trico’s §

256 claim arises directly from Bosch GmbH’s applications: Trico

alleges that Bosch GmbH misidentified the inventors of the devices

claimed in the ‘974 and ‘434 Patents. (See Counterclaim ¶¶ 30-31,

50-51.) The applications constitute only two contacts with the

United States, but even one contact may suffice where, as here, it

is “substantially related” to the plaintiff’s claim. Red Wing Shoe

2/ The Federal Circuit has reserved ruling on whether a court must first 

analyze personal jurisdiction under Rule 4(k)(1) before reaching Rule 4(k)(2). 

See Synthes, 563 F.3d at 1296; Touchcom, 574 F.3d at 1415 n.5. Trico, which has

the burden of establishing personal jurisdiction, relies on Rule 4(k)(2)

exclusively. (See Trico Resp. at 4-7.) Under the circumstances, we think it is

appropriate to proceed directly to Rule 4(k)(2). 

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Co., Inc. v. Hockerson-Halberstadt, Inc., 148 F.3d 1355, 1359 (Fed.

Cir. 1998); see also See Synthes, 563 F.3d at 1297. As Bosch GmbH

points out, (see Bosch GmbH Reply at 9-10), some of the cases that

Trico relies on involved multiple contacts with the forum state. 

See, e.g., Deprenyl, 297 F.3d at 1351-52 (the defendant’s relevant

contacts included negotiations by telephone and mail and one trip

to the forum state). But the claims in those cases were different. 

See id. (declaratory judgment action asserting that the parties’

license agreement did not apply to sales of a certain drug and that

the sales did not infringe the licensed patent); see also Genetic

Implant Systems, Inc. v. Core-Vent Corp., 123 F.3d 1455, 1458-59

(Fed. Cir. 1997) (declaratory judgment action asserting invalidity

and noninfringement). The gravamen of a § 256 claim is the content

of the application and the patent itself.

We also conclude that exercising personal jurisdiction over

Bosch GmbH is “reasonable and fair.” Synthes, 563 F.3d at 1297. 

“To determine whether exercising personal jurisdiction would

comport with fair play and substantial justice, we consider five

factors: (1) the burden on the defendant, (2) the forum’s interest

in adjudicating the dispute, (3) the plaintiff’s interest in

obtaining convenient and effective relief, (4) the interstate

judicial system’s interest in obtaining the most efficient

resolution of controversies, and (5) the shared interest of the

states in furthering fundamental substantive social policies.” Id.

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at 1299 (internal quotation marks omitted). While litigating in a

foreign jurisdiction would impose some burden on Bosch GmbH, we do

not believe that the burden would be onerous. We take judicial

notice of the fact that federal lawsuits rarely proceed to trial,

so the likelihood that Bosch GmbH’s officers would have to appear

in Chicago for trial is small. It is much more likely that Trico

would depose Bosch GmbH’s officers, but we would not require them

to travel to Chicago for that purpose. As for written discovery,

litigants routinely exchange documents electronically even in

lawsuits between parties residing in the same district. The

parties in this case are clearly sophisticated and resourceful, so

we are confident that they could manage the discovery process to

eliminate any unnecessary burden on Bosch GmbH. With respect to

the second factor, the United States has a substantial interest in

enforcing its patent laws and ensuring that patents and patent

applications accurately disclose inventorship. See id. at 1299

(“The United States has a ‘substantial interest’ in enforcing the

federal patent laws.”); see also Chou v. University of Chicago, 254

F.3d 1347, 1358 (Fed. Cir. 2001) (both individual inventors, and

the public, have an interest in “assuring correct inventorship

designations on patents”). The third and fourth factors also

support exercising jurisdiction. As we discuss below, Bosch GmbH

disclaims any continuing economic interest in the patents. But at

the same time, it denies Trico’s claim that Swanepoel and Fehrsen

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are the true inventors, (see Bosch GmbH Reply at 12), and it likely

possesses evidence relevant to Trico’s claim. Indeed, it is

unclear at this stage of the case what basis Bosch USA has for

denying Trico’s § 256 allegations except through information

gleaned from Bosch GmbH, the party involved in the events that give

rise to Trico’s claim. (See, e.g., Bosch USA Answer to

Counterclaims ¶ 31 (“Bosch [USA] states that Fehrsen was not named

as an inventor because he was not an inventor . . . .”).) Bosch

GmbH did not assign the patents to Bosch USA until June 2008, years

after the USPTO issued the ‘974 Patent (2001) and the ‘434 Patent

(2004). (See Assignment, dated June 17, 2008, attached as part of

Group Ex. 3 to Decl. of C.H. Cross.) As between the two

defendants, it seems likely that Bosch GmbH will possess most if

not all of the information relevant to inventorship, and it would

be burdensome for Trico to obtain that information if Bosch GmbH is

not a party to this lawsuit.3

 See, e.g., Lechoslaw v. Bank of

America, N.A., 618 F.3d 49, 57-58 (1st Cir. 2010) (recognizing the

delay and expense associated with seeking discovery through the

Hague Convention). The delays that attend international thirdparty discovery ultimately affect this court, impairing our ability

to efficiently adjudicate the parties’ dispute. Finally, Bosch

GmbH has not suggested that exercising jurisdiction will somehow

3/ Trico may have no choice if it cannot amend its complaint to allege

that Bosch GmbH has a sufficient stake in the inventorship question to make it

a proper party to Trico’s § 256 claim. (See infra.) But for purposes of

evaluating personal jurisdiction, we think that the burden of international

third-party discovery is a relevant consideration. 

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impair any shared interest between the United States and Germany. 

In sum, this is not the “rare” case where fairness dictates

declining jurisdiction over a defendant that has “purposefully

engaged in forum activities.” Synthes, 563 F.3d at 1300 (citation

and internal quotation marks omitted).

Bosch GmbH’s motion to dismiss Trico’s counterclaims for lack

of personal jurisdiction is denied.

B. Whether Bosch GmbH is a Proper Party to Trico’s § 256 Claim

Section 256 provides a cause of action for parties seeking to

challenge inventorship: 

The error of omitting inventors or naming persons who are

not inventors shall not invalidate the patent in which

such error occurred if it can be corrected as provided in

this section. The court before which such matter is

called in question may order correction of the patent on

notice and hearing of all parties concerned and the

Director shall issue a certificate accordingly.

35 U.S.C. § 256(b); see also Chou, 254 F.3d at 1357 (Section 256

“provides a cause of action for judicial correction of inventorship

. . . .”). Bosch GmbH argues that Trico cannot state a claim for

relief against it because it assigned the patents to Bosch USA. 

The Federal Circuit has held that a party claiming an economic

interest in the patents at issue may be joined as a defendant to a

§ 256 claim, even over its objection. See Chou, 254 F.3d at 1359.4

Two district courts, construing Chou, have held that ownership is

a sufficient, but not a necessary, condition to being sued under §

4/ Neither Bosch GmbH nor Trico cite Chou or any other case directly

addressing the proper parties to a § 256 claim.

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256. See Schwindt v. Hologic, Inc., No. 1:11-cv-00110-JMS-MJD,

2011 WL 3806511, *5-6 (S.D. Ind. Aug. 26, 2011); Jardin v.

Datallegro, Inc., No. 10-CV-2552-IEG (WVG), 2011 WL 3300152, *7

(S.D. Cal. July 29, 2011). In Schwindt, the plaintiff sued four

defendants under § 256: the assignee of the subject patent, the

assignee’s purchaser, and two of the named inventors. See

Schwindt, 2011 WL 3806511, *2-3. The named inventors moved to

dismiss the claim against them, arguing essentially what Bosch GmbH

argues here: “[b]ecause Defendants Miller and Mark assigned their

rights to the ‘824 patent to Defendant Suros, they argue, they have

no economic interest and are therefore not proper parties to this

litigation.” Id. at *5. The Schwindt court rejected this

argument, reasoning that “it would be absurd to suggest that the

notice requirement built into § 256 means that if two inventors

conspire to keep a third inventor’s name from a patent, and the two

inventors assign the patent to a third party, the non-named

inventor cannot add the two inventors in a § 256 [lawsuit].” Id.

at *6. We think that Scwhindt’s reasoning is sound, but it is

distinguishable. The objecting defendants in Schwindt were the

named inventors, who necessarily had a stake in the outcome of the

plaintiff’s § 256 claim. See, e.g., Jardin, 2011 WL 3300152, *8

(concluding that the named inventor was a proper party to the

plaintiff’s § 256 suit even though he no longer had an economic

interest in the patent). Bosch GmbH is a material witness, but

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currently it does not appear to have any interest (economic or noneconomic) in the patents.5 Trico off-handedly suggests that Bosch

GmbH may be required to disgorge “ill-gotten revenue” from the

patents if we ultimately conclude that Swanepoel and Fehrsen are

the true inventors. (See Trico Resp. at 10.) But as Bosch GmbH

points out, (see Bosch GmbH Reply at 11-12), Trico does not request

this relief in its complaint or allege facts supporting such a

request. Bosch GmbH’s motion to dismiss Trico’s counterclaims for

failure to state a claim is granted.

CONCLUSION

Defendant Bosch GmbH’s motion to dismiss [69] is granted in

part and denied in part. Insofar as the motion is predicated on

lack of personal jurisdiction, it is denied. However, the motion

is granted on the ground that Trico has failed to state a claim for

relief. Trico’s Third and Fourth Counterclaims against Bosch GmbH

are dismissed without prejudice. Trico is given leave to file

amended counterclaims by August 16, 2013 that cure the deficiencies

we have identified with its claims, if it can do so. If Trico

chooses not to file amended counterclaims by that date, we will

dismiss its counterclaims against Bosch GmbH with prejudice.

5/ Bosch GmbH is the sole owner of Bosch USA, but we are not persuaded

that this is sufficient to make it a proper defendant. The Schwindt court based

its ruling in part on the defendants’ ownership and control of the corporate

defendant, but the plaintiff alleged that the corporate defendant was essentially

a shell company. See Scwhwindt, 2011 WL 3806511, *2, *6. There are no

comparable allegations here.

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DATE: July 24, 2013

ENTER: ___________________________________________

John F. Grady, United States District Judge

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