In an order entered December 18, 2008, I granted the parties’ stipulation to dismiss 1

Freescale Semiconductor, Inc from this case. I have amended the caption accordingly.

In Case No. 08-cv-456-slc the parties have declined the jurisdiction of the magistrate 2

judge and in Case No. 08-cv-691-slc the parties have not had an opportunity to consent.

Because no Article III judge has been assigned to this case, I have assumed jurisdiction over

the cases temporarily to resolve the parties’ current disputes. 

1

IN THE UNITED STATES DISTRICT COURT

FOR THE WESTERN DISTRICT OF WISCONSIN

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WACOH COMPANY,

OPINION and ORDER

Plaintiff,

08-cv-456-slc

v.

CHRYSLER LLC, FORD MOTOR COMPANY, 

AMERICA HONDA MOTOR CO. INC.,

MAZDA MOTOR OF AMERICA, INC., GM 

CORPORATION, VOLKSWAGEN GROUP OF 

AMERICA, INC., BMW OF NORTH AMERICA, 

L.L.C., MERCEDES-BENZ USA, LLC, 

AMERICAN SUZUKI MOTOR CORPORATION, 

ANALOG DEVICES, INC.,

Defendants.1

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WACOH COMPANY,

OPINION and ORDER

Plaintiff,

08-cv-691-slc2

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2

v.

CHRYSLER LLC, FORD MOTOR COMPANY, 

AMERICA HONDA MOTOR CO. INC.,

MAZDA MOTOR OF AMERICA, INC., GM 

CORPORATION, VOLKSWAGEN GROUP OF 

AMERICA, INC., BMW OF NORTH AMERICA, 

L.L.C., MERCEDES-BENZ USA, LLC, 

AMERICAN SUZUKI MOTOR CORPORATION, 

ANALOG DEVICES, INC.,

Defendants.

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In these two suits, plaintiff Wacoh Company is suing the same set of defendants for

alleged infringement of its United States Patent No. 6,512,364 (the ‘364 patent), which is

directed at certain methods for testing sensors. Plaintiff filed its original lawsuit, Case No.

08-cv-456-slc, on August 6, 2008, alleging past and future infringement by defendants. This

case has been slow to get off the ground. First, several parties were granted leave to

intervene and plaintiff was granted leave to amend its complaint to add claims against the

intervenors; since then, additional companies have moved for intervention. Three such

motions are currently under advisement. Next, Magistrate Judge Crocker recommended

granting plaintiff’s motion for leave to file a second amended complaint but also

recommended that all of plaintiff’s claims involving infringement that occurred before July

16, 2008 be dismissed for lack of standing because that date is when plaintiff purportedly

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3

received title to the patent and the parties to that transfer failed to specify that plaintiff

owned the right to sue for past infringement. Defendant Volkswagen has now objected to

this recommendation and has filed a third motion to dismiss for lack of standing and to

strike the second amended complaint on the same grounds as it objects to the

recommendation. (Although the parties have not completed briefing on defendant

Volkswagen’s third motion to dismiss and motion to strike, that motion will be denied as

redundant in light of defendant Volkswagen’s objection to the report and recommendation

on the same grounds.)

The story does not end there. Judge Crocker’s recommendation that the past

infringement claims be dismissed has convinced plaintiff to file a second lawsuit, Case No.

08-cv-691-slc, to assert its past infringement claims against defendants now that it has cured

the standing problem. Of course, plaintiff has filed a prompt motion to consolidate the

cases; defendant Volkswagen is the sole objector to this motion as well.

As to these motions, I conclude that (1) the motions to intervene will be granted; (2)

Judge Crocker’s report and recommendation will be adopted and the second amended

complaint will be the operative pleading and plaintiff’s past infringement claims will be

dismissed from the original lawsuit; (3) defendant Volkswagen’s motions to dismiss for lack

of standing will be denied for the same reasons; and (4) plaintiff’s motion to consolidate the

two cases will be granted.

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After cleaning up that procedural mess, I will address one other motion, which is

defendants’ joint motion to transfer this case to the Eastern District of Michigan. That

motion will be granted because that forum is clearly more convenient to the parties. A

number of defendants have their principal place of business in the Eastern District of

Michigan, the other defendants and intervenors do not oppose transfer to that district and

plaintiff has undermined its only asserted interest in litigating in this forum, which is the

relative speed of this district, by creating its own delay through mistakes and litigation

strategy. 

OPINION

A. Motions to Intervene in 08-cv-456-slc

In Case No. 08-cv-456-slc, Akebono Brake Corporation, Robert Bosch LLC and

Continental Teves AG & Co. oHG have moved to intervene under Fed. R. Civ. P. 24(b) on

the ground that each of them is a supplier of certain sensors alleged to be infringing in one

or more of defendants’ cars. Dkts. ##115, 116, and 125. Plaintiff did not oppose any of

the motions to intervene, but did ask in its briefs for an opportunity to file another amended

complaint to include new claims against the intervenors. I will grant the motions to

intervene because, aside from the fact that no party opposes the motions, it is apparent that

the proposed intervenors have “claim[s] or defense[s] that share[] with the main action a

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common question of law or fact” and intervention will not “unduly delay or prejudice” the

parties. Fed. R. Civ. P. 24(b). As for plaintiff’s request for leave to file another amended

complaint, it never filed a formal motion for that request and, in light of my conclusion that

transfer is proper, I will leave that matter in the hands of the transferee court. One final

point on this issue. I note that although the intervenors submitted proposed answers to

plaintiff’s first amended complaint, that pleading will be mooted by my decision to make

plaintiff’s proposed second amended complaint the operative pleading, so the intervenors

will have to file new answers.

B. Report and Recommendation in 08-cv-456-slc

Next, in a report and recommendation entered December 1, 2008, United States

Magistrate Judge Stephen Crocker recommended that plaintiff be granted leave to file a

second amended complaint; defendant Volkswagen’s motions to dismiss be denied as moot

in light of the second amended complaint; and plaintiff’s claims for infringement occurring

before July 16, 2008 be dismissed for lack of standing while its claims for later infringement

proceed. Defendant Volkswagen has filed an objection to the recommendations.

Defendant Volkswagen contends that plaintiff should not be granted leave to file the

second amended complaint on three grounds: because plaintiff failed to seek leave to amend

its complaint, because plaintiff included new claims in the second amended complaint

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without having first analyzed their viability and because the second amended complaint

would have to be dismissed immediately for lack of standing. As to defendant Volkswagen’s

first point, plaintiff’s failure to formally move for leave to file the second amended complaint

upon filing it was a harmless mistake, particularly now that defendant Volkswagen has had

an opportunity to object to its filing. Next, defendant Volkswagen’s concern that plaintiff

failed to first investigate whether grounds existed for infringement of each product before

alleging as much in the second amended complaint is not a ground for denying leave to

amend; to the extent defendant is concerned about this matter, it is free to seek relief under

Rule 11. 

This leaves defendant Volkswagen’s argument that plaintiff should not be allowed to

amend its complaint because it would be futile. Defendant Volkswagen cites Paradise

Creations, Inc. v. UV Sales, Inc., 315 F.3d 1304, 1310 (Fed. Cir. 2003), for the proposition

that a plaintiff lacking Article III standing at the time it filed suit cannot cure that defect by

later amending the complaint. However, to frame the issue that way conflates the question

whether plaintiff could repair defects in standing with the question whether plaintiff could

add new claims for which it did have standing at the time of filing suit. Paradise Creations

prohibits the former, not the latter. Indeed, in Paradise Creations the court acknowledged

that there is no bar to proceeding on claims for which “the plaintiff had a cognizable injury

at the inception of suit for the purpose of Article III standing.” Id. What is barred is

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attempting to proceed on claims for which the plaintiff “lacked a cognizable injury necessary

to assert standing under Article III” when filing suit, regardless whether its standing to sue

later materializes. Id. Allowing plaintiff to file a second amended complaint is not futile

because the proposed complaint includes claims against defendant Volkswagen and the other

defendants for infringement that arose after plaintiff received title in the patent. Because I

agree with Judge Crocker that plaintiff should be granted leave to file its second amended

complaint, dkt. #132 will be the operative pleading; for the same reason, defendant

Volkswagen’s first two motions to dismiss for lack of standing are mooted, although the issue

is not.

As to Judge Crocker’s final recommendation that plaintiff’s claims for infringement

occurring before July 16, 2008 be dismissed for lack of standing, no party objects to that

recommendation, although defendant Volkswagen contends that all claims should have been

dismissed for the same reason that the second amended complaint should be because some

of them were defective. As I explained above, plaintiff may proceed on claims for which it

had standing at the time of filing suit; therefore, I agree with Judge Crocker that only

plaintiff’s claims against defendants for infringement occurring before July 16, 2008 must

be dismissed for lack of standing. Therefore, I will adopt this recommendation as well.

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C. Motion to Consolidate 08-cv-456-slc and 08-cv-691-slc

In light of Judge Crocker’s recommendation that plaintiff’s past infringement claims

be dismissed for lack of standing, plaintiff filed a second lawsuit after obtaining an explicit

transfer of the patentee’s right to sue for past infringement. Plaintiff has moved to

consolidate the cases under Fed. R. Civ. P. 42(a) to “make the case whole.” Defendant

Volkswagen is the sole objector to this motion to consolidate. First, it contends that the

original case should have been dismissed in its entirety because of the standing problems it

suffered. As I explained above, that is not so because plaintiff is asserting claims for which

it has standing to sue. 

Defendant Volkswagen’s only other basis for objecting to consolidation is its concern

that consolidating the cases under the earlier schedule of the first case would “prejudice”

defendant Volkswagen. I agree that the current schedule could not be sustained, and this

is primarily plaintiff’s fault for failing to insure it had standing before it filed suit in the first

place. However, defendant’s concern may be addressed without sacrificing the efficiency of

allowing the parties to litigate as one case what really is one case. The better approach is to

consolidate the cases and make changes to the scheduling. In light of my conclusion that the

cases case should be transferred, a new schedule will have to be set by the transferee court,

but I am confident that the parties will have an opportunity to request a fair schedule. 

Finally, I note that, although the intervenors have not moved to intervene in the later

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lawsuit, this is of no matter; the consolidation of the cases should come as no surprise to the

intervenors, nor should the new claims: the intervenors moved to intervene in the original

case before Judge Crocker recommended dismissal of plaintiff’s claims for past infringement.

Because consolidation of the two cases would further the goals of Rule 42, I will grant

plaintiff’s motion to consolidate, dkt. #2 in case no. 08-cv-691-slc. 

 

D. Motions to Transfer Venue

Defendants have moved to transfer both cases to the Eastern District of Michigan

pursuant to 28 U.S.C. § 1404(a). (Plaintiff has not had an opportunity to respond to

defendants’ motion to transfer in case no. 08-cv-691-slc; however, defendants rest that

motion almost entirely on the grounds it asserted in case no. 08-cv-456-slc, to which plaintiff

has responded. Defendants’ only new point is a citation to In re TS Tech USA Corp., Misc.

Dkt. No. 888, 2008 WL 5397522 (Fed. Cir. Dec. 29, 2008), a very recent Federal Circuit

case applying Fifth Circuit law that they think further supports their motion. Although I am

skeptical of its applicability, I decline to consider the case because it is unnecessary to the

resolution of the parties’ dispute. Because plaintiff has responded to all other arguments

asserted by defendants in the context of the motion to transfer brought in the first case, both

motions will be considered together.) 

Section 1404(a) allows a district court to transfer a case when the moving party has

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shown that transfer would serve the convenience of parties and witnesses and promote the

interest of justice. Coffey v. Van Dorn Iron Works, 796 F.2d 217, 219-20 (7th Cir. 1986).

Transfer is proper when (1) venue is proper in the transferor district; (2) the transferee

district is one in which the action could have been brought; and (3) the transferee court is

“clearly more convenient.” Id. The parties do not dispute that venue is proper here and the

action could have been brought in the Eastern District of Michigan; the only issue is whether

that district is “clearly more convenient” for the parties than this one.

In this case, this question is simply a matter of weighing plaintiff’s interest in a speedy

resolution of this case against defendants’ convenience in having this case tried there. The

parties assert no other interest. The overall convenience of litigating this case in the Eastern

District of Michigan is almost too obvious to state. The primary defendants in this case are

large automobile manufacturers, many of which have either their principal place of business

or at least some relevant business operations in that district. In addition, at least one of the

intervenors and other third-party suppliers have their relevant business operations in that

district. As for the other defendants and intervenors, none are opposed to transferring the

case to that district. Although plaintiff suggests that it “considered the geographic centrality

of Wisconsin among all parties” when it filed suit, all defendants want to be in the Eastern

District of Michigan and they have a good reason for it.

Plaintiff is a Japanese corporation with no ties to Wisconsin; its only interest in

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litigating the case in this district is the relative speed of the docket. Exactly how much delay

plaintiff would face by transfer is unclear: a trial date has been set for November 2009,

although the parties have recommended adding three months to this date in light of the new

case and motions to intervene. However, any trial date set at this point is tentative because

no Article III judge has been assigned to this case in the unusual circumstances in which one

of the two district judges is on medical leave. That said, the average trial time in the Eastern

District of Michigan is 25.8 months; therefore, it is safe to assume that plaintiff will face

some delay upon transfer. 

In the right case, trial speed alone may be the determinative factor. Id. at 220.

However, in this case plaintiff’s interest in speed deserves little weight. First, plaintiff does

not practice its patent, which means that it is not in competition with defendants and their

alleged infringement will not affect plaintiffs’ ability to do business. For the same reason,

plaintiff is seeking only monetary relief for defendants’ infringement. As a result, delay is

not likely to have a serious impact on plaintiff. In the event defendant is found to be

infringing, plaintiff may still be made whole. 

Second, and more important, plaintiff has created substantial delay by litigating the

case the way it has. It filed the original suit before it established its right to sue for past

infringement and before it had a clear notion of the scope of infringement, evidenced by its

drastic increase in the number of allegedly infringing products identified in the second

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amended complaint. In addition, it chose to sue only the large car companies despite the

likelihood that the suppliers of the allegedly infringing parts would want in. Now plaintiff

has joined defendants in asking to extend the scheduling in this case and has asked for

another opportunity to amend its complaint to assert claims against the intervenors. 

Plaintiff’s mistakes and litigation strategy have resulted in the filing of several

legitimate motions to intervene and motions to dismiss for lack of standing and required

plaintiff to file a new case several months after filing the original case. By creating its own

delay, and even asking for extensions of time in light of that delay, plaintiff has undermined

its asserted interest in a speedy resolution. Therefore, I am persuaded that defendants’

interest in transferring venue to the Eastern District of Michigan clearly outweighs plaintiff’s

interest in keeping the case here for a quicker resolution and will grant defendants’ motion

to transfer the case. 

ORDER

IT IS ORDERED that 

1. Defendant Volkswagen Group of America, Inc.’s motion to dismiss for lack of

jurisdiction or to strike plaintiff’s second amended complaint, dkt. #194, is DENIED as

unnecessary.

2. The report and recommendation of the United States Magistrate Judge, case no.

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08-cv-456-slc, dkt. #146, is ADOPTED and the following is ordered pursuant to that

recommendation:

a. Plaintiff Wacoh Company’s motion for leave to file a second amended

complaint in case no. 08-cv-456-slc is GRANTED; plaintiff’s second amended

complaint, dkt. #132, is the operative pleading.

b. Defendant Volkswagen Group of America, Inc.’s motions to dismiss for lack

of subject matter jurisdiction, case no. 08-cv-456-slc, dkt. ##67 and 114, are

DENIED as moot; and

c. Plaintiff’s claims in case no. 08-cv-456-slc against defendants Chrysler LLC,

Ford Motor Company, America Honda Motor Co. Inc., Mazda Motor of America,

Inc., GM Corporation, Volkswagen Group of America, Inc., BMW of North America,

L.L.C., Mercedes-Benz USA, LLC, America Suzuki Motor Corporation, and Analog

Devices, Inc., for infringement of United States Patent No. 6,512,364 are

DISMISSED for lack of subject matter jurisdiction with regard to infringement that

occurred before July 16, 2008. 

3. The motions to intervene filed in case no. 08-cv-456-slc by Akebono Brake

Corporation, dkt. #115, Robert Bosch LLC, dkt. #116, and Continental Teves AG & Co.

oHG, dkt. #125, are GRANTED.

4. Plaintiff’s motion to consolidate cases 08-cv-456-slc and 08-cv-691-slc is

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GRANTED.

5. Defendants’ motions to transfer cases 08-cv-456-slc, dkt. #110, and 08-cv-691-slc,

dkt. #24, pursuant to 28 U.S.C. § 1404(a) are GRANTED; the clerk of court is directed to

transmit the case files to the United States District Court for the Eastern District of

Michigan.

Entered this 6 day of January, 2009. th

BY THE COURT:

/s/

__________________________________

BARBARA B. CRABB

District Judge

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