Valve manufacturer’s patent suit transferred to Texas

Where a patent holder previously filed five patent infringement suits in the Eastern District of Texas against purchasers of “high pressure fuel injection valves,” a suit brought by the manufacturer of those valves, seeking a declaration of non-infringement, was transferred to that court.

Background

Westport Fuel Systems Canada Inc. owns two patents that allegedly cover “high pressure fuel injection valves” that are used in internal combustion engines. Westport recently asserted its patent rights, filing suit against five customers of Robert Bosch LLC.

Bosch claims that its products do not infringe Westport’s patents. Since Westport sued Bosch’s customers instead of Bosch itself, Bosch filed the instant suit seeking a declaratory judgment that it has not infringed Westport’s patents. Westport has filed a motion to dismiss or, alternatively, transfer or stay.

Jurisdiction

Westport argues that Robert Bosch LLC did not make, use, offer for sale, sell or import the fuel injectors at issue. According to defendant, this means that plaintiff is not subject to an infringement charge under 35 U.S.C. § 271, which means that the court does not have subject matter jurisdiction of this declaratory action.

Plaintiff alleges that it “use[d], [sold], offer[ed] to sell, and/or import[ed] the Accused Bosch Products into the United States.” On their own, those two allegations are sufficient to bring plaintiff’s actions within the scope of § 271,

Westport argues that because the facts show that Robert Bosch LLC did not manufacture the fuel injectors in the United States, its “business activities” related to the fuel injectors took place outside of the United States. But, because it is undisputed that plaintiff imported, offered for sale and sold the fuel injectors, the relevant jurisdictional facts establish that the court has jurisdiction pursuant to § 271.

Standing

Defendant claims that there is no Article III case or controversy because it has not engaged in any “affirmative acts” towards Robert Bosch LLC that have created a “reasonable apprehension of suit.” However, the Federal Circuit has recognized that there are circumstances where a lawsuit against a customer — and nothing else — can give a declaratory plaintiff standing. Some district courts have concluded that the nature of a patentee’s allegations against a customer can create declaratory standing for the supplier.

Here, the specific circumstances of this case — and, more importantly, of Westport’s allegations against Bosch’s customers — indicates that there is a “substantial controversy” between Bosch and Westport, that is of “sufficient immediacy and reality to warrant the issuance of a declaratory judgment.”

Claim

Defendant claims that because “[t]he Complaint is silent as to whether Plaintiff specifically engaged in actually or potentially infringing conduct in the United States[,]” plaintiff has not properly stated a claim. In effect, this is the same as defendant’s argument why the court does not have subject matter jurisdiction under 35 U.S.C. § 271.

Because plaintiff has alleged that it “use[d], [sold] offer[ed] to sell, and/or import[ed] the Accused Bosch Products into the United States,” it is reasonable to infer that it faces a potential infringement charge. Therefore, the court denies Westport’s motion to dismiss pursuant to Federal Rule of Procedure 12(b)(6).

Transfer

Both parties agree that the instant suit is duplicative of Westport’s various suits against Robert Bosch LLC’s customers. Defendant consequently argues that this case should be transferred to the Eastern District of Texas, stayed or dismissed because of the “first-to-file” rule.

Plaintiff is not “at home” in Virginia, as it is a Delaware corporation with its principal place of business in Michigan. Moreover, the four-month delay between Westport’s suit and the filing of the instant suit also weighs against this action proceeding in this court. Finally, the goals of judicial efficiency and economy also weigh in favor transferring this case to the Eastern District of Texas.

Plaintiff claims that this action could not have been brought in the Eastern District of Texas because defendant is not subject to personal jurisdiction there. However, Westport’s customer suits in the Eastern District of Texas portends it waived a personal jurisdiction defense in this case, which is related to those suits. The § 1404 factors also weigh in favor of a transfer.

Defendant’s motion to dismiss for lack of jurisdiction denied. Defendant’s motion to dismiss for failure to state a claim denied. Defendant’s motion to transfer granted.

Robert Bosch LLC v. Westport Fuel Systems Canada Inc., Case No. 1:22-cv-370, Jan. 31, 2023. EDVA at Alexandria (Alston). VLW 023-3-041. 26 pp.