Case 1:12-cv-00574-LPS Document 76 Filed 09/29/14 Page 1 of 24 PageID #: 1710
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`ROBERT BOSCH LLC,
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`Plaintiff,
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`v.
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`ALBEREE PRODUCTS, INC.,
`API KOREA CO., LTD., and
`SA VER AUTOMOTIVE PRODUCTS,
`INC.,
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`Defendants.
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`Civil Action No. 12-574-LPS
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`David E. Moore, POTTER ANDERSON & CORROON, LLP, Wilmington, DE
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`Mark A. Hannemann, KENYON & KENYON, LLP, New York, NY
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`Attorneys for Plaintiff
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`Sean T. O'Kelly, O'KELLY, ERNST, BIELLI & WALLEN, LLC, Wilmington, DE
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`Robert J. Kenney, Michael B. Marion, BIRCH, STEWART, KOLASCH & BIRCH, LLP, Falls
`Church, VA
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`Attorneys for Defendants
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`MEMORANDUM OPINION
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`September 29, 2014
`Wilmington, Delaware
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`Case 1:12-cv-00574-LPS Document 76 Filed 09/29/14 Page 2 of 24 PageID #: 1711
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`-Cev t /):;
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`STARK, U.S. District Judge:
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`Pending before the Court are Defendants Alberee Products, Inc. ("Alberee"), API Korea
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`Co., Ltd. ("API"), and Saver Automotive Products, Inc.' s ("Saver") (collectively, "Defendants")
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`motions to dismiss Robert Bosch LLC 's ("Bosch" or "Plaintiff') patent infringement claims,
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`pursuant to Federal Rule of Civil Procedure 12(b)(2) (D.I. 45, 46), as well as Plaintiffs request
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`for jurisdictional discovery (D.I. 49 at 19-20).
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`BACKGROUND
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`I.
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`The Parties
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`Bosch is a limited liability company organized under the laws of Delaware, which
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`markets and sells beam wiper blades in the United States. (D.I. 39 at 2; D.I. 41 at if 3) It asserts
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`ownership of the various patents-in-suit in this matter: U.S. Patent Nos. 6,523,218 (''the '218
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`patent"), 6,530, 111 ("the '111 patent"), 6,553,607 (''the '607 patent"), 6,611,988 ("the '988
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`patent"), 6,675,434 ("the '434 patent"), 6,836,926 ("the '926 patent"), 6,944,905 ("the '905
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`patent"), 6,973,698 ("the '698 patent"), 7,228,588 ("the '588 patent"), 7,293,321 ("the '321
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`patent"), 7,523,520 ("the '520 patent"), 7,484,264 ("the '264 patent"), and 8,099,823 ("the '823
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`patent") (collectively, "the Bosch patents"). (D.I. 38 at iril 21, 47, 61, 75, 101, 127, 153, 179,
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`205, 231, 257, 283, 309). The Bosch patents are generally directed to improvements over
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`conventional bracketed windshield wiper blades.
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`Alberee is a corporation organized under the laws of the state of Maryland with a
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`place of business in Halethorpe, Maryland. (D.I. 38 at if 2) API is a corporation organized under
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`the laws of Korea with a place of business in Incheon, Korea. (Id. at if 3) Saver is a corporation
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`organized under the laws of the state of Maryland with a place of business in Halethorpe,
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`Case 1:12-cv-00574-LPS Document 76 Filed 09/29/14 Page 3 of 24 PageID #: 1712
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`Maryland. (Id. at if 4) Each of the Defendants' businesses relate to the production, manufacture
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`and/or sale of windshield wiper blades.
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`II.
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`Procedural Background
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`On May 4, 2012, Bosch commenced this action, asserting that API and Alberee (doing
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`business as Saver) each directly and indirectly infringed certain claims of all of the Bosch patents
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`(except for the '823 patent, which was not referenced). (DJ. 1 at ilil 5-160) On December 14,
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`2012, API and Alberee filed a motion to dismiss the Complaint, pursuant to Federal Rules of
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`Civil Procedure 12(b)(2) and 12(b)(6). (DJ. 28) In doing so, they asserted that Alberee and
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`Saver were separate entities. (DJ. 29 at 1-2)
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`Thereafter, on January 18, 2013, Bosch filed an Amended Complaint. (DJ. 38) In its
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`Amended Complaint, Bosch added additional allegations regarding the alleged infringement,
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`identified Saver as a separate defendant as to all claims, and added a count of infringement
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`regarding the '823 patent. (DJ. 38)
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`In response to the filing of the Amended Complaint, Defendants filed the instant motions
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`to dismiss pursuant to Rule 12(b)(2). (DJ. 45, 46) 1 Briefing on these motions was completed on
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`March 18, 2013. (DJ. 50)
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`1Upon the filing of the Amended Complaint and Defendants' newly-filed Rule 12(b)(2)
`motions, the original motion to dismiss that had been filed on December 14, 2012 (DJ. 28) was
`terminated as moot. In their briefing regarding the instant motions to dismiss, the parties also
`make reference to briefs (DJ. 29, 39, 48) relating to the December 14, 2012 motion to dismiss.
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`III.
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`Factual Background
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`In the Amended Complaint, Plaintiff asserts against Defendants thirteen counts of direct
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`and indirect infringement of the Bosch patents. (D.I. 38 at iMf 20-333) In the "Defendants And
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`Accused Products" section of the Amended Complaint, Plaintiff sets out its factual allegations
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`relating to personal jurisdiction. (D.I. 38 at iMf 2-19) Plaintiff also points to other evidence of
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`record in support of its jurisdictional allegations. The Court summarizes Plaintiff's relevant
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`allegations and citations to facts of record below, noting where any such facts appear to be
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`disputed by Defendants.
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`API manufactures a large number of windshield wiper blade components in Korea and
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`sells them to companies in the United States, including Alberee. (D.I. 29, Ex. A at if 2; D.I. 38 at
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`iii! 9-10) Alberee takes possession of these components in Korea, and imports them into the
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`United States through Los Angeles, California. (D.I. 29, Ex. A at if 6) Plaintiff alleges that after
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`receiving these components from API, Alberee and Saver work together at their offices in
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`Maryland to assemble the components into automotive windshield wiper blades that are
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`marketed and sold in the United States. (D.I. 29, Ex. A at if 7; D.I. 38 at iMf 9-10)2 Saver has
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`offered for sale and sold these wiper blades in the United States to retail stores (which in tum sell
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`them to end user customers). (D.I. 29, Ex. A at iMf 3, 11; D.I. 38 at iMf 11-12; D.I. 42, exs. C-E)
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`Saver sells the wiper blades under various brand names, including Goodyear Assurance, Saver
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`Arc Flex Ultra, and Touring Ultra (hereinafter, the "Accused Products"). (D.I. 38 at if 10)
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`2 Alberee, citing to an affidavit of its owner and president, Albert Lee, asserts that it
`manufacturers the wiper blades at issue, and that Saver's role is simply to sell the wiper blades to
`retailers. (D.I. 29 at 3, Ex. A at iMf 3, 7) There is other evidence ofrecord, however, indicating
`that Saver also develops and/or manufactures windshield wiper blades, including the Goodyear
`Assurance product. (D.I. 40 at if 4 & Ex. C; D.I. 42, ex A)
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`In particular, Saver is the exclusive seller of the Goodyear Assurance wiper blades to the
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`nationwide Costco Wholesale ("Costco") retail chain in the United States, and has been for at
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`least three years. (D.I. 29, Ex. A at~~ 3, 7, 11; D.I. 38 at iMf 13-15; D.I. 41 at~ 4) Bosch
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`estimates that Costco has sold several million units of these Goodyear Assurance wiper blades
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`annually during this period. (D.I. 41 at~ 4) Among Costco's hundreds ofretail locations is one
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`located in Newark, Delaware, where Costco has sold "significant quantities"3 of the Goodyear
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`Assurance wiper blades, up through at least January 2013. (D .I. 3 8 at iMf 13-15; D .I. 40 at~ 5;
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`D.I. 42, Ex. B) Via Saver's sale of the Goodyear Assurance products to Costco, Saver
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`purposefully ships wiper blades through an established distribution channel into the State of
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`Delaware. (D.I. 29, Ex. A at iMf 2-3, 11; D.I. 38 at~ 15; D.I. 41at~4; D.I. 42, Ex. A)
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`As to the inter-relationship among Defendants, API and Alberee are alleged to have
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`worked together on a joint development project, through which they developed the allegedly
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`infringing wiper blades; the owner of API (Choon Bae Lee) and the owner and president of
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`Alberee (Albert Lee) are also named as a co-inventors on a Korean patent application that relates
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`to those wiper blades. (D.I. 38 at iMf 17-18; D.I. 42, exs. J-K) Alberee and Saver are alleged to
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`have held themselves out as related companies and to have business locations at the same address
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`in Halethorpe, Maryland. (D.I. 38 at iMf 2, 4, 5-7)4 The president and owner of Alberee, Albert
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`3For example, there is evidence that on one day in January 2013, the Newark Costco had
`16 boxes of Goodyear Assurance wiper blades for sale, each of which contained multiple
`packages of individual wiper blades. (D.I. 40 at~ 5 & Ex. D)
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`4Alberee contends that it and Saver are "distinct and different companies." (D.1. 29 at 2
`& Ex. A at iMf 2-4) There is evidence, however, indicating that Alberee and Saver have (at least
`to some degree) held themselves out as the same entity or at least as related entities. (See D.I. 42,
`Ex. M (Maryland Department of Business and Economic Development document listing
`"SAVER Automotive Products (Alberee Products)"); id., Ex. N (official statement of Baltimore
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`Lee, was also at one time the president of Saver and has long been associated with Saver. (D.I.
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`29, Ex. A at ii 2; D.I. 41 at iMJ 5-6; D.I. 42, Ex. I)
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`There is no evidence that any of the Defendants (1) have any offices, employees or
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`property in Delaware; (2) manufacture anything in Delaware; (3) had employees attend trade
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`shows or travel to engage in business in Delaware; or (4) hold bank accounts or are registered to
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`do business in Delaware. (See, e.g., D.I. 29, Ex. A at ii 8; D.I. 29, Ex.Bat ii 5; D.I. 47 at 9-10)
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`Nor is there any evidence that any of Defendants have ever directly transacted business or sold
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`products in Delaware.
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`LEGAL ST AND ARDS
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`Pursuant to Federal Rule of Civil Procedure 12(b)(2), a party may move to dismiss a case
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`based on the court's lack of personal jurisdiction over that party. Determining the existence of
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`personal jurisdiction requires a two-part analysis - one statutory and one constitutional. 5 First,
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`the court analyzes the long-arm statute of the state in which the court is located. See IMO Indus.,
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`Inc. v. Kiekert AG, 155 F.3d 254, 259 (3d Cir. 1998). Next, the court must determine whether
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`exercising jurisdiction over the defendant in this state comports with the Due Process Clause of
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`the Constitution. See id. Due Process is satisfied if the court finds the existence of"minimum
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`contacts" between the non-resident defendant and the forum state, "such that the maintenance of
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`County, Maryland regarding bond issuance referencing "Alberee Products (Saver Automotive
`Products)" (emphasis omitted)); id., Ex. 0 (AAIA membership directory listing "Saver
`Automotive Products, Inc. Alberee Products"))
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`5With regard to the statutory inquiry, the court applies the law of the state in which the
`district court is located; as to the constitutional inquiry, in a patent case the court applies the law
`of the Federal Circuit. See Autogenomics, Inc. v. Oxford Gene Tech. Ltd., 566 F.3d 1012, 1016
`(Fed. Cir. 2009).
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`the suit does not offend traditional notions of fair play and substantial justice." Int'/ Shoe Co. v.
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`Washington, 326 U.S. 310, 316 (1945) (internal quotation marks omitted).
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`When a defendant moves to dismiss a lawsuit for lack of personal jurisdiction, the
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`plaintiff bears the burden of showing the basis for jurisdiction. See Power Integrations, Inc. v.
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`BCD Semiconductor, 547 F. Supp. 2d 365, 369 (D. Del. 2008). Ifno evidentiaryhearing has
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`been held, a plaintiff"need only establish a prima facie case of personal jurisdiction." O'Connor
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`v. Sandy Lane Hotel Co., 496 F.3d 312, 316 (3d Cir. 2007). A plaintiff"presents a prima facie
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`case for the exercise of personal jurisdiction by establishing with reasonable particularity
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`sufficient contacts between the defendant and the forum state." Mellon Bank (E) PSFS, Nat'/
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`Ass'n v. Farino, 960 F.2d 1217, 1223 (3d Cir. 1992). On a motion to dismiss for lack of personal
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`jurisdiction, "the plaintiff is entitled to have its allegations taken as true and all factual disputes
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`drawn in its favor." Miller Yacht Sales, Inc. v. Smith, 384 F.3d 93, 97 (3d Cir. 2004). A court is
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`always free to revisit the issue of personal jurisdiction if it later is revealed that the facts alleged
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`in support of jurisdiction are in dispute. See Metcalfe v. Renaissance Marine, Inc., 566 F.3d 324,
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`331 (3d Cir. 2009).
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`DISCUSSION
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`I.
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`The Delaware Long-Arm Statute
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`The Delaware long-arm statute, in relevant part, states that:
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`( c) As to a cause of action brought by any person arising from any
`of the acts enumerated in this section, a court may exercise
`personal jurisdiction over any nonresident, or a personal
`representative, who in person or through an agent:
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`(1) Transacts any business or performs any character of
`work or service in the State; ...
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`( 4) Causes tortious injury in the State or outside of
`the State by an act or omission outside the State if
`the person regularly does or solicits business,
`engages in any other persistent course of conduct in
`the State or derives substantial revenue from
`services, or things used or consumed in the
`State ....
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`10 Del. C. § 3104. Bosch does not allege that jurisdiction exists under any one prong of
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`Delaware's long-arm statute. Instead, Bosch asserts that personal jurisdiction exists under a
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`"dual jurisdiction" or "stream of commerce" theory that implicates two portions of the long-arm
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`statute: subsection (c)(l) and (c)(4).6 Whether the Delaware long-arm statute indeed
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`encompasses a steam-of-commerce theory for personal jurisdiction is a question that this Court
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`has struggled to answer.
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`The Delaware long-arm statute "has been broadly construed to confer jurisdiction to the
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`maximum extent possible under the due process clause." LaNuova D & B, S.p.A. v. Bowe Co.,
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`513 A.2d 764, 768 (Del. 1986). In LaNuova, the Delaware Supreme Court noted, in a footnote,
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`that:
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`It is conceivable that a tort claim could enjoy a dual jurisdictional
`basis under ( c )( 1) and ( c )( 4) if the indicia of activity set forth under
`(c)(4) were sufficiently extensive to reach the transactional level of
`( c )( 1) and there was a nexus between the tort claim and transaction
`of business or performance of work.
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`6Subsection ( c )( 1) confers "specific" jurisdiction over a non-resident defendant;
`subsection (c)(4) confers "general" jurisdiction. See, e.g., LaNuova D & B, S.p.A. v. Bowe Co.,
`513 A.2d 764, 768 (Del. 1986); Boone v. Oy PartekAb, 724 A.2d 1150, 1155 (Del. Super. 1997),
`aff d, 707 A.2d 765 (Del. 1998). "Specific jurisdiction refers to the situation in which the cause
`of action arises out of or relates to the defendant's contacts with the forum .... It contrasts with
`general jurisdiction, in which the defendant's contacts have no necessary relationship to the cause
`of action." Beverly Hills Fan Co. v. Royal Sovereign Corp., 21F.3d1558, 1562 n.10 (Fed. Cir.
`1994) (internal citations and quotation marks omitted); see also Boone, 724 A.2d at 1155.
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`Id. at 768 n.3. Subsequently, Delaware Superior Court cases have held that this footnote stands
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`for the proposition that "when a [defendant] has sufficient general contacts with Delaware and
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`the plaintiffs' claims arise out of those contacts," even if no subsection of the long-arm statute is
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`fully satisfied, "jurisdiction is appropriate under [partial satisfaction of] § 3104( c)(l) and ( c)( 4)."
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`Boone v. Oy Partek Ab, 724 A.2d 1150, 1157 (Del. Super. 1997), aff d, 707 A.2d 765 (Del.
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`1998); see also Wright v. Am. Home Products Corp., 768 A.2d 518, 530-31 (Del. Super. 2000).
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`In applying this theory, "one must take great care not to overemphasize§§ 3104(c)(l) or (c)(4)."
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`Boone, 724 A.2d at 1158. The "indicia of activity under § 3104( c )( 4)" need not "rise to the level
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`of 'general presence' as usually required." Id. Similarly, ''when analyzing§ 3104(c)(l) it is not
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`important that the manufacturer itself act in Delaware." Id. Instead, if a defendant exhibits "an
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`intent or purpose ... to serve the Delaware market with its product," and "if the intent or purpose
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`... results in the introduction of the product to this State and plaintiffs cause of action arises
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`from injuries caused by that product," then the long-arm statute is satisfied. Id. This approach,
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`according to Boone, "best encompasses all of the intricacies of the stream of commerce theory."
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`Id. at 1157-58; see also Wright, 768 A.2d at 530-31.
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`In applying LaNuova, Boone, and Wright, this Court has held that "[t]he dual jurisdiction
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`concept arises from at least partial satisfaction of subsections ( 1) and ( 4) of the Delaware long-
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`arm statute . . . . Dual jurisdiction may be established when a manufacturer has sufficient general
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`contacts with Delaware and the plaintiffs' claims arise out of those contacts." Belden Techs., Inc.
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`v. LS Corp., 829 F. Supp. 2d 260, 267 (D. Del. 2010) (internal quotations omitted). Under this
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`approach, jurisdiction exists when a defendant displays "an intent to serve the Delaware market"
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`and ''this intent results in the introduction of [a] product into the market and ... plaintiff's cause
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`of action arises from injuries caused by that product." Id. at 267-68; see also WL. Gore &
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`Assocs., Inc. v. Label Technologies, Inc., 2009 WL 1372106, at *3 (D. Del. May 15, 2009)
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`("Delaware courts have held that personal jurisdiction is proper under the Delaware long-arm
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`statute under a stream of commerce theory resulting from only 'partial satisfaction' of§§
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`3104(c)(l) and (c)(4)."); Power Integrations, 547 F. Supp. 2d at 371.
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`In at least one recent decision, another Judge in this District reached a contrary
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`conclusion, predicting that the Delaware Supreme Court would not embrace the "dual
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`jurisdiction" theory. See Round Rock Research LLC v. ASUSTeK Computer Inc., 967 F. Supp.
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`2d 969 (D. Del. 2013). In Round Rock, the Court suggested that the LaNuova footnote stands for
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`the unremarkable proposition that:
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`the (c)(l) and (c)(4) subsections involve overlapping concepts, and
`there thus might be times when the set of facts that establishes
`general jurisdiction under ( c )( 4) also establishes specific
`jurisdiction under ( c )( 1 ), and thus the jurisdiction would be "dual."
`Perhaps an interesting observation, but one meaningless for
`development of the law, and hence properly relegated to a footnote.
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`Id. at 976. Round Rock further explained that although the Delaware Superior Court has adopted
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`the dual jurisdiction theory, in doing so
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`the Superior Court was consistent with one principle of the
`Supreme Court (the long arm statute should reach non-residents to
`the maximum extent possible) but was inconsistent with two other
`principles (the long arm statute should be separately analyzed from
`due process considerations, and its interpretation should flow from
`the statutory language).
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`Id. Accordingly, Round Rock held that it could not "agree, or predict, that the Delaware Supreme
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`Court would recognize 'dual jurisdiction."' Id. at 977; see also Liqui-Box Corp. v. Scholle
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`Corp., 2013 WL 3070872 (D. Del. June 17, 2013) (internal quotation marks omitted) ("[T]he
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`constitutionally-accepted stream of commerce theory [of personal jurisdiction] does not fit neatly
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`into any section of§ 3104.").
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`In light of the differing views on this issue, the Court must first address whether it will
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`continue to apply the dual jurisdiction theory of personal jurisdiction under the Delaware long-
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`arm statute. Because the Delaware Supreme Court has not expressly decided the issue, the
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`Court's role here is limited to "predict[ing] how that tribunal would rule" on this issue of state
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`law. In re Makowka, 754 F.3d 143, 148 (3d Cir. 2014). "In doing so, we give due deference to
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`the decisions of' the Delaware Superior Court, although they are not controlling. Id.; see also
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`Round Rock, 967 F. Supp. 2d at 977 (agreeing that ''the conclusion to be drawn from the Superior
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`Court cases" is that dual jurisdiction is consistent with Delaware long-arm statute, but adding
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`that this Court is ''not bound to follow those cases" and merely gives them "some weight"). 7
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`The Delaware Supreme Court has had several opportunities to reject the dual jurisdiction
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`theory but has refrained from doing so. See Boone, 724 A.2d at 1156, aff'd, 707 A.2d 765 (Del.
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`1998); Wright, 768 A.2d at 531 ("In sum, the Court finds that§§ 3401(c)(l) and (c)(4) provide a
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`basis for jurisdiction over the French defendants."), appeal denied, 755 A.2d 389 (Del. 2000).
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`Indeed, no Delaware state court has rejected the dual jurisdiction theory. See LaNuova, 513 A.2d
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`at 768 n.3; Boone, 724 A.2d at 1156-58; Wright, 768 A.2d at 518-31; Crane v. Home Depot,
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`Inc., 2008 WL 2231472, at *4 (Del. Super. May 30, 2008) ("[T]his Court may exercise personal
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`jurisdiction through the stream of commerce theory.").
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`7Delaware does not have an intermediate appellate court. Decisions of Delaware's trial
`courts - Superior, Chancery, and Family Court - are subject to appellate review only by the
`Delaware Supreme Court. See generally Del. Code Ann. tit. 10, §§ 141-50, 341-51, 541-46, 921-
`29.
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`Moreover, it is uncontested that "Delaware's long arm statute ... is to be broadly
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`construed to confer jurisdiction to the maximum extent possible under the Due Process Clause."
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`Hercules Inc. v. Leu Trust & Banking (Bah.) Ltd., 611 A.2d 476, 480-81 (1992). Consistent with
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`the Due Process Clause, a party may be subject to personal jurisdiction when that party does
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`"something more than simply placing a product into the stream of commerce." J. Mcintyre
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`Mach., Ltd. v. Nicastro, 131 S. Ct. 2780, 2792 (2011) (internal quotation marks omitted); see
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`also Asahi Metal Indus. Co. v. Superior Court, 480 U.S. 102, 112 (1987) ("The substantial
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`connection between the defendant and the forum State necessary for a finding of minimum
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`contacts must come about by an action of the defendant purposefully directed toward the forum
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`State.").
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`Given this record, and particularly the fact that no Delaware state court has rejected the
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`assertion of personal jurisdiction under the dual jurisdiction theory, the Court concludes that the
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`Delaware Supreme Court, if faced with the issue, would hold that the "stream-of-commerce"
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`theory does provide a basis for personal jurisdiction under Delaware law, even though the theory
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`is not expressly authorized by Delaware's long-arm statute. The Court reaches this conclusion
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`notwithstanding the contrary, and not unreasonable, prediction of a fellow Judge of this Court.
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`The Court must next determine whether the Defendants are subject to jurisdiction under
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`the theory of "dual jurisdiction." "[T]he dual jurisdiction analysis requires a showing of both:
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`(1) an intent to serve the Delaware market; and (2) that this intent results in the introduction of
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`the product into the market and that plaintiffs cause of action arises from injuries caused by that
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`product." Belden Techs., Inc., 829 F. Supp. 2d at 267-68.
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`"A non-resident firm's intent to serve the United States market is sufficient to establish
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`an intent to serve the Delaware market, unless there is evidence that the firm intended to exclude
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`from its marketing and distribution efforts some portion of the country that includes Delaware."
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`Power Integrations, 547 F. Supp. 2d at 373; see also Belden Techs., Inc., 829 F. Supp. 2d at 268
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`(finding that intent existed where ( 1) Delaware was not specifically targeted, (2) foreign party
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`made at least four sales to Delaware customers, and (3) there was no indication that non-resident
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`parties directed sales to Delaware customers to cease; "[t]hat [the non-resident defendant] did not
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`specifically target Delaware is of no moment under these circumstances") (citing Boone, 724
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`A.2d at 1161).
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`Here, it is not alleged that any Defendant itself directly "[t]ransacts any business or
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`performs any character of work or service in the State" (pursuant to the meaning of subsection
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`(c)(l)). See, e.g., Power Integrations, 547 F. Supp. 2d at 371; see also Boone, 724 A.2d at 1156
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`("When a manufacturer passes title to goods to a third party outside of Delaware it is not deemed
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`to have performed an act in this State."). Nor is it alleged that general jurisdiction exists as to
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`any Defendant (pursuant to subsection (c)(4)), as there is no allegation that Defendants
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`themselves have done or solicited business or taken another persistent course of conduct in
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`Delaware, nor that there is sufficient evidence that Defendants generate "substantial revenue"
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`from services, or things used or consumed, in the State). See Power Integrations, 547 F. Supp.
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`2d at 371, 374. Instead, the question is whether any or all of Defendants' actions in placing
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`wiper blades or wiper blade components into the stream of commerce - where those wiper blades
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`and/or wiper blade components end up allegedly causing injury in Delaware (through the sale of
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`the Goodyear Assurance product at Costco) - are sufficient to satisfy the dual jurisdiction theory.
`
`12
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`I
`I
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`

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`Case 1:12-cv-00574-LPS Document 76 Filed 09/29/14 Page 14 of 24 PageID #: 1723
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`II.
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`Due Process
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`If the Court determines that it has jurisdiction under Delaware's long-arm statute, the
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`Court must next determine if "subjecting the nonresident defendant to jurisdiction in Delaware
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`l
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`violates the Due Process Clause of the Fourteenth Amendment." Hercules v. Leu Trust &
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`Banking (Bah.) Ltd., 611 A.2d 476, 481 (1992). A defendant is subject to the jurisdiction of a
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`federal court only when the defendant's conduct and connections with the forum state are such
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`that it should "reasonably anticipate being haled into court there," World-Wide Volkswagen Corp.
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`v. Woodson, 444 U.S. 286, 297 (1980), such that exercising personal jurisdiction would not
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`offend "traditional notions of fair play and substantial justice," Int 'l Shoe Co. v. Washington, 326
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`U.S. 310, 316 (1945).
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`In Asahi, 480 U.S. at 105, the Supreme Court split into two camps regarding the question
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`of whether "mere awareness on the part of a foreign defendant that the components it
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`manufactured, sold, and delivered outside the United States would reach the forum State in the
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`stream of commerce constitutes 'minimum contacts' between the defendant and the forum State"
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`such that the requirements of constitutional due process were satisfied. Justice Brennan, writing
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`for four justices, took the view that "jurisdiction premised on the placement of a product into the
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`stream of commerce is consistent with the Due Process Clause;" for, "[a]s long as a participant in
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`this process is aware that the final product is being marketed in the forum State, the possibility of
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`a lawsuit there cannot come as a surprise." Id. at 117 (plurality opinion). Justice O'Connor, also
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`writing for four justices, rejected Justice Brennan's approach and concluded instead:
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`The "substantial connection" between the defendant and the forum
`State necessary for a finding of minimum contacts must come
`about by an action of the defendant purposefully directed toward
`
`13
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`

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`Case 1:12-cv-00574-LPS Document 76 Filed 09/29/14 Page 15 of 24 PageID #: 1724
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`the forum State. The placement of a product into the stream of
`commerce, without more, is not an act of the defendant
`purposefully directed toward the forum State.
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`Id. at 112 (plurality opinion) (internal citation omitted).
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`In Beverly Hills Fan Co. v. Royal Sovereign Corp., 21 F.3d 1558, 1566-67 (Fed. Cir.
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`1994), the Federal Circuit found it was unnecessary to decide whether Justice O'Connor's or
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`Justice Brennan's approach to the stream-of-commerce theory was the correct one. There, the
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`Court found sufficient contacts with the forum state to support the exercise of personal
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`jurisdiction under either articulation of the stream-of-commerce theory, as the defendants were
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`alleged to have "made ongoing and continuous shipments of the accused infringing product into
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`[the state] and maintained an established distribution network that encompassed [the state]."
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`AFTG-TG, LLCv. Nuvoton Tech. Corp., 689 F.3d 1358, 1363-64 (Fed. Cir. 2012) (citing Beverly
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`Hills Fan, 21 F.3d at 1561, 1563, 1565).
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`More recently, in J Mcintyre Machinery, Ltd. v. Nicastro, 131 S. Ct. 2780 (2011 ), the
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`Supreme Court revisited the split of opinion but did not resolve it. Accordingly, the Federal
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`Circuit's decision in Beverly Hills Fan, 21 F.3d at 1558 -which was handed down after Asahi
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`and before Mcintyre- controls. See also AFTG-TG, 689 F.3d at 1363-64 ("Because we must
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`proceed on the premise that Mcintyre did not change the Supreme Court's jurisdictional
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`framework, we must apply our precedent that interprets the Supreme Court's existing stream-of-
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`commerce precedents. That precedent is Beverly Hills Fan ... . "). 8
`
`8Defendant argues that Mcintyre, 131 S. Ct. at 2780, overrules Power Integrations and
`changes the analysis under the long-arm statute. "[A ]t this stage, the impact of [Mcintyre], if
`any, on the long-standing and well-established Delaware jurisprudence relating to
`stream-of-commerce theory is unclear." Eastman Chem. Co. v. AlphaPet Inc., 2011 WL
`6004079, at *18 (D. Del. Nov. 4, 2011); see also AFTG-TG, LLC v. Nuvoton Tech. Corp., 689
`
`14
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`f
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`

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`Case 1:12-cv-00574-LPS Document 76 Filed 09/29/14 Page 16 of 24 PageID #: 1725
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`In its decisions, the Federal Circuit has emphasized the general proposition "that a court
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`should not decide a legal issue when doing so is unnecessary to resolve the case at hand."
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`AFTG-TG, LLC, 689 F.3d at 1364. In particular, "[i]f [the Defendant] is able to satisfy Justice
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`O'Connor's test, there [is] no need to address whether the less restrictive test proposed by Justice
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`Brennan should be the standard under Delaware law and under the due process clause."
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`Commissariat A L 'Energie Atomique v. Chi Mei Optoelectronics Corp., 395 F .3d 1315, 1324
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`(Fed. Cir. 2005). Here, ifthe Court finds that Defendants satisfy the O'Connor test, the Court
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`need not engage in any further discussion of the differences between the O'Connor and Brennan
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`tests.
`
`The O'Connor test is satisfied when a party engages in "[a]dditional conduct ... [to]
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`indicate an intent or purpose to serve the market in the forum State, [such as] ... advertising in
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`the forum State, establishing channels for providing regular advice to customers in the forum
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`State, or marketing the product through a distributor who has agreed to serve as the sales agent in
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`the forum State." Asahi, 480 U.S. at 112. Here, as in Beverly Hills Fan, 21 F.3d at 1565, "[t]he
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`allegations are that defendants purposefully shipped the accused [product] into [Delaware]
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`through an established distribution channel [and] [ t ]he cause of action for patent infringement is
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`alleged to arise out of these activities."
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`III. Analysis
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`The Court will analyze whether Bosch has established personal jurisdiction based on a
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`stream-of-commerce theory by exploring the record as to each Defendant in tum.
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`F.3d 1358, 1363 (Fed. Cir. 2012) ("The narrowest holding is that which can be distilled from
`Justice Breyer's concurrence - that the law remains the same after Mcintyre."). Therefore, the
`undersigned Judge will continue to follow Power Integrations.
`
`15
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`I
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`

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`Case 1:12-cv-00574-LPS Document 76 Filed 09/29/14 Page 17 of 24 PageID #: 1726
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`A.
`
`Saver
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`It is undisputed that Saver, a Maryland company, sells the accused Goodyear Assurance
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`wiper blades to U.S. retailers, including the nationwide chain Costco. (D.I. 29 Ex. A at iMf 3, 7)
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`Costco has a location in Newark, Delaware that sells the accused blade. (D.I. 40 at iMf 3, 5, Exs.
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`B, D) Saver, by its own admission