Case 2:22-cv-00486-JRG Document 49 Filed 07/25/23 Page 1 of 15 PageID #: 634
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`
`
`NORTHSTAR SYSTEMS LLC,
`
`
`Plaintiff,
`
`Case No. 2:22-cv-00486-JRG (Lead Case)
`
`JURY TRIAL DEMANDED
`
`
`Case No. 2:22-cv-00496-JRG (Member Case)
`
`JURY TRIAL DEMANDED
`
`Oral Argument Requested
`
`
`DEFENDANT BAYERISCHE MOTOREN WERKE AG’S
`REPLY BRIEF IN SUPPORT OF ITS MOTION TO DISMISS PLAINTIFF’S
`COMPLAINT PURSUANT TO RULES 12(b)(6) AND 12(b)(7)
`
`
`
`
`
`v.
`
`
`VOLKSWAGEN AG,
`
`Defendant.
`
`
`
`NORTHSTAR SYSTEMS LLC,
`
`
`Plaintiff,
`
`v.
`
`
`BAYERISCHE MOTOREN WERKE AG,
`
`Defendant.
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`
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`
`
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`

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`Case 2:22-cv-00486-JRG Document 49 Filed 07/25/23 Page 2 of 15 PageID #: 635
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`TABLE OF CONTENTS
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`Page
`
`I.
`
`II.
`
`INTRODUCTION – THE COMPLAINT IS DEFICIENT FOR FAILURE TO
`STATE A CLAIM AND FAILURE TO JOIN A NECESSARY AND
`INDISPENSABLE PARTY.................................................................................................1
`
`ARGUMENT – NORTHSTAR FAILS TO JUSTIFY THE DEFICIENCIES IN
`ITS COMPLAINT ...............................................................................................................2
`
`A.
`
`Dismissal Under Rule 12(b)(6)— NorthStar Has Provided Insufficient
`Notice For NorthStar’s Software Patent Claims ......................................................2
`
`1.
`
`2.
`
`3.
`
`4.
`
`NorthStar Fails to Meet the Pleading Standard Regarding the ’416
`And ’432 Patents ......................................................................................... 2
`
`NorthStar Fails to Meet the Pleading Standard Regarding the ’943,
`’527, and ’297 Patents................................................................................. 3
`
`For these reasons, NorthStar’s ’943, ’527, and ’297 Patent claims
`should be dismissed. NorthStar Fails to Identify the Accused
`Products....................................................................................................... 5
`
`NorthStar’s Claims Are Based On Software Claims That Require a
`Higher Pleading Standard ........................................................................... 6
`
`B.
`
`Dismissal Under Rule 12(b)(6)—The Complaint Does Not Plausibly
`Allege Any Acts of Infringement by BMW AG ......................................................7
`
`1.
`
`2.
`
`3.
`
`Direct Infringement: The complaint does not plausibly allege
`performance of the steps of the asserted claims.......................................... 7
`
`Indirect Infringement: The Complaint does not plausibly allege
`elements required for indirect infringement ............................................... 8
`
`NorthStar Failed to Allege Facts that BMW AG Knew of the
`Asserted Patents .......................................................................................... 8
`
`C.
`
`Dismissal Under Rule 12(b)(7)—The Complaint Fails to Join a Necessary
`and Indispensable Party ...........................................................................................9
`
`III.
`
`CONCLUSION ..................................................................................................................10
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`i
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`Case 2:22-cv-00486-JRG Document 49 Filed 07/25/23 Page 3 of 15 PageID #: 636
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`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`Federal Cases
`
`Bot M8 LLC v. Sony Corp.,
`4 F.4th 1342 (Fed. Cir. 2021) ....................................................................................................2
`
`Chapterhouse, LLC v. Shopify, Inc.,
`No. 2:18-CV-00300-JRG, 2018 WL 6981828 (E.D. Tex. Dec. 11, 2018) ........................4, 6, 7
`
`Dernick v. Bralorne Res., Ltd.,
`639 F.2d 196 (5th Cir. 1981) ...................................................................................................10
`
`Domain Protection, LLC v. Sea Wasp, LLC,
`No. 4:18-cv-492, 2019 WL3219939 (E.D. Tex. Jul. 17, 2019) .............................................3, 5
`
`Effectively Illuminated Pathways LLC v. Aston Martin Lagonda of North
`America, Inc.,
`2011 WL 13223466 (E.D. Tex. Sep. 29, 2011) .........................................................................6
`
`Freeman v. Nw. Acceptance Corp.,
`754 F.2d 553 (5th Cir. 1985) ...................................................................................................10
`
`Innovative Display Techs. LLC v. Microsoft Corp.,
`2014 WL 2757541 (E.D. Tex. June 17, 2014) .....................................................................9, 10
`
`Jaraba v. Blinken,
`568 F. Supp. 3d 720 (W.D. Tex. 2021)..................................................................................7, 9
`
`Landmark Tech. LLC v. Aeropostale,
`2010 WL 5174954 (E.D. Tex. Mar. 29, 2010) ..........................................................................5
`
`Parham v. Clinton,
`374 Fed.Appx. 503 (5th Cir. 2010) ........................................................................................7, 9
`
`Prism Techs., LLC v. AT&T Mobility, LLC,
`No. 8:12 CV 122, 2012 WL 3867971 (D. Neb. Sept. 6, 2012) .................................................5
`
`Realtime Data, LLC v. Morgan Stanley,
`721 F.Supp.2d 538 (E.D. Tex. Jun. 10, 2010) ...................................................................5, 6, 9
`
`
`
`
`
`ii
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`

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`Case 2:22-cv-00486-JRG Document 49 Filed 07/25/23 Page 4 of 15 PageID #: 637
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`I.
`
`INTRODUCTION – THE COMPLAINT IS DEFICIENT FOR FAILURE TO
`STATE A CLAIM AND FAILURE TO JOIN A NECESSARY AND
`INDISPENSABLE PARTY
`
`NorthStar’s Opposition fails to address key deficiencies in its Complaint, including that
`
`the Complaint cites no evidence to support conclusory infringement allegations for some patents
`
`and relies on documents from unrelated third parties for others. As such, NorthStar waived its
`
`arguments as to those deficiencies. Moreover, tacitly admitting the deficient factual allegations in
`
`the Complaint, NorthStar has added new allegations in its Opposition, but those allegations,
`
`presented for the first time in its briefing, cannot be read into its Complaint. Because NorthStar’s
`
`Complaint lacks sufficient factual allegations to establish plausible infringement claims and does
`
`not provide the notice of NorthStar’s allegations, NorthStar’s case should be dismissed.
`
`For instance, for the ’416 and ’432 Patents, NorthStar’s Opposition does nothing more than
`
`repeat the claim language in the Complaint. NorthStar’s Complaint cites to no documents at all.
`
`Although BMW AG raised this issue in its Motion to Dismiss, NorthStar musters only bald
`
`attorney argument in Opposition. Thus, NorthStar’s Complaint as to the ’416 and ’432 Patents is
`
`deficient. Similarly, for the ’943, ’297, and ’527 Patents, NorthStar does not dispute that the
`
`majority of the screenshots the Complaint relies on are from unrelated third parties. NorthStar’s
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`post hoc attorney analysis relating one screenshot in the Complaint to the asserted claims is
`
`immaterial because the Complaint includes no such analysis.
`
`NorthStar’s direct and indirect infringement allegations are also flawed. NorthStar
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`improperly conflates BMW AG and BMW NA, and in doing so, fails to provide BMW AG notice
`
`as to how BMW AG allegedly infringes, directly or indirectly. Indeed, this conflation underscores
`
`how NorthStar’s Complaint necessarily makes BMW NA a indispensable party. Rather than suing
`
`BMW NA in a proper venue, NorthStar’s Complaint attempts to improperly end-run around patent
`1
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`Case 2:22-cv-00486-JRG Document 49 Filed 07/25/23 Page 5 of 15 PageID #: 638
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`venue rules and thus should be dismissed.
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`II.
`
`ARGUMENT – NORTHSTAR FAILS TO JUSTIFY THE DEFICIENCIES
`IN ITS COMPLAINT
`
`NorthStar fails to address the issues in its Complaint. Additionally, NorthStar’s attempt to
`
`preserve venue by omitting domestic entity BMW NA is fatal to this case because BMW NA is
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`directly implicated by NorthStar’s muddled allegations, to the extent they can be understood, and
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`is essential for this case to proceed. NorthStar’s case should thus be dismissed.
`
`A.
`
`Dismissal Under Rule 12(b)(6)— NorthStar Has Provided Insufficient
`Notice For NorthStar’s Software Patent Claims
`NorthStar Fails to Meet the Pleading Standard Regarding the
`1.
`’416 And ’432 Patents
`NorthStar does not respond to BMW AG’s argument that NorthStar failed to provide any
`
`citations, references, mappings, or any kind of analysis for NorthStar’s ’416 and ’432 allegations
`
`in the Complaint. Rather, as BMW AG pointed out in its Motion to Dismiss, NorthStar merely
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`parrots claim 1 of the ’416 and ’432 Patents in the Complaint. Mot. 8-9, 13-14.
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`In its Opposition, for the ’432 and ’416 Patents, NorthStar’s entire argument is that the
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`Complaint is sufficient because it identifies of BMW AG and accuses products made by BMW
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`AG of infringement. Op. 6. However, NorthStar “cannot assert a plausible claim for infringement
`
`under the Iqbal/Twombly standard by reciting the claim elements and merely concluding that the
`
`accused product has those elements.” Bot M8 LLC v. Sony Corp., 4 F.4th 1342, 1353 (Fed. Cir.
`
`2021). BMW AG raised this issue in its Motion to Dismiss. Mot. 15. However, NorthStar only
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`responds that it identifies the accused technology broadly, and BMW AG as the alleged infringer.
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`Op. 6. This is insufficient. Bot M8, 4 F.4th at 1353. NorthStar has done exactly what the plaintiff
`
`in Bot M8 did, merely reciting the claim elements of the Asserted Patents and concluding that a
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`party infringes them. Under the Federal Circuit’s clear guidance and this Court’s precedent,
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`2
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`Case 2:22-cv-00486-JRG Document 49 Filed 07/25/23 Page 6 of 15 PageID #: 639
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`NorthStar’s claims should be dismissed.
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`For the ’432 Patent, NorthStar failed to address the deficiencies BMW AG raised with
`
`respect to paragraphs 66-67 of the Complaint. See Op. 6-8. NorthStar provides no argument that it
`
`alleged sufficient facts for the elements of the claims. Thus, NorthStar waived any justification for
`
`its flawed allegations by not raising a defense in its Opposition and ’432 Patent claims should be
`
`dismissed. Domain Protection, LLC v. Sea Wasp, LLC, No. 4:18-cv-492, 2019 WL3219939, at *8
`
`(E.D. Tex. Jul. 17, 2019) (citation omitted).
`
`For the ’416 Patent, NorthStar also failed to address the deficiencies BMW AG raised with
`
`respect to paragraphs 58-59 of the Complaint. See Op. 6-8. NorthStar also provides no responsive
`
`argument here. Thus, the ’432 Patent claims should also be dismissed.1 Id.
`
`2.
`
`NorthStar Fails to Meet the Pleading Standard Regarding the
`’943, ’527, and ’297 Patents
`
`NorthStar’s ’943, ’527, and ’297 allegations are similarly deficient. The Complaint alleges
`
`infringement of the ’943, ’527, and ’297 by reciting the claim language verbatim and including
`
`only three screenshots—one from a BMW manual, which NorthStar highlighted for the
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`proposition that BWM vehicles include a navigation system that refers to points of interest, and
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`two non-BMW sources. NorthStar argues that the Complaint including a highlighted box around
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`an excerpt from a manual is sufficient to support of a claim of infringement for the entirety of its
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`allegations for three separate sets of patent claims. Op. 7. This fails for several reasons.
`
`
`1 NorthStar raises a single argument for the ’416 Patent that the Complaint alleges “examples of
`how the infringing technology performs steps of the Patents-in-Suit” and the ’416 limitation
`examples are “arrival time” and “assisted GPS.” Op. 7. In reality, NorthStar merely states “assisted
`GPS” ias an example of the ’416 claim limitation “a remote source over a wireless network,” and
`“cellular tower” is an example of the ’416 claim limitation “a remote source.” Compl. ¶ 59.
`NorthStar fails to tie an “assisted GPS” or “cellular tower” to any action performed by BMW AG
`or device made by BMW AG.
`
`3
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`Case 2:22-cv-00486-JRG Document 49 Filed 07/25/23 Page 7 of 15 PageID #: 640
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`First, the single red highlighted box is unaccompanied by any allegations or explanations
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`of how the claims the highlighted portion text establishes that the claims are allegedly infringed.
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`Thus, NorthStar failed to “allege how the screenshots meet the exemplary claim in order to lay out
`
`sufficient factual allegations which might permit the Court to find that the Iqbal/Twombly standard
`
`is met.” Chapterhouse, LLC v. Shopify, Inc., No. 2:18-CV-00300-JRG, 2018 WL 6981828 (E.D.
`
`Tex. Dec. 11, 2018). Second, NorthStar argues its red highlight is “specifically highlighted to
`
`demonstrate that the BMW navigation system performs steps of certain Patents-in-Suit.” Op. 7.
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`This is unsupported attorney argument, and nothing in the Complaint relates the red highlighted
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`box to the preceding claim language, as illustrated by the fact that NorthStar uses the same red
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`highlighted box three times, seemingly at random, for three entirely different, unrelated claim
`
`elements, Compl. ¶22 (the claim requiring “determining that coordinates of the map-objects not
`
`within[] the selected area of the electronic map”), ¶34 (the claim requiring “displaying a selected
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`area of an electronic map”), ¶46 (the claim requiring “obtaining a map-object from a mapping
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`service.”). The random placement of screenshots, which NorthStar does not explain, does not set
`
`out a plausible infringement claim. Just like the dismissed Complaint in Chapterhouse, where
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`screenshots were not tied to the claim allegations and the plaintiff did not allege “how the
`
`screenshots meet the text of the exemplary claim,” NorthStar’s Complaint should be found
`
`deficient.2
`
`
`2 Like the “examples” discussed above, supra 3 n.1, NorthStar raises a single argument for the
`’943, ’527, and ’297 Patents that the Complaint alleges “examples of how the infringing
`technology performs steps of the Patents-in-Suit” and the single example for these patents is
`“arrival time.” Op. 7. However, NorthStar merely states “arrival time” is an example of the claim
`limitation “distance and time related information.” Compl. ¶ 59. NorthStar fails to tie an “arrival
`time” to any action performed by BMW AG or device made by BMW AG.
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`4
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`Case 2:22-cv-00486-JRG Document 49 Filed 07/25/23 Page 8 of 15 PageID #: 641
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`For the non-BMW sources, NorthStar does not respond to BMW AG’s point that these
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`sources are speculative and unrelated to BMW AG’s products. See Mot. 15-16. As such, NorthStar
`
`waives any response to this argument. Domain Protection, 2019 WL3219939, at *8 (citation
`
`omitted). NorthStar thus cannot rely on the two non-BMW sources in the Complaint.
`
`3.
`
`For these reasons, NorthStar’s ’943, ’527, and ’297 Patent
`claims should be dismissed. NorthStar Fails to Identify the
`Accused Products
`
`NorthStar also fails to address BMW AG’s argument that the Complaint insufficiently
`
`identifies the accused products because a plaintiff must assert more than a “vague identification.”
`
`Realtime Data, LLC v. Morgan Stanley, 721 F.Supp.2d 538, 543 (E.D. Tex. Jun. 10, 2010);
`
`Landmark Tech. LLC v. Aeropostale, 2010 WL 5174954 at *3 (E.D. Tex. Mar. 29, 2010). As
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`NorthStar acknowledges, it has broadly accused “BMW’s Navigation System, including, but not
`
`limited to, the BMW iDrive infotainment system in personal vehicles.” Op. 6. But, remarkably,
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`none of the documents cited by NorthStar reference anything specifically called a “Navigation
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`System.” Rather, NorthStar broadly accuses a number of amorphous hardware and software
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`components that it alleges to be included in nearly every BMW vehicle. Compl. ¶ 13. But this type
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`of broad claim, untethered to any type of specific product has been held to leave the defendant
`
`with no notice of how it allegedly infringes. Prism Techs., LLC v. AT&T Mobility, LLC, No. 8:12
`
`CV 122, 2012 WL 3867971, at *5 (D. Neb. Sept. 6, 2012) (finding the recitation of “DataConnect
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`Plans” and “DataPro Plans” as examples of “data systems” did not save the description from
`
`vagueness, because the description covered virtually all of AT&T's products, “leaving AT&T with
`
`no notice of how it allegedly infringes.”). Similarly, NorthStar’s accusations against an amorphous
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`combination of software and hardware is not specific enough to meet the pleading standards. As
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`such, NorthStar’s allegations should be dismissed.
`5
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`Case 2:22-cv-00486-JRG Document 49 Filed 07/25/23 Page 9 of 15 PageID #: 642
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`4.
`
`NorthStar’s Claims Are Based On Software Claims That
`Require a Higher Pleading Standard
`NorthStar does not refute that software cases require more specificity than other patent
`
`infringement allegations. Effectively Illuminated Pathways LLC v. Aston Martin Lagonda of North
`
`America, Inc., 2011 WL 13223466, at *3 (E.D. Tex. Sep. 29, 2011) (“[c]ases involving more
`
`nebulous, less tangible inventions such as computer software methods require a greater degree of
`
`specificity to put the defendant on notice.”). NorthStar’s only response is to argue that “the
`
`technology related to the Patents-in-Suit is not comparable” to the technology in Chapterhouse,
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`Realtime Data, and Landmark Tech. Op. 7. However, the similarities between NorthStar’s claims
`
`and the claims in these cases are evident. Like Chapterhouse, the patents in this case cover software
`
`and are titled, for example, “Route-Based Communication Planning Architecture and Method for
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`Wireless Communication” (’432 Patent) and “Method and System for Displaying Navigation
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`Information and Mapping Content on an Electronic Map” (’527 Patent). See also Chapterhouse,
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`LLC, 2018 WL 6981828 at *2. Significantly, NorthStar has also admitted its allegations are based
`
`on technology involving software. Op. 10 n.4 (NorthStar admitting that “software [is] at issue”).
`
`Also, like Chapterhouse, this case involves complicated technology—the Asserted Patents have
`
`many elements, which NorthStar failed to refute. See Op. 7-8. And NorthStar fails to address BMW
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`AG’s argument that NorthStar’s claims are directed to intangible software elements, including
`
`those of a navigation system and the methods performed within those systems. Mot. 15.3 Yet,
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`rather than amending its contentions to meet the requirements of Chapterhouse and similar cases,
`
`
`3 For example, the ’943, ’527, and ’297 Patents claim at least one step of “computing,” Compl. ¶
`23, 24, 35, 47, the ’416 Patent claims “generating an indication of the signal interference” and
`“plotting a course on a map,” Compl. ¶ 59, and the ’432 Patent claims “accessing the database to
`obtain information” and “obtaining updated information concerning the coverage areas of the
`wireless communication options.” Compl. ¶ 68. This exemplifies the software claims “at issue”
`here, which NorthStar admits. Op. 10 n.4.
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`6
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`Case 2:22-cv-00486-JRG Document 49 Filed 07/25/23 Page 10 of 15 PageID #: 643
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`NorthStar makes only a mere conclusory statement that the identified BMW AG products
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`incorporate “navigation systems” without the specificity required to put BMW AG on notice.
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`Chapterhouse, LLC, 2018 WL 6981828 at *3. Accordingly, NorthStar’s Complaint is insufficient.
`
`B.
`
`Dismissal Under Rule 12(b)(6)—The Complaint Does Not Plausibly
`Allege Any Acts of Infringement by BMW AG
`Direct Infringement: The complaint does not plausibly allege
`1.
`performance of the steps of the asserted claims
`In its Opposition, NorthStar relies on mere conclusory statements that BMW AG “uses”
`
`the accused technology. Op. 9. These mere conclusions are backed only by recitations of the
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`statutory language that insufficiently describe how BMW AG allegedly performs the claims.
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`Accordingly, NorthStar’s allegations are exactly the type of conclusory assertions the pleading
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`standards are meant to prevent. Iqbal, 556 U.S. at 664, 679. NorthStar’s allegations of BMW AG’s
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`supposed testing and troubleshooting are similarly unsupported by any citations or reference to
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`any evidence whatsoever. BMW AG has never performed the allegedly infringing acts in the
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`United States, and NorthStar failed to address the lack of infringing acts by BMW AG in its
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`Opposition. While NorthStar baldly speculates that BMW AG employees or agents travel from
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`Germany to test or troubleshoot vehicles, this allegation is not in the Complaint and NorthStar
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`cannot add new allegations in an opposition brief. See Jaraba v. Blinken, 568 F. Supp. 3d 720, 727
`
`(W.D. Tex. 2021); see e.g., Parham v. Clinton, 374 Fed.Appx. 503, 505-506 (5th Cir. 2010).
`
`Nothing that NorthStar presented in its Complaint supports the pure speculation that BMW
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`AG operates in the U.S. and Texas. Presented with these deficiencies in BMW AG’s motion, Mot.
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`16-18, NorthStar merely repeats the same statements from its Complaint, unable to muster any
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`semblance of a factual basis for these accusations. Op. 8-10. Additionally, to the extent NorthStar
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`alleges BMW AG “preload[s]” software on BMW AG vehicles and therefore the accused
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`Case 2:22-cv-00486-JRG Document 49 Filed 07/25/23 Page 11 of 15 PageID #: 644
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`technology is “used,” Op. 10, n.4, this is a new allegation that is nowhere in the Complaint and
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`lacks factual support (even in NorthStar’s Opposition). Likewise, to the extent NorthStar alleges
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`BMW AG authored a manual for one of BMW’s vehicles, Op. 2-3, NorthStar fails to allege facts
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`sufficient to tie BMW AG to any infringing acts in the U.S. and this District. Accordingly,
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`NorthStar’s direct infringement claims should be dismissed.
`
`2.
`
`Indirect Infringement: The Complaint does not plausibly
`allege elements required for indirect infringement
`The Complaint’s allegations of indirect infringement are deficient as they merely allege
`
`through conclusory statements that BMW AG induces end-users to directly infringe the asserted
`
`patents. See Iqbal, 556 U.S. at 678. NorthStar fails to provide any facts or support for how this
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`inducement allegedly occurs. Instead, NorthStar’s Complaint relies on mere conclusory
`
`statements without factual bases. See Compl. ¶¶ 25, 37, 50, 60, 69. Moreover, NorthStar
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`improperly frames BMW AG’s position as arguing for a standard that would preclude any
`
`foreign entity being accused of indirect infringement. Op. 11. Instead, BMW AG’s argument is
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`that the Complaint fails because NorthStar speculates without alleging or providing any plausible
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`factual basis from which the Court can infer that BMW AG induces customers or end-users to
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`infringe. Without such plausible factual allegations, the induced infringement allegations fail.
`
`3.
`
`NorthStar Failed to Allege Facts that BMW AG Knew of the
`Asserted Patents
`To supposedly support its induced infringement allegations, NorthStar asks the Court to
`
`assume that BMW had pre-suit knowledge of the Asserted Patents from industry publications
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`that do not list the Asserted Patents. Compl. ¶ 25, n.8. Courts have repeatedly found this
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`insufficient. Mot. 19.. Yet, NorthStar does not refute or even address this point at all. Op. 12-14.
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`8
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`Case 2:22-cv-00486-JRG Document 49 Filed 07/25/23 Page 12 of 15 PageID #: 645
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`To the extent NorthStar provides new allegations in its Opposition that BMW AG cited a
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`single asserted patent during prosecution of an unrelated BMW AG patent, Op. 14 n.7, that
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`allegation is not in the Complaint. NorthStar’s improper attempt to add new allegations through
`
`its opposition brief should again be rejected. See Jaraba v. Blinken, 568 F. Supp. 3d 720, 727
`
`(W.D. Tex. 2021); Parham, 374 Fed.Appx. at 505-506. Further, NorthStar’s new allegations of
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`willful blindness are unsupported by any facts both in its Opposition and its Complaint.
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`Additionally, NorthStar’s inddirect infringement allegations fail because NorthStar’s
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`direct infringement allegations should be dismissed. Realtime Data, 721 F.Supp.2d at 544.
`
`C.
`
`Dismissal Under Rule 12(b)(7)—The Complaint Fails to Join a
`Necessary and Indispensable Party
`NorthStar improperly argues BMW AG’s dismissal here would lead to dismissal of all
`
`patent claims for failure to join customers and end-users. Op. 15-16. In concocting this doomsday
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`scenario, which ignores that NorthStar could have brough suit against both BMW NA and AG
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`together in a proper venue,4 NorthStar ignores well-settled caselaw that the key determination is
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`“whether the party is indispensable, that is, whether litigation can be properly pursued without the
`
`absent party.” Innovative Display Techs. LLC v. Microsoft Corp., 2014 WL 2757541 at *2 (E.D.
`
`Tex. June 17, 2014). Generally, “[i]f a judgment would preclude an absent party from enforcing
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`[its] rights or injuriously affect them, that party is indispensable.” H.S. Res., 327 F.3d at 439.
`
`NorthStar argues there is no injury to BMW NA from NorthStar’s allegations, but BMW NA’s
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`business of selling and importing the BMW products is directly implicated by NorthStar’s
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`allegations, especially as NorthStar has asked for injunctive relief. Compl. ¶ 28 (Prayer for Relief)
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`The present case thus directly implicates BMW NA’s rights to sell and import BMW products.
`
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`4 Venue over BMW NA is improper in the Eastern District of Texas, which NorthStar does not
`dispute. See Op. 16.
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`9
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`Case 2:22-cv-00486-JRG Document 49 Filed 07/25/23 Page 13 of 15 PageID #: 646
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`NorthStar touts Arigna Tech. Ltd. v. Bayerische Motoren Werke AG, et al., as supposedly
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`supporting its viewpoint that NorthStar can sue foreign defendants who do not practice in the U.S.
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`Op. 16. It does not. In that case, the Court justifiably dismissed the foreign automaker from this
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`Court because of improper venue over its U.S.-subsidiary, who was joined as a party. Case No
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`2:21-cv-00172, Dkt. 200 at *3 (E.D. Tex. Dec. 14, 2022). Here, NorthStar’s failed to join the party
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`that performs the allegedly infringing importation and sale of the accused products in the U.S.
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`Because BMW NA’s rights are directly implicated by NorthStar’s Complaint, BMW NA is a
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`necessary and indispensable party.
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`BMW NA, not BMW AG, undertakes the alleged infringing activity, Mot. 20-22, and when
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`“the subsidiary was the primary participant in the events giving rise to the lawsuit,” “[f]ailure to
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`join the subsidiary in such circumstances would be improper.” Dernick v. Bralorne Res., Ltd., 639
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`F.2d 196, 199 (5th Cir. 1981) (applying Rule 19(a) and (b)). See also, Freeman v. Nw. Acceptance
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`Corp., 754 F.2d 553, 559 (5th Cir. 1985). NorthStar attempts to dismiss this clear guidance because
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`“they do not involve patent infringement.” Op. 16 n.8. NorthStar is wrong. In Innovative Display
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`Techs., this Court established that “[w]hether a party is indispensable under Rule 19(b) is a matter
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`of regional circuit law” and the Court then followed 5th Circuit law finding that a non-present
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`party was a necessary party in a patent infringement case. 2014 WL 2757541, at *1-*2, *5. Indeed,
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`the Court only dismissed Microsoft’s motion to dismiss without prejudice to see if the missing
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`party could be joined. Id., at *5. Here, venue in this District would be improper as to BMW NA.
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`Accordingly, dismissal of the present case is appropriate.
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`III. CONCLUSION
`For the foregoing reasons, BMW AG respectfully requests that the Court dismiss
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`NorthStar’s Complaint under Rules 12(b)(6) and 12(b)(7).
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`Case 2:22-cv-00486-JRG Document 49 Filed 07/25/23 Page 14 of 15 PageID #: 647
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`Dated: July 25, 2023
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`Respectfully submitted,
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`/s/ Lionel M. Lavenue
`Lionel M. Lavenue
`Virginia Bar No. 49,005
`lionel.lavenue@finnegan.com
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, LLP
`1875 Explorer Street, Suite 800
`Reston, VA 20190
`Phone: (571) 203-2700
`Fax: (202) 408-4400
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`ATTORNEY FOR DEFENDANT
`BAYERISHCE MOTOREN WERKE AG
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`Case 2:22-cv-00486-JRG Document 49 Filed 07/25/23 Page 15 of 15 PageID #: 648
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`CERTIFICATE OF SERVICE
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`I hereby certify that on July 25, 2023, I caused the foregoing DEFENDANT
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`BAYERISCHE MOTOREN WERKE AG’S REPLY IN SUPPORT OF ITS MOTION TO
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`DISMISS PURSUANT TO RULES 12(b)(6) AND 12(b)(7) to be electronically filed with the
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`Clerk of the Court using the CM/ECF system which will send notification of such filing via
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`electronic mail to all counsel of record.
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`/s/ Lionel M. Lavenue
`Lionel M. Lavenue
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