United States District Court, E.D. Michigan, Southern Division
BOS GMBH & Co. KG and BOS AUTOMOTIVE PRODUCTS, INC., Plaintiff,
MACAUTO USA, INC., and MACAUTO INDUSTRIAL CO., LTD., Defendants.
OPINION AND ORDER DENYING DEFENDANT MACAUTO
TAIWAN'S MOTION TO DISMISS FOR LACK OF PERSONAL
JURISDICTION (DKT. 16)
TERRENCE G. BERG UNITED STATES DISTRICT JUDGE.
a patent infringement lawsuit. The Plaintiffs, a German
company and its Michigan-based subsidiary, allege that
Defendants, a Taiwanese company and its American subsidiary,
manufacture, import, and sell retractable rear window shades
to American auto manufacturers and auto part suppliers using
technology that infringes Plaintiffs' patent. The
Taiwanese corporate Defendant has moved to dismiss this
action against it for lack of personal jurisdiction. For the
reasons outlined below, Defendant's Motion to Dismiss is
GmbH & Co. KG (“BOS Germany) and BOS Automotive
Products, Inc. (“BOS USA”) (collectively
“Plaintiffs”) filed this patent infringement
action against Defendants Macauto USA, Inc. (“Macauto
USA”), Kunshan Macauto Automobile Parts Industry Co.,
Ltd. (“Macauto China”), and Macauto Industrial
Co., Ltd. (“Ma-cauto Taiwan”) (collectively
“Defendants”) on February 13, 2017. Dkt. 1.
parties stipulated to the dismissal of Macauto China on May
12, 2017. Dkt. 15. Defendant Macauto Taiwan and Macauto USA
are the two remaining Defendants, and Defendant Macauto
Taiwan now seeks dismissal from this case for lack of
personal jurisdiction. Dkt. 16.
allege Defendants violated United States patent laws, 35
U.S.C. § 271, by infringing on Plaintiffs' U.S.
Patent No. 7, 188, 659 (the “'659 Patent”).
Plaintiff BOS Germany has owned the '659 Patent for
“Injection-Molded Plastic Guide Rail” technology
since March 2007, and exclusively licensed it in the United
States to BOS USA. Dkt. 1 at Pg ID 2, 7-8; Dkt 1-1 at Pg ID
to Plaintiffs, Defendant Macauto Taiwan manufactures
retractable rear window shades overseas that use this
patented “guide rail” technology and then ships
them through various United States ports of entry to
companies in different states, including Ford Motor Company
in Dearborn, Michigan. Dkt 1 at Pg ID 4-5. Plaintiffs allege
these window shades are then installed in cars, which are
manufactured and sold in Michigan by Lincoln Motor Company, a
subsidiary of Ford Motor Company. Dkt. 1 at Pg ID 2, 8-9, 13,
14-15. Plaintiffs also allege a product using their patented
guide rail design, but manufactured by Defendant Macauto
Taiwan, is available for sale at a Ford dealership in
Rochester Hills, Michigan. Dkt. 1 at Pg ID 10.
argue that the Court has personal jurisdiction over Defendant
Macauto Taiwan under the Michigan Long-Arm Statute, Mich.
Comp. Laws §600.716 because: 1) Defendant Macauto Taiwan
transacted business in Michigan by designing, manufacturing,
importing, and selling these infringing products to Michigan
auto manufacturers and automotive parts suppliers including
Ford, and 2) Defendant Macauto Taiwan sold these infringing
products knowing they would be supplied to Michigan auto
manufacturers and automotive parts suppliers. Dkt. 1 at Pg ID
Macauto Taiwan filed this Motion to Dismiss on June 1,
2017. In that Motion Defendant argues: 1)
Plaintiffs have not established the Court may exercise
general jurisdiction over the company because they have not
alleged “continuous or systematic contacts” with
Michigan, Dkt. 16 at Pg ID 103-105; 2) Plaintiffs have not
established the Court may exercise specific jurisdiction over
the company because they have not alleged sufficient minimum
contacts with Michigan that gave rise to this litigation,
Dkt. 16 at Pg ID 105-107; and 3) Plaintiffs have not
established any other basis for personal jurisdiction under
either a stream of commerce or alter-ego theory. Dkt. 16 at
Pg ID 107-10.
responded that they have only argued the Court has specific
personal jurisdiction over Defendant Macauto Taiwan based on
its regular, documented supply of the allegedly infringing
product to at least one Michigan auto manufacturer. Dkt. 18
at Pg. ID 178-183.
reasons discussed below the Court finds Plaintiffs have made
sufficient allegations at this stage of the proceedings to
demonstrate the Court may exercise specific personal
jurisdiction over Defendant Macauto Taiwan.
Standard of Review
may assert lack of personal jurisdiction as a defense under
Fed. R. Civ. Pro. 12(b)(2). Where, as here, the district
court relies on the written submissions and affidavits of
parties rather than based on an evidentiary hearing or
limited discovery the Plaintiff need only make a prima facie
showing that personal jurisdiction exists. Air Products
and Controls, Inc. v. Safetech Intern., Inc., 503 F.3d
544, 549 (6th Cir. 2007); see also Elecs. for
Imaging, Inc. v. Coyle, 340 F.3d 1344, 1349
(Fed. Cir. 2003)(“[W]here the district court's
disposition as to the personal jurisdictional question is
based on affidavits and ...