Mich. Motor Techs. v. Bayerische Motoren Werke AG
| Docket Number | 22 CV 3804 |
| Decision Date | 21 July 2023 |
| Parties | Michigan Motor Technologies, LLC, Plaintiff, v. Bayerische Motoren Werke AG and BMW of North America, LLC, Defendants. |
| Court | U.S. District Court — Northern District of Illinois |
Plaintiff MMT Michigan Motor Technologies, LLC (“MMT”) brings suit against Defendants Bayersche Motoren Werke AG (“BMW AG”) and BMW of North America, LLC (“BMW NA”) for patent infringement. Currently before the Court are BMW AG's motion to dismiss MMT's Second Amended Complaint [Dkt. 42] and BMW NA's motion to dismiss MMT's Second Amended Complaint [Dkt. 40]. For the following reasons, both motions are granted in part and denied in part.
As to BMW AG, MMT has not met its burden to show that BMW AG was properly served with process, but MMT may seek to do so under the Hague Service Convention. The Court declines to rule on BMW AG's remaining Rule 12(b)(6) arguments before personal jurisdiction has been established, so the motion is otherwise denied.
As to BMW NA, MMT's claims for infringement of the asserted claims of the ‘540, ‘260 and ‘482 patents (Counts I, IV and VI) are dismissed with prejudice. The asserted claims fail under the Supreme Court's two-step test for patent eligibility as articulated in Alice Corp. v. CLS Bank Int'l 573 U.S. 208 (2014). Additionally, MMT has not plausibly alleged that it is entitled to pre-suit damages as to Counts II (the ‘565 patent) or more than sixteen days of damages on its ‘122 patent Count V (the ‘122 patent), but MMT has leave to amend if it can do so consistent with this Order.
The following facts are drawn primarily from MMT's governing Second Amended Complaint [Dkt. 37.] MMT is a Michigan limited liability company with a place of business in Sylvan Lake, Michigan. Since August 28, 2017, MMT has been “the owner by assignment” of a portfolio of patents, including six that form the basis of this action: U.S. Patent Nos. 6,557,540 (“the '540 patent”), 6,581,565 (“the ‘565 patent), 6,581,574 (“the '574 patent”), 6,588,260 (“the ‘260 patent”), 6,736,122 (“the '122 patents”) and 8,909,482 (“the ‘482 patent”) (collectively, the “Asserted Patents”). MMT alleges that it is “the rightful owner of the Asserted Patents” and that it holds “the entire right, tile and interest” in them. [Dkt. 37, ¶ 20.] All of the Asserted Patents were issued by the United States Patent and Trademark Office (“USPTO”).
Defendant BMW NA is a Delaware corporation with its principal place of business in Woodcliff Lake, New Jersey. BMW NA is registered to do business in Illinois, maintains a certificate of good standing in Illinois, and may be served with process in Illinois through its registered agent, CT Corporation System. BMW NA is a wholly-owned subsidiary of Defendant BMW AG. The complaint alleges on information and belief that “Defendants maintain offices in Schaumburg Illinois, within this Judicial District,” where over fifty BMW associates work to provide support for aftersales, marketing, finance, and other functions. According to the complaint, the Schaumburg office is owned by BMW NA and is divided between BMW's central region office and technical training for BMW and MINI dealers. [Dkt. 37, ¶ 7.]
Within the last six years, Defendants have made and imported two types of engines which are the subject of this lawsuit: the BMW 2.0L I4 N26 and the BMW B48 (together, the “Accused Instrumentalities”). MMT alleges on information and belief that the Accused Instrumentalities have been installed in the following types of vehicles: the BMW 1 Series (model years 2016 through 2019); the BMW 2 Series (2016 to present); the BMW 3 Series (2015 to present); the BMW 4 Series (2016 to present); the BMW 5 Series (2017 to 2021); the BMW 6 Series (2017 to present); the BMW 7 Series (2016 to present); the BMW X3 (years unspecified); the BMW X4 (2018 to present); the MINI Cooper S Clubman (2019 to present); the MINI Countryman (2019 to present); the MINI John Cooper Works GP (2020 to present); the Toyota Supra (2019 to present); and the Morgan Plus Four Vehicles (2020 to present). [See Dkt. 37, ¶ 15.] Defendants have also made and imported a third type of engine, the BMW 2.07 I4 N20 (“HEV Accused Instrumentality”), which on information and belief has been installed in BMW X5 xDrive40e vehicles (2015 to 2018). [Id., ¶¶ 16-17.]
MMT brings a six-count complaint alleging that Defendants' Accused Instrumentalities and HEV Accused Instrumentality infringe its six patents. Count I is based on “at least claim 1” of the ‘540 patent, which is entitled “Method of Calculating a Valve Timing Command for an Engine.” [Dkt. 37, ¶¶ 22, 24 & Ex. 1.]
Count II is for infringement of “at least claim 7” of the ‘565 patent, “Engine Torque Controller.” [Id., ¶¶ 28, 30 & Ex. 4.] Count III alleges infringement of “at least claim 1” of the ‘574 patent, “Method of Controlling Fuel Rail Pressure.” [Id., ¶¶ 34, 36 & Ex. 7.] Count IV concerns “at least claim 11” of the “past infringement ... and any continuing or future infringement,” as well as interest, costs, expenses, an accounting of all infringing actions, and an award of reasonable attorneys' fees. [See id. at 9-10 (prayer for relief).] The Court discusses the particulars of the patents below, to the extent necessary to resolve the parties' motions.
Since this is a patent case, unique choice-of-law rules apply. Seventh Circuit “law governs non-patent issues, while Federal Circuit law governs issues of substantive patent law.” Medicines Co. v. Mylan Inc., 936 F.Supp.2d 894, 899 (N.D. Ill. 2013) (citing In re Spalding Sports Worldwide, Inc., 203 F.3d 800, 803 (Fed. Cir. 2000)). “Federal Circuit law may also govern any substantive or procedural issues ‘intimately involved in the substance of enforcement of the patent right.'” Id. ). “Regional circuit law, however, applies to procedural questions not themselves issues of substantive patent law unless they (1) pertain to patent law, (2) bear an essential relationship to matters committed by statute to the exclusive control of the Federal Circuit, or (3) clearly implicate the responsibilities of the Federal Circuit in a field within its exclusive jurisdiction.” Id. (citing GFI, Inc. v. Franklin Corp., 265 F.3d 1268 (Fed. Cir. 2001)).
Defendants move to dismiss MMT's complaint pursuant to Rules 12(b)(5) and 12(b)(6) of the Federal Rules of Civil Procedure. A Rule 12(b)(5) motion is used to enforce service of process requirements. See Paulsen v. Abbott Laboratories, 368 F.Supp.3d 1152, 1163 (N.D. Ill. 2019). The plaintiff “bears the burden to demonstrate that the district court has jurisdiction over each defendant through effective service.” Cardenas v. City of Chicago, 646 F.3d 1001, 1005 (7th Cir. 2011). If the Court determines that the plaintiff has not met that burden and lacks good cause for not perfecting service, the Court must either dismiss the suit or specify a time within which the plaintiff must serve the defendant. Fed.R.Civ.P. 4(m); see also United States v. McLaughlin, 470 F.3d 698, 700 (7th Cir. 2006). The Court's decision on a Rule 12(b)(5) motion is “inherently discretionary.” Cardenas, 646 F.3d at 1005 (citing United States v. Ligas, 549 F.3d 497, 501 (7th Cir. 2008)). In making its determinations on a Rule 12(b)(5) motion, a court may consider affidavits and other documentary evidence. See Zausa v. Pellin, 2017 WL 2311232, at *4 (N.D. Ill. May 26, 2017); Dumas v. Decker, 2012 WL 1755674, at *2 (N.D. Ill. May 16, 2012).
A Rule 12(b)(6) motion challenges the sufficiency of the pleadings. “To survive a motion to dismiss under Rule 12(b)(6), plaintiff's complaint must allege facts which, when taken as true, ‘plausibly suggest that the plaintiff has a right to relief, raising that possibility above a speculative level.'” Cochran v. Illinois State Toll Highway Auth., 828 F.3d 597, 599 (7th Cir. 2016) (quoting EEOC v. Concentra Health Servs., Inc., 496 F.3d 773, 776 (7th Cir. 2007)). The Court “accept[s] all well-pleaded facts as true and draw all reasonable inferences in plaintiff's favor.” Id. at 600 (citing Tamayo v. Blagojevich, 526 F.3d 1074, 1081 (7th Cir. 2008)). The Court reads the complaint and assesses its plausibility as a whole. See Atkins v. City of Chicago, 631 F.3d 823, 832 (7th Cir. 2011). Written instruments that are attached to the complaint are considered to be “a part of the pleading for all purposes.” Fed.R.Civ.P. 10(c). The Court may consider documents attached to a motion to dismiss if they are “(1) referenced in the plaintiff's complaint, (2) concededly authentic, and (3) central to the plaintiff's claim.” Financial Fiduciaries, LLC v. Gannett Co., Inc., 46 F.4th 654, 663 (7th Cir. 2022).
BMW AG moves to dismiss the complaint for ineffective service of process as well as failure to state a claim. The Court considers the threshold issue of service first. MMT filed this lawsuit on July 22, 2022 and a summons for both Defendants was issued that day. MMT attempted to serve BMW AG with process on...
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