The Eastern District of Texas is still more likely to permit joinder. The court has outweighed the third EMC factor: “the use of identically sourced components.”167 This trend started in Imperium (IP) Holdings, Inc. v. Apple Inc.,168 a 2012 decision issued after the enactment of the AIA and before In re EMC.169 There, the joinder issue was governed by Rule 20 only.170 However, the court commented that the joinder of different cell phone manufacturer defendants is proper even under § 299.171 In footnote 3, the court found that the transaction-or-occurrence test under § 299 is met because the defendants “are not merely accused of making or selling similar products that infringe the same patents,”172 but rather “make similar products that use the same technology and in many instances the same image sensor or processor.”173
The Imperium court focused on “the use of an identical image sensor or processor in different [accused]
products.”174 This approach asks whether “the technology
167 See In re EMC Corp., 677 F.3d at 1359.
168 Imperium (IP) Holdings, Inc., 2012 WL 461775.
169 See generally Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 332 (2011) (codified as amended 35 U.S.C. § 299 (2013)) (creating statutory requirements for joinder in patent
infringement suits); In re EMC Corp., 677 F.3d 1351 (Fed. Cir. 2012) (creating judicial guidelines for determining when joinder is
appropriate under § 299).
170 See Imperium (IP) Holdings, Inc., 2012 WL 461775, at *3 n.2.
171 Id. at *3 n.3.
172 Id.
173 Id.
174 Id.
at issue is the same.”175 If so, then the transaction-or-occurrence test is satisfied.176 Under Imperium, the use of an identical component in different accused products is sufficient to show that the technology at issue is the same.177
After Imperium, the Eastern District of Texas in Motorola Mobility, Inc. v. Tivo, Inc.178 first applied the AIA joinder clause to an upstream-and-downstream scenario.179 There, the counterclaim plaintiff sued a television signal transmitter equipment manufacturer and cable TV provider jointly.180 The manufacturer’s equipment was accused of infringing the patent, while the cable TV provider was accused of distributing such equipment.181 When applying
§ 299, the court did not explain whether the new law changed its Rule 20 practice.182 Rather, the court permitted joinder simply because the counterclaim plaintiff alleged that both manufacturer and cable TV provider “infringe its patents based on [their] conduct relating to [the equipment].”183 The Motorola court’s approach is similar to the Imperium court because they focus on whether the technology or product at issue is the same.
After the Federal Circuit in In re EMC limited the scope of joinder under Rule 20, the Eastern District of Texas started to heighten the standard of joinder. In Norman IP
175 Id.
176 See id.
177 See id.
178 Motorola Mobility, Inc. v. Tivo, Inc., No. 5:11-CV-53-JRG, 2012 WL 2935450 (E.D. Tex. July 18, 2012).
179 Id. at *2.
180 Id. at *1.
181 Id.
182 See id. at *1–2.
183 Id. at *2.
Holdings, LLC v. Lexmark Int’l, Inc.,184 the court held that
“the accused products or processes of the defendants are similar is not enough” to support joinder.185 The court rejected the plaintiff’s “allegations regarding the common use” of the designs of a particular component as a basis of joinder.186 But, the court actually did not reject the Imperium court’s approach.187 Rather, the court only criticized that the complaint did not explain what “defining characteristic”
such particular component possesses in each accused product with respect to each defendant’s infringement.188 Thus, the Norman court indeed modified the Imperium court’s approach to require something more than a list of
“non-limiting examples of infringing system components.”189 Under Norman, a plaintiff has to “establish that the allegations of infringement against each defendant relate to a common transaction or occurrence for joinder purposes [under Rule 20].”190
Five days after Norman, on August 15, 2012, the Eastern District of Texas issued a decision in Oasis Research LLC v. Carbonite, Inc. to respond to the Federal Circuit’s In re EMC decision.191 In Oasis Research the court applied the
184 Norman IP Holdings, LLC v. Lexmark Int’l, Inc., No. 6:11-CV-495, 6:12-CV-508, 2012 WL 3307942 (E.D. Tex. Aug. 10, 2012).
185 Id. at *2 (citing In re EMC Corp., 677 F.3d 1351, 1359 (Fed. Cir.
2012)).
186 Id. at *3.
187 See id.
188 See id. (“The complaint did not mention ARM processors as defining characteristic regarding each defendant’s alleged infringement.”).
189 Id.
190 Id. Norman IP Holdings, LLC, 2012 WL 3307942 at *3.
191 Oasis Research, LLC v. Carbonite, Inc., No. 4:10-CV-435, 2012 WL 3544881, at *2 (E.D. Tex. Aug. 15, 2012).
EMC factors192 and severed all defendants because of a “lack of a logical relationship between the claims against each [d]efendant.”193 With respect to two particular defendants, the court found no allegation showing that they “use similarly sourced products, worked in concert, or had any relationship at all.”194 Although the court did not explain whether such finding relates to the EMC factors, the court looked into something other than the technology.195
In the same month, the Eastern District of Texas issued two decisions regarding misjoinder in the context of an upstream-and-downstream scenario.196 In Net Nav. Sys., LLC v. Cisco Sys., Inc.,197 the court applied § 299 and the EMC factors.198 While the plaintiff asserted that the manufacturer defendant and client defendant “are working together in a ‘strategic alliance,’”199 the court found that “the nature of the relationship” is unknown.200 The court also found that the plaintiff did not identify an appropriate entity of the client defendant or its subsidiaries.201 Moreover, no
192 Id. at *4.
193 See iId. at *6.
194 Id. at *5.
195 Id. at *6.
196 See Net Nav. Sys., LLC v. Cisco Sys., Inc., No. 4:11-CV-660, 2012 WL 7827543 (E.D. Tex. Aug. 22, 2012) adopted by Net Nav. Sys., LLC v. Cisco Sys., Inc., No. 4:11-CV-660, 2012 WL 1309837 (E.D.
Tex. Mar. 27, 2013); Phoenix Licensing, LLC v. Aetna, Inc., No.
2:11-CV-285-JRG, 2012 WL 3472973 (E.D. Tex. Aug. 15, 2012).
197 Net Nav. Sys., LLC v. Cisco Sys., Inc., No. 4:11-CV-660, 2012 WL 7827543 (E.D. Tex. Aug. 22, 2012).
198 Id. at *3.
199 Id.
200 Id.
201 Id.
allegations were found to support other EMC factors.202 Thus, the court found misjoinder.203 In Phoenix Licensing, LLC v. Aetna, Inc.,204 the court applied both § 299 and Rule 20 to the joinder issue raised by a supplier defendant.205 While the Net Nav. Sys. court did not analyze the factual allegations by going through all six EMC factors,206 the Phoenix Licensing court did so.207 The Phoenix court found only the first EMC factor satisfied.208 Thus, the court severed the supplier defendant from the present case.209