Adrain, Better, and Eolas

The court consecutively in Adrain, Better, and Eolas followed MyMail and per-mitted joinder.⁶¹ Adrain and Better both looked to the similarity or difference between the accused products. In Adrain, the patent-in-suit related to “a system for monitoring a space, detecting images, and comparing the images to data.”⁶²

53See id. at 457.

54Id.; see also Greg Reilly, Aggregating Defendants, 41 Fla. St. U. L. Rev. 1011, 1024 (2014); Shen, supra note 2, at 549-50; Peter J. Corcoran, III, Strategies to Save Resources and Reduce E-Discovery Costs in Patent Litigation, 21 Tex.

Intell. Prop. L.J. 103, 126 (2013).

55Shen, supra note 2, at 549; see also George D. Medlock Jr. & David Frist, Joinder: Over a Year after the America Invents Act, 5 Landslide, no. 2, 2012, at 44; Diane H. Crawley, America Invents Act: Promoting Progress or Spurring Secrecy?, 36 U. Haw. L. Rev. 1, 13 (2014); Reilly, supra note 54, at 1024; Taylor, supra note 41, at 657; Bob McAughan, Time to Justice: Seven Hours or Seven Days? Variations in Imposed Time Limits for Patent Jury Trials, 4 Landslide, no.

3, 2012, at 45.

56See, e.g., Centre One v. Vonage Holdings Corp., No. 6:08CV467, 2009 WL 2461003 (E.D. Tex. Aug. 10, 2009);

Adrain v. Genetec Inc., No. 2:08–CV–423, 2009 WL 3063414 (E.D. Tex. Sept. 22, 2009); Innovative Global Sys.

LLC v. Turnpike Global Techs. L.L.C., No. 6:09–cv–157, 2009 WL 3754886 (E.D. Tex. Oct. 20, 2009); Better Educ.

Inc. v. Einstruction Corp., No. 2–08–cv–446–TJW–CE, 2010 WL 918307 (E.D. Tex. Mar. 10, 2010); Eolas Techs., Inc. v. Adobe Sys., Inc., No. 6:09–CV–446, 2010 WL 3835762 (E.D. Tex. Sept. 28, 2010); Oasis Research, LLC v.

Adrive, LLC (Oasis I), No. 4:10–CV–435, 2011 WL 3099885 (E.D. Tex. May 23, 2011), adopted by Oasis Research, LLC v. Adrive, LLC (Oasis II), 2011 WL 3103972 (E.D. Tex. July 25, 2011); MicroUnity Sys. Eng’g, Inc. v. Acer Inc., Nos. 2:10–CV–91–TJW–CE, 2:10–CV–185–TJW–CE, 2011 WL 4591917 (E.D. Tex. Sept. 30, 2011); Imperium (IP) Holdings, Inc. v. Apple Inc., No. 4:11–CV–163, 2012 WL 461775 (E.D. Tex. Jan. 20, 2012); Lodsys, LLC v.

Brother Int’l Corp., No. 2:11–cv–90–JRG, 2012 WL 760729 (E.D. Tex. Mar. 8, 2012); Innovative Automation, LLC v. Audio Video and Video Labs, Inc., Nos. 6:11–CV–234 LED–JDL, 6:11–CV–445 LED–JDL, 2012 WL 10816848 (E.D. Tex. May 30, 2012).

57Adrain, 2009 WL 3063414.

58Better Educ., 2010 WL 918307.

59Eolas Techs., 2010 WL 3835762.

60See H.R. Rep. No. 112-98, pt.1, at 55 n. 61 (2011).

61See, e.g., Adrain, 2009 WL 3063414, at *2; Better Educ., 2010 WL 918307, at *1; Eolas Techs., 2010 WL 3835762, at

*2.62Adrain’s Response to Defendant Elsag North America LLC’s Motion to Sever and to Transfer the Action to the Middle District of North Carolina at 1, Adrain, 2009 WL 3063414 (No. 2:08–CV–423) [hereinafter, Plaintiff’s

A motion for severance was filed by Elsag North America LLC which argued that all accused infringers are unrelated and the “same transaction or occur-rence” requirement is not met.⁶³ On the other hand, the plaintiff alleged that

“public materials show that the defendants’ infringing systems are substan-tially similar in their structure, design, and/or method of operation.”⁶⁴ The court sided with the plaintiff.⁶⁵ First, the accused license plate recognition sys-tems sold by the defendants were alleged to infringe the same patent.⁶⁶ Sec-ond, “the similarity” of the accused systems sufficiently satisfied “the nucleus of fact or law test.”⁶⁷ Therefore, the court found that the “same transaction or occurrence” requirement is met.⁶⁸

In Eolas, the patents-in-suit related to “[a] system allowing a user of a browser program on a computer connected to an open distributed hyperme-dia system to access and execute an embedded program object.”⁶⁹The plaintiff sued twenty-three defendants from various industries.⁷⁰ All defendants moved for venue transfer and alternatively for severance.⁷¹ The defendants’ misjoin-der argument was based on the fact that they are unrelated.⁷² However, the court disagreed primarily because of a concern of judicial economy.⁷³ The court considered that there are identical issues regarding the claim construction and patentability such that implementing multiple proceedings for the same issues would waste the judicial resources as well as parties’ resources.⁷⁴ In addition, the court did not find “the products or methods at issue are so different” that different lawsuits are required.⁷⁵ Thus, the court permitted joinder.⁷⁶

Better was different from Adrain and Eolas because the ruling was too con-clusory. In Better, the patent-in-suit related to “electronic classroom response systems that allow students to answer questions with student terminals.”⁷⁷ One defendant Qwizdom filed a motion to dismiss, and the motion asserted

Response].

63See Defendant Elsag North America LLC’s Reply Brief in Support of Its Motion to Sever and to Transfer the Action to the Middle District of North Carolina Pursuant to Fed. R. Civ. P. 21 and 28 U.S.C. § 1404 at 2, Adrain, 2009 WL 3063414 (No. 2:08–CV–423 ).

64Plaintiff’s Response at 2, Adrain, 2009 WL 3063414 (No. 2:08–CV–423 ), .

65See Adrain, 2009 WL 3063414, at *2.

66See id.

67See id.

68See id.

69See, e.g., U.S. Patent No. 5,838,906 abstract (filed Oct. 17, 1994), U.S. Patent No. 7,599,985 abstract (filed Aug.

9, 2002); see also Eolas Techs., Inc. v. Adobe Sys., Inc., No. 6:09–CV–446, 2010 WL 3835762, at *1 (E.D. Tex. Sept.

28, 2010).

70See Eolas Techs., 2010 WL 3835762, at *1.

71See id.

72See Defendants Adobe Systems, Inc., Amazon.com, Inc., Apple Inc., Blockbuster Inc., Ebay Inc., the Go Daddy Group, Inc., Google Inc., New Frontier Media, Inc., Playboy Enterprises International, Inc., Sun Microsystems Inc., Yahoo! Inc., and Youtube, LLC’s Motion to Transfer to the U.S. District Court for the Northern District of California Pursuant to 28 U.S.C. § 1404(A) at 14-15, Eolas Techs., 2010 WL 3835762 (No. 6:09–CV–446) (citing cases which indicate that unrelated defendants should be severed).

73See Eolas Techs., 2010 WL 3835762, at *1-2.

74See id. at *1.

75See id.

76See id. at *2.

77Plaintiff Better Education, Inc.’s Opposition to Defendant Qwizdom, Inc.’s Motion to Dismiss at 2, Better Educ. Inc. v. Einstruction Corp., No. 2–08–cv–446–TJW–CE, 2010 WL 918307 (E.D. Tex. Mar. 10, 2010) [here-inafter, Plaintiff’s Opposition].

misjoinder.⁷⁸ Regarding misjoinder, Qwizdom primarily argued that “[e]ach of the Defendants has its own unique electronic learning systems, with each system having its own components and separate, distinct design.”⁷⁹ On the other hand, the plaintiff did not explain why a logical relationship exists be-tween the claim against Qwizdom and the claims against other defendants.⁸⁰ Instead, the plaintiff emphasized that “[t]he Eastern District of Texas has long disagreed with a per se rule that infringement by different defendants does not satisfy Rule 20’s same transaction requirement.”⁸¹ Eventually, without analyz-ing any relevant facts, the court cited MyMail and simply concluded that it “is not persuaded that joinder of Qwizdom is improper.”⁸²

From MyMail to Eolas, the court gradually transformed the “same transac-tion or occurrence” requirement into the “dramatically different” standard and further into the “same patent” standard. MyMail recognized a joinder analysis as a two-prong test,⁸³but it transformed the “same transaction or occurrence”

requirement into the requirement of “a nucleus of operative facts or law.”⁸⁴ MyMail also required that severance is possibly appropriate if the infringing products or methods are “dramatically different.”⁸⁵ Next, Adrain recognized that the “same transaction or occurrence” requirement is satisfied when the products or methods at dispute are accused of infringing the same patent and when the similarity of the infringing products or methods is sufficient.⁸⁶ Then, Better implied that the “dramatically different” standard is not required to con-sider.⁸⁷ Finally, Eolas did not separate the “same transaction or occurrence” re-quirement from the analysis of permissive joinder.⁸⁸ Rather, Eolas considered the issues of claim construction and patent validity as substantially overlapping questions of law and fact, so the joinder was appropriate to prevent inconsis-tent results.⁸⁹ The “dramatically different” standard became a minor factor, which is very different from MyMail. Therefore, whether the same patent is infringed (the “same patent” standard) became a major factor for determining permissive joinder.

The evolution of the MyMail-based case law indicates two principles which Congress has abrogated. First, joinder is proper when the same patent is in-fringed. Second, the accused products or methods have to be similar or not dramatically different. The first principle is invalid because 35 U.S.C. § 299(b) provides, “[f]or purposes of this subsection, accused infringers may not be joined in one action as defendants or counterclaim defendants, or have their actions consolidated for trial, based solely on allegations that they each have

78See Better Educ., 2010 WL 918307, at *1.

79Qwizdom, Inc.’s Motion to Dismiss at 4, Better Educ., 2010 WL 918307 (No. 2–08–cv–446–TJW–CE ).

80See Plaintiff’s Opposition at 3, Better Educ., 2010 WL 918307 (No. 2–08–cv–446–TJW–CE).

81See id.

82Better Educ., 2010 WL 918307, at *1.

83See MyMail, Ltd. v. Am. Online, Inc., 223 F.R.D. 455, 456 (E.D. Tex. 2004).

84See id.

85See id. at 457.

86See Adrain v. Genetec Inc., No. 2:08–CV–423, 2009 WL 3063414, at *2 (E.D. Tex. Sept. 22, 2009).

87See Better Educ., 2010 WL 918307, at *1.

88See Eolas Techs., Inc. v. Adobe Sys., Inc., No. 6:09–CV–446, 2010 WL 3835762, at *1-2 (E.D. Tex. Sept. 28, 2010).

89See id. at *2.

infringed the patent or patents in suit.” ⁹⁰ The second principle is also invalid because § 299(a) limits the “same transaction or occurrence” requirement to what relates “to the making, using, importing into the United States, offering for sale, or selling of the same accused product or process.”⁹¹ Thus, the “dra-matically different” standard adopted by the MyMail case law is not endorsed by Congress. Rather, courts must follow the “same accused product or pro-cess” standard.