The Eastern District of Texas has incorporated EMC into its application of § 299206 except for Motorola Mobility, Inc. v. Tivo, Inc.,207 a 2012 decision in which the court found permissive joinder without mentioning EMC. Motorola
199See Norman IP Holdings, 2012 WL 3307942, at *3 (“Norman’s allegations regarding the common use of ARM processor designs are not sufficient to show that there is a common transaction or occurrence among the defen-dants warranting joinder.”).
200Id.
201See id.
202See Oasis III, 2012 WL 3544881, at *2.
203See id. at *4-5.
204Id. at *5.
205See id.
206See, e.g., Net Nav. Sys., LLC v. Cisco Sys., Inc., No. 4:11–CV–660, 2012 WL 7827543 (E.D. Tex. Aug. 22, 2012) (a recommendation of a magistrate judge); ContentGuard Holdings, Inc. v. Google, Inc. (ContentGurad I), Nos.
2:14–cv–00061–JRG, 2:13–cv–01112–JRG, 2014 WL 1477670, at *4-5 (E.D. Tex. Apr. 15, 2014); Star CoLED Techs., LLC v. Sharp Corp., No. 2:13–CV–416–JRG, 2014 WL 1998051, at *1-3 (E.D. Tex. May 15, 2014); NFC Tech., LLC v. HTC Am., No. 2:13–CV–01058–JRG, 2014 WL 3834959, at *2 (E.D. Tex. Aug. 1, 2014); Smartflash LLC v. Apple, Inc., No. 6:13–cv–447, 2014 WL 4421657, at *3 (E.D. Tex. Sept. 8, 2014); Imperium IP Holdings (Cayman), Ltd. v.
Samsung Elec. Co, No. 4:14–CV–371, 2015 WL 137419, at *2-3 (E.D. Tex. Jan. 9, 2015); ContentGuard Holdings, Inc. v. Amazon.com, Inc., No. 2:13–CV–1112–JRG, 2015 WL 1263346, at *1-2 (E.D. Tex. Mar. 19, 2015). Two cases, VirtualAgility, Inc. v. Salesforce.com, Inc., No. 2:13–cv–00011–JRG, 2014 WL 459719 (E.D. Tex. Jan. 31, 2014), and Secure Axcess, LLC v. Nintendo of Am. Inc., Nos. 2:13–cv–32-JRG, 2:13–cv–289–JRG, 2014 WL 986169 (E.D.
Tex. Mar. 7, 2014), are not analyzed though there the court mentioned the issue of joinder. In VirtualAgility, the court only dealt with a motion to transfer venue brought by all defendants. See id., 2014 WL 459719, at *1. But, in one footnote in the motion, one defendant particularly addressed a request of severance. See id. at *6. The court did not accept the request because the defendant did not offer any evidence to support severance. See id. Since the severance issue incidentally appeared in the footnote, VirtualAgility may not be considered as mandatory authority of the joinder issue. This article chooses not to include it in the case law analysis. In Secure Axcess, the court dealt with a motion to sever and transfer venue. See id., 2014 WL 986169, at *1. While the court did recite several propositions from EMC, the severance part of the motion was not based on misjoinder. Rather, the severance part relied on the customer suit exception. See id. at *1-2. So, the court did not apply EMC to the analysis that denied severance. See id. at *2-6. Thus, this article dose not select Secure Axcess as part of the case law regarding 35 U.S.C. § 299.
207Motorola Mobility, Inc. v. Tivo, Inc., No. 5:11–CV–53–JRG, 2012 WL 2935450 (E.D. Tex. Jul. 18, 2012).
involved two defendants, TWC and Motorola.208 Motorola manufactured the infringing products, while TWC distributed the infringing products.209 The court held that joinder is permissive because the patent infringement allega-tions against TWC and Motorola are “based on their conduct relating to” the infringing products.210
Net Navigation Systems, LLC v. Cisco Systems, Inc.211 was another 2012 de-cision where the court found misjoinder.212 There, the court recognized that all accused products are from the same manufacturer.213 But, the court held that one defendant should be severed because the plaintiff failed to provide any evidence to support “the other factors outlined by the Federal Circuit.”214
Motorola and Net, the only two joinder decisions in 2012, together indicate that after EMC the court began to restrict the practice of permissive joinder un-der 35 U.S.C. § 299 because it abandoned the “dramatically different” standard or “same patent” standard. However, a series of cases since 2014 have shown a trend that the court remains a patentee-friendly forum with respect to permis-sive joinder of unrelated defendants.215
In 2014, the court consecutively in ContentGuard Holdings, Inc. v. Google, Inc. (hereinafter, “ContentGuard I”),216 Star CoLED Technologies, LLC v. Sharp Corp.,217NFC Technology, LLC v. HTC America,218and Smartflash LLC v. Apple, Inc.219 either allowed a further discovery proceeding regarding the issue of joinder or found permissive joinder.
In ContentGuard I, several mobile device manufacturers were jointly sued for patent infringement because their products used three software applica-tions which were alleged to infringe the patents-in-suit.220 The court recog-nized that “at least a set of common facts regarding these three software ap-plications” were shared by those manufacturer defendants.221In addition, the court observed that the use of the accused software applications on each mo-bile device “is not clearly based on independently developed products using differently sourced parts.”222Therefore, the court held that “the common facts regarding the accused software may well constitute an actual link between the facts underlying each claim of infringement.”223
However, the court noticed that “the existence of a hardware component”
in each mobile device may break the link because the infringement caused by
208See id. at *1.
209See id. at *2.
210See id.
211Net Nav. Sys., 2012 WL 7827543.
212See id. at *3.
213See id.
214See id.
215There was no case regarding joinder in 2013.
216ContentGuard I, 2014 WL 1477670.
217Star CoLED Techs., LLC v. Sharp Corp., No. 2:13–CV–416–JRG, 2014 WL 1998051 (E.D. Tex. May 15, 2014).
218NFC Tech., LLC v. HTC Am., No. 2:13–CV–01058–JRG, 2014 WL 3834959 (E.D. Tex. Aug. 1, 2014).
219Smartflash LLC v. Apple, Inc., No. 6:13–cv–447, 2014 WL 4421657 (E.D. Tex. Sept. 8, 2014).
220See ContentGuard I, 2014 WL 1477670, at *1, *5.
221See id. at *5.
222Id. (emphasis added) (internal quotation marks omitted).
223Id. (emphasis added) (internal quotation marks omitted).
each manufacturer defendant “may depend on the different devices supplied by individual [m]anufacturer defendant.”224 So, the court did not find per-missive joinder or misjoinder.225 Rather, the court found that “no evidence ha[d] been proffered regarding how the accused software-hardware combina-tion corresponds to claims of the asserted patents.”226 Eventually, the court allowed the parties to further develop the record for the joinder issue.227 The court provided two guidelines. First, the court stated that joinder may be proper if the claims “are predominantly software-based, [such that] the com-mon facts underlying such claims may constitute ‘an actual link’ connecting all [d]efendants.”228Second, the court stated that misjoinder may be found “if the hardware component turns out to play the dominant role in determining how the three software applications are used specifically on each [d]efendant’s device, [such that] the claims against each [d]efendant may be sufficiently dis-tinguished.”229
In Star, the court also allowed further discovery for the joinder issue.230The plaintiff alleged that two defendants “may be liable for infringement based on the same products because of a joint venture under which [one defendant]
manufactured LCD panels for use in [the other defendant’s] televisions.”231 But, the defendants provided employee declarations to oppose the plaintiff’s allegation.232With those assertions, the court found that the record is not suffi-cient for it to determine whether the joinder is permissive.233 So, the court required further discovery about the joinder issue.234 Moreover, the court ex-pected that the discovery will help determine “whether this case involves ‘inde-pendently developed products using differently sourced parts,’ or if the com-mon facts regarding the accused products constitute ‘an actual link between the facts underlying each claim of infringement.”’235 While not mentioning any specific EMC factors in its decision, the court seemed to look for the facts re-lated to the second, third, fourth, and fifth EMC factors.
ContentGuard I and Star together may indicate that the court has trans-formed the “actual link” standard into a standard requiring “common facts regarding the accused products.” By focusing on the common facts between the accused products, the court also established a way to show misjoinder by proving that the accused products are “independently developed products us-ing differently sourced parts.”
On the other hand, the court in NFC and Smartflash relied on a single
tech-224Id.
225See id. (“[T]his Court finds the record has not been sufficiently developed at this point in time for it to deter-mine with clarity whether or not joinder is proper in this case.”).
226Id.
227See id.
228Id.
229Id.
230See Star CoLED Techs., LLC v. Sharp Corp., No. 2:13–CV–416–JRG, 2014 WL 1998051, at *2 (E.D. Tex. May 15, 2014).
231Id.
232See id.
233See id.
234See id.
235Id. (emphasis added).
nical feature in different products or processes to serve as “an actual link.” In NFC, the court inherited Apple and concluded that “[d]iverse products using identical component parts are often held to meet the joinder standard.”236The court also associated this new proposition with the third EMC factor “the use of identically sourced components.”237As a result, the court found permissive joinder of two mobile device manufacturers because their products used the same semiconductor chip.238It must be noted that the joinder decision in NFC was not simply based on the use of identical components. As the court pointed out, the use of the chip “in combination with devices supplied by [the man-ufacturer defendants] allegedly infringe [the patents-in-suit].”239 For joinder purposes, the use of identical components or identically sourced components must be associated with the allegations of patent infringement.
Smartflash was slightly different because “processes” were accused of patent infringement.240 In Smartflash, Apple and three apps developers were jointly sued because Apple’s Store Kit Framework was alleged to infringe the patents-in-suit.241 The court held that the joinder of Apple and these developers is proper.242First, the plaintiff’s allegations of patent infringement were “directed to the implementation of Store Kit’s payment functionality.”243 Thus, the court concluded that the use of the Store Kit Framework constitutes “the same pro-cess” under 35 U.S.C. § 299.244Second, these developers were assisted by Apple to implement in-app payment functionality in their apps through the Store Kit Framework.245Therefore, the court found that the “same transaction or occur-rence” requirement is met.246
While Smartflash relates to processes, it is safe to say that Smartflash takes an approach similar to ContentGuard I, Star, and NFC. Smartflash looks to com-mon facts between accused processes or the use of identical objects in accused processes.
These 2014 cases have shown the Eastern District of Texas’ patentee-friendly practice of 35 U.S.C. § 299. But, the court does not go beyond the limits set out by EMC. In 2015, the court in Imperium IP Holdings (Cayman), Ltd. v. Samsung Electronics Co247 found misjoinder and severed two Samsung-related compa-nies from the rest of the accused Samsung-related compacompa-nies.248 Although recognizing that the “particular functionality of the [accused] products with
236NFC Tech., LLC v. HTC Am., No. 2:13–CV–01058–JRG, 2014 WL 3834959, at *2 (E.D. Tex. Aug. 1, 2014) (citing Imperium (IP) Holdings, Inc. v. Apple Inc., No. 4:11–CV–163, 2012 WL 461775, at *2-3 (E.D. Tex. Jan. 20, 2012)).
237See id.
238See id.
239Id.
240See Smartflash LLC v. Apple, Inc., No. 6:13–cv–447, 2014 WL 4421657, at *3 (E.D. Tex. Sept. 8, 2014).
241See id. at *1.
242See id. at *3.
243Id.
244See id.
245See id.
246See id.
247Imperium IP Holdings (Cayman), Ltd. v. Samsung Elec. Co, No. 4:14–CV–371, 2015 WL 137419 (E.D. Tex.
Jan. 9, 2015).
248See Samsung Elec., 2015 WL 137419, at *3.
respect to the patent may be the same,”249the court stated that “the sameness of the accused products or processes is not sufficient.”250Eventually, the court found that the “same transaction or occurrence” requirement is not met primar-ily because the plaintiff “merely speculates as to the likelihood of licensing and technology agreements among the defendants and the likelihood of identically sourced components.”251 In a recent case, ContentGuard Holdings, Inc. v. Ama-zon.com, Inc. (hereinafter, “ContentGuard II”),252while facing multiple motions to sever with different approaches for severance,253the court required the ev-identiary record to show “that, under multiple theories of infringement, there are common questions of fact; that there are actual links between those facts;
and that the ‘same transaction, occurrence, or series of transactions or occur-rences’ is being accused.”254 Therefore, ContentGuard II indicates the Eastern District of Texas’ salute to EMC.
IV. Sameness Requirement
A. Eastern District of Texas' Liberal Approach
Although the language of § 299(a) clearly requires that joinder is permissive only if “the same accused product or process” is involved, the Eastern District of Texas seems to ignore this sameness requirement. The question is whether the phrase “the same accused product or process” mandates that all accused products or processes have to be exactly the same. EMC may provide some clues to this question.
The Federal Circuit has yet interpreted the sameness requirement under § 299, but only in In re Nintendo Co.255commented that “[t]he AIA’s joinder pro-vision is more stringent than Rule 20, and adds a requirement that the transac-tion or occurrence must relate to making, using, or selling of the same accused product or process.”256 It is unclear whether the sameness requirement for Rule 20 is the same as “the same accused product or process” required by § 299. However, in EMC, the Federal Circuit in footnote four stated that “[w]e need not decide whether the sameness test in the new legislation is identical to the sameness test we adopt here for cases not covered by the new legisla-tion.”257This statement indicates that the sameness requirement under § 299 is different from that under Rule 20. In the same footnote, the Federal Circuit also
249Id.
250Id. (quoting In re EMC Corp., 677 F.3d 1351, 1359 (Fed. Cir. 2012)).
251Id. (emphasis added).
252ContentGuard Holdings, Inc. v. Amazon.com, Inc. (ContentGuard II), No. 2:13–CV–1112–JRG, 2015 WL 1263346 (E.D. Tex. Mar. 19, 2015).
253See ContentGuard II, 2015 WL 1263346, at *7 (“That four out of six defendants moved separately for severance across 175 pages of briefing and that the Movants presented the Court with different, competing, theories of how (and why) the case should be severed and what was or was not relevant in the severance determination (e.g. hardware and app operating system) substantially complicated the Court’s efforts to develop a coherent understanding of the severance issues.”).
254Id. at *8.
255In re Nintendo Co., 544 F. App’x 934 (Fed. Cir. 2013).
256Id. at 939.
257In re EMC Corp., 677 F.3d 1351, 1360 n.4 (Fed. Cir. 2012) (emphasis added).
stated that “[t]he new statute only allows joinder of independent defendants whose acts of infringement involve ‘the same accused product or process.”’258 By using “only,” the Federal Circuit apparently recognized that the sameness requirement under § 299 should be more stringent than that under Rule 20.259 Since the Federal Circuit has required that “the accused products or processes [must be] the same in respects relevant to the patent,”260§ 299 may require “the same accused product or process” to be more than just the same in respects rel-evant to the patent. But, the Eastern District of Texas has made the sameness requirement under § 299 mean the sameness in respects relevant to the patent.
In ContentGuard I, the accused products covered tablets (the Apple iPad, the Amazon Kindle Fire) and smartphones (the BlackBerry Z10, the HTC One Max, the Huawei Ascend, the Motorola Moto X, and the Samsung Galaxy S4).261The accused products were alleged to use three infringing software applications.262 Tablets and smartphones are different by name or from a user’s aspect.263But, the court characterized the accused tablets and smartphones as “portable” de-vices.264So, the sameness requirement was omitted.265Rather, the court asked whether the infringement is software-based or hardware-based.266 If the in-fringement is software-based, then the accused software may be served as an actual link connecting the claims against all defendants267On the other hand, if the infringement is hardware-based, because the infringement by hardware
“may depend on the different devices supplied by individual [defendant],”268 the claims against each defendant may be “sufficiently distinguished.”269 Un-der this approach, the court focused on finding something that connects the ac-cused products and also makes the acac-cused products infringe the same patent.
In NFC, the accused products included HTC’s and LG’s smartphones.270 HTC argued that its smartphones and LG’s smartphones are different prod-ucts.271 Instead of analyzing the sameness requirement, the court explicitly
258Id. (emphasis added and original emphasis omitted).
259See, e.g., Motorola Mobility, Inc. v. Apple Inc., Nos. 1:10-CV-23580-RNS, 1:12-CV-20271-RNS, 2012 WL 3113932, at *2 (S.D. Fla. Jul. 31, 2012) (“The AIA adds a requirement to the first prong of Rule 20 that the transaction or occurrence must relate to the making, using, or selling of the same patented product or process.
Accordingly, joinder under the AIA is more stringent than joinder pursuant to Federal Rule 20.” (citation omit-ted)); Summit 6 LLC v. HTC Corp., No. 7:14–cv–0014-O, 2014 WL 4449821, at *14 (N.D. Tex. Sept. 10, 2014) (“The AIA’s joinder requirement is more stringent than Rule 20, and adds a requirement that the transaction or occurrence must relate to making, using, or selling of the same accused product or process.” (citation omitted));
Nintendo, 544 F. App’x at 939.
260EMC, 677 F.3d at 1359.
261See Plaintiff’s Amended Complaint (dated Jan. 17, 2014) at 13, ContentGuard I, 2014 WL 1477670 (Nos.
2:14–cv–00061–JRG, 2:13–cv–01112–JRG).
262See Sarah Etter, Smartphones vs. Tablets: Forrester Reveals the Differences, Monetate Blog, http://www.
monetate.com/blog/smartphones-vs-tablets-forrester-reveals-the-differences/(last visited Oct. 9, 2015).
263See id.
264See ContentGuard I, 2014 WL 1477670, at *1.
265See id. at *4-5.
266See id. at *5.
267See id.
268See id.
269See id.
270See NFC Tech., LLC v. HTC Am., No. 2:13–CV–01058–JRG, 2014 WL 3834959, at *1 (E.D. Tex. Aug. 1, 2014).
271See NFC Tech., 2014 WL 3834959, at *2. In its motion-to-dismiss memo, HTC merely provided some con-clusory statements about the sameness requirement. See Defendant HTC America, Inc.’s Motion to Dismiss or
adopted a notion that “the product must be the same in respects relevant to the patent.”272Based on this notion, the court concluded that because the accused products all use the same hardware component in the same way to infringe the same patents, the joinder of HTC and LG should be permitted.273
ContentGuard I and NFC show that the Eastern District of Texas’ approach to the sameness requirement focuses on whether there is a hardware or software link between the accused products. This approach seems to be another form of the “actual link” standard. Finding that the accused products use the same hardware component or implement the same software application is enough to make the accused products the same for purposes of joiner.