In a case where the plaintiff alleges the use of the same hardware component to support joinder, the Eastern District of Texas has found joinder while the Central District of California has found misjoinder. The question is whether those conflicting decisions may co-exist.
The Federal Circuit requires a finding of “an actual link between the facts underlying each claim of infringement.”249 The only example of “no actual link” in In re EMC is “independently developed products using differently sourced parts [that] are not part of the same
companies from a defendant group of Samsung-family companies primarily because the plaintiff did not make any factual allegations supporting the EMC factors); cf. Content Guard Holdings, Inc. v.
Amazon.com, Inc., No. 2:13-CV-1112-JRG, 2015 WL 1263346, at *8 (E.D. Tex. Mar. 19, 2015) (indicating a willingness to uphold joinder where the record shows “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 occurrences’ is being accused.”).
247 See infra Part V.
248 See supra Parts III & IV.
249 In re EMC Corp., 677 F.3d 1351, 1359 (Fed. Cir. 2012).
transaction, even if they are otherwise coincidentally identical.”250 The “no actual link” example implies one possible situation of joinder: independently developed products using the same sourced parts.251 This situation is justifiable by the third EMC factor: “the use of identically sourced components.”
In NFC Tech., LLC v. HTC Am., the Eastern District of Texas dealt with HTC and LG-branded mobile devices as the accused products.252 The patented technology was “Near Field Communication” (“NFC”) technology, which allows interactions between mobile devices within a short distance.253 The joinder of HTC and LG was permitted because the court found, not only that both HTC’s and LG’s products use the same chips to implement the NFC technology, but also that the chips are used in HTC’s and LG’s products to infringe the patent.254 That is, the use of a chip creates an actual link between defendants with respect to their infringing acts. On the other hand, the Central District of California in Golden Bridge Tech., Inc. v. Apple, Inc. severed Motorola and Apple from the case because the use of a common component in accused mobile devices was not clearly related to the claims of infringement.255 There,
250 Id.
251 The “no actual link” example implies another situation of joinder:
dependently developed products using differently sourced parts. The second situation is justifiable by several EMC factors: “the existence of some relationship among the defendants,” “licensing or technology agreements between the defendants,” and “overlap of the products’ or processes’ development and manufacture.”
252 See NFC Tech., LLC v. HTC Am., No. 2:13-CV-01058-JRG, 2014 WL 3834959, at *1 (E.D. Tex. Aug. 1, 2014).
253 See id.
254 See id. at *2.
255 See Golden Bridge Tech., Inc. v. Apple, Inc., No. 2:12-CV-4014, 2012 WL 3999854, at *3 (C.D. Cal. Sept. 11, 2012).
the patented technology was a multichannel spread spectrum system for communicating multiple data sequence signals from multiple data channels.256 The alleged common component was a baseband processor.257 While the use of the same component was alleged, the court held that the use of the baseband processor alone cannot constitute infringement.258 The court also considered that the plaintiff failed to allege how the baseband processor works with the accused mobile devices to infringe the patent.259 Thus, the court found misjoinder.260
While the results of proper joinder were different, the Eastern District of Texas and Central District of California both considered whether the use of the same component in accused products relates to patent infringement. Therefore, it is not just the use of the same components or identically sourced components as an actual link between defendants.
Rather, both district courts look to the role of those alleged components in patent infringement. Those alleged components must also relate to the infringement claims;
otherwise, there is no “actual link between the facts underlying the claims.”
NFC Tech., LLC and Golden Bridge Tech., Inc. can be harmonized as long as the determination of joinder focuses on whether “the use of identically sourced components” creates “an actual link between the facts underlying each claim of infringement.” If identically sourced components are hardware, courts have to examine the role of the identically sourced components in the accused
256 See id. at *1.
257 See id.
258 See id. at *3.
259 See id.
260 See id. (finding that the plaintiff cannot assert lost profits because it is a non-practicing entity).
products and to ask whether the identically sourced components were infringing. Under this approach, if different mobile devices are incorporated with identically sourced components so as to be able to infringe the patent, the joinder of different defendants is proper.
The problem of the Eastern District of Texas’s approach is that the third EMC factor, “the use of identically sourced components,” becomes dispositive. The AIA’s joinder clause was created to “clarif[y] that joinder will not be available if it [is] based solely on allegations that a defendant has infringed the patent(s) in question.”261 35 U.S.C. § 299(b) provides that “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 infringed the patent or patents in suit.”262 However, alleging the use of identically sourced components alone to support joinder is nothing more than claiming that a defendant has infringed the patent(s) in question by using identically sourced components. Consequently, Congress’s objectives are disregarded.