In a case where the plaintiff alleges the use of the same hardware component alone 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 can co-exist.
The Federal Circuit requires a finding of “an actual link between the facts underlying each claim of infringement.”227 The only one example of “no actual link”
under EMC is “independently developed products using differently sourced parts are not part of the same transaction, even if they are otherwise coincidentally identical.”228 The “no actual link” example implies one possible situation of joinder:
independently developed products using the same sourced parts.229 The 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-branded and LG-branded mobile devices as the accused products.230 The patented technology was “Near Field Communication” (“NFC”) technology which
223 See id.
224 Id.
225 See id.
226 See cf. Imperium IP Holdings (Cayman), Ltd. v. Samsung Elec. Co, No. 4:14–CV–371, 2015 WL 137419, at *3 (E.D. Tex. Jan. 9, 2015) (finding misjoinder and severing two Samsung-related companies from a defendant group of Samsung-family companies primarily because the plaintiff did not make any factual allegations supporting the EMC factors).
227 EMC Corp., 677 F.3d at 1359.
228 Id.
229 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.”
230 See NFC Tech., LLC, 2014 WL 3834959, at *1.
24
allows interactions between mobile devices within a short distance.231 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 or LG’s products to infringe the patent.232 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.233 There, the patented technology was a multichannel-spread-spectrum system for communicating multiple data-sequence signals from multiple data channels.234 The alleged common component was a baseband processor.235 While the use of the same component was alleged, the court held that the use of the baseband processor alone cannot constitute infringement.236 To hold misjoinder, the court also considered that the plaintiff fails to allege how the baseband processor works with the accused mobile devices to infringe the patent.237
While the results of whether joinder is proper were different, the Eastern District of Texas and Central District of California both did consider 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 do look to the role of those alleged components in patent infringement. The alleged same components must relate to the claims of infringement. Otherwise, there is no “actual link between the facts underlying each claim of infringement.”
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 different accused products and to ask whether the identically sourced components cause infringement. 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.
231 See id.
232 See id. at *2.
233 See Golden Bridge Tech., Inc., 2012 WL 3999854, at *1, *3.
234 See id. at *1.
235 See id.
236 See id. at *3.
237 See id.
25 B. Software Issues
When software is alleged as “an actual link” between the claims against different defendants,238 the Eastern District of Texas has permitted joinder or has been willing to allow discovery related to joinder issues, while the Southern District of Florida and Northern District of Texas have rejected joinder. The reconciliation is not easy because a mobile device of one operational system may be considered different from a mobile device of another operational system.
From the perspectives of the Southern District of Florida and Northern District of Texas, different mobile device manufacturers cannot make the same mobile devices simply because they implement different operational systems in their devices. In Motorola Mobility, Inc. v. Apple Inc., the Southern District of Florida severed HTC from Motorola because the Android system of Apple phones was different from that of Motorola phones.239 The patented technology related to user interfaces and software for use on mobile devices.240 The plaintiff specified accused software applications (such as Maps and Play Store) and alleged that they are “present in the same form on both HTC’s and Motorola’s accused devices.”241 But, the court found that the sameness test is not met.242 The court held that HTC’s Android software and Motorola’s Android software are not the same because they are modified to some extent.243 In Summit 6 LLC v. HTC Corp., the Northern District of Texas severed Apple from other mobile phone companies.244 The patented technology related to web-based media submission tools.245 The plaintiff accused that the messaging technology used by defendants’ mobile phones infringes the patents.246 The specifically-accused software was Twitter.247 The court held misjoinder because Apple’s products were not the same as the products of other companies.248 The sameness test was not satisfied because the claims against Apple related to iOS-based proprietary services while the claims against other companies related to Android-based proprietary services.249
On the other hand, the Eastern District of Texas focuses not only on the software part of accused mobile devices but also on the hardware part. In Contentguard
238 There may be a question of whether the Federal Circuit refers “identically sourced components” to a physical object only.
239 See Motorola Mobility, Inc., 2012 WL 3113932, at *4.
240 See id. at *1.
241 See id. at *4.
242 See id.
243 See id. (“HTC and Motorola … produce different smartphones that run on at least somewhat modified Android software.”).
244 See Summit 6 LLC, 2014 WL 4449821, at *16.
245 See id. at *1.
246 See id. at *2.
247 See id. at *15.
248 See id. at *16.
249 See id.
26
Holdings, Inc. v. Google, Inc., the court allowed discovery related to joinder issues even though it could not found that the joinder of Motorola and other mobile device providers is proper.250 The patented technology related to digital rights management (“DRM”).251 The plaintiff asserted that Amazon Kindle app, Google Play apps, and UITS (“Unique Identifier Technology Solution”) specification used in accused mobile devices infringe the patents.252 While finding that the ground of joinder is not clear, the court permitted some discovery to resolve a question of “how the accused software-hardware combination corresponds to claims of the asserted patents.”253 The ultimate question was whether the “claims are predominantly software-based.”254 If so, “the common facts underlying such claims may constitute ‘an actual link’
connecting all Defendants sufficient to support joinder in this case.”255 But, if the hardware component plays “the dominant role in determining how the three software applications are used specifically on each Defendant’s device,”256 “the claims against each Defendant may be sufficiently distinguished such that keeping them jointly in one case would be improper.”257 Therefore, the Eastern District of Texas does not exclude a possibility that software can become “an actual link” between the claims against mobile device manufacturers. Rather, only when the hardware component is a key element which causes each defendant to infringe the patent, the claim against one defendant may be distinguishable from the claim against another defendant.