Although a series of 2012 decisions may show that the Eastern District of Texas has become unlikely to permit joinder, that is not the whole story. In 2014, the Eastern
202 Id.
203 See id.
204 Phoenix Licensing, LLC v. Aetna, Inc., No. 2:11-CV-285-JRG, 2012 WL 3472973 (E.D. Tex. Aug. 15, 2012).
205 Id. at *1.
206 Net Nav. Sys., LLC, 2012 WL 7827543, at *3 (analyzing only the same transaction or occurrence factor).
207 Phoenix Licensing, LLC, 2012 WL 3472973, at *2.
208 See id. (“Phoenix has not sufficiently shown the presence of the other factors discussed by the Federal Circuit in the In re EMC decision. Although not explicitly stated in the complaint, it appears that the alleged infringements occurred during the same time period.
However, there is no evidence of any relationship among the
defendants, the use of identically sourced components, any licenses or other agreements between the Defendants with regard to Plaintiff’s patents, or any overlap of the products’ or processes’ development and/or manufacture. Additionally, Phoenix does not explicitly include a claim for lost profits in its Complaint.”).
209 Id.
District of Texas started to resume its tendency to grant joinder.210
In two cases, the court allowed some initial discovery to develop evidence for determining whether joinder is proper.211 In Contentguard Holdings, Inc. v. Google, Inc.,212 the court dealt with mobile device manufacturers as joint defendants who are accused of using infringing software applications in their mobile devices.213 While recognizing that the infringement claims against different manufacturers depend on each accused device provided by each manufacturer,214 the court looked into the software side of the infringement claims.215 The court required some evidence showing “how the accused software-hardware combination corresponds to claims of the asserted patents.”216 Although the outcome after the court permitted discovery is not clear,217 the court did provide guidance to
210 See infra Part IV.B.
211 Star CoLED Techs., LLC v. Sharp Corp., No. 2:13-CV-416-JRG, 2014 WL 1998051, at *3 (E.D. Tex. May 15, 2014); Contentguard Holdings, Inc. v. Google, Inc., No. 2:14-cv-00061-JRG, 2:13-cv-01112-JRG, 2014 WL 1477670, at *5 (E.D. Tex. Apr. 15, 2014).
212 Contentguard Holdings, Inc., 2014 WL 1477670.
213 Id. at *1.
214 See id. at *5 (“Despite the existence of a hardware component, the infringement of which may depend on the different devices supplied by individual Manufacturer Defendant,”).
215 See id. (“[T]he accused instrumentality in this case—the use of the three common software applications on each Defendant’s device—is not clearly based on ‘independently developed products using differently sourced parts,’ and the common facts regarding the accused software may well constitute ‘an actual link between the facts underlying each claim of infringement.’” (citing In re EMC, Corp., 677 F.3d at 1359)).
216 Id.
217 See id.
predict how the outcome from the discovery will impact its ruling on the joinder issue.218 The ultimate question was whether the infringement claims are primarily software or hardware-based.219 That is, if infringement is caused primarily by software applications, the software applications become a feature linking the claims against different accused products.220 But, if the hardware plays the “dominant role”
when the software applications are “used specifically” in each accused device, the claim against each defendant would be different because each of the accused products would be different.221 The court held that if the first case is established, “an actual link” can be found to connect all defendants and to support joinder.222 In Star CoLED Techs., LLC v. Sharp Corp.,223 the court dealt with a manufacturer-client scenario.224 The plaintiff asserted that the manufacturer-made components in the client’s end products are made under a joint venture between both parties.225 While the defendants submitted employee declarations of
218 See id. Contentguard Holdings, Inc., 2014 WL 1477670, at *5.
219 See id. (“If, for instance, ContentGuard’s claims are predominantly software-based, then the common facts underlying such claims may constitute ‘an actual link’ connecting all Defendants sufficient to support joinder in this case. On the other hand, if the hardware component turns out to play the dominant role in determining how the three software applications are used specifically on each Defendant’s device, then the claims against each Defendant may be sufficiently distinguished such that keeping them jointly in one case would be improper.” (citation omitted)).
220 Id.
221 Id.
222 See id.
223 Star CoLED Techs., LLC, 2014 WL 1998051.
224 Id. at *1.
225 Id. at *2.
the alleged joint venture, the court found that the record was not enough to determine whether joinder was proper.226 Thus, the court permitted discovery in relation to the joint venture.227 The court expected the discovery to help determine “whether this case involves ‘independently developed products using differently sourced parts,’ or if the common facts regarding the accused products constitute ‘an actual link between the facts underlying each claim of infringement.’”228
The “actual link” approach under Contentguard Holdings and Star CoLED reflects a proposition in In re EMC that “[u]nless there is an actual link between the facts underlying each claim of infringement, independently developed products using differently sourced parts are not part of the same transaction, even if they are otherwise coincidentally identical.”229 The Eastern District of Texas in those two cases did not mention the six EMC factors specifically. However, the Contentguard Holdings decision indicates that the court focused on the third EMC factor, because the court considered a software component as a potential basis of joinder.230 On the other hand, the Star CoLED decision indicates that the court focused on the fourth EMC factor, because the court specified the joint venture as a potential link between the infringement claims against the defendants.231
After Contentguard Holdings and Star CoLED, the Eastern District of Texas issued two more decisions
226 Id.
227 Id. at *2–3.
228 Id. at *2 (citing In re EMC Corp., 677 F.3d at 1359).
229 In re EMC Corp.,., 677 F.3d at 1359 (emphasis added).
230 Contentguard Holdings, Inc., 2014 WL 1477670, at *5.
231 Star CoLED Techs., LLC, 2014 WL 1998051, at *2.
permitting joinder in 2014.232 In NFC Tech., LLC v. HTC Am.,233 the court found proper joinder of different manufacturers because they used the same component in the same way to infringe the patent.234 One defendant argued that the accused products made by the defendants are different.235 But, the court found that the accused products have some of the same components—a feature in each accused product in the alleged infringement.236 The court held that the plaintiff’s allegation meets the In re EMC standard that “the product must be ‘the same in respects relevant to the patent.’”237 The court also referred to Imperium (IP) Holdings, Inc. v. Apple Inc. and held that
“[d]iverse products using identical component parts are often held to meet the joinder standard.”238 Because the court focused primarily on the third EMC factor, the court criticized that the defendant’s “different product” approach is too narrow.239 In Smartflash LLC v. Apple, Inc., the court found proper joinder of a mobile phone provider and some
232 See Smartflash LLC v. Apple, Inc., No. 6:13-cv-447, 2014 WL 4421657 (E.D. Tex. Sept. 8, 2014); NFC Tech., LLC v. HTC Am., No. 2:13-CV-01058-JRG, 2014 WL 3834959 (E.D. Tex. Aug. 1, 2014).
233 NFC Tech., LLC, ---2014 WL 3834959.
234 Id. at *2.
235 Id.
236 Id.
237 Id. (quoting In re EMC Corp., 677 F.3d at 1359).
238 Id. (citing Imperium (IP) Holdings, Inc., 2012 WL 461775, at *2–3).
239 See id. (“HTC also reads the ‘same transaction or occurrence’
standard too narrowly. The Federal Circuit has made clear that this test is a multi-factored, individual analysis of the ‘aggregate of operative facts.’ That analysis explicitly incorporates consideration of
‘the use of identically sourced components.’” (quoting In re EMC Corp., 677 F.3d at 1359)).
software application developers because the provider offered a software framework to the developers to help them create some function in their software.240 The provider defendant offered two main arguments, which were rejected by the court.241 While the defendant asserted that some features in those software applications can show the differences among those software applications, the court disagreed because those features were not covered by the claims.242 Second, the court rejected an argument that joinder is improper even when separate sales of the exact same products are involved.243 The court considered such reading of the joinder clause as a narrow “interpretation that goes against the very idea of a ‘series of transactions or occurrences [under 35 U.S.C. § 299(a)(1)].”244 The court also worried that such narrow interpretation would be conditional only on joint liability.245
A series of decisions from 2012 to 2014 demonstrate that the Eastern District of Texas has made the third EMC factor a dispositive factor on whether joinder is proper.246
240 See Smartflash LLC v. Apple, Inc., No. 6:13-CV-447, 2014 WL 4421657, at *3 (E.D. Tex. Sept. 8, 2014).
241 See id.
242 See id. (“Apple argued that even though the accused apps relied on the Store Kit framework, the differences in server locations meant each process was not identical. But Plaintiff identified at least one claim that does not have limitations on server location. Judge Mitchell found that Plaintiff’s infringement contentions are directed to the implementation of Store Kit’s payment functionality.” (citations omitted)).
243 See id.
244 Id.
245 See id.
246 See Imperium IP Holdings (Cayman), Ltd. v. Samsung Elec. Co, Ltd., No. 4:14-CV-371, 2015 WL 137419, at *3 (E.D. Tex. Jan. 9, 2015) (finding misjoinder and severing two Samsung-related
The approach is very different from other sister courts.247 The Eastern District of Texas does not consider the competitor relationship between defendants.248 The conflicting views between the majority of district courts and Eastern District of Texas may cause inconsistent applications of 35 U.S.C § 299. The inconsistent applications of 35 U.S.C § 299 is significant to patent cases in the mobile device industry.
V. EMCFACTORS IN CASES RELATED TO MOBILE
DEVICE TECHNOLOGY