Joinder of Unrelated Infringers as Defendants in Patent Litigation under the Jurisprudence of the United States District Court for Eastern District of Texas—A Critical Review

Joinder of Unrelated Infringers as Defendants

in Patent Litigation Under the Jurisprudence of

the United States District Court for the Eastern

District of Texas - A Critical Review

Ping-Hsun Chen

Abstract

In 2011, the Leahy-Smith America Invents Act (“AIA”) was enacted. 35 U.S.C. § 299 was created to limit district court’s power to permit joinder of unrelated infringers as defendants in a single lawsuit. Before that, district courts apply Rule 20 of the Federal Civil Procedure. The Eastern District of Texas had permitted joinder only because the same patent was infringed. By introducing § 299, Congress intended to abrogate such approach. Later, the Federal Circuit in In re EMC limited the practice of Rule 20 and required a finding of “an actual link between the facts underlying each claim of infringement.” EMC also offered six factors for determination of joinder. However, this article demonstrates that the Eastern District of Texas still prefers joinder of unrelated defendants. The court has taken the “actual link” standard to a next level. The court primarily looks to common facts regarding the accused products or processes. Particularly when products are accused, the third EMC factor “the use of identically sourced compo-nents” becomes a dispositive factor. The only rebuttal may be to prove that the accused products are “independently developed products using differ-ently sourced parts.”

*_{Assistant Professor, Graduate Institute of Technology, Innovation and Intellectual Property}

Manage-ment, National Chengchi University; J.D. ‘10, Washington University in St. Louis School of Law. Email: cstr@nccu.edu.tw. This paper is associated with a research project financially supported by the Ministry of Science and Technology of the Taiwan Government (MOST 103-2410-H-004-214). This paper is derived from a conference article that was presented in the 2015 National Technology Law Conference, National Chiao Tung University.

Contents

I. Introduction 157

II. Pre-AIA Period 160

A. MyMail, Ltd. v. America Online, Inc. . . . 160

B. Cases After MyMail . . . . 161

1. Adrain, Better, and Eolas . . . . 161

2. Other Pre-AIA Cases . . . 164

III. Post-AIA Period 165 A. Resistance . . . 165

B. In re EMC and Joinder of Independent Defendants . . . . 168

C. Adoption of EMC . . . . 170

D. AIA Cases . . . 172

IV. Sameness Requirement 176 A. Eastern District of Texas’ Liberal Approach . . . 176

B. Conflicts with Other District Courts . . . 178

C. An Unresolved Question . . . 179

I.

Introduction

On September 16, 2011, the American patent system started a new era because of the enactment of the Leahy-Smith America Invents Act (“AIA”).1_{One of the} breakthroughs was the creation of 35 U.S.C. § 299 that limits a district court’s power to permit joinder of independent infringers in one lawsuit.2 _{§ 299 went} into force and applied to any civil action commenced on or after September 16, 2011.3 _{§ 299 imposes two basic requirements on permissive joinder of} inde-pendent defendants in patent litigation.4 _{First, § 299(a) provides that “parties} that are accused infringers may be joined in one action as defendants or coun-terclaim defendants, or have their actions consolidated for trial, only if—(1) any right to relief is asserted against the parties jointly, severally, or in the al-ternative with respect to or arising out of the same transaction, occurrence, or series of transactions or occurrences relating to the making, using, importing into the United States, offering for sale, or selling of the same accused product or process; and (2) questions of fact common to all defendants or counterclaim defendants will arise in the action.”5 _{Second, § 299(b) specifically excludes the} joinder “based solely on allegations that [each defendant] have infringed the patent or patents in suit.”6

§ 299 was designed to stop a minority view of joinder under Rule 20 of the Federal Civil Procedure.7 _{Before the enactment of § 299, district courts applied} Rule 20 to decide whether to permit joinder.8 _{Rule 20 is the mother of § 299.}9 Rule 20(a)(2) provides, “Persons—as well as a vessel, cargo, or other property subject to admiralty process in rem—may be joined in one action as defendants if: (A) any right to relief is asserted against them jointly, severally, or in the al-ternative with respect to or arising out of the same transaction, occurrence, or series of transactions or occurrences; and (B) any question of law or fact com-mon to all defendants will arise in the action.”10 _{Rule 20(a)(2) is a two-prong} test.11 _{Rule 20(a)(2)(A) is the “same transaction or occurrence” requirement,}12 while Rule 20(a)(2)(B) is the requirement of common questions of law or fact.13 Rule 20(a)(2) is similar to § 299(a), but the “same transaction or occurrence”

1_{See, e.g., Jared A. Smith & Nicholas R. Transier, Trolling for an NPE Solution, 7 Hastings Sci. & Tech. L.J. 215,}

219 (2015); Tracie L. Bryant, Note, The America Invents Act: Slaying Trolls, Limiting Joinder, 25 Harv. J.L. & Tech. 673, 694 (2012).

2_{See Dongbiao Shen, Misjoinder or Mishap? The Consequences of the AIA Joinder Provision, 29 Berkeley Tech. L.J.}

545, 545 (2014).

3_{See Leahy-Smith America Invents Act § 19(e), 125 STAT 284, 333 (2011).}

4_{See Edward D. Manzo, The America Invents Act: A Guide to Patent Litigation and Patent Procedure 178-80}

(2013).

5_{35 U.S.C. § 299(a) (2012).} 6_{35 U.S.C. § 299(b).}

7_{See Manzo, supra note 4, at 174-75.}

8_{See Fabio E. Marino & Teri H.P. Nguyen, Has Delaware Become the “New” Eastern District of Texas? The}

Unfore-seen Consequences of the AIA, 30 Santa Clara High Tech. L.J. 527, 536-37 (2014).

9_{See Bryant, supra note 1, at 700.} 10_{Fed. R. Civ. P. 20(a)(2).} 11_{See Bryant, supra note 1, at 700.} 12_{See Shen, supra note 2, at 548.}

13_{See Gregory S. Meece, Comment, Class Actions, Typicality, and Rule 10b-5: Will the Typical Representative Please}

requirement under § 299(a) is limited to patent infringement caused by “the same accused product or process.”

The minority view of Rule 20 originated from MyMail, Ltd. v. America On-line, Inc.,14_{a 2004 decision where the Eastern District of Texas permitted joinder} and held that “severance could be appropriate if the defendants’ methods or products were dramatically different.”15 _{Since MyMail, the Eastern District of} Texas had permitted joinder merely because the same patents were infringed.16 The minority view was also followed by a few district courts.17 _{Congress called} this minority practice a problem because the joined “defendants (sometimes numbering in the dozens) who have tenuous connections to the underlying disputes in patent infringement suits.”18 _{MyMail has been abrogated by the} AIA.19

To join with Congress, the Federal Circuit in In re EMC Corp.,20_{a decision} issued on May 4, 2012, held that “the mere fact that infringement of the same claims of the same patent is alleged does not support joinder” under Rule 20.21 Rather, the Federal Circuit stated that “[j]oinder of independent defendants is only appropriate where the accused products or processes are the same in respects relevant to the patent.”22 _{In addition, the application of Rule 20} un-der EMC focused on joinun-der of multiple defendants. Regarding defendants alleged to be jointly liable, the Federal Circuit held that they “may be joined under Rule 20 because the transaction-or-occurrence test is always satisfied.”23 But, the Federal Circuit cautioned that “an allegation of joint liability is not required.”24 _{Furthermore, the Federal Circuit clarified that joinder of} inde-pendent defendants is possible under Rule 2025 _{primarily because the phrase} “series of transactions or occurrences” was used in Rule 20(a)(1)(A), which in-dicates that “a single transaction [or occurrence] is not required.”26 _Therefore, “as long as their actions are part of the ‘same transaction, occurrence, or series of transactions or occurrences,”’27_{independent actors may be joined.}28

While Rule 20 allows joinder of independent defendants, the question is how far Rule 20 may reach. To answer this question, the Federal Circuit pro-vided a “logical relationship” approach.29 _{Specifically, the Federal Circuit} re-quired “the facts underlying the claim of infringement asserted against each

14_{MyMail, Ltd. v. Am. Online, Inc., 223 F.R.D. 455 (E.D. Tex. 2004).} 15_{Id. at 457.}

16_{See infra Part II.}

17_{See Bryant, supra note 1, at 698.}

18_{See H.R. Rep. No. 112-98, pt.1, at 54 (2011).} 19_{See id. at 55 n.61.}

20_{In re EMC Corp., 677 F.3d 1351 (Fed. Cir. 2012).} 21_{Id. at 1357.}

22_{Id. at 1359 (emphasis added).} 23_{Id. at 1356.}

24_{Id. (citation omitted).}

25_{See id. at 1356-57 (stating several propositions that can be directly drawn from the language of Rule 20 and}

the legislative history).

26_{Id. at 1356.} 27_{Id. (citation omitted).} 28_{See id.}

defendant share an aggregate of operative facts.”30 _{Alternatively, the Federal} Circuit required a finding of “an actual link between the facts underlying each claim of infringement.”31 _{To help district courts determine “an actual link” or} “an aggregate of operative facts,” the Federal Circuit provided six factors for factual consideration.32 _{While EMC is within the case law governing Rule 20,} district courts have incorporated EMC into their applications of § 299.33

After EMC, the Eastern District of Texas seems to retain its minority sta-tus because it continues to permit joinder under § 299.34 _{The new approach} adopted by the Eastern District of Texas is to focus primarily on the third EMC factor, “the use of identically sourced components.”35 _{That is, “the use of} iden-tically sourced components” may establish “an actual link between the facts underlying each claim of infringement.”36

Actually, the Eastern District of Texas has been well-known for its patentee-friendly nature.37 _{The court has more cases filed than other district courts} be-cause it is willing to hear patent cases rather than to transfer some cases to other district courts.38 _{Moreover, patentees are often awarded with a better amount} of damages because the jury is friendly to patentees.39 _{As a result, patentees,} specially non-practicing entities (“NPEs”), like to file a patent lawsuit there.40 Before the enactment of § 299, the traditional practice of Rule 20 under the East-ern District of Texas’ jurisprudence had given to NPEs a great incentive to file only one case against independent infringers.41

This article demonstrates that § 299 does not completely prohibit the East-ern District of Texas from being friendly to patentees with respect to joinder of independent infringers. Joinder of unrelated defendants may still be easily per-mitted by the Eastern District of Texas. Part II explores the historic background of the minority view rooted from the court by analyzing the cases commenced before the enactment of § 299.42 _{Part III analyzes the cases subject to the}

appli-30_{Id. at 1359.} 31_Id.

32_{See id. at 1359-60.}

33_{See, e.g., Summit 6 LLC v. HTC Corp., No. 7:14–cv–0014–O, 2014 WL 4449821 (N.D. Tex. Sept. 10, 2014);}

Pipeline Techs. Inc. v. Telog Instruments Inc., No. CV–13–02104–PHX–SPL, 2014 WL 5241719 (D. Ariz. Oct. 15, 2014); Potter Voice Techs. LLC v. Apple, Inc., No. 12–cv–01096–REB–CBS, 2013 WL 1333460 (D. Colo. Mar. 29, 2013).

34_{See infra Part III.} 35_{See infra Part III.}

36_{To some extent, the Eastern District of Texas has transformed the joinder based on the same patent involved}

into the joinder based on the same technology involved.

37_{See, e.g., Jeanne C. Fromer, Patentography, 85 N.Y.U. L. Rev. 1444, 1466 (2010); Teresa Lii, Shopping for Reversals:}

How Accuracy Differs Across Patent Litigation Forums, 12 Chi.-Kent J. Intell. Prop. 31, 35-38 (2013).

38_{See, e.g., Jordan Klimek, Patents as Regulations: How the America Invents Act and the Seminole Rock Doctrine Could}

Change Claim Construction After Teva v. Sandoz, 97 J. Pat. & Trademark Off. Soc’y 307, 310 (2015) (“[B]y 2013,

the number skyrocketed to 1,495, constituting nearly a quarter of all patent cases filed in the U.S.”); Ryan Hauer,

Another Attempt at Patent Reform: S.1013 the Patent Abuse Reduction Act of 2013, 4 DePaul J. Art, Tech. & Intell.

Prop. L. 367, 376-77 (2013).

39_{See Hauer, supra note 38, at 377.}

40_{See Ahmed J. Davis & Karolina Jesien, The Balance of Power in Patent Law: Moving Towards Effectiveness in}

Addressing Patent Troll Concerns, 22 Fordham Intell. Prop. Media & Ent. L.J. 835, 844 (2012).

41_{See David O. Taylor, Patent Misjoinder, 88 N.Y.U. L. Rev. 652, 659-91 (2013).}

42_{It is hard to examine whether the Eastern District of Texas in MyMail disobeyed the Fifth Circuit case law in}

cation of § 299 to understand the current jurisprudence adopted by the court. Part III is intended to show how EMC leaves a space for the Eastern District of Texas develop a new approach to easily permit joinder. Finally, Part IV shows the conflicts between the Eastern District of Texas and other district courts. The issue centers on the different views about the phrase “the same accused prod-uct or process” in § 299(a)(1). A new approach is proposed to resolve the issue.

II.

Pre-AIA Period

A.

MyMail, Ltd. v. America Online, Inc.

On April 27, 2004, MyMail, Ltd. initiated a patent infringement lawsuit against eight network service companies including America Online, Inc., AT&T Corp., Netzero, Inc., Juno Online Services, Inc., Netbrands, Inc., Earthlink, Inc., SBC Communications, Inc., and Verizon Communications, Inc.43 _{The claim against} Verizon Communications, Inc. was later withdrawn without prejudice.44

On July 7, 2004, Netzero, Inc., Juno Online Services, Inc., and Netbrands, Inc. filed a motion for severance and venue transfer.45 _{The Eastern District of} Texas referred to these three defendants as the UOL defendants because they were all subsidiaries of United Online, Inc.46 _{The UOL defendants argued that} “the claims against them do not arise out of the same transaction or occurrence or series of transactions or occurrences as the other defendants.”47 _The argu-ment was based on a notion that they and the other defendants are separate defendants.48 _{But, the plaintiff responded primarily that all defendants “have} utilized shared resources, such as dial-up Internet access numbers.”49

The court only examined the “same transaction or occurrence” requirement because neither party disputed the requirement of common questions of law or fact.50_{The court held that the “same transaction or occurrence” requirement} is satisfied because “there is some connection or logical relationship between the various transactions or occurrences.”51 _{The court also held that “[a] logical} relationship exists if there is some nucleus of operative facts or law.”52

Finally, the court found the joinder permissive primarily because the record did not show that “the products or methods at issue are so different” that it is

See Perez v. Grupo TMM, S.A.B., No. H–09–136, 2009 WL 926991, at *4 (S.D. Tex. Apr.1, 2009) (“The Fifth Circuit

has not endorsed a single test to determine when claims arise from the ‘same transaction or occurrence.”).

43_{See Complaint at 1, MyMail, Ltd. v. Am. Online, Inc., 223 F.R.D. 455 (E.D. Tex. 2004) (No.}

4.04-CV-189STEGER).

44_{See MyMail, 223 F.R.D. at 456.}

45_{See Motion of Defendants Netzero, Inc., Juno Online Services, Inc. and Netbrands, Inc. to Sever and Transfer}

Venue and Brief in Support at 1, MyMail, 223 F.R.D. 455 (No. 4.04-CV-189STEGER).

46_{See MyMail, 223 F.R.D. at 456.} 47_{See id.}

48_{See id.} 49_{See id. at 457.}

50_{See id. at 456 (“Neither side disputes that questions of law or fact common to all defendants will arise in this}

case.”).

51_{Id. (citing Hanley v. First Investors Corp., 151 F.R.D. 76, 79 (E.D. Tex. 1993)).} 52_Id.

better to implement multiple proceedings.53 _{The conclusion was based on the} most-criticized proposition in MyMail which states that “[i]t is possible that severance could be appropriate if the defendants’ methods or products were dramatically different.”54 _{MyMail has been characterized as a decision that} al-lows “joinder of unrelated defendants who were alleged to have infringed the same patent.”55

B.

Cases After MyMail

After MyMail, the Eastern District of Texas had not issued any decisions related to Rule 20 for years. Since 2009, there had been several decisions related to joinder.56 _{Among those cases issued prior to the enactment of the AIA are} Adrain v. Genetec Inc.,57 _{Better Education Inc. v. Einstruction Corp.,}58 _{and Eolas} Technologies, Inc. v. Adobe Systems, Inc.,59 _{three decisions which Congress has} expressly overruled.60 _{In this section, Adrain, Better, and Eolas are analyzed as} a group. This section also reviews other pre-AIA cases to clarify their legal validity.

1. 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

53_{See id. at 457.}

54_{Id.; 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).

55_{Shen, 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.

56_{See, 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).

57_{Adrain, 2009 WL 3063414.} 58_{Better Educ., 2010 WL 918307.} 59_{Eolas Techs., 2010 WL 3835762.}

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

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

*2.

62_{Adrain’s Response to Defendant Elsag North America LLC’s Motion to Sever and to Transfer the Action to}

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.”69_{The 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].

63_{See 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 ).

64_{Plaintiff’s Response at 2, Adrain, 2009 WL 3063414 (No. 2:08–CV–423 ), .} 65_{See Adrain, 2009 WL 3063414, at *2.}

66_{See id.} 67_{See id.} 68_{See id.}

69_{See, 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).

70_{See Eolas Techs., 2010 WL 3835762, at *1.} 71_{See id.}

72_{See 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).

73_{See Eolas Techs., 2010 WL 3835762, at *1-2.} 74_{See id. at *1.}

75_{See id.} 76_{See id. at *2.}

77_{Plaintiff 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,83_{but 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

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

79_{Qwizdom, Inc.’s Motion to Dismiss at 4, Better Educ., 2010 WL 918307 (No. 2–08–cv–446–TJW–CE ).} 80_{See Plaintiff’s Opposition at 3, Better Educ., 2010 WL 918307 (No. 2–08–cv–446–TJW–CE).} 81_{See id.}

82_{Better Educ., 2010 WL 918307, at *1.}

83_{See MyMail, Ltd. v. Am. Online, Inc., 223 F.R.D. 455, 456 (E.D. Tex. 2004).} 84_{See id.}

85_{See id. at 457.}

86_{See Adrain v. Genetec Inc., No. 2:08–CV–423, 2009 WL 3063414, at *2 (E.D. Tex. Sept. 22, 2009).} 87_{See Better Educ., 2010 WL 918307, at *1.}

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

2010).

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.

2. Other Pre-AIA Cases

Congress only abrogated four joinder-related decisions of the Eastern District of Texas. It seems that Congress left three other cases, Centre One v. Vonage Holdings Corp.,92 _{Innovative Global Systems LLC v. Turnpike Global Technologies} L.L.C.,93_{and Oasis Research, LLC v. Adrive, LLC (hereinafter, “Oasis I”),}94 with-out any comments.95 _{A careful examining may show that those three decisions} are all invalid under 35 U.S.C. § 299.

In Centre One, a decision prior to Adrain, two defendants, Vonage Amer-ica, Inc. and Vonage Holdings Corp. (collectively, “Vonage”) moved for sever-ance.96 _{The court considered the issue of joinder in light of other venue-transfer} motions97_{and denied the motion to sever.}98 _{On one hand, the court worried} that severance “would impose a burden on both the federal court system and [the plaintiff] to maintain two suits with substantially the same issues in two different venues across the country.”99 _{On the other hand, the court criticized} that “Vonage’s convenience alone fails to outweigh the glaring inefficiency of prosecuting two, nearly identical, complex patent infringement cases in differ-ent fora.”100 _{Because Vonage and other defendants were unrelated, the only} identical feature of the claim against Vonage and claims against other defen-dants was the infringement of the same patent. Therefore, the court was pri-marily based on the fact that the same patent is infringed.

In Innovative, one defendant NetworkFleet filed a motion to sever and trans-fer venue.101 _{The court denied the motion because of judicial economy.}102 _The primary reason for finding permissive joinder was the existence of

“signifi-90_{See 35 U.S.C. § 299(b) (2012).} 91_{See 35 U.S.C. § 299(a).}

92_{Centre One v. Vonage Holdings Corp., No. 6:08CV467, 2009 WL 2461003 (E.D. Tex. Aug. 10, 2009).} 93_{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).

94_{Oasis I, No. 4:10–CV–435, 2011 WL 3099885 (E.D. Tex. May 23, 2011).}

95_{Tompkins v. Able Planet Inc., No. 6:10–cv–58, 2011 WL 7718756 (E.D. Tex. Feb. 17, 2011), is not discussed}

because it relates to false patent marking.

96_{See Centre One, 2009 WL 2461003, at *1.} 97_{See id. at *4-7.}

98_{See id. at *7.} 99_Id. 100_Id.

101_{See Innovative Global Sys. LLC v. Turnpike Global Techs. L.L.C., No. 6:09–cv–157, 2009 WL 3754886, at *1}

(E.D. Tex. Oct. 20, 2009).

102_{See id. (“District courts have declined to sever patent infringement claims due to concerns about judicial}

economy.” (citing Adrain v. Genetec Inc., No. 2:08–CV–423, 2009 U.S. Dist. LEXIS 86855, at *8-*10 (E.D. Tex. Sept. 22, 2009) and Centre One, 2009 U.S. Dist. LEXIS 69683, at *22-*24)).

cant overlap among the issues of claim validity, claim construction, and claim scope.”103 _{That is, the court based its joinder ruling on the allegation that the} same patent is infringed.

In Oasis I, almost all defendants moved for severance, but the court de-nied.104 _{The court cited Eolas, Adrain, and MyMail}105_{and stated that “[c]ourts} in this District have consistently held that as long as the Defendants’ allegedly infringing products are not dramatically different, then determining Defendants’ liability will involve substantially overlapping questions of law and fact.”106 Thus, the court primarily relied on the “dramatically different” standard to permit joinder.

Overall, Centre One, Innovative, and Oasis I all violate 35 U.S.C. § 299. Centre One and Innovative follow the “same patent” standard which has been abro-gated by § 299(b), while Oasis I follows the “dramatically different” standard which has been overruled by § 299(a). Therefore, Centre One, Innovative, and Oasis I are no longer good law or persuasive authority even though Congress has not expressly ruled out these three cases.

III.

Post-AIA Period

A.

Resistance

Even after the enactment of § 299, the Eastern District of Texas insisted on its traditional minority view consecutively in MicroUnity Systems Engineering, Inc. v. Acer Inc.,107_{Ganas, LLC v. Sabre Holdings Corp.,}108_{Imperium (IP) Holdings, Inc.} v. Apple Inc.,109_{and Lodsys, LLC v. Brother International Corp.,}110_{all of which are} decisions prior to EMC. In Ganas and Apple, the court specifically stated that § 299 is not applicable because the cases were initiated prior to the effective date of § 299.111_{Because Congress was unable to consider those cases, it is necessary} to examine their legal validity under § 299.

In MicroUnity, the court began to develop a “logical relationship” stan-dard.112 _{Specifically, the court addressed the requirement of “series of}

trans-103_{Id. at *2.}

104_{See Oasis I, No. 4:10–CV–435, 2011 WL 3099885, at *1 (E.D. Tex. May 23, 2011).} 105_{See id. at *2.}

106_{Id. (emphasis added). Oasis I interpreted Eolas as a case affirmed by In re Google Inc., 412 F. App’x 295 (Fed.}

Cir. 2011). See Oasis I, 2011 WL 3099885, at *3. The Federal Circuit upheld the joinder because it recognized that “[c]ourts have consistently held that judicial economy plays a paramount role in trying to maintain an orderly, effective, administration of justice and having one trial court decide all of these claims clearly furthers that ob-jective.” Google, 412 F. App’x at 296. The Federal Circuit also considered the question before the district court as what “will involve substantially overlapping questions of law or fact.” Id. While Congress has not mentioned the legal validity of Google, it is clear that Google is not good law because Congress has ruled out Eolas. See H.R. Rep. No. 112-98, pt.1, at 55 n 61 (2011).

107_{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).

108_{Ganas, LLC v. Sabre Holdings Corp., No. 2:10–CV–320–DF, 2011 WL 8183246 (E.D. Tex. Oct. 19, 2011).} 109_{Imperium (IP) Holdings, Inc. v. Apple Inc., No. 4:11–CV–163, 2012 WL 461775 (E.D. Tex. Jan. 20, 2012).} 110_{Lodsys, LLC v. Brother Int’l Corp., No. 2:11–cv–90–JRG, 2012 WL 760729 (E.D. Tex. Mar. 8, 2012).} 111_{See, e.g., Ganas, 2011 WL 8183246, at *8; Apple, 2012 WL 461775, at *3 n.3.}

actions or occurrences,”113_{and held that the requirement is satisfied “if there} is some connection or logical relationship between the various transactions or occurrences.”114_{Moreover, the court held that “[a] logical relationship exists if} there is some nucleus of operative facts or law.”115

The patents-in-suit in MicroUnity related to “processing different types of media data, including audio, video, and graphics data, at very high volume in real time.”116 _{The defendants were divided into three categories: chip} man-ufacturers, handset manman-ufacturers, and carriers.117 _{The court found that “a} ‘logical relationship’ exists between all of the accused products and services because infringement for all products and services will involve to some extent their implementation and use of an ARM architecture and instruction set.”118 ARM is “an acronym for Advanced RISC Machines.”119 _{RISC standards for} “reduced instruction set computer” that is another type of microprocessor ar-chitecture.120_{An ARM architecture is an integrated circuit design for a} proces-sor, and an ARM instruction set is an assembly language associated with the integrated circuit design.121 _{Because all defendants used ARM technology in} their products,122_{the court concluded that the accused “products are similar} enough to satisfy the ‘nucleus of fact or law’ test.”123 _{By using “similar,” the} MicroUnity court seemed to apply the “dramatically different” standard.

Under MicroUnity, the existence of a logical relationship may be based on a finding of the same technology used by all accused products or services. MicroUnity could be embraced by EMC and then be incorporated into case law under § 299. First, the third EMC factor requires “the use of identically sourced components,”124 _{while MicroUnity requires the use of ARM} proces-sors by different accused products or services.125 _{Second, if the term “the same} accused product or process” in § 299(a) could mean that different products or processes are the same because they use the same technology, then MicroUnity would not contradict § 299(a).

Although the MicroUnity court developed the “logical relationship” stan-dard that deviates from the “same patent” stanstan-dard, the Ganas court ignored such approach. In Ganas, the court encountered two sets of motions to sever.126

113_{See id.}

114_{Id. (citing Hanley v. First Investors Corp., 151 F.R.D. 76, 79 (E.D. Tex. 1993)).} 115_{Id. (citing Hanley, 151 F.R.D. at 79) (emphasis added).}

116_{Id. at *2.} 117_{See id. at *3.} 118_Id.

119_{Kim Hazelwood & Artur Klauser, A Dynamic Binary Instrumentation Engine for the ARM Architecture § 2.1, in}

CASES’06 (Oct. 23-25, 2006), http://www.cs.virginia.edu/kim/docs/cases06.pdf.

120_{See What is RISC?, Stanford U., http://cs.stanford.edu/people/eroberts/courses/soco/projects/risc/}

whatis/index.html(last visited July 31, 2015).

121_{See Hazelwood & Klauser, supra note 119.}

122_{See MicroUnity Sys. Eng’g, 2011 WL 4591917, at *3 (“[The plaintiff’s] infringement contentions will therefore}

have common questions of fact concerning ARM’s architecture and instruction set, which are featured in all of the accused products.”).

123_Id.

124_{See In re EMC Corp., 677 F.3d 1351, 1359-60 (Fed. Cir. 2012).} 125_{See MicroUnity Sys. Eng’g, 2011 WL 4591917, at *3.}

126_{See Ganas, LLC v. Sabre Holdings Corp., No. 2:10–CV–320–DF, 2011 WL 8183246, at *1 (E.D. Tex. Oct. 19,}

Three defendants filed a motion to sever and transfer, while one defendant filed a motion to dismiss for improper joinder or alternatively to sever.127 Regard-ing the first set of motions, the court considered the misjoinder issue in light of the issue of venue transfer and found the joinder permissive merely because of judicial economy.128 _{Regarding the second set of motions, the court denied} severance because “the nucleus of operative facts or law in the claims against all the defendants” existed.129 _{Therefore, the infringement of the same patent} was the original reason causing all defendants to be sued jointly.130 _By permit-ting joinder, Ganas simply followed the “same patent” standard, which violates § 299(b).

In Lodsys, one defendant filed a motion to dismiss or, alternatively, to sever and transfer venue.131 _{To support its misjoinder argument, the defendant} as-serted that “the accused products are dramatically different.”132 _{But, the court} disagreed.133 _{When analyzing the “same transaction or occurrence”} require-ment, the court adopted the “logcal relationship” standard again by repeating the propositions mentioned in MicroUnity.134 _{The court held that a logical} re-lationship exists between the claims against all defendants.135 _{First, the court} found that “[t]he inventions detailed in the various claims of the patents-in-suit were developed by the same inventor and all originate from a common application.”136 _{The court also found that “the alleged infringement involves} the implementation and use of the patented inventions.”137 _Furthermore, af-ter finding that the patented inventions was implemented and used to “probe users for information related to a product or service, regardless of whether the accused product is a printer, personal computer, cell phone, or website,”138_the court concluded that “the accused products at issue are sufficiently related to satisfy the ‘same nucleus of operative fact or law’ text.”139 _{By saying that the} patented inventions were used in different accused products, the court actually found that the patented inventions were infringed by different accused prod-ucts. So, the court simply rephrased the “same patent” standard, which still violates § 299(b).

Apple took a different approach to the “logical relationship” standard140_and

127_{See id.}

128_{See id. at *9 (“On balance, the convenience and local interest factors do not outweigh the judicial economy of}

avoiding creation of five separate actions spread across four judicial districts. The motions of TDAI, Scottrade, and National Financial to sever and transfer should therefore be DENIED.”).

129_{See id. (quoting MyMail, Ltd. v. Am. Online, Inc., 223 F.R.D. 455, 457 (E.D. Tex. 2004)) (internal quotation}

marks omitted).

130_{See id.}

131_{See Lodsys, LLC v. Brother Int’l Corp., No. 2:11–cv–90–JRG, 2012 WL 760729, at *1 (E.D. Tex. Mar. 8, 2012).} 132_{Id. at *5.}

133_{See id.} 134_{See id.}

135_{See id. (“A logical relationship exists between all of the accused products”).} 136_Id.

137_Id. 138_Id. 139_Id.

140_{See Imperium (IP) Holdings, Inc. v. Apple Inc., No. 4:11–CV–163, 2012 WL 461775, at *2 (E.D. Tex. Jan. 20,}

2012) (reciting MicroUnity Sys. Eng’g, Inc. v. Acer Inc., Nos. 2:10–CV–91–TJW–CE, 2:10–CV–185–TJW–CE, 2011 WL 4591917, at *3 (E.D. Tex. Sept. 30, 2011)).

permitted joinder.141_{The patents-in-suit in Apple related to image sensor} tech-nology.142 _{The accused products were cell phones or other devices with image} sensors.143 _{One defendant Apple in its motion to sever argued that the sale of} accused products by unrelated defendants does not meet the “same transaction or occurrence” requirement.144 _{But, the court disagreed.}145

When discussing the “same transaction or occurrence” requirement, the court recited the propositions mentioned in MicroUnity to present the “logi-cal relationship” standard.146 _{The court further stated that “[c]ourts have also} found joinder proper where Defendants’ allegedly infringing products are not dramatically different and determining Defendants’ liability will involve sub-stantially overlapping questions of law and fact.”147 _{So, the court simply} em-braced Oasis I and the “dramatically different” standard.148 _{The court even} reaffirmed Eolas.149_{Eventually, the court held that the “same transaction or} oc-currence” requirement is satisfied because of “the similarity of the component image sensors and image processors used by” all defendants.150 _{In footnote 3} of the Apple decision, the court also made a comment on how § 299 will apply to the present case.151 _{The court stated that the “same transaction or} occur-rence” requirement is still met because “an identical image sensor or processor [is used] in different products,”152_{or alternatively because “the technology at} issue is the same.”153

Because Apple applied the “dramatically different” standard, Apple should not be good law under EMC or § 299. But, while the court found that “[t]he accused devices all rely on the same technology for image sensors and image processors, which Defendants purchase and integrate into their products,”154 the court did rely on the plaintiff’s allegation that the accused products “use the same MT9D112 image sensor manufactured by Aptina, a third-party sup-plier.”155 _{So, the Apple standard could be considered the third EMC factor “the} use of identically sourced components” rather than the “dramatically differ-ent” standard.

B.

In re EMC and Joinder of Independent Defendants

On May 4, 2012, the Federal Circuit issued EMC which provides guidance of applying Rule 20 to joinder of unrelated or independent defendants in the

con-141_{See id. at *4.} 142_{See id. at *1.} 143_{See id.} 144_{See id. at *2.} 145_{See id. at *3-4.} 146_{See id. at *2.}

147_{Id. (citing Oasis I, No. 4:10–CV–435, 2011 WL 3099885, at *2 (E.D. Tex. May 23, 2011)).} 148_{See id.} 149_{See id. at *3.} 150_Id. 151_{See id. at *3 n.3.} 152_Id. 153_Id. 154_{Id. at *3.} 155_Id.

text of patent infringement.156 _{EMC is also instructive to the application of §} 299.157

EMC was in response to an appeal from an Eastern District of Texas’ de-cision Oasis Research, LLC v. Adrive, LLC158 _{(hereinafter, “Oasis II”) which} adopted the “dramatically different” standard applied in Oasis I.159_The Fed-eral Circuit vacated Oasis II because the Eastern District of Texas applied a wrong standard under Rule 20(a) to permit joinder.160 _{To reject Oasis II, the} Federal Circuit reaffirmed that Rule 20 is a two-prong test.161 _{That is, both} the transaction-or-occurrence requirement and the requirement of a common question of law or fact must be satisfied.162 _{Furthermore, the Federal Circuit} clarified that “the mere fact that infringement of the same claims of the same patent is alleged does not support joinder, even though the claims would raise common questions of claim construction and patent invalidity.”163 _Therefore, EMC has completely abrogated the cases that follow MyMail.

Regarding joinder of independent defendants, EMC offered general rules for applying Rule 20(a).164 _{The Federal Circuit required a plaintiff to prove} “a logical relationship between the separate causes of action” against indepen-dent defendants.165 _{There were two aspects of the “logical relationship”} ap-proach.166 _{On one hand, the Federal Circuit explained that “[t]he logical} rela-tionship test is satisfied if there is substantial evidentiary overlap in the facts giving rise to the cause of action against each defendant.”167 _{On the other hand, the} Federal Circuit mandated that “the defendants’ allegedly infringing acts, which give rise to the individual claims of infringement, must share an aggregate of op-erative facts.”168

To specifically apply the “logical relationship” approach to patent cases, the Federal Circuit addressed another requirement,169_{which is referred to as “the} sameness requirement” in this paper.170_{The Federal Circuit clarified that} “join-der is not appropriate where different products or processes are involved.”171 Rather, “[j]oinder of independent defendants is only appropriate where the ac-cused products or processes are the same in respects relevant to the patent.”172_In

addi-156_{See Shen, supra note 2, at 575.} 157_{See id. at 575-76.}

158_{Oasis II, LLC, No. 4:10–CV–435, 2011 WL 3103972 (E.D. Tex. July 25, 2011) .} 159_{See id. at *1-2.}

160_{See In re EMC Corp., 677 F.3d 1351, 1360 (Fed. Cir. 2012).} 161_{See id. at 1357.}

162_{See id. (“Rule 20 makes clear that the existence of a single common question of law or fact alone is insufficient}

to satisfy the transaction-or-occurrence requirement.”).

163_Id.

164_{See id. at 1357-58.}

165_{Id. at 1358 (emphasis added). This approach is similar to the Eastern District of Texas’ approach in MicroUnity}

as described above.

166_{See id.}

167_{Id. (emphasis added).} 168_{Id. (emphasis added).} 169_{See id. at 1359.}

170_{The Federal Circuit named this requirement as “the sameness test.” See id. at 1360 n.4 (“We 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 legislation.”).

171_{Id. at 1359 (emphasis added).} 172_{Id. (emphasis added).}

tion, the Federal Circuit cautioned that “the sameness of the accused products or processes is not sufficient.”173_{Thus, the Federal Circuit actually singled out the} sameness requirement as an element of the “same transaction or occurrence” requirement.

Second, the Federal Circuit held that “[c]laims against independent defen-dants (i.e., situations in which the defendefen-dants are not acting in concert) cannot be joined under Rule 20’s transaction-or-occurrence test unless the facts underly-ing the claim of infrunderly-ingement asserted against each defendant share an aggre-gate of operative facts.”174_{That is, “[t]o be part of the ‘same transaction’ requires} shared, overlapping facts that give rise to each cause of action, and not just dis-tinct, albeit coincidentally identical, facts.”175 _{Alternatively, the Federal Circuit} held 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 coinciden-tally identical.”176 _{Thus, the Federal Circuit created an “actual link” standard as} one application of the “logical relationship” approach.177

Lastly, the Federal Circuit offered six “pertinent factual considerations” for district courts to determine whether joinder is proper.178 _{The six EMC} fac-tors include: (1) “whether the alleged acts of infringement occurred during the same time period”; (2) “the existence of some relationship among the de-fendants”; (3) “the use of identically sourced components”; (4) “licensing or technology agreements between the defendants”; (5) “overlap of the products’ or processes’ development and manufacture”; (6) “whether the case involves a claim for lost profits.”179_{District courts may weigh these six EMC factors. But,} each of these six EMC factors is not dispositive because the Federal Circuit has stated that “[t]he district court enjoys considerable discretion in weighing the relevant factors.”180

C.

Adoption of EMC

After EMC, the Eastern District of Texas started to change its attitude toward to cases filed prior to the enactment of § 299.181_{But, in only one of those cases,}

173_{Id. (emphasis added).}

174_{Id. (emphasis added). By defining “independent defendants” as defendants “not acting in concert,” the}

Fed-eral Circuit reaffirmed that “an allegation of joint liability is not required.” Id. at 1359.

175_{Id. at 1359 (emphasis added).} 176_{Id. (emphasis added).}

177_{By introducing “independently developed products using differently sourced parts” as a rebuttal to}

per-missive joinder, the Federal Circuit reaffirmed that “the sameness of the accused products or processes is not sufficient.” Id. (emphasis added).

178_{See id. at 1359-60.} 179_{Id. at 1359-60.} 180_{Id. at 1360.}

181_{See, e.g., Innovative Automation, LLC v. Audio Video & 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); Oasis Research, LLC v. Carbonite, Inc. (Oasis III), No. 4:10–CV–435, 2012 WL 3544881 (E.D. Tex. Aug. 15, 2012); Norman IP Holdings, LLC v. Lexmark Int’l, Inc., No. 6:11-CV-495, 6:12CV508, 2012 WL 3307942 (E.D. Tex. Aug. 10, 2012). But, Phoenix Licensing, LLC

v. Aetna, Inc., No. 2:11–CV–285–JRG, 2012 WL 3472973 (E.D. Tex. Aug. 15, 2012), is not included in the analysis

because there the court dealt with the plaintiff’s motion to amend a complaint to add a new defendant. See id. at *1. The Phoenix Licensing court denied the motion because under EMC or § 299 the plaintiff did not show the

the court found misjoinder.

Innovative Automation, LLC v. Audio Video & Video Labs, Inc.,182 _{a decision} issued in the same month of EMC, denied one motion to sever and transfer re-lated to six defendants under the complaint.183 _{The patent-in-suit related to a} computer-implemented method of duplicating digital data184_{One defendant,} Rimage, manufactured devices claimed to infringe the patent-in-suit.185 _Two defendants sold Rimage’s infringing devices.186 _{Three defendants used the} in-fringing devices to treat patients.187 _{The court considered the joinder issue in} light of the issue of venue transfer.188

By applying EMC,189_{the court held that the defendants “share an} aggre-gate of operative facts.”190 _{First, the court found that the defendants “are} ac-cused of infringement based their sale of Rimage devices or their use of these devices to duplicate digital media.”191 _{Second, while recognizing that each of} the defendants “may integrate the accused devices into their duplication sys-tems differently,”192_{the court considered Rimage’s indemnification as “the} ex-istence of a substantial evidentiary overlap in the facts giving rise to the cause of action against each defendant.”193 _{Eventually, the court concluded that “the} ac-cused products are the same; the infringement has occurred during the same time period; the [defendants] use identically sourced components, i.e. Rimage devices; and Rimage has agreed to indemnify the [defendants] and take over their defense.”194 _{Thus, the Innovative court based its ruling of permissive} join-der clearly on the first and third EMC factors. Rimage’s indemnification may be treated as the second EMC factor.

In Norman IP Holdings, LLC v. Lexmark International, Inc.195 _{and Oasis} Re-search, LLC v. Carbonite, Inc. (hereinafter, “Oasis III”),196_{the court applied EMC} and found misjoinder.197 _{Norman is comparable to MicroUnity, because in both} cases the plaintiff alleged that all defendants use an ARM processor design.198 Unlike MicroUnity, the court in Norman could not find that the joinder is proper shared facts between the claims against all defendants. See id. at *1-2.

182_{Innovative Automation, 2012 WL 10816848.} 183_{See id. at *1.}

184_{See Innovative Automation’s Opposition to the Rimage Defendants’ Motion to Sever Claims, Transfer Venue}

to the Northern District of California, and Stay or Dismiss Claims against the Memorial Hermann Defendants at 3, Innovative Automation, , 2012 WL 10816848 (Nos. 6:11–CV–234 LED–JDL, 6:11–CV–445 LED–JDL).

185_{See id. at 5.} 186_{See id.} 187_{See id.}

188_{See Innovative Automation, 2012 WL 10816848, at *3.} 189_{See id. at *3-4.}

190_{Id. at *4.} 191_Id. 192_Id.

193_{Id. (emphasis added) (internal quotation marks omitted).} 194_Id.

195_{Norman IP Holdings, LLC v. Lexmark Int’l, Inc., No. 6:11-CV-495, 6:12CV508, 2012 WL 3307942 (E.D. Tex.}

Aug. 10, 2012).

196_{Oasis III, No. 4:10–CV–435, 2012 WL 3544881 (E.D. Tex. Aug. 15, 2012).}

197_{See, e.g., Norman IP Holdings, 2012 WL 3307942, at *2; Oasis III, 2012 WL 3544881, at *2-3.}

198_{See, e.g., Norman IP Holdings, 2012 WL 3307942, at *3; MicroUnity Sys. Eng’g, Inc. v. Acer Inc., Nos.}

because of the use of the alleged ARM architecture.199_{The court primarily} criti-cized that “[t]he complaint did not mention ARM processors as a defining char-acteristic regarding each defendant’s alleged infringement.”200_{Thus, the court} found that the “same transaction or occurrence” requirement was not met.201 The ruling was primarily based on the consideration of the third EMC factor.

In Oasis III, the court reconsidered the joinder decision in Oasis I reversed by the Federal Circuit in EMC.202_{The court eventually found misjoinder because} the plaintiff did not allege any facts related to six EMC factors.203 _{Specifically,} the court criticized that the plaintiff failed to “assert any facts that would in-dicate [the defendants] use similarly sourced products, worked in concert, or had any relationship at all.”204_{Therefore, among other things, the court found} “no aggregate of operative facts shared between” the defendants and held that the defendants should be severed from the present litigation.205 _{The holding} was based on the third EMC factor as to “use similarly sourced products,” the fourth or fifth EMC factor as to “worked in concert,” and the second EMC factor as to “had any relationship at all.”

D.

AIA Cases

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

199_{See 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.”).

200_Id. 201_{See id.}

202_{See Oasis III, 2012 WL 3544881, at *2.} 203_{See id. at *4-5.}

204_{Id. at *5.} 205_{See id.}

206_{See, 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.

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.,217_{NFC Technology, LLC v. HTC America,}218_{and 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.221_{In 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.”222_{Therefore, 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

208_{See id. at *1.} 209_{See id. at *2.} 210_{See id.}

211_{Net Nav. Sys., 2012 WL 7827543.} 212_{See id. at *3.}

213_{See id.} 214_{See id.}

215_{There was no case regarding joinder in 2013.} 216_{ContentGuard I, 2014 WL 1477670.}

217_{Star CoLED Techs., LLC v. Sharp Corp., No. 2:13–CV–416–JRG, 2014 WL 1998051 (E.D. Tex. May 15, 2014).} 218_{NFC Tech., LLC v. HTC Am., No. 2:13–CV–01058–JRG, 2014 WL 3834959 (E.D. Tex. Aug. 1, 2014).} 219_{Smartflash LLC v. Apple, Inc., No. 6:13–cv–447, 2014 WL 4421657 (E.D. Tex. Sept. 8, 2014).} 220_{See ContentGuard I, 2014 WL 1477670, at *1, *5.}

221_{See id. at *5.}

222_{Id. (emphasis added) (internal quotation marks omitted).} 223_{Id. (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.”228_{Second, 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.230_The 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.232_{With 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-224_Id.

225_{See 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.”).

226_Id. 227_{See id.} 228_Id. 229_Id.

230_{See Star CoLED Techs., LLC v. Sharp Corp., No. 2:13–CV–416–JRG, 2014 WL 1998051, at *2 (E.D. Tex. May}

15, 2014).

231_Id. 232_{See id.} 233_{See id.} 234_{See id.}

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.”236_The court also associated this new proposition with the third EMC factor “the use of identically sourced components.”237_{As a result, the court found permissive} joinder of two mobile device manufacturers because their products used the same semiconductor chip.238_{It 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.242_{First, 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. § 299.244_{Second, these developers were assisted by Apple} to implement in-app payment functionality in their apps through the Store Kit Framework.245_{Therefore, 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

236_{NFC 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)).

237_{See id.} 238_{See id.} 239_Id.

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. at *1.} 242_{See id. at *3.} 243_Id. 244_{See id.} 245_{See id.} 246_{See id.}

247_{Imperium IP Holdings (Cayman), Ltd. v. Samsung Elec. Co, No. 4:14–CV–371, 2015 WL 137419 (E.D. Tex.}

Jan. 9, 2015).