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Application of the America Invents Act’s Joinder Provision under the Jurisprudence of the United States District Court for Eastern District of Texas

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* 2011 9 16 Leahy-Smith 35 U.S.C. § 299 § 299 20 § 299 In re EMC 20 EMC EMC

299

* Washington University in St. Louis Juris Doctoris J.D. 2010

MOST

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Joinder Provision under the Jurisprudence of

the United States District Court for Eastern

District of Texas

Ping-Hsun Chen

*

Abstract

On September 16, 2011, the American patent system started a new era because of the

enactment of the Leahy- . 35 U.S.C. § 299 was enacted to

rs 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 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

a next level. The court primarily looks to common facts regarding the accused products or processes. Particularly when products are accused, the third EMC

rently

*

Assistant Professor, Graduate Institute of Technology, Innovation and Intellectual Property Management, National Chengchi University

of Law. Acknowledgement: This paper is from a research project financially supported by the Ministry of Science and Technology of the Taiwan Government (MOST 103-2410-H-027-002-).

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1.

Introduction

On September 16, 2011, the American patent system started a new era because of the

enactment of the Leahy- .1 One of the breakthroughs was

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

independent defendants in patent litigation.4 First, § 299(a) provides that

accused infringers may be joined in one action as defendants or counterclaim 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 alternative 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

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 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 alternative 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 common 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

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, 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 America Invents Act § 19(e) (2011).

4

See EDWARD D. MANZO, THE AMERICA INVENTS ACT: A GUIDE TO PATENT LITIGATION AND

PATENT PROCEDURE178-80 (6th ed. 2013). 5

35 U.S.C. § 299(a) (2013). 6

35 U.S.C. § 299(b) (2013). 7

See MANZO, supra note 4, at 174-75. 8

See Fabio E. Marino & Teri H.P. Nguyen,

Texas? The Unforeseen 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) (2009).

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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

same transaction or occurrence 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. Am. Online, Inc.,14 a 2004

decision

. 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

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,

.21 Rather, the Federal Circuit stated, or

processes are the same in respects relevant to the patent . 22 The Federal Circuit further

an aggregate of operative facts . 23

actual link between the facts underlying each claim of infringement . 24 To help district

provided six factors for factual consideration: (1) whether the alleged acts of infringement occurred during the same time period; (2) the existence of some relationship among the defendants; (3) the use of identically sourced components; (4) licensing or technology agreements between the defendants; (5)

11

See Bryant, supra note 1, at 700. 12

See Shen, supra note 2, at 548. 13

See Gregory S. Meece, Class Actions, Typicality, and Rule 10b-5: Will the Typical Representative

Please Stand Up, 36 EMORY L.J. 649, 654 (1987). 14

MyMail, Ltd. v. America Online, Inc., 223 F.R.D. 455 (E.D. Tex. 2004). 15

Id. at 457. 16

See infra Part 2. 17

See Bryant, supra note 1, at 698. 18

See H.R. Rep. No. 112-98, pt.1, at 54 (2011). 19

See H.R. Rep. No. 112-98, pt.1, at 55 n. 61 (2011). 20

In re EMC Corp., 677 F.3d 1351 (Fed. Cir. 2012). 21 Id. at 1357. 22 Id. at 1359. 23 Id. 24 Id.

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and manufacture; and (6) whether the case involves a claim for lost profits.25 While EMC is within the case law governing Rule 20, district courts have incorporated EMC into their applications of § 299.26

After EMC, the Eastern District of Texas seems to remain its minority status because it

continues to permit joinder under § 299.27 The new approach adopted by the Eastern District

of Texas is to focus primarily on the third EMC

components . 28 may

actual link between the facts underlying each claim of infringement . 29

This article is intended to explore the historic background of the minority status of the Eastern District of Texas and the current jurisprudence adopted by the court. Part 2 analyzes

the case law prior to the enactment of § 299.30 Part 3 analyzes the case law after the

enactment of § 299. Part 3 is intended to show how EMC leaves a space for the Eastern District of Texas to find an easy way to permit joinder. It is safe to say that § 299 does not fully prohibit the Eastern District of Texas from permitting joinder of unrelated defendants in the context of patent litigation. But, the court has restricted its practice of permissive joinder.

So, be achieved.

2.

Pre-AIA Period

2.1

MyMail, Ltd. v. Am. 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.31 The claim against Verizon Communications, Inc. was later

25

Id.at 1359-60. 26

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).

27

See infra Part 3. 28

Id. 29

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.

30

It is hard to examine whether the Eastern District of Texas in MyMail disobeyed the Fifth Circuit case law in 2004 because at that time the Fifth Circuit had not developed case law regarding Rule 20 for unrelated defendants. 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 . ).

31

See Complaint at 1, MyMail, Ltd. v. America Online, Inc., 223 F.R.D. 455 (E.D. Tex. 2004) (No. 4.04-CV-189STEGER), 2004 WL 3358155.

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withdrawn without prejudice.32

On July 7, 2004, Netzero, Inc., Juno Online Services, Inc., and Netbrands, Inc. filed a

motion for severance and venue transfer.33 The Eastern District of Texas referred to these

three defendants as the UOL defendants because they were all subsidiaries of United Online, Inc.34

transaction or occurrence or series of transactions or occurrences as the other defendants . 35 The argument was based on a notion that they and the other defendants are separate defendants.36 But, the plaintiff responded primarily

resources, such as dial-up Internet access numbers . 37 The court only

neither party disputed the requirement of common questions of law or fact.38 The court held

because there is some

connection or logical relationship between the various transactions or occurrences . 39 The

court also held that [a] logical relationship exists if there is some nucleus of operative facts or law . 40

Finally, the court found the joinder permissive primarily because the record did not show implement multiple

proceedings.41 The conclusion was based on the most-criticized proposition in MyMail which

It is possible that severance could be appropriate if the defendants methods or

products were dramatically different . 42 MyMail has been characterized as a decision that

joinder of unrelated defendants who were alleged to have infringed the same patent . 43

32

See MyMail, 223 F.R.D. at 456. 33

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, Ltd. v. Am. Online, Inc., 223 F.R.D. 455 (E.D. Tex. 2004) (No. 4.04-CV-189STEGER), 2004 WL 5586815 [hereinafter, Motion to Sever]. 34 See MyMail, 223 F.R.D. at 456. 35 See id. 36 See id. 37 See id. at 457. 38

See id. at 45 Neither side disputes that questions of law or fact common to all defendants will arise in this case.

39

Id. (citing Hanley v. First Investors Corp., 151 F.R.D. 76, 79 (E.D. Tex. 1993)). 40

Id. 41

See id. at 457. 42

MyMail, 223 F.R.D. at 457; 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).

43

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 44, 44 (2013); Diane H. Crawley, America Invents Act: Promoting Progress or Spurring Secrecy?, 36 U. Haw. L. Rev. 1, 13 (2014); Reilly, supra note

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2.2

Cases After MyMail

After MyMail, the Eastern District of Texas had not issued any decisions related to Rule

20 until 2009. Since 2009, there had been several decisions related to joinder.44 Among those

cases issued prior to the enactment of the AIA are Adrain v. Genetec Inc.,45 Better Educ. Inc. v. Einstruction Corp.,46 and Eolas Techs., Inc. v. Adobe Sys., Inc.,47 three decisions which Congress has expressly overruled.48 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.

2.2.1 Adrain, Better, and Eolas

The court consecutively in Adrain, Better, and Eolas based its ruling of permissive

joinder on MyMail.49 Adrain and Better both looked to the similarity or difference between

the accused products. In Adrain, the patent-in-suit a system for monitoring a space,

detecting images, and comparing the images to data . 50 A motion for severance was filed by

Elsag North America LLC which argued that all accused infringers are unrelated and the

42, at 1024; David O. Taylor, Patent Misjoinder, 88 N.Y.U. L. REV. 652, 657 (2013); Bob McAughan, Time to Justice: Seven Hours or Seven Days?, 4 Landslide 44, 45 (2012). 44

See, e.g., Centre One v. Vonage Holdings Corp., No. 6:08CV467, 2009 WL 2461003 (E.D. Tex. Aug. 10, 2009) (per curiam); Adrain v. Genetec Inc., No. 2:08 CV 423, 2009 WL 3063414 (E.D. Tex. Sept. 22, 2009) (per curiam); 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) (per curiam); Oasis Research, LLC v. Adrive, LLC, No. 4:10 CV 435, 2011 WL 3099885 (E.D. Tex. May 23, 2011), adopted by Oasis Research, LLC v. Adrive, LLC, 2011 WL 3103972 (E.D. Tex. July 25, 2011) , 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.

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).

45

Adrain v. Genetec Inc., No. 2:08 CV 423, 2009 WL 3063414 (E.D. Tex. Sept. 22, 2009) (per curiam).

46

Better Educ. Inc. v. Einstruction Corp., No. 2 08 cv 446 TJW CE, 2010 WL 918307 (E.D. Tex. Mar. 10, 2010).

47

Eolas Techs., Inc. v. Adobe Sys., Inc., No. 6:09 CV 446, 2010 WL 3835762 (E.D. Tex. Sept. 28, 2010) (per curiam).

48

See H.R. Rep. No. 112-98, pt.1, at 55 n. 61. 49

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

50

Adrain s Response to Defendant Elsag North America LLC s Motion to Sever and to Transfer the Action to the Middle District of North Carolina at 1, Adrain v. Genetec Inc., 2009 WL 3063414 (E.D. Tex. Feb. 19, 2009) (No. 2:08 CV 423), 2009 WL 721253

Response].

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.51 On the other hand, the plaintiff alleged that public materials show that the defendants infringing systems are substantially

similar in their structure, design, and/or method of operation . 52 The court sided with the

plaintiff.53 First, the accused license plate recognition systems sold by the defendants were

alleged to infringe the same patent.54 Second, the similarity of the accused systems

sufficiently . 55 Therefore, the court found that the

.56

In Eolas, the patents-in-suit related to system allowing a user of a browser program

on a computer connected to an open distributed hypermedia system to access and execute an

embedded program object . 57 The plaintiff sued twenty-three defendants from various

industries.58 All defendants moved for venue transfer and alternatively for severance.59 The

the fact that they are unrelated.60 However,

the court disagreed primarily because of a concern of judicial economy.61 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

.62

necessary.63 Thus, the court

permitted joinder.64

Better is different from Adrain and Eolas because its ruling is too conclusory. In Better,

51

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 v. Genetec Inc., No. 2:08 CV 423, 2009 WL 3063414 (E.D. Tex. Sept. 22, 2009), 2009 WL 1474282 [hereinafter, Defendant Reply Brief].

52 , supra note 50, at 2. 53 See Adrain, 2009 WL 3063414, at *2. 54 See id. 55 See id. 56 See id. 57

See, e.g., U.S. Patent No. 5,838,906 (Oct. 17, 1994), U.S. Patent No. 7,599,985 (filed May 8, 1998); see also Eolas Techs., 2010 WL 3835762, at *1.

58

See Eolas Techs., 2010 WL 3835762, at *1. 59

See id. 60

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., Inc. v. Adobe Sys., Inc., 2010 WL 3835762 (E.D. Tex. Sept. 28, 2010) (No. 6:09 CV 446), 2010 WL 474954 (citing cases which indicate that unrelated defendants should be severed).

61

See Eolas Techs., 2010 WL 3835762, at *1-2. 62 See id. at *1. 63 See id. 64 See id. at *2.

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the patent-in-suit related to electronic classroom response systems that allow students to

answer questions with student terminals . 65 One defendant Qwizdom filed a motion to

dismiss, and the motion asserted misjoinder.66 Regarding misjoinder, Qwizdom primarily

argued that ach of the Defendants has its own unique electronic learning systems, with

each system having its own components and separate, distinct design . 67 On the other hand,

the plaintiff did not explain why a logical relationship exists between the claim against

Qwizdom and the claims against other defendants.68 Instead, the plaintiff emphasized that

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 . 69 Eventually,

without analyzing any relevant facts, the court cited MyMail and simply concluded that it is

not persuaded that joinder of Qwizdom is improper . 70

From MyMail to Eolas, the court gradually transformed

standard and further into the . MayMail recognized a joinder analysis as a two-prong test, but it

nucleus of operative facts or law. MayMail also required that severance is possibly

appropriate if the infringing products or methods are different Next, Adrain

products or methods at dispute are accused of infringing the same patent and when the similarity of the infringing products or methods is sufficient. Then, Better implied that the standard is not required to consider. Finally, Eolas did not separate permissive joinder. 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 inconsistent

results. T standard became a minor factor, which is very different

from MyMail. Thus, whether the same patent is infringed became a major factor for determining permissive joinder.

The evolution of the MyMail case law indicates two principles which Congress has abrogated. First, joinder is proper when the same patent is infringed. 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 For purposes of this subsection, accused

65

Plaintiff Better Education, Inc. s Opposition to Defendant Qwizdom, Inc. s Motion to Dismiss at 2, Better Educ. Inc. v. Einstruction Corp., 2010 WL 918307 (E.D. Tex. Mar. 10, 2010) (No. 2 08 cv 446 TJW CE), 2009 WL 2335348 [hereinafter Plaintiff .

66

See Better Educ., 2010 WL 918307, at *1. 67

Qwizdom, Inc. s Motion to Dismiss at 4, Better Educ. Inc. v. Einstruction Corp., 2010 WL 918307 (E.D. Tex. Mar. 10, 2010) (No. 2 08 cv 446 TJW CE), 2009 WL 2335346. 68

See Plaintiff , supra note 65, at 3. 69

See id. 70

See Better Educ., 2010 WL 918307, at *1.

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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. second principle is also invalid because § 299(a) limits the

to the making, using, importing into the United States, offering for sale, or selling of the same accused product or process . 71

dramatically different MyMail case law is not endorsed by

2.2.2 Other Pre-AIA Cases

Congress only abrogated four decisions of the Eastern District of Texas. It seems that

Congress left three cases, Centre One v. Vonage Holdings Corp.,72 Innovative Global Sys.

LLC v. Turnpike Global Techs. L.L.C.,73 and Oasis Research, LLC v. Adrive, LLC (hereinafter,

Oasis I ),74 without any comments.75 A careful examining may show that those three decisions are all invalid under 35 U.S.C. § 299.

In Centre, a decision prior to Adrain, two defendants, Vonage America, Inc. and Vonage

Holdings Corp. Vonage moved for severance.76 The court considered the

issue of joinder in light of other venue-transfer motions77 and denied the motion to sever.78 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 . 79 Vonage s

convenience alone fails to outweigh the glaring inefficiency of prosecuting two, nearly

identical, complex patent infringement cases in different fora . 80 Because Vonage and other

defendants were unrelated, the only identical feature of the claim against Vonage and claims against other defendants was the infringement of the same patent. Therefore, the court was primarily based on the fact that the same patent is infringed.

In Innovative, one defendant NetworkFleet filed a motion to sever and transfer venue.81

71

See 35 U.S.C. § 299(a) (2013). 72

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

73

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).

74

Oasis Research, LLC v. Adrive, LLC, No. 4:10 CV 435, 2011 WL 3099885 (E.D. Tex. May 23, 2011) [hereinafter Oasis I].

75

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.

76

See Centre One, 2009 WL 2461003, at *1. 77 See id. at *4-*7. 78 See id. at *7. 79 Id. 80 Id. 81

See Innovative Global Sys., 2009 WL 3754886, at *1.

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The court denied the motion because of judicial economy.82 The primary reason for finding permissive joinder was the existence of significant overlap among the issues of claim validity, claim construction, and claim scope . 83 So, 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 denied.84 The court

cited Eolas, Adrain, and MyMail,85 Courts 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 . 86 dramatically different

permit joinder.

Overall, Centre, Innovative, and Oasis I all violate 35 U.S.C. § 299. Centre and

Innovative follow the which has been abrogated by § 299(b), while

Oasis I standard which has been overruled by § 299(a).

Therefore, Centre, Innovative, and Oasis I are no longer good law or persuasive authority anymore even though Congress has not expressly ruled out these three cases.

3.

Post-AIA Period

3.1

Resistance

Even after the enactment of § 299, the Eastern District of Texas seemed to follow its

traditional minority view consecutively in ,87 Ganas,

LLC v. Sabre Holdings Corp.,88 Imperium (IP) Holdings, Inc. v. Apple Inc.,89 and Lodsys,

82

See id. ( District courts have declined to sever patent infringement claims due to concerns about judicial economy. (citing Adrain and Centre One)).

83 Id. at *2. 84 See Oasis I, 2011 WL 3099885, at *1. 85 See id. at *2. 86

Oasis I, 2011 WL 3099885, at *2. Oasis I interpreted Eolas as a case affirmed by In re Google

See id. at *3. The Federal Circuit upheld the joinder

paramount role in trying to maintain an orderly, effective, administration of justice and having

Google

Id. at 296. 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).

87

CV 91 TJW CE, 2:10 CV 185 TJW CE,

2011 WL 4591917 (E.D. Tex. Sept. 30, 2011) (per curiam). 88

Ganas, LLC v. Sabre Holdings Corp., No. 2:10 CV 320 DF, 2011 WL 8183246 (E.D. Tex. Oct. 19, 2011).

89

Imperium (IP) Holdings, Inc. v. Apple Inc., No. 4:11 CV 163, 2012 WL 461775 (E.D. Tex. Jan.

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,90 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 § 299.91 Because Congress was unable to consider those cases, it is

necessary to examine their legal validity under § 299.

In MicroUnity, .92 Specifically,

series of transactions or occurrences . 93 and held

there is some connection or logical relationship between

the various transactions or occurrences . 94 logical

relationship exists if there is some nucleus of operative facts or law . 95

The patents-in-suit in MicroUnity processing different types of media data,

including audio, video, and graphics data, at very high volume in real time . 96 The

defendants were divided into three categories: chip manufacturers, handset manufacturers,

and carriers.97 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 . 98 ARM is

an acronym for Advanced RISC Machines . 99 reduced instruction set

computer type of microprocessor architecture.100 An ARM architecture is an

integrated circuit design for a processor, and an ARM instruction set is an assembly language

associated with the integrated circuit design.101 Because all defendants used ARM technology

in their products,102 the court concluded that the accused products are similar enough to

satisfy the nucleus of fact or law test . 103 MicroUnity court seemed

20, 2012).

90

cv 90 JRG, 2012 WL 760729 (E.D. Tex. Mar. 8,

2012). 91

See, e.g., Ganas, 2011 WL 8183246, at *8; Apple, 2012 WL 461775, at *3 n.3. 92

See , 2011 WL 4591917, at *3. 93

See id. 94

Id. (citing Hanley v. First Investors Corp., 151 F.R.D. 76, 79 (E.D. Tex. 1993)). 95

Id. (citing Hanley, 151 F.R.D. at 79) (emphasis added). 96 Id. at *2. 97 See id. at *3. 98 Id. 99

Kim Hazelwood & Artur Klauser, A Dynamic Binary Instrumentation Engine for the ARM Architecture 2 (2006)(unpublished manuscript)(on file with author).

100

See Crystal Chen, Greg Novick & Kirk Shimano, What is RISC?,

http://cs.stanford.edu/people/eroberts/courses/soco/projects/risc/whatis/index.html (last visited Oct. 19, 2015).

101

See Hazelwood & Klauser, supra note 99. 102

See , 2011 WL 4591917 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.

103 Id.

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MicroUnity is significant. 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 by different

accused products or services, which is similar to the approach adopted by MicroUnity. 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

, the Ganas court ignored that approach. In Ganas,

the court encountered two sets of motions to sever.104 Three defendants filed a motion to

sever and transfer, while one defendant filed a motion to dismiss for improper joinder or

alternatively to sever.105 Regarding 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.106 Regarding the second set of motions, the court denied

the nucleus of operative facts or law in the claims against all the

defendants . 107 Therefore, the infringement of the same patent was the original reason

causing all defendants to be sued jointly. By permitting 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.108 the accused

products are dramatically different . 109 But, the court disagreed.110 When analyzing the

, the court adopted the

standard again by repeating the propositions mentioned in MicroUnity.111 The court held that

a logical relationship exists between the claims against all defendants.112 First, the court

found that [t]he inventions detailed in the various claims of the patents-in-suit were

104

See Ganas, LLC v. Sabre Holdings Corp., No. 2:10 CV 320 DF, 2011 WL 8183246, at *1. 105

See id. 106

See id 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.

107

See id. (quoting MyMail, 223 F.R.D. at 457) (quotation omitted). 108 See Lodsys, 2012 WL 760729, at *1. 109 Id. at *5. 110 See id. 111 See id. 112

See id logical relationship exists between all of the accused products

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developed by the same inventor and all originate from a common application . 113 The court

also found the alleged infringement involves the implementation and use of the patented

inventions . 114 Furthermore, after 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 , 115 the court

concluded that the accused products at issue are sufficiently related to satisfy the same

nucleus of operative fact or law text . 116 By saying that the patented inventions are used in

different accused products, the court actually found that the patented inventions are infringed

by different accused products. So, the court simply rephrased same patent standard,

which still violates § 299(b).

Apple took a different approach to the logical relationship standard117 and permitted

joinder.118 The patents-in-suit in Apple related to image sensor technology.119 The accused

products were cell phones or other devices with image sensors.120 One defendant Apple in its

motion to sever argued that the sale of accused products by unrelated defendants does not .121 But, the court disagreed.122

When he court recited the

propositions mentioned in MicroUnity to present logical relationship standard.123 The

court further Courts have also found joinder proper where Defendants allegedly

infringing products are not dramatically different and determining Defendants liability will

involve substantially overlapping questions of law and fact . 124 The court simply embraced

Oasis I and dramatically different .125 The court even reaffirmed Eolas

Techs.126

Eventually, the court held that the same transaction or occurrence requirement is

the similarity of the component image sensors and image processors

used by all defendants.127 In footnote 3 of the Apple decision, the court also made a

113 Id. 114 Id. 115 Id. 116 Id. 117

See Apple, 2012 WL 461775, at *2 (citing MicroUnity Sys. , 2011 WL 4591917, at *3). 118 See id. at *4. 119 See id. at *1. 120 See id. 121 See id. at *2. 122 See id. at *3-*4. 123 See id. at *2. 124

Id. (citing Oasis I, 2011 WL 3099885, at *2). 125 See id. 126 See id. at *3. 127 Id.

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comment on how § 299 will apply to the present case.128

sensor or processor [is used] in different products , 129 or alternatively because

is the same . 130

Because Apple applied the dramatically different , 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 , 131 the

accused products use the same MT9D112 image sensor manufactured by Aptina, a

third-party supplier . 132 So, the Apple standard might be the third EMC the use of

identically sourced components dramatically different .

3.2

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 context of patent infringement. EMC is also instructive to the application of § 299.

EMC was in response to an appeal from an Eastern District of Texas decision Oasis

Research, LLC v. Adrive, LLC ( Oasis II ),133 which adopted Oasis I.134 The

permissive joinder because it

applied a wrong standard under Rule 20(a).135

The application of Rule 20 under EMC may be broken down into four aspects. In the first aspect, the Federal Circuit illustrated why joinder of independent defendants is possible under Rule 20.136 The reasoning may be divided into three layers. First, because of the phrase series of transactions or occurrences used in Rule 20(a)(1)(A), the Federal Circuit stated that a single transaction [or occurrence] is not required . 137 Second, for defendants alleged to be jointly liable, the Federal Circuit stated that they may be joined under Rule 20 because

the transaction-or-occurrence test is always satisfied . 138 Alternatively, the Federal Circuit

stated that for joinder of multiple defendants, an allegation of joint liability is not

128 See id. at *3. 129 Id. 130 Id. 131 Id. at *3. 132 Id. 133

Oasis Research, LLC v. Adrive, LLC, No. 4:10 CV 435, 2011 WL 3103972 (E.D. Tex. July 25, 2011) (Mem.) Oasis II

134

See id. at *1-*2. 135

See In re EMC Corp., 677 F.3d1351, 1360 (Fed. Cir. 2012). 136

See id. at 1356-57 (stating several propositions that can be directly drawn from the language of Rule 20 and the legislative history).

137

Id. at 1356. 138

Id.

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required . 139 As a result, the Federal Circuit held that the fact that the defendants are independent actors does not preclude joinder as long as their actions are part of the same transaction, occurrence, or series of transactions or occurrences . 140

In the second aspect, EMC reaffirmed that Rule 20 is a two-prong test. As the Federal

Circuit emphasized, by n imposing both the transaction-or-occurrence requirement and the

requirement of a common question of law or fact, 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 . 141 So, the Federal Circuit concluded that he 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 . 142

The third aspect under EMC offers general rules of Rule 20(a) regarding unrelated

defendants. The Federal Circuit stated that independent defendants satisfy the

transaction-or-occurrence test of Rule 20 when there is a logical relationship between the

separate causes of action . 143 So, the Federal Circuit the Eastern

MicroUnity. But, the Federal Circuit further explained that

[t]he logical relationship test is satisfied if there is substantial evidentiary overlap in the

facts giving rise to the cause of action against each defendant . 144 Alternatively, the Federal Circuit stated that the defendants allegedly infringing acts, which give rise to the individual

claims of infringement, must share an aggregate of operative facts . 145 So, EMC provides

logical relationship

Regarding the fourth aspect, the Federal Circuit logical relationship

standard should be applied in the context of patent infringement. The Federal Circuit specifically addressed a sameness requirement. First, the Federal Circuit stated that joinder is not appropriate where different products or processes are involved . 146 Rather, as the Federal

Circuit held, [j]oinder of independent defendants is only appropriate where the accused

products or processes are the same in respects relevant to the patent . 147 In addition, the the sameness of the accused products or processes is not

sufficient . 148 By saying that, the Federal Circuit took the sameness requirement as an

element of the requirement.

139

Id. (citation omitted and emphasis original). 140

Id. (citation omitted). 141

Id. at 1357. 142

Id. 143

Id. at 1358 (emphasis added). 144

Id. (emphasis added). 145

Id. (emphasis added). 146

Id. at 1359. 147

Id. (emphasis added). 148

Id. (emphasis added).

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Moreover,

context of patent infringement. First, the Federal Circuit stated that [c]laims against

independent defendants (i.e., situations in which the defendants are not acting in concert) cannot be joined under Rule 20 s transaction-or-occurrence test unless the facts underlying the claim of infringement asserted against each defendant share an aggregate of operative

facts . 149 independent defendants not acting in concert the

an allegation of joint liability is not required . 150 Then, the Federal Circuit stated that [t]o be part of the same transaction requires shared, overlapping

facts that give rise to each cause of action, and not just distinct, albeit coincidentally identical,

facts . 151 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

coincidentally identical . 152

independently developed products using differently sourced parts

the sameness of the accused products or processes is not sufficient . 153

Last, the Federal Circuit stated that [i]n addition to finding that the same product or process is involved, to determine whether the joinder test is satisfied, [six] pertinent factual considerations include [(1)] whether the alleged acts of infringement occurred during the same time period, [(2)] the existence of some relationship among the defendants, [(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, and [(6)] whether the case involves a claim for lost profits . 154 This statement defines a practical

EMC factor is not dispositive because the

he district court enjoys considerable discretion in weighing the relevant factors . 155

3.3

Adoption of EMC

After EMC, the Eastern District of Texas started to change its attitude toward to cases

filed prior to the enactment of § 299.156 But, in only one of those cases, the court found

149

Id. (emphasis added). 150

Id. at 1356 (citation omitted and emphasis original). 151

Id. at 1359 (emphasis added). 152

Id. 153

Id. (emphasis added). 154

Id. at 1359-60. 155

Id. at 1360. 156

See, e.g., 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) (per curiam);

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misjoinder.

Innovative Automation, LLC v. Audio Video and Video Labs, Inc.,157 a decision issued in the same month of EMC, denied one motion to sever and transfer related to six defendants

under the complaint with No. 6:11-cv-445 (filed on August 30, 2011).158 The patent-in-suit

a computer-implemented method of digital data duplication . 159 One defendant

Rimage manufactured devices claimed to infringe the patent-in-suit.160 Two defendants sold

Rimage infringing devices.161 Three defendants used the infringing devices to treat

patients.162 The court considered the joinder issue in light of the issue of venue transfer.163

By applying EMC,164 the court held that the defendants share an aggregate of operative

facts . 165 First, the court found that the defendants are accused of infringement based their

sale of Rimage devices or their use of these devices to duplicate digital media . 166 Second,

while recognizing may integrate the accused devices into their

duplication systems differently , 167 the court considered Rimage indemnification as the

existence of a substantial evidentiary overlap in the facts giving rise to the cause of action

against each defendant . 168 Eventually, the court concluded that the accused 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

Oasis Research, LLC v. Carbonite, Inc., No. 4:10 CV 435, 2012 WL 3544881 (E.D. Tex. Aug. 15, 2012) (per curiam); Norman IP Holding No. 6:11-CV-495, 6:12CV508, 2012 WL 3307942 (E.D. Tex. Aug. 10, 2012) (per curiam). But, Phoenix Licensing,

LLC v. Aetna, Inc., No. 2:11 CV 285 JRG, 2012 WL 3472973 (E.D. Tex. Aug. 15, 2012) (per

curiam)

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 shared facts between the claims against all defendants. See id. at *1-*2.

157

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) (per curiam). 158

See id. at *1. 159

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, LLC v. Audio Video and Video Labs, Inc., 2012 WL 10816848 (E.D. Tex. May 30, 2012) (per curiam), Nos. 6:11 CV 234 LED

JDL, 6:11 CV 445 LED JDL . 160 See id. at *5. 161 See id. 162 See id. 163

See Innovative Automation, 2012 WL 10816848, at *3. 164 See id. at *3-*4. 165 Id. at *4. 166 Id. 167 Id. 168

Id. (quotation omitted) (emphasis added).

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[defendants] and take over their defense . 169 Thus, the Innovative court based its ruling of permissive joinder clearly on the first and third EMC factors. Rimage

be treated as the second EMC factor.

In 170 and Oasis Research, LLC v.

Carbonite, Inc. ( Oasis III ),171 the court applied EMC and found misjoinder.172

Norman is comparable to MicroUnity, because in both cases the plaintiff alleged that all

defendants use an ARM processor design.173 Unlike MicroUnity, the court in Norman could

not find that the joinder is proper because of the use of the alleged ARM architecture.174 The

court primarily criticized that he complaint did not mention ARM processors as a defining

characteristic regarding each defendant s alleged infringement . 175 Thus, the court found that

.176 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 the Federal Circuit in

EMC reversed.177 The court found misjoinder because the plaintiff did not allege any facts

related to six EMC factors.178 Specifically, the court criticized that the plaintiff failed to

assert any facts that would indicate [the defendants] use similarly sourced products, worked in concert, or had any relationship at all . 179 Therefore, among other things, the court found

no aggregate of operative facts shared between

should be severed from the present litigation.180 The holding was based on the third EMC

use similarly sourced products the fourth or fifth EMC worked in

concert second EMC had any relationship at all

3.4

AIA Cases

The Eastern District of Texas has incorporated EMC into its application of § 299181

169

Id. 170

, 6:11-CV-495, 2012 WL

3307942 (E.D. Tex. Aug. 10, 2012) (per curiam). 171

Oasis Research, LLC v. Carbonite, Inc., No. 4:10 CV 435, 2012 WL 3544881 (E.D. Tex. Aug. 15, 2012) (per curiam) [hereinafter Oasis III].

172

See, e.g., Norman IP Holdings, 2012 WL 3307942, at *2; Oasis III, 2012 WL 3544881, at *2-*3. 173

See, e.g., Norman IP Holdings, 2012 WL 3307942, at *3; , 2011 WL 4591917, at *3.

174

See Norman IP Holdings, 2012 WL 3307942 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 defendants warranting joinder. .

175 Id. 176

See id. 177

See Oasis III, 2012 WL 3544881, at *2. 178 See id. at *4-*5. 179 Id. at *5. 180 See id. 181

See, e.g., Net Nav. Sys., LLC v. Cisco Sys., Inc., No. 4:11 CV 660, 2012 WL 7827543 (E.D.

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except for Motorola Mobility, Inc. v. Tivo, Inc.,182 a 2012 decision in which the court found permissive joinder without mentioning EMC. Motorola involved two related defendants,

TWC and Motorola.183 Motorola manufactured the infringing products, while TWC

distributed the infringing products.184 The court held that joinder is permissive because the

patent infringement allegations against TWC and Motorola are based on their conducts relating to the infringing products.185

Net Nav. Sys., LLC v. Cisco Sys., Inc.186 is another 2012 decision where the court found

misjoinder.187 There, the court recognized that all accused products are from the same

manufacturer.188 But, the court held that one defendant should be severed because the

plaintiff failed to provide any evidence to support the Federal

Circuit . 189

Tex. Aug. 22, 2012) (per curiam); ContentGuard Holdings, Inc. v. Google, Inc., Nos. 2:14 cv 00061 JRG, 2:13 cv 01112 JRG, 2014 WL 1477670, at *4-*5 (E.D. Tex. Apr. 15, 2014) (per curiam); 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 America, No. 2:13 CV 01058 JRG, 2014 WL 3834959, at *2 (E.D. Tex. Aug. 1, 2014) (per curiam); 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) (per curiam), and Secure Axcess, LLC v. Nintendo of America Inc., No. 2:13 cv 32-JRG, 2:13 cv 289 JRG, 2014 WL 986169 (E.D. Tex. Mar. 7, 2014) (per curiam), 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 VirtualAgility, 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 Secure Axcess, 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.

182

Motorola Mobility, Inc. v. Tivo, Inc., No. 5:11 CV 53 JRG, 2012 WL 2935450 (E.D. Tex. Jul. 18, 2012) (per curiam). 183 See id. at *1. 184 See id. at *2. 185 See id. 186

Net Nav. Sys., LLC v. Cisco Sys., Inc., No. 4:11 CV 660, 2012 WL 7827543 (E.D. Tex. Aug. 22, 2012) (per curiam). 187 See id. at *3. 188 See id. 189 See id.

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Motorola and Net, the only two joinder decisions in 2012, together indicates that the

Eastern District of Texas began to restrict the practice of permissive joinder under

35 U.S.C.

§ 299, because the court abandoned the

standard. But, a series of cases since 2014 have shown a trend that the Eastern District of Texas remains a patentee-friendly forum with respect to permissive joinder of unrelated defendants.190

In 2014, the court consecutively in ContentGuard Holdings, Inc. v. Google, Inc.

(hereinafter, ContentGuard I),,191 Star CoLED Techs., LLC v. Sharp Corp.,192 NFC Tech.,

LLC v. HTC Am.,193 and Smartflash LLC v. Apple, Inc.194 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 applications which were alleged to

infringe the patents-in-suit.195 The court at least a set of common facts

regarding these three software applications were shared by those manufacturer defendants.196

In addition, the court noticed that because of the existence of a hardware component in each mobile device,

different devices supplied by individual [manufacturer defendant] . 197 Nonetheless, the court

stated that the use of the accused software applications on each mobile device is not clearly

based on independently developed products using differently sourced parts . 198 Therefore,

the court the common facts regarding the accused software may well constitute an

actual link between the facts underlying each claim of infringement . 199

The ContentGuard I court did not find permissive joinder or misjoinder because no evidence ha[d] been proffered regarding how the accused software-hardware combination corresponds to claims of the asserted patents . 200 Eventually, the court allowed the parties to

further develop the record for the joinder issue.201 Moreover, the court provided two

190

There was no case regarding joinder in 2013. 191

Contentguard Holdings, Inc. v. Google, Inc., No. 2:14 cv 00061 JRG, 2:13 cv 01112 JRG, 2014 WL 1477670 (E.D. Tex. Apr. 15, 2014) (per curiam) [hereinafter Contentguard I]. 192

Star Co LED Techs., LLC v. Sharp Corp., No. 2:13 CV 416 JRG, 2014 WL 1998051 (E.D. Tex. May 15, 2014) (per curiam).

193

NFC Tech., LLC v. HTC Am., No. 2:13 CV 01058 JRG, 2014 WL 3834959 (E.D. Tex. Aug. 1, 2014) (per curiam).

194

Smartflash LLC, et al. v. Apple, Inc., et al., No. 6:13 cv 447, 2014 WL 4421657 (E.D. Tex. Sep. 8, 2014) (per curiam). 195 See Contentguard I, 2014 WL 1477670, at *1, *5. 196 See id. at *5. 197 Id. 198 Id. 199

Id. (emphasis added). 200

Id. 201

See id.

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guidelines. First, the court sta are predominantly software-based, [such that] the common facts underlying such claims may constitute an

actual link connecting all [d]efendants . 202 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 distinguished . 203

In Star, the court also allowed further discovery for the joinder issue.204 The plaintiff

alleged that two defendants be liable for infringement based on the same products

because of a joint venture under which [one defendant] manufactured LCD panels for use in

televisions . 205 But, the defendants provided employee declarations

.206 With those assertions, the court found that the record is not sufficient for it to determine whether the joinder is permissive.207 So, the court required

further discovery about the joinder issue.208 Moreover, the court expected that the discovery

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 . 209 ContentGuard I and Star together may indicate that

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 independently developed

products using differently sourced parts

In NFC, the court inherited Apple iverse products using identical

component parts are often held to meet the joinder standard . 210 The court also associated

this new proposition with the third EMC

components . 211 As a result, the court found permissive joinder of two mobile device

manufacturers because their products used the same chip.212 It must be noted that the joinder

decision in NFC was not simply based on the use of identical components. As the court

202 Id. 203 Id. 204

See Star Co LED Techs., LLC v. Sharp Corp., No. 2:13 CV 416 JRG, 2014 WL 199805, at *2 (E.D. Tex. May 15, 2014) (per curiam).

205 Id. 206 See id. 207 See id. 208 See id. 209

Id. at *2 (emphasis added). 210

NFC Tech., LLC v. HTC Am., No. 2:13 CV 01058 JRG, 2014 WL 3834959, at *2 (E.D. Tex. Aug. 1, 2014) (per curiam) (citing Apple, 2012 WL 461775, at *2-*3).

211

See id. 212

See id.

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pointed out that the use of the chip in combination with devices supplied by [the

manufacturer defendants] allegedly infringe [the patents-in-suit] , 213 for joinder purposes,

the use of identical components or identically sourced components must be associated with the allegations of patent infringement.

Smartflash is different because there processes were accused of patent infringement.214

In Smartflash, Apple and three apps developers were jointly sued

Framework was alleged to infringe the patents-in-suit.215 The court held that the joinder of

Apple and these developers is proper.216

. 217 Thus, the court concluded that the use of the Store Kit Framework

35 U.S.C. § 299.218 Second, these developers were assisted by Apple to

implement in-app payment functionality in their apps through the Store Kit Framework.219

.220 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 common facts between accused processes or the use of identical objects in accused processes.

The -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 Elec. Co.221 found misjoinder and

severed two Samsung-related companies from the rest of the accused Samsung-related

companies.222 Although recognizing that the particular functionality of the [accused]

products with respect to the patent may be the same , 223 the court the sameness

of the accused products or processes is not sufficient . 224 Eventually, the court found that the primarily because the plaintiff merely speculates as to the likelihood of licensing and technology agreements among the

defendants and the likelihood of identically sourced components . 225

213

Id. 214

See Smartflash LLC, et al. v. Apple, Inc., No. 6:13 cv 447, 2014 WL 4421657, at *3 (E.D. Tex. Sep. 8, 2014). 215 See id. at *1. 216 See id. at *3. 217 Id. 218 See id. 219 See id. 220 See id. 221

Imperium IP Holdings (Cayman), Ltd. v. Samsung Elec. Co., No. 4:14 CV 371, 2015 WL 137419 (E.D. Tex. Jan. 9, 2015).

222

See Imperium IP Holdings (Cayman), 2015 WL 137419, at *3. 223

Id. 224

Id. (quoting EMC, 677 F.3d at 1359). 225

Id. (emphasis added).

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In a recent case, ContentGuard Holdings, Inc. v. Amazon.com, Inc. (hereinafter, Content

Guard II),226 while facing multiple motions to sever with different approaches for

severance,227 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 occurrences is

being accused . 228 Therefore, Content Guard II

salute to EMC.

4.

Conclusion

Under EMC and 35 U.S.C. § 299, the Eastern District of Texas has changed its practice related to permissive joinder of unrelated defendants in the context of patent infringement. Traditionally, the court permitted joinder only because the same patent is infringed. This

evolved from a notion that joinder is appropriate if the accused products or processes are not dramatically different.

was started by the Eastern District of Texas in MyMail. Congress enacted 35 U.S.C. § 299 and specifically abrogated MyMail and following cases.

The Federal Circuit in EMC has provided a practical standard for determining whether joinder of unrelated defendants is proper in patent litigation. EMC created the

standard which requires an actual link between the facts underlying each claim

of infringement EMC also provided six factors for determining the existence of an actual

link. However, the Eastern District of Texas seems to rely on the third EMC

This article demonstrates that the Eastern District of Texas still prefers joinder of

unrelated defendants. The court

primarily looks to common facts regarding the accused products or processes. Particularly when products are accused, the third

becomes a dispositive factor. The only rebuttal may be to prove that the accused products are independently developed products using differently sourced parts

226

Content Guard Holdings, Inc. v. Amazon.com, Inc., No. 2:13 CV 1112 JRG, 2015 WL 1263346 (E.D. Tex. Mar. 19, 2015) (per curiam) [hereinafter, Content Guard II].

227

See id 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.

228

Id. at *8.

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MANZO, EDWARD D., THE AMERICA INVENTS ACT: A GUIDE TO PATENT LITIGATION AND PATENT

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Bryant, Tracie L., Note, The America Invents Act: Slaying Trolls, Limiting Joinder, 25 HARV. J.L. & TECH. 673 (2012).

Corcoran, III, Peter J., Strategies to Save Resources and Reduce E-Discovery Costs in Patent Litigation, 21 TEX. INTELL. PROP. L.J. 103 (2013).

Crawley, Diane H., America Invents Act: Promoting Progress or Spurring Secrecy?, 36 U. HAW. L. REV. 1 (2014).

Marino, Fabio E. & Teri H.P. Nguyen,

The Unforeseen Consequences of the AIA, 30 SANTA CLARA HIGH TECH. L.J. 527 (2014). McAughan, Bob, Time to Justice: Seven Hours or Seven Days?, 4(3) LANDSLIDE44 (2012). Medlock Jr., George D. & David Frist, Joinder: Over a Year after the America Invents Act, 5(4)

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