IP: Federal Circuit’s clarification of joinder rules in patent cases may help some defendants

Multi-defendant cases filed before the America Invents Act get a break in recent ruling

35 U.S.C. § 299, part of the America Invents Act (AIA), enacts important changes to the rules governing joinder of defendants in patent litigation cases commenced on or after Sept. 16, 2011, the date of its enactment. Specifically, the new law provides that, other than in Hatch-Waxman cases, accused defendants can neither be joined in one action nor have their cases consolidated for trial based solely on the fact that they were all accused of infringing the same patent.

Instead, joinder is now only possible if the defendants are liable ‘‘jointly, severally, or in the alternative with respect to or arising out of the same transaction, occurrence, or series of transactions or occurrences” and “questions of fact common to all defendants or counterclaim defendants will arise in the action.”

Nevertheless, the magistrate judge denied the motions, noting that all defendants faced common questions of claim validity, construction and scope, and reasoning that the claims arose out of the same transaction or occurrence since the accused services “were not dramatically different.” The petitioners then sought a writ of mandamus from the Federal Circuit.

After deciding the threshold issue of whether mandamus was an appropriate means to test a district court’s decision on a motion to sever and transfer—a matter of first impression—the Federal Circuit turned to the issue of severance. With regard to the question of “under what circumstances is the joinder of independent actors permissible,” the court stated it was clear 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.”


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Cullen Pendleton

Cullen Pendleton, Ph.D., is a litigation partner at Marshall, Gerstein & Borun LLP. He is an alumnus of the University of Houston, the University...

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