IP: The Federal Circuit’s joinder waffle

The America Invents Act’s non-joinder provision may be behind the court’s about-face

On May 4, in what appears to be an about-face from a March 2011 order in another case, the Federal Circuit granted a petition for writ of mandamus and vacated an Eastern District of Texas order denying motions to sever and transfer. In re EMC Corp., 2012 U.S. App. LEXIS 9159 (Fed. Cir. May 4, 2012). In the district court, 18 companies had been accused, in one complaint, of infringing three patents related to online backup and storage services. 

The case was filed before the America Invents Act (AIA), with its non-joinder provision, was enacted. The non-joinder provision (35 U.S.C. § 299) provides that accused infringers may only be joined in one action if the allegations of infringement “aris[e] 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.”

The court further held, “Unless 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.” Ultimately, the court directed the district court to reconsider the motions to sever and transfer applying the Federal Circuit’s test.

But in its 17-page order, the Federal Circuit did not cite, let alone attempt to distinguish, its March 4, 2011 order in In re Google Inc. (2011 U.S. App. LEXIS 4381 (Fed. Cir. March 4, 2011)). In that case, 23 defendants had been accused in the Eastern District of Texas of infringing two patents. Several of the defendants moved to transfer the entire case to the Northern District of California. Alternatively, these defendants asked that the claims against them be severed and transferred.

So what made Rule 20 relevant to the Federal Circuit’s analysis in In re EMC, and apparently irrelevant to its analysis in In re Google a year earlier? In their brief to the Federal Circuit, the petitioners in In re EMC brushed off In re Google in a single paragraph, arguing, inter alia, that the In re Google opinion did not refer to Rule 20 and “is an unpublished opinion that may not reflect the fully vetted and considered views of the Court.” But both the In re EMC and In re Google orders issued from three-judge panels. Judge Moore was on both panels and wrote the In re Google opinion.

Even though the non-joinder provision of the AIA did not technically govern either of these cases, the Federal Circuit’s about-face is likely explained, at least in part, by the fact that Congress had enacted the provision by the time the court considered the In re EMC petition. While not controlling, the provision nonetheless seemed to influence the court’s analysis. 

Contributing Author

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Marla Butler

Marla Butler is a trial lawyer and partner with the firm Robins, Kaplan, Miller & Ciresi L.L.P. She helps clients in the medical, semiconductor, LCD,...

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