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.”
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.
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.