Multi–Defendant Patent Litigation, or the Hydra–Headed Zombie

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Multi–Defendant Patent Litigation, or the Hydra–Headed Zombie


Once upon a time—stop me if you’ve heard this one before—patent–owners could file lawsuits against dozens of unrelated defendants in the same lawsuit under the theory that allegedly infringing the same patent created common issues of law or fact among those defendants. That was true, at least, in a minority of federal district courts, which took a very broad view of what counted as the “same transaction or occurrence,” the magical words that authorized joinder of defendants in a single case. Because one of the judicial districts that favored the minority view was the Eastern District of Texas, one of the most popular patent venues in the country, patent litigants paid attention, and patent defendants paid the price.

But Congress waived its legislative wand and united the country under a single rule, 35 U.S.C. § 299, a codification of the majority rule that joinder of multiple, unrelated defendants could not be based simply on alleged infringement of the same patent. Congress noted that it was creating this new statute to resolve the dispute among the district courts over which rule applied. (For legislative history nuts, see America Invents Act Report, 112 Cong. Rept. 112–98, 54–55 & n.61 (June 1, 2011)). And the parties all litigated happily ever…well, okay, virtually no one litigates happily, but at least the rules of the game were clear.

But then, as highlighted by the invaluable Docket Navigator, the multi–defendant patent action would not succumb, and continues to divide courts dealing with cases filed before the effective date of the new rule (September 16, 2011). Thus, a federal court in the Central District of California can rule one day that claims of patent infringement against unrelated defendants cannot be joined together even if the defendants are alleged “to use the same or similar infringing technologies.” And the next day, a United States magistrate judge in the Eastern District of Texas can conclude that unrelated defendants that make and sell cell phones that “rely on the same technology” can be joined together in a single action.

Most interestingly (alarmingly?), the Texas magistrate judge further suggested that, although the newly enacted 35 U.S.C. § 299 did not apply to the case, the fact that the defendants “make similar products that use the same technology and in many instances the same sensor or processor” means that “Defendants in this case are not merely accused of making or selling similar products that infringe the same patents” (emphasis added).

To quote Gene Wilder in the title role in Young Frankenstein, “Alive…it’s alive…it’s alive.”

Posted by David Swetnam-Burland

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