Everything’s Different, Nothing’s Changed

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Everything’s Different, Nothing’s Changed


Perhaps Stephen Sondheim had the America Invents Act in mind when he wrote the lyrics to “Sorry–Grateful” for his show Company: “Everything’s different, nothing’s changed / Only maybe slightly rearranged.”

Back in September 2011, Congress created a new statute, 35 U.S.C. § 299, as part of the America Invents Act, intended to prevent plaintiffs from suing multiple unrelated defendants in a single patent action based on nothing more than allegations that they all allegedly infringed the same patent. Section 299 was to be the death–knell for the multi–defendant patent actions clogging up the courts.

Then in early May we learned from the Federal Circuit Court of Appeals that the courts that had been applying the old rule in a way contrary to Section 299 had been applying the old rule wrong. While avoiding any formal holding on the difference between the old rule (rightly construed) and the new rule, the Federal Circuit did not seem to leave much daylight between them.

Last week found two different sets of judges grappling with further consequences of Section 299 for patent litigation. In one case, the Judicial Panel on Multidistrict Litigation appeared to conclude that Section 299 did not materially change its authority to consolidate multiple patent actions pending in different jurisdictions before a single judge for pretrial purposes: “While the AIA changed the landscape of patent litigation—particularly the filing of actions against multiple unrelated defendants and the right to a separate trial when defendants are only accused of violating the same patent—it does not follow that the mere possibility of factual disputes regarding a particular invalidity defense or the infringement of a particular product that might need to be presented to a jury (or juries) is sufficient to deny centralization of actions otherwise involving common factual questions. Nor should such a determination automatically trump the pretrial efficiencies (notably in having a single judge construe the patent’s claims, as opposed to five judges in various districts) that can be gained from centralizing this litigation.”

In Re Maxim Integrated Prods (JPML June 20, 2012)


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In a second case, a magistrate judge in east Texas asked the parties to multiple lawsuits asserting the same patent(s) against unrelated defendants to come to a “combined scheduling conference” prepared to discuss questions regarding how the court should handle “‘serially’ filed cases, i.e., separate cases involving the same patent(s) filed near in time and naming different individual defendants.” Specifically, Magistrate Judge Craven wanted input from the parties on (1) what factors (or facts) other than the common patents could create common issues; (2) the appropriateness of consolidating the cases under Fed. R. Civ. P. 42 to alleviate administrative pressure on the court while serving the interests of the parties; (3) how individual trials should be structured in the event of such consolidation; (4) what effect pending motions to transfer should have on the management of the case, and when such motions should be decided; (5) what tools other than consolidation could be used to promote judicial efficiency and alleviate administrative pressure; and (6) whether there should be a combined claim construction hearing.

TQP Development (ED Tex June 21, 2012)


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We pause for a moment to reflect. If the Federal Circuit tells us that the old rule looks a lot like the new rule, the Judicial Panel on Multidistrict Litigation tells us that AIA doesn’t necessarily impact its consideration of whether to consolidate cases against unrelated defendants in multiple districts, and the district court in east Texas suggests that it is looking for ways to consolidate cases against unrelated defendants in the same district, then what does Section 299 actually change? One real change is that none of these courts appears to believe that multiple unrelated defendants can be ordered to defend themselves in the same trial. In light of recent developments, however, one may well ask whether that will prove to be the one and only real change achieved by Congress through the enactment of Section 299.

Posted by David Swetnam-Burland

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