George Strait unintentionally penned an anthem for the patent trolls who keep trying to settle down in the Eastern District of Texas. But, as we’ve told you before, the Federal Circuit continues to send them elsewhere—like Utah, Arizona, Massachusetts, and California—most of the time.
In re EMC Corp., No. 2011-m100 (Fed. Cir. May 4, 2012) (Judges Rader, Dyk, and Moore)
This petition for a writ of mandamus—a special order to tell the district court to do something—is a little different from the other ones we’ve seen, since the Federal Circuit had to decide two things: (1) whether it was appropriate to break up the single patent infringement case against 18 defendants into at least 7 cases against individual defendants, and (2) whether to move the broken up cases out of Texas.
The Federal Circuit first noted that whether a writ of mandamus can be used for motions to sever and transfer (as opposed to motions to transfer only) is a question of first impression at the court. It concluded that adding the “sever” request didn’t create “meaningful distinction” from motions to transfer.
Then the court decided that these defendants needed to break up. The court set a high bar for joining patent infringement claims against multiple defendants:
Joinder of independent defendants is only appropriate where the accused products or processes are the same in respects relevant to the patent. But the sameness is not sufficient. Claims against independent defendants (i.e., situations in which the defendants are not acting in concert) cannot be joined under Rule 20’s [of the Federal Rules of Civil Procedure] transaction-or-occurrence test unless the facts underlying the claim of infringement asserted against each defendant share an aggregate of operative facts.
(See page 15 of the EMC order.) Stated more simply, a case has to involve the same infringing product or process and the same facts related to infringement—and coincidence won’t do. There must be an “actual link” between the facts. In this case, which involved infringement actions against companies in the online data storage and backup space, the fact that the defendants were all doing the same allegedly infringing thing wasn’t enough to justify lumping them into one litigation.
One other interesting note—this case was filed just a couple of days before the America Invents Act was signed. The new law specifically addresses the joinder question. It says that accused infringers can only be joined in the same litigation if the infringement claims involve the same transaction or occurrence and the same accused product or process. So the Federal Circuit’s test might be short-lived, since the new law will resolve this challenge in patent infringement cases filed after September 16, 2011 against multiple defendants. But since this provision isn’t retroactive, the court established this test to deal with situations like this one.
In re Amazon.com Inc., No. 2012-m115 (Fed. Cir. May 1, 2012) (Judges Rader, Linn, and Prost) (nonprecedential)
Moving a case from Texas to Texas wasn’t a successful maneuver for Amazon.com. It asked the lower court to transfer this suit from the Eastern District of Texas (which tends to be a troll-friendly forum) to the Western District of Texas. The district court denied the motion because, in its view, the Western District wasn’t clearly more convenient than the Eastern District—it was more like 6 of one, half a dozen of another.
The Federal Circuit agreed. None of the parties were headquartered in the Western District, the documents were located in places nearer to the Eastern District, and witnesses were at least as close to the Eastern District as to the Western District. So the court couldn’t say that the lower court had abused its discretion in denying Amazon.com’s motion to transfer.
Maybe Amazon.com would have been better off trying to hang its hat across state lines, like George Strait.