Wednesday, May 9, 2012

Guest Blogger--David Taylor on Patent Misjoinder

Many thanks to Sarah Tran for highlighting my most recent scholarship on the Written Description blog yesterday and permitting me the opportunity to post a short response.

The blog entry was particularly timely. Just this past Friday the Federal Circuit resolved the split of authority among district courts applying Federal Rule of Civil Procedure 20, which governs permissive joinder, in patent infringement cases. See In re EMC Corp., slip op. (Fed. Cir. May 4, 2012) (granting a petition for writ of mandamus). The Federal Circuit ultimately ordered the district court to reconsider the issues of severance and joinder of accused infringers using a standard articulated in the opinion.

In the heart of the opinion, the Federal Circuit rejected an approach to permissive joinder that finds its roots in MyMail, Ltd. v. Am. Online, Inc., 223 F.R.D. 455 (E.D. Tex. 2004). As I describe in my article, that approach turned on whether the accused infringers showed, after the completion of fact discovery, that their accused products or processes were “dramatically different.” As the Federal Circuit noted, “[t]hat standard seems to require little more than the existence of some similarity in the allegedly infringing products or processes, similarity which would exist simply because the same patent claims are alleged to be infringed.” Instead, the Federal Circuit focused on whether “the facts underlying the claim of infringement asserted against each defendant share an aggregate of operative facts.” According to the Federal Circuit, “[u]nless 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.”

The opinion, in my view, correctly interprets Rule 20. Indeed, the Federal Circuit’s analysis is strikingly similar to my analysis of Rule 20 and the policies underlying the issues of joinder, severance, and consolidation. As the Federal Circuit highlighted, however, its resolution of the split of authority does not resolve significant interpretative questions raised by 35 U.S.C. § 299, which now governs both joinder and consolidation for trial in most patent infringement cases filed since September 16, 2011. And a primary focus of my article is the proper interpretation of language in 35 U.S.C. § 299 that does not find antecedent basis in the Federal Rules of Civil Procedure, the “same accused product or process.” In short, the opinion necessarily leaves unanswered several important questions I address in my article. And the answers to those questions will impact more and more patent infringement cases going forward.