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.