Federal Circuit Clears a Path for Defendant Motions to Transfer with In re EMC Corp. Order


On January 29, 2013, the Federal Circuit issued its second mandamus decision in In re EMC Corp., 2013 WL 324154 (Fed. Cir. Jan. 29, 2013). Although the appellate court ultimately denied a petition for a writ directing the district court to transfer venue from the U.S. District Court for the Eastern District of Texas, the decision holds some promise for defendants seeking transfer in patent cases.

The petitioners were two of 18 companies originally named as defendants in a single complaint filed by Oasis Research in the Eastern District of Texas. Oasis claimed that the defendants’ separate online data storage services infringed four of its method patents. In the first petition for writ of mandamus, four defendants asked the Federal Circuit to direct the district court to sever and transfer the claims to other venues. The Federal Circuit found that in order to join parties in an action, there must be a “logical relationship” between them, in which “the defendants’ allegedly infringing acts, which give rise to the individual claims of infringement, must share an aggregate of operative facts.” In re EMC Corp., 677 F.3d 1351, 1359 (Fed. Cir. 2012).

The Federal Circuit rejected the “not dramatically different” joinder test used by the district court as requiring “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” and accordingly granted the writ of mandamus, vacating the district court’s order denying the motions to sever and transfer. Id. After reconsidering the defendants’ motions in light of the Federal Circuit’s first mandamus decision, the district court severed the matter into four separate cases, and again denied the defendants’ motion for transfer in separate orders. For a second time, Defendants EMC and Carbonite petitioned for a writ of mandamus with regard to the district court’s denial of their motions for transfer.

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Topics:  Appeals, Joinder, Motion To Sever, Patents, Transfer of Venue, Writ of Mandamus

Published In: Civil Procedure Updates, Intellectual Property Updates

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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