In September 2011, Congress passed the Leahy-Smith America Invents Act (“AIA”), which implemented a number of changes to the U.S. patent system. Notably, Congress took aim at a proliferation of patent infringement suits strategically directed to multiple unrelated defendants. In many of these cases, often the only fact common to the various defendants was that they were being sued for infringing the plaintiff’s patent. Prior to the passage of the AIA, joinder issues in patent infringement suits had been governed by Rule 20 of the Federal Rules of Civil Procedure, and a minority of jurisdictions (primarily, the Eastern District of Texas) had followed an interpretation of Rule 20 that allowed plaintiffs to successfully maintain multidefendant patent suits involving many unrelated defendants.
Section 299 of the AIA modified the standard for joinder in patent infringement suits. While actions filed prior to the AIA’s effective date remain governed by Rule 20, infringement suits filed after the AIA’s effective date are subject to the higher joinder standard provided by Section 299 of the AIA, codified at 35 U.S.C. § 299 (“Section 299”). Whereas previously some courts (again, primarily in the Eastern District of Texas) had blessed multidefendant patent suits where there were few or no common questions of fact amongst the defendants, Section 299 permits joinder only where the claims against the defendants arise out of “the same transaction, occurrence, or series of transactions, or occurrences relating to the making, using, importing into the United States, offering for sale, or selling of the same accused product or process” and “questions of fact common to all defendants or counterclaim defendants will arise in the action.” 35 U.S.C. § 299(a)(1)-(2) (emphasis added). Now, absent waiver, accused infringers may not be joined together “based solely on allegations that they each have infringed the patent or patents in suit.” Id. § 299(a)(2).
The AIA’s joinder provision marked a significant response to non-practicing entities, who had been the most conspicuous and prolific of plaintiffs filing the multidefendant suits targeted by Section 299. The legislative history makes it clear that non-practicing entities were, in fact, in the crosshairs. But while the Federal Circuit has not yet taken the opportunity to interpret the law, recent developments in the district courts suggest that Section 299 is not shaping up to be the panacea that Congress intended.
The Indefatigable MyMail Precedent
Prior to passage of the AIA, district courts typically applied Rule 20 of the Federal Rules of Civil Procedure to determine when permissive joinder was appropriate in a patent infringement suit. Rule 20 allows plaintiffs to join defendants if “(a) any right to relief is asserted against them jointly, severally, or in the alternative with respect to or arising out of the same transaction occurrence, or series of transactions or occurrences; and . . . (b) any question of law or fact common to all defendants will arise in the action.” Fed. R. Civ. P. 20 (emphasis added). Rule 20 appears to be, however, virtually identical to the patent-specific joinder requirements in Section 299. Indeed, commentators have observed that the plain language interpretation of Rule 20 is “substantively identical to the conditions set forth in section 299.” Chandran B. Iyer & Ryan M. Corbett, Joinder Limitations in the America Invents Act: Big Change?, ABA Intell. Prop. Lit. Comm., February 20, 2012, available at http://apps.americanbar.org/litigation/committees/intellectual/articles/winter2012-joinder-limitationsamerica-invents-act.html.
Query, then, why draft and pass Section 299? The legislative history reveals a surprisingly simple answer: some courts, principally in the patent-heavy Eastern District of Texas, were applying an alternative interpretation of Rule 20 that originated in MyMail, Ltd. v. AOL, Inc., 223 F.R.D. 455 (E.D. Tex. 2004) (Davis, J.). See 157 Cong. Rec. S5429 (daily ed. Sept. 8, 2011) (statement of Sen. Kyl) (observing that Section 299 “effectively codifies current law as it has been applied everywhere outside of the Eastern District of Texas”); see also Tracie L. Bryant, The America Invents Act: Slaying Trolls, Limiting Joinder, 25 Harv. J. L. & Tech. 673, 687-88 (2012) (collecting and discussing citations to Section 299’s legislative history).
In MyMail, the plaintiff sued eight parties for infringement of a patented method and apparatus for accessing a computer network by a roaming user. Some of the defendants moved to sever and transfer the claims against them, and argued that the claims against them failed to meet the “same transaction or occurrence” test of Rule 20. The court denied the motion, reasoning that the “same transaction or occurrence” test of Rule 20 was met as long as “there is some nucleus of operative facts or law.” MyMail, 223 F.R.D. at 456 (emphasis added). And because the same patent was asserted against all defendants, the court continued, joinder was appropriate because the plaintiff’s claims against the defendants involved the “legal question as to the. . . [asserted] patent’s scope.” Id. In effect, MyMail opened the door to the joinder of unrelated defendants where the claims shared only legal questions like claim construction and patent validity.
The MyMail interpretation of Rule 20 was faithfully followed by other courts in the Eastern District of Texas, a fact assiduously noted in the House Report on the AIA: “Section 299 legislatively abrogates the construction of Rule 20(a) [enumerated in five cases out of the Eastern District of Texas].” H. R. Rep. No. 112-98, at 55 n. 61.
Predictably, patent infringement defendants sued in the Eastern District of Texas chaffed under the MyMail rule. The MyMail rule often pitted non-practicing entities against a multitude of unrelated defendants, who found themselves burdened with problems that were, as one practitioner described, “anything but trivial.” Charles Gorenstein, America Invents Act Exercises “Con-Troll” Over Patent Litigation, Sept. 19, 2011, IPWatchdog.com, available at http://www.ipwatchdog.com/2011/09/19/con-troll-over-patent-litigation/id=19279.
For example, motions to transfer were often unsuccessful because the forced joinder of often disparate defendants amalgamated equally disparate concerns about efficiency and convenience, which in turn ensured that no other individual venue would likely be particularly convenient for all the parties. Id. Moreover, cooperation between codefendants was hampered by the fact that defendants often had “different accused products, differing business interests, and a host of other personal factors,” and were in fact sometimes direct business competitors who were (understandably) reluctant to share confidential information to coordinate a common defense. Id. And not least were the court-imposed constraints on the discovery phase, which sometimes limited depositions, discovery requests, and other motions practice such that defendants found themselves unable to adequately defend their individual interests. Id.
As Congress pointed out in drafting Section 299, supra, practically every other federal court in the country had rejected the MyMail rule. For example, one court observed that the MyMail rule in effect collapsed the two-element conjunctive test of Rule 20 into a mutated rule that required only common questions of law to permit joinder. Rudd v. Lux Prods. Corp. Emerson Climate Technologies Braeburn Sys., LLC, 2011 WL 148052, at *2 (N.D. Ill. Jan. 12, 2011) (agreeing that the MyMail rule “eviscerates the same transaction or occurrence requirement [of Rule 20] and makes it indistinguishable from the requirement that there be a common question of law or fact”). But because the Eastern District of Texas handled one of the heaviest patent dockets in the country, the MyMail rule wielded a disproportionately powerful effect on American patent litigation that persisted until Congress enacted the AIA.
Section 299: An Effective Weapon Against Trolls, or a Minor Adjustment to the Law?
Now that more than a year has passed since the AIA’s effective date, a handful of district courts have had the opportunity to analyze the heightened joinder standard in Section 299. If Congress’s goal was truly to adjust the balance of litigation bargaining power between patent trolls and their victims, the results appear mixed.
Unsurprisingly, plaintiffs have generally complied with the express requirements of Section 299. In the immediate aftermath of the AIA, many non-practicing entities “began to conform their practices: Instead of instituting one massive multidefendant infringement action, they would institute a multitude of separate but nearly identical patent infringement complaints against unrelated entities in the same court.” Macedo et al., AIA’s Impact On Multidefendant Patent Litigation: Part 2, Oct. 26, 2012, Law360.com, available at http://www.law360.com/ip/articles/387458/aia-s-impact-on-multidefendant-patent-litigation-part-2. And in cases involving unrelated patent infringement defendants, courts have applied Section 299 to sever improperly joined parties. For example, in Digitech Image Technologies, LLC v. Agfaphoto Holding GmbH, 2012 WL 4513805, at *1 (C.D. Cal. Oct. 1, 2012), a non-practicing entity sued 45 defendants for infringement of a patent teaching a device profile for use in a digital image processing system. Id. The defendants included retailers and manufacturers of various accused digital cameras. A single defendant brought a motion to sever for improper joinder under Section 299. Id. In response, plaintiff Digitech proffered arguments for joinder that the court deemed “creative” but ultimately rejected as meritless because the Digitech “essentially joined all Defendants in the known universe that make, import, sell, or offer to sell digital cameras that fall within the purview of the [asserted patent].” The court not only granted the movant’s motion to sever, it elected to sever and dismiss every other named defendant except for the first named defendant. Id.
Courts in the Eastern District of Texas have also evidently begun to apply Section 299 with some rigor. In Norman IP Holdings, LLC v. Lexmark Int’l, Inc., 2012 WL 3307942 (E.D. Tex. Aug. 10, 2012) (Davis, J.), the court dealt with a motion to sever defendants joined to the case after the AIA’s effective date. The complaint had been duly filed the day before the AIA came into effect, and had named two defendants as accused infringers. Over the next few months, plaintiff Norman IP Holdings subsequently added 23 additional defendants. Id. at *1. On motions to sever and transfer under Section 299 by 13 of the newly added defendants, the Norman court granted severance after acknowledging that “unrelated defendants in this case were improperly joined and should either be dismissed from the case or severed into their own cases.” Id. at *3. See also Phoenix Licensing, LLC v. Aetna, Inc., 2012 WL 3472973, at *2 (E.D. Tex. Aug. 15, 2012) (Gilstrap, J.) (determining one defendant improperly joined under Section 299 because only commonality between codefendants was “allegations of patent infringement”).
Pretrial Consolidation Under Federal Rule of Civil Procedure 42
Although courts appear to have faithfully followed the letter of the law in Section 299, it is a murkier question whether they have followed the spirit. While Section 299 clearly forbids one trial for codefendants who do not meet the heightened joinder standard, it does not speak to any phases of litigation other than trial. In Norman, the court severed the pertinent defendants into separate cases, but immediately ruled all “newly severed actions consolidated with the original filed case as to all issues, except venue, through pretrial only.” Norman, 2012 WL 3307942, at *4. Consolidation (under Fed. R. Civ. P. 42) was appropriate, the court reasoned, because separate discovery proceedings would “wast[e] judicial resources by requiring common issues to be addressed individually for each case.” Id.
Other courts in the Eastern District of Texas and in other jurisdictions have followed suit to consolidate separate actions involving unrelated defendants for pretrial proceedings. See, e.g., SoftView LLC v. Apple Inc., 2012 WL 3061027, at *11 (D. Del. Jul. 26, 2012) (consolidating newly-severed cases for all pre-trial purposes); C.R. Bard, Inc. v. Med. Components, Inc., 2012 WL 3060105, at *1-*2 (D. Utah Jul. 25, 2012) (same, and concluding that pre-trial consolidation is not “violative of the spirit of the AIA”); Rotatable Tech. LLC v. Nokia Inc., No. 2:12-cv-265 (E.D. Tex. filed May 1, 2012), ECF No. 60 (consolidating cases for pretrial purposes); Roy-G-Biv Corp. v. Abb Ltd., No. 6:11-cv-00622 (E.D. Tex. filed Nov. 15, 2011), ECF No. 51 (same).
Moreover, seeking pretrial centralization by the Multidistrict Litigation panel remains a viable option for plaintiffs who want to consolidate pretrial litigation against disparate defendants. See In re: Bear Creek Technologies, Inc., MDL 2344, 858 F. Supp. 2d 1375, 1377-78 (J.P.M.L. May 2, 2012) (concluding that Section 299 does not prohibit MDL coordination or consolidation for pretrial purposes).
At bottom, the federal courts’ “early run of pretrial consolidations suggests that pretrial life under the AIA for purposes of joinder may closely resemble the pretrial state of affairs before the AIA.” Macedo et al., supra. Under the current state of the law, patent plaintiffs (non-practicing entities and otherwise) should retain much of the tactical and strategic advantage that they held when they forced multiple unrelated defendants to jointly coordinate litigation, provided courts continue to follow the trend in consolidating pretrial litigation. Such a result seems problematic, and some observers have commented that consolidation may be an “end run” around Congressional purpose by, among other things, “reliev[ing] patent plaintiffs of the many financial impediments that Congress sought to impose on them.” Maya M. Eckstein et al., The (Unintended) Consequences of the AIA Joinder Provision § IV.D.i, AIPLA Spring Meeting, Austin, Tex., May 10-12, 2012, available at http://www.aipla.org/learningcenter/library/papers/SM/2012_Spring/Documents/2012SM-Materials/Eckstein_Paper.pdf.
The Road Ahead
To date, none of the patent cases filed under the AIA have reached trial. The courts have seen an uptick in “serially file[d] multiple single-defendant (or defendant group) cases involving the same underlying patents.” Norman, 2012 WL 3307942, at *4. Despite this fact, plaintiffs appear to have been reasonably successful in consolidating multiple cases for pretrial purposes. And open questions remain: for example, does pretrial consolidation circumvent Congress’s purpose and violate the spirit of Section 299? How should courts apply claim construction term limits to consolidated claim construction, where different defendants seek to construe completely different terms in different ways? If one defendant wins a summary judgment motion on non-infringement or other issues, how will it affect the other consolidated defendants? As the post-AIA suits proceed, the courts will certainly find opportunities to answer.