This article previously appeared in Last Month at the Federal Circuit, June 2012
Judges: Rader, Dyk (author), Moore
| [Appealed from E.D. Tex., Judge Schneider] |
In In re EMC Corp., No. 11-M100 (Fed. Cir. May 4, 2012), the Federal Circuit granted petitioners' writ of mandamus, directing the district court to reconsider the defendants' motions to sever and transfer in light of the correct test under Fed. R. Civ. P. 20(a) to determine whether the claims "aris[e] out of the same transaction, occurrence, or series of transactions or occurrences." Slip op. at 3 (alteration in original) (quoting Fed. R. Civ. P. 20(a)).
Oasis Research LLC ("Oasis") brought suit against eighteen companies for infringement of four patents directed to off-sight computer storage, alleging infringement by the defendants' respective online backup and storage services. Eight of the eighteen companies moved to sever and transfer the claims to other venues. The district court denied those motions, finding nothing improper about maintaining the claims in one action in the Eastern District of Texas because there would be common questions of validity, claim construction, and scope of the asserted patents, and that the claims arose "out of the same transaction, occurrence, or series of transactions or occurrences" because the products were "not dramatically different." Id. at 4 (citation omitted).
Initially, the Federal Circuit noted that mandamus was available since a defendant would not otherwise have an adequate remedy for an improper failure to transfer or sever the case after final judgment because the defendant would be unable to demonstrate that it would have won the case had it been tried elsewhere. Next, the Court stated that Fed. R. Civ. P. 20(a)(2) has two independent requirements: (1) that the claims against the joined defendants must be asserted "with respect to or arising out of the same transaction, occurrence, or series of transactions or occurrences"; and (2) that there must be a "question of law or fact common to all defendants." Id. at 9 (quoting Fed. R. Civ. P. 20(a)(2)). The Federal Circuit explained that the fact that the defendants are independent actors would not preclude joinder as long as the rule is satisfied, but that a single common question of law or fact alone is insufficient and the mere fact that a plaintiff alleges infringement is insufficient, although the claims would raise common questions of claim construction and patent validity.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
