Application of the Joinder Clause under the America Invents Act in the Context of Mobile Phone Technology

Abstract

Before 35 U.S.C. § 299 was enacted, some minority district courts had permitted\r\njoinder of independent defendants only because they infringe the same patents. That\r\ngave a great incentive to non-practicing entities to sue as many defendants as possible\r\nin one suit. To resolve this problem, Congress created § 299(b) to abrogate the\r\nminority view of joinder. The Federal Circuit in In re EMC Corp. also created a test\r\nrequiring finding of “an actual link between the facts underlying each claim of\r\ninfringement.” The Federal Circuit provides six EMC factors for lower courts to\r\ndetermine permissive joinder. The Eastern District of Texas relies primarily on “the\r\nuse of identically sourced parts” to find joiner, while other district courts have denied\r\njoinder of direct competitors. Particularly, in mobile phone technology cases, the\r\nEastern District of Texas has permitted joinder only because the same hardware\r\ncomponent is used, while other courts may find misjoinder only because mobile\r\ndevices of one manufacturer’s operational system are not the same as mobile devices\r\nof another manufacturer’s operational system.