Before 35 U.S.C. § 299 was enacted, a minority of district courts had permitted joinder of independent defendants merely because the same patent was infringed. That gave a great incentive to non-practicing entities to sue as many defendants as possible in one suit. To resolve this problem, Congress enacted § 299(b) to abrogate the minority view of joinder. In addition, the Federal Circuit in In re EMC created a test requiring finding of “an actual link between the facts underlying each claim of infringement.” The Federal Circuit provided six EMC factors for lower courts to determine permissive joinder. However, the Eastern District of Texas has relied primarily on the “use of identically sourced parts” factor to find joinder, while other district courts have denied joinder of direct competitors. Particularly, in mobile phone technology cases, the Eastern District of Texas has permitted joinder merely because the same hardware component is used, while other courts have found misjoinder merely because mobile devices of one manufacturer’s operational system are not the same as mobile devices of another manufacturer’s operational system. To resolve the inconsistency, this article offers a “certain connection” approach in light of Congress’ intent and the In re EMC decision. The approach focuses on connections between the infringement claims and the independent defendants.
IDEA: The Journal of the Franklin Pierce Center For Intellectual Property, Vol.56, No.1, pp.99-161