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Unpublished Paper
Joinder of Unrelated Infringers as Defendants in Patent Litigation under the Jurisprudence of the United States District Court for Eastern District of Texas—A Critical Review
ExpressO (2015)
  • Ping-Hsun Chen, National Chengchi University
Abstract

On September 16, 2011, the American patent system started a new era because of the enactment of the Leahy-Smith America Invents Act (“AIA”). 35 U.S.C. § 299 was enacted to limit district court’s power to permit joinder of unrelated infringers as defendants in a single lawsuit. Before that, district courts apply Rule 20 of the Federal Civil Procedure. The Eastern District of Texas had permitted joinder only because the same patent was infringed. By introducing § 299, Congress intended to abrogate such approach. Later, the Federal Circuit in In re EMC limited the practice of Rule 20 and required a finding of “an actual link between the facts underlying each claim of infringement.” EMC also offered six factors for determination of joinder. However, this article demonstrates that the Eastern District of Texas still prefers joinder of unrelated defendants. The court has taken the “actual link” standard to a next level. The court primarily looks to common facts regarding the accused products or processes. Particularly when products are accused, the third EMC factor “the use of identically sourced components” becomes a dispositive factor. The only rebuttal may be to prove that the accused products are “independently developed products using differently sourced parts.”

Keywords
  • America Invents Act,
  • Joinder,
  • 35 U.S.C. § 299,
  • Civil Procedure,
  • Patent
Disciplines
Publication Date
November 26, 2015
Citation Information
Ping-Hsun Chen. "Joinder of Unrelated Infringers as Defendants in Patent Litigation under the Jurisprudence of the United States District Court for Eastern District of Texas—A Critical Review" ExpressO (2015)
Available at: http://works.bepress.com/ping-hsun_chen/6/