Richard A Williamson v. Citrix Online LLC et al

Filing 254

MINUTES (IN CHAMBERS): ORDER by Judge A. Howard Matz: granting 199 Motion to Dismiss Salesforce.com, Inc. and Dimdim Inc. for Misjoinder. The Court DISMISSES Salesforce.com, Inc. and Dimdim, Inc. from this action. (kbr)

O
UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES - GENERAL
Case No.

CV 11-2409 AHM (JEMx)

Title

RICHARD A. WILLIAMSON V. CITRIX ONLINE LLC

Present: The
Honorable

Date

June 29, 2012

A. HOWARD MATZ, U.S. DISTRICT JUDGE

Stephen Montes

Not Reported

Deputy Clerk

Court Reporter / Recorder

Attorneys NOT Present for Plaintiffs:

Proceedings:

Tape No.

Attorneys NOT Present for Defendants:

IN CHAMBERS (No Proceedings Held)

Defendants Salesforce.com, Inc. and Dimdim, Inc., (collectively, “Salesforce”)
have moved to be dismissed for misjoinder pursuant to Fed. R. Civ. P. 21.1 For the
following reasons, the Court GRANTS Salesforce’s motion for dismissal.
I.

BACKGROUND

On March 22, 2011, Plaintiff Richard A. Williamson filed this case, which alleges
that Salesforce and twelve other defendants infringed on U.S. Patent No. 6,155,840 (“the
’840 patent”). The ’840 patent pertains to remote meeting technology. It describes a
“System And Method For Distributed Learning,” which provides “training through the
use of multiple streaming video feeds and data sharing over a network . . . .” Plaintiff
contends that Salesforce infringes the ’840 patent with two specified products: (1)
Salesforce’s old, remote meeting technology (“legacy software”), and (2) a service
integrating Salesforce’s cloud computing platform with Defendant Adobe System Inc.’s
(“Adobe”) remote meeting software (“the integrated service”). See Compl. ¶ 43; Pl.’s
Opp’n 11, Dkt. 204.
1.

Salesforce’s Legacy Software

Plaintiff alleges that Salesforce’s legacy software, which includes web meeting and
virtual classroom capabilities, violates the ’840 patent. (Compl. ¶ 43.) From December
2008 until its acquisition by Salesforce.com, Inc. in January 2011, Dimdim sold the

1

Dkt. 203.

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UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES - GENERAL
Case No.

CV 11-2409 AHM (JEMx)

Date

Title

June 29, 2012

RICHARD A. WILLIAMSON V. CITRIX ONLINE LLC

legacy software. (Corrected Mot. to Dismiss 2.) Salesforce claims that it no longer sells
the legacy software to new customers and has not done so since the acquisition of
Dimdim on January 6, 2011. (Corrected Mot. to Dismiss 2.) While there is no dispute
that Salesforce.com, Inc. could have successor liability for Dimdim, Inc.’s conduct,
Plaintiff has made no contention that any other Defendant has been involved in any stage
of the development or distribution of the legacy software. Thus, Plaintiff’s claims with
regard to the legacy software are confined to Salesforce and have no bearing on the
liability of any other Defendant.
2.

The Adobe–Salesforce Integrated Service

Plaintiff mentioned the integrated service for the first time in his opposition to this
motion. The opposition is not clear about what the integrated service actually is or how it
functions. As best as the Court can understand, the integrated service consists of two
combined parts: (1) Salesforce’s platform, which Plaintiff does not claim to be infringing,
and (2) Adobe Connect, a product made and sold by Adobe, which Plaintiff does claim to
be infringing the ’840 patent. (Compl. ¶ 42.) Envisiontel, a third party, stitched together
these two parts to form the integrated service. (Pl.’s Opp’n 4; Defs.’ Reply 14.). Plaintiff
argues that the integrated service infringes the ’840 patent because Adobe Connect is part
of it (Pl.’s Opp’n 4) and that Salesforce infringes “by facilitating the use of Adobe
Connect within Salesforce.com.” (Pl’s Opp’n 11.) Plaintiff admits, however, that
Adobe, and not Salesforce, is the seller. (Pl.’s Opp’n 4.)
Prior to his opposition to this motion, Plaintiff made no mention of the integrated
service or of a connection between Salesforce and any other Defendant. During
discovery, in an interrogatory, Defendant asked Plaintiff to list his contentions regarding
infringement of the’840 patent by each accused Salesforce product. (Decl. of Aden M.
Allen Ex. 2, at 2.) In response Plaintiff mentioned only the legacy product but did not
mention Adobe or the integrated service.2 (Defs.’ Reply 10.) Salesforce further contends
that during the meet and confer process for this motion, Plaintiff never mentioned any

2

In his response to the interrogatory, Plaintiff objected to the interrogatory as premature, and he
provided a response “subject to supplementation, modification, and/or amendment based on further
information to be obtained through fact and expert discovery and claim construction proceedings.”
(Decl. of Aden M. Allen Ex. 2, at 3.)
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UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES - GENERAL
Case No.

CV 11-2409 AHM (JEMx)

Date

Title

June 29, 2012

RICHARD A. WILLIAMSON V. CITRIX ONLINE LLC

connection between Salesforce and any other Defendant. (Defs.’ Reply 11.) Moreover,
Plaintiff has made no assertion that Salesforce and Adobe share any other relationship,
have any licensing or technology agreement with each other, use identically sourced
components, or have products that overlap in their development and manufacture.
II.

LEGAL STANDARD

An improperly joined defendant may be dismissed from an action under Fed. R.
Civ. P. 21. See In re EMC Corp., 677 F.3d 1351, 1356 (Fed. Cir. 2012). In analyzing
dismissal of a defendant under Rule 21, the Court applies the requirements of Rule 20.
See id. Rule 20 has two independent requirements for proper joinder of parties as
defendants: (1) any right to relief must be “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 (2) “any question of law or fact common to
all defendants will arise in the action.” Fed. R. Civ. P. 20(a) (emphasis added); see also
In re EMC Corp., 677 F.3d at 1356.
In patent infringement cases, Federal Circuit law governs whether a defendant
should be dismissed from an action for improper joinder. See id. at 1354 (“[M]otions to
sever are governed by Federal Circuit law because joinder in patent cases is based on an
analysis of the accused acts of infringement, and this issue involves substantive issues
unique to patent law.”). In a patent infringement case, in order for a right to relief to arise
out of the same transaction or occurrence a logical relationship must exist between the
causes of action against each defendant. Id. at 1358. Satisfying this logical relationship
test requires more than the mere sameness of the defendants’ products. Id. at 1359.
“[T]he defendants’ allegedly infringing acts, which give rise to the individual claims of
infringement, must share an aggregate of operative facts” to be part of the same
transaction or occurrence under Rule 20. Id. at 1358.
To determine whether there is a shared aggregate of operative facts, the Federal
Circuit has held that the Court may consider the following factors:3
[1] whether the alleged acts of infringement occurred during the same time
period, [2] the existence of some relationship among the defendants, [3]
3

These factors are not exhaustive. See In re EMC Corp., 677 F.3d at 1359.

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UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES - GENERAL
Case No.

CV 11-2409 AHM (JEMx)

Date

Title

June 29, 2012

RICHARD A. WILLIAMSON V. CITRIX ONLINE LLC

the use of identically sourced components, [4] licensing or technology
agreements between the defendants, [5] overlap of the products’ or
processes’ development and manufacture, and [6] whether the case
involves a claim for lost profits. The district court enjoys considerable
discretion in weighing the relevant factors.
Id. at 1359–60.
III.

ANALYSIS
1.

The Legacy Software

Plaintiff does not allege in the pleadings or argue in the opposition to this motion
that the legacy software is the result of a coordinated or concerted effort with any other
Defendant in this action. Other than the mere alleged “sameness” of the legacy software
and other Defendants’ various products, Plaintiff does not offer any “shared operative
facts” that give rise to the claims of infringement. The Federal Circuit has reasoned that
without such operative facts, “the sameness of the accused products is not sufficient” to
meet the requirements of Rule 20. See id. at 1359. Accordingly, the legacy software
alone cannot form the basis for joinder of Salesforce.
2.

The Integrated Service
A.

The Complaint Does Not Allege That the Integrated Service Infringes
the Patent

In his opposition to this motion, Plaintiff asserts for the first time that Salesforce
and Adobe acted in concert in infringing the ’840 patent. (Pl.’s Opp’n 4–5, 11, Jan. 9,
2012.) Specifically, Plaintiff made no reference to the integrated service in his
Complaint, his interrogatory responses, or during the meet and confer with Salesforce
regarding this motion.
Moreover, August 29, 2011 was the last date to amend the pleadings,4 unless
4

Although the Scheduling Order (Dkt. 178) states that August 29, 2012 is the last day to amend
the pleadings, the Hearing Transcript of the Scheduling Conference (Dkt. 184) makes clear that the
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UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES - GENERAL
Case No.

CV 11-2409 AHM (JEMx)

Date

Title

June 29, 2012

RICHARD A. WILLIAMSON V. CITRIX ONLINE LLC

Plaintiff “discover[s] something in discovery that all together [sic] changes the whole
framework for going after all these deep pockets.” (Hr’g Tr. 32:9–11, Aug. 29, 2011,
Dkt. 184.) Salesforce asserts, and Plaintiff does not deny, that the new contentions about
Adobe and Salesforce in Plaintiff’s opposition are not based on discovery. Instead, the
contentions are based on public information that has been available to Plaintiff since the
allegedly infringing activity occurred. (Defs.’ Reply 10.) Since the contentions of
concerted activity have not been properly pled, they cannot form the basis for joinder of
Salesforce.
B.

Joinder Is Improper Even if the Court Considers Plaintiff’s
Allegations About the Integrated Service

Even considering the arguments in Plaintiff’s opposition to this motion, Plaintiff
still has not shown that joinder is proper with respect to the integrated service. Plaintiff
has made no claim that Salesforce and any other Defendant have entered into a licensing
or technology agreement, made or sold a product whose development or manufacture
overlaps, or used any identically sourced components. Plaintiff only alleges that a third
party, Envisiontel, stitched together Salesforce’s noninfringing platform and Adobe’s
infringing product to create an infringing integrated service. Other than the claim that
Adobe sells the infringing product, Plaintiff has made no argument that any other
Defendant has done anything in connection with Salesforce.
This case is similar to In re EMC Corp., in which multiple companies were sued
for infringing off-site computer data storage patents. 677 F.3d at 1353. In developing a
test for joinder in patent infringement cases, the Federal Circuit reasoned that allowing
joinder without a logical relationship between the separate causes of action would be
prejudicial to defendants by denying them the opportunity to present individualized
defenses, including on issues of infringement and on questions of claim construction. See
id. at 1355. Here, Salesforce has been lumped in with twelve other defendants, even
though no logical relationship exists between Salesforce and any Defendant other than
Adobe, and the claimed relationship between Adobe and Salesforce is neither logical nor
clear. Accordingly, joinder of Salesforce in this action was improper.

pleadings were deemed final at the hearing on August 29, 2011. The 2012 date was a typo.
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O
UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES - GENERAL
Case No.

CV 11-2409 AHM (JEMx)

Title

RICHARD A. WILLIAMSON V. CITRIX ONLINE LLC

IV.

Date

June 29, 2012

CONCLUSION

Based on the foregoing, the Court DISMISSES Salesforce.com, Inc. and Dimdim,
Inc. from this action.

No hearing is necessary. Fed. R. Civ. P. 78; Local Rule 7-15.
:
Initials of Preparer

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