Morris Reese v. Sprint Nextel Corporation et al

Filing 8

ORDER TO SHOW CAUSE WHY DEFENDANTS SHOULD NOT BE SEVERED UNDER 35 U.S.C. § 299 by Judge Otis D. Wright, II: The Court therefore ORDERS Reese to SHOW CAUSE no later than July 12, 2013, why all named Defendants but the first-named Defendant (Sprin t Nextel) should not be severed from this action as improperly joined under § 299. Each Defendant is also invited (but not required) to file a brief statement of position on § 299 misjoinder on or before July 12. In the meantime, each Defendants time to answer or otherwise respond to Reeses Complaint is hereby SUSPENDED until further notice by the Court. (lc)

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UNITED STATES DISTRICT COURT

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CENTRAL DISTRICT OF CALIFORNIA

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MORRIS REESE,
v.

Case No. 2:13-cv-3811-ODW(PLAx)
Plaintiff,

SPRING NEXTEL CORPORATION; TMOBILE US, INC.; TRACFONE
WIRELESS, INC.; UNITED STATES
CELLULAR CORPORATION dba U.S.
CELLULAR; AT&T MOBILITY LLC;
and CELLCO PARTNERSHIP dba
VERIZON WIRELESS,

ORDER TO SHOW CAUSE WHY
DEFENDANTS SHOULD NOT BE
SEVERED UNDER 35 U.S.C. § 299

Defendants.

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Joinder is normally governed by Federal Rule of Civil Procedure 20. But in late
2011, Congress passed the Leahy-Smith America Invents Act, which (among other
things) altered the standard for joinder in patent suits. Leahy-Smith America Invents
Act, Pub. L. No. 112-29, sec. 19(d), § 299, 125 Stat 284, 332–33 (2011) (codified at
35 U.S.C. § 299). This statute sets a higher standard for joinder and prohibits joinder
unless the claimed infringement by each defendant arises out of the same transactions
relating to infringement of the patent-in-suit by the same accused product:
(a) Joinder of Accused Infringers.— With respect to any civil action
arising under any Act of Congress relating to patents, other than an action
or trial in which an act of infringement under section 271(e)(2) has been

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pled, parties that are accused infringers may be joined in one action as
defendants or counterclaim defendants, or have their actions consolidated
for trial, or counterclaim defendants only if—

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(1) any right to relief is asserted against the parties jointly,
severally, or in the alternative with respect to or arising out
of the same transaction, occurrence, or series of transactions
or occurrences relating to the making, using, importing into
the United States, offering for sale, or selling of the same
accused product or process; and

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(2) questions of fact common to all defendants or
counterclaim defendants will arise in the action.

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(b) Allegations Insufficient for Joinder.— For purposes of this
subsection, accused infringers may not be joined in one action as
defendants or counterclaim defendants, or have their actions consolidated
for trial, based solely on allegations that they each have infringed the
patent or patents in suit.

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(c) Waiver.— A party that is an accused infringer may waive the
limitations set forth in this section with respect to that party.
35 U.S.C. § 299.

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Here, Plaintiff Morris Reese has sued Sprint, T-Mobile, TracFone Wireless,

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U.S. Cellular, AT&T Mobility, and Verizon Wireless. He alleges that each of these

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wireless carriers has individually infringed on U.S. Patent No. 6,868,150 by offering

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wireless mobile telephone services, including Caller ID and Call Waiting,
that let’s [sic] you (1) hear on your cellular mobile phone an audible
notification such as a call waiting tone alert which indicates an incoming
(waiting) call while you’re already engaged in a call and, if applicable,
let’s [sic] you (2) see on a [sic] LCD display [sic] of your cellular mobile
phone a telephone number (DN) associated with the incoming (waiting)
call. Compl. ¶ 33.

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Based on this allegation, the Court cannot discern that any of these wireless

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carriers has anything in common beyond having allegedly infringed the ’150 Patent.

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See § 299(b). The Court therefore ORDERS Reese to SHOW CAUSE no later than

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July 12, 2013, why all named Defendants but the first-named Defendant (Sprint

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Nextel) should not be severed from this action as improperly joined under § 299.

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Each Defendant is also invited (but not required) to file a brief statement of position

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on § 299 misjoinder on or before July 12. In the meantime, each Defendant’s time to

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answer or otherwise respond to Reese’s Complaint is hereby SUSPENDED until

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further notice by the Court.

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IT IS SO ORDERED.

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June 14, 2013

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____________________________________
OTIS D. WRIGHT, II
UNITED STATES DISTRICT JUDGE

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