Wireless Recognition Technologies LLC v. A9.com, Inc. et al

Filing 114

SUR-REPLY to Reply to Response to Motion re 94 MOTION to Consolidate Cases filed by A9.com, Inc., Amazon.com, Inc., Google, Inc.,, Nokia, Inc., Ricoh Innovations, Inc.. (Attachments: # 1 Exhibit D, # 2 Exhibit E, # 3 Exhibit F, # 4 Exhibit G, # 5 Exhibit H, # 6 Exhibit I)(Smith, Michael)

EXHIBIT F

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Slip Copy, 2011 WL 2192820 (N.D.Cal.)
(Cite as: 2011 WL 2192820 (N.D.Cal.))

add or drop a party.”
Only the Westlaw citation is currently available.
United States District Court,
N.D. California.
EIT HOLDINGS LLC, a Delaware company, Plaintiff,
v.
YELP!, INC., a Delaware corporation, et al., Defendants.
No. C 10–05623 WHA.
May 12, 2011.
Mark W. Good, P.J. Benedict O'Mahoney, Terra Law
Llop, San Jose, CA, Alisa Anne Lipski, Corby R.
Vowell, Edward W. Goldstein, Jody M. Goldstein,
Goldstein & Vowell LLP, Houston, TX, for Plaintiff.
Daralyn J. Durie, Jesse Geraci, Ryan Marshall Kent,
Durie Tangri LLP, San Francisco, CA, for Defendants.
ORDER DISMISSING ALL DEFENDANTS EXCEPT YELP!, INC. FOR MISJOINDER UNDER
FRCP 21
WILLIAM ALSUP, District Judge.
*1 Plaintiff EIT Holdings LLC named nine defendants in this patent-infringement action, accusing
each defendant of infringing the same two patent
claims. Following the voluntary dismissal of Memory
Lane, Inc., eight defendants remain. They are unrelated companies that operate unrelated websites. Significantly, they are not alleged to have acted in concert to infringe plaintiff's asserted patent. They share
no common transaction or occurrence.
As set forth in FRCP 20(a)(2), multiple defendants may be joined together in one action if “(A)
any right to relief is 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 (B) any question
of law or fact common to all defendants will arise in
the action.” In situations of misjoinder and nonjoinder of parties, FRCP 21 provides that “[o]n motion or
on its own, the court may at any time, on just terms,

“The Ninth Circuit has interpreted the phrase
‘same transaction, occurrence, or series of transactions or occurrences' to require a degree of factual
commonality underlying the claims.” Bravado Int'l
Group Merchandising Servs. v. Cha, 2010 WL
2650432, at *4 (C.D.Cal. June 30, 2010) (citing
Coughlin v. Rogers, 130 F.3d 1348, 1350 (9th
Cir.1997)). Typically, this means that a party “must
assert rights ... that arise from related activities—a
transaction or an occurrence or a series thereof.” Ibid.
Plaintiff argues that the issuance of its asserted patent
could qualify as a common transaction, but this argument is not supported by any binding authority
(Dkt. No. 84 at 3).
As stated, plaintiff has not alleged that the named
defendants in this action have engaged in related activities or have otherwise acted in concert. As such,
proof of infringement necessarily would require
proof of facts specific to each individual defendant
and to each accused website. The mere fact that the
nine defendants all operate websites that allow targeted advertising does nothing to obviate the bonecrushing burden of individualized methods of proof
unique to each website. Similarly, the fact that seven
of the defendants “are represented by the same counsel, who filed a single Answer and Counterclaims for
all seven” is not availing (id. at 2). Factual differences among the accused websites will require separate discovery, evidence, and proof regardless
whether the same or different lawyers are involved.
Plaintiff has not proposed—and defendants have not
consented to—a common method of proof. Again,
there is no conspiracy claim. There is no claim that
any defendant induced another to infringe. Each defendant has simply been thrown into a mass pit with
others to suit plaintiff's convenience.
In this connection, the accused defendants—who
will surely have competing interests and strategies—
also are entitled to present individualized assaults on
questions of non-infringement, invalidity, and claim
construction. Cf. Nasalok Coating Corp. v. Nylok
Corp., 522 F.3d 1320, 1326 (Fed.Cir.2008) ( “[W]e
have explicitly held that a determination of patent
infringement in an infringement suit, or even an ex-

© 2011 Thomson Reuters. No Claim to Orig. US Gov. Works.

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(Cite as: 2011 WL 2192820 (N.D.Cal.))
plicit determination of patent validity, does not preclude the assertion of an invalidity defense in a second action involving different products.”); Texas
Instruments, Inc. v. Linear Techs. Corp., 182
F.Supp.2d 580, 586 (E.D.Tex.2002) (recognizing that
“defendants in a later proceeding involving previously construed patents should have the opportunity
to brief and argue the issue of claim construction,
notwithstanding any policy in favor of judicial uniformity”).
*2 Plaintiff cannot escape the fact that it is suing
unrelated defendants for their own independent acts
of patent infringement. In such situations, numerous
courts have found that joinder is improper. See, e.g.,
Philips Elecs. N. Am. Corp. v. Contec Corp., 220
F.R.D. 415, 417 (D.Del.2004) ( “Allegations of infringement against two unrelated parties based on
different acts do not arise from the same transaction.”); Androphy v. Smith & Nephew, Inc., 31
F.Supp.2d 620, 623 (N.D.Ill.1998) (holding that the
joinder of three manufacturers in a patent infringement suit was improper because the claims did not
arise from a common transaction or occurrence when
the manufacturers were separate companies that independently designed, manufactured, and sold different products); New Jersey Mach. Inc. v. Alford Indus., Inc., 1991 WL 340196, at *2 (D.N.J. Oct.7,
1991) (holding in a patent infringement suit that
“claims of infringement against unrelated defendants,
involving different machines, should be tried separately against each defendant”).
The infringement issues will vary from defendant to defendant because, as explained at the case
management conference, their websites implement
different functionalities, through different software,
that works in different ways. Additionally, the damages issues, wilfulness issues, time frames, accused
conduct, and discovery issues will obviously vary
from company to company. Finally, while a common
defense such as inequitable conduct may arise, FRCP
20(a)(2)(A) does not encompass defenses asserted
against a plaintiff. Only a “right to relief” asserted by
the plaintiff can satisfy the requirements for joining
defendants under FRCP 20(a)(2)(A).
It is true that plaintiff asserts the same two patent
claims against all defendants. At most, this means
that some claim construction issues will overlap.
While it would be nice to have an identical set of

elaborations on the asserted claims for each accused
infringer, even that may not be practical, for the differences in the websites themselves will provoke differences in which words and slants in the claim language really matter. These differences will lead one
defendant to focus entirely upon the meaning of certain words or phrases in a claim and another defendant to focus entirely on different words or phrases
even though they are in the same claim. In other
words, the claim-construction work likely will not be
the same for all defendants, even though they are
facing trial on the same two patent claims. The claimconstruction work must be adapted to the actual issues being litigated over the varying accused acts. In
short, whatever common issues may exist from website to website will be overwhelmed by the individual
issues of claim construction, damages, wilfulness,
and discovery supervision.
Given the disparity in defendants, websites, and
other disparate issues discussed herein like damages,
wilfulness, and discovery supervision, it is worth
adding that the allegations against each defendant
would not be related under our civil local rules even
if brought here as separate actions. See Civil L.R. 3–
12(a)(2). If, however, the actions are re-filed in this
district, the undersigned judge would be willing to
coordinate certain claim construction issues (and
those issues only) if the parties so stipulate, the assigned judge(s) consent, and the parties make a showing that the same phrases in the same claims require
interpretation.
*3 For the foregoing reasons, pursuant to a finding of misjoinder under FRCP 21, all remaining defendants except Yelp!, Inc. are DISMISSED. This
dismissal is without prejudice to the claims being refiled as separate actions against the different defendants. Judgment will be entered accordingly.
IT IS SO ORDERED.
N.D.Cal.,2011.
EIT Holdings LLC v. YelpA, Inc.
Slip Copy, 2011 WL 2192820 (N.D.Cal.)
END OF DOCUMENT

© 2011 Thomson Reuters. No Claim to Orig. US Gov. Works.