Vertical Computer Systems, Inc. v. Interwoven, Inc. et al

Filing 87

RESPONSE in Opposition re 84 SEALED MOTION to Sever and Transfer Claims filed by Vertical Computer Systems Inc. (Attachments: # 1 Exhibit Declaration of Luiz Claudio Valdetaro (signed), # 2 Exhibit A - Google Information on LG Electronics, # 3 Exhibit B - Complaint (Vertical Computer Systems, Inc. v. Interwoven, Inc., et al; Civil Action No. 210-cv-490), # 4 Exhibit C - Samsung's Claim Charts, # 5 Exhibit D - LG's Claim Charts, # 6 Exhibit E - U.S. Court of Appeals for the Federal Circuit - Brief of Petitioner - Vertical Computer Systems, Inc, # 7 Exhibit F - U.S. Court of Appeals for the Federal Circuit - Petition on Writ of Mandamus Order, # 8 Exhibit G - U.S. District Court for the Northern District of California - Claims Construction Order, # 9 Exhibit H - Declaration of Seo Won Kwon, # 10 Exhibit I - LexisNexis Documents, # 11 Exhibit J - LexisNexis Documents, # 12 Text of Proposed Order)(Davis, William)

Page 1

9 of 100 DOCUMENTS
IN RE EMC CORPORATION, DECHO CORPORATION, AND IOMEGA
CORPORATION, Petitioners.
Miscellaneous Docket No. 100
UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT
677 F.3d 1351; 2012 U.S. App. LEXIS 9159; 102 U.S.P.Q.2D (BNA) 1539; 82 Fed. R.
Serv. 3d (Callaghan) 456

May 4, 2012, Decided
PRIOR HISTORY: [**1]
On Petition for Writ of Mandamus to the United States
District Court for the Eastern District of Texas in case no.
10-CV-435, Judge Michael H. Schneider.
Oasis Research, LLC v. Adrive, LLC, 2011 U.S. Dist.
LEXIS 80428 (E.D. Tex., July 25, 2011)
DISPOSITION:
Mandamus was granted in part, to
the limited extent that the order denying the motions to
sever and transfer was vacated, and the lower court was
directed to reconsider the motions in light of the
transaction-or-occurrence test.

COUNSEL: CHRIS R. OTTENWELLER, Orrick,
Herrington & Sut-cliffe LLP, of Menlo Park, California,
for petitioners. With him on the petition were I. NEEL
CHATTERJEE and DEREK F. KNERR; and MARK S.
DAVIES, RACHEL M. MCKENZIE and KATHERINE
M. KOPP, of Washington, DC. Of counsel on the petition
were PAUL T. DACIER, KRISHNENDU GUPTA and
WILLIAM R. CLARK, EMC Corpo-ration, of
Hopkinton, Massachusetts.
MATTHEW B. LOWRIE, Foley & Lardner LLP, of
Boston, Massachusetts, for Carbonite, Inc. With him on
the brief were KEVIN M. LITTMAN; and GEORGE C.
BECK, of Washington, DC.

BRIAN W. LACORTE, Ballard Spahr LLP, of Phoenix,
Arizona, for GoDaddy.com, Inc.
SHAMITA D. ETIENNE-CUMMINGS, White & Case
LLP, of Washington, DC, for Iron Mountain
Incorporated, et al. With her on the brief was BIJAL V.
VAKIL, of Palo Alto, California.
FREDERICK S. BERRETTA, Knobbe, Martens, Olson
& Bear, LLP, of San Diego, California, for Pro Softnet
Corporation.
JOHN M. DESMARAIS, Desmarais LLP, of New York,
New York, for respondent Oasis Research, LLC. With
him on the response were ALAN [**2] S. KELLMAN
and TAMIR PACKIN.
MATTHEW D. MCGIL, Gibson, Dunn & Crutcher LLP,
of Washington, DC, for amici curiae Cisco Systems, Inc.
et al. With him on the brief was JOHN F. BASH. Also on
the brief was ELIZABETH ROGERS BRANNEN,
Oracle Legal, of Redwood Shores, California, for amicus
curiae Oracle Corporation.
JUDGES: Before RADER, Chief Judge, DYK and
MOORE, Circuit Judges.
OPINION BY: DYK

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OPINION

[*1353] ON
MANDAMUS

www.godaddy.com/gdshop/email/vsdb_landin
g.asp
(GoDaddy); [**4] and www.idrive.com (Pro Softnet). Id.
at 8, 9, 11, 12.
PETITION

FOR

WRIT

OF

DYK, Circuit Judge.
ORDER
Petitioners EMC Corp., Decho Corp., and Iomega
Corp. (collectively, "EMC") seek a writ of mandamus to
direct the United States District Court for the Eastern
District of Texas to sever and transfer the claims against
them to the United States District Court for the District of
Utah. Petitioners Carbonite Inc. ("Carbonite"), Iron
Mountain Inc. and Iron Mountain Information
Management, Inc. (collectively, "Iron Mountain"),
GoDaddy.com, Inc. ("GoDaddy"), and Pro Softnet Corp.
("Pro Softnet") join in EMC's petition, seeking to have
the claims against them severed and transferred to federal
district courts in Massachusetts, Arizona, and California.
We grant the petition in part and direct the district court
to determine whether the claims "aris[e] out of the same
transaction, [**3] occurrence, or series of transactions or
occurrences," Fed. R. Civ. P. 20(a), under the correct
legal standard.
I
Petitioners are eight of eighteen companies named as
defendants in a single complaint filed by Oasis Research
LLC ("Oasis") in the Eastern District of Texas. Oasis
asserted the method claims from four patents, U.S. Patent
Nos. 5,771,354; 5,901,228; 6,411,943; and 7,080,051
(claim 9 only), all of which deal with off-site computer
data storage. Specifically, the patents claim methods for
allowing home computer users to remotely connect to an
online service system for purposes of external data and
program storage and additional processing capacities in
exchange for a fee.
The defendants in this case are all alleged to offer
services that provide online backup and storage for home
or business computer users. See Complaint at 7-12, Oasis
Research, LLC v. ADrive LLC, No. 4:10-cv-435 (E.D.
Tex. Aug. 30, 2010), ECF No. 1. In particular, petitioners
are alleged to offer online backup and storage through
websites
such
as
www.mozy.com
and
www.atmosonline.com (EMC); www.carbonite.com
(Carbonite); backup.ironmountain.com (Iron Mountain);

Petitioners sought orders to sever and transfer the
claims against them to more appropriate venues, arguing
that because there was no concert of action, the claims
against them did not arise out of the same transaction or
occurrence, as required by Rule 20 of the Federal Rules
of Civil Procedure. Oasis argued that although the
asserted "patents cover a broad range of technologies, the
accused infringement in this case is limited to online
backup/storage services," and that "each defendant offers
a similar commercial online backup/storage service" such
that "[t]he steps taken to provide those services are
covered by the asserted method claims of the
patents-insuit." Plaintiff Oasis Research, LLC's
Opposition to Defendants' Venue and Jurisdiction
Related Motions at 1, Oasis Research, LLC v. ADrive
LLC, No. 4:10-cv-435 (E.D. Tex. Dec. 3, 2010), ECF No.
133.
The magistrate judge found nothing improper about
maintaining these claims in one action in the Eastern
District of Texas, for "[c]laim validity, claim
construction, and the scope of the four patents . . . are
questions common to all Defendants in this case." Oasis
Research, LLC v. ADrive, LLC, No. 4:10-CV-435, 2011
U.S. Dist. LEXIS 80623, 2011 WL 3099885, at *3 (E.D.
Tex. May 23, 2011). [**5] Moreover, [*1354] the
claims "ar[ose] out of the same transaction, occurrence,
or series of transactions or occurrences," according to the
magistrate judge, because the accused services were "not
dramatically different." 2011 U.S. Dist. LEXIS 80623,
[WL] at *2. Finally, the magistrate judge stated that
"granting Defendants' motions to sever and transfer
would be the division of a single action into seven
different lawsuits scattered across the country." 2011 U.S.
Dist. LEXIS 80623, [WL] at *4. The district court
adopted these findings and conclusions. Oasis Research,
LLC v. ADrive, LLC, No. 4:10-CV-435, 2011 U.S. Dist.
LEXIS 80428, 2011 WL 3103972 (E.D. Tex. July 25,
2011).
II
A
We first turn our attention to this court's jurisdiction.
The remedy of mandamus is available in extraordinary
situations "to correct a clear abuse of discretion or

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usurpation of judicial power." In re Calmar, Inc., 854
F.2d 461, 464 (Fed. Cir. 1988). A party seeking a writ
bears the burden of proving that it has no other means of
obtaining the relief desired, see Mallard v. U.S. Dist.
Court, 490 U.S. 296, 309, 109 S. Ct. 1814, 104 L. Ed. 2d
318 (1989), and that the right to issuance of the writ is
"clear and indisputable," Allied Chem. Corp. v. Daiflon,
Inc., 449 U.S. 33, 35, 101 S. Ct. 188, 66 L. Ed. 2d 193
(1980) [**6] (per curiam).
It is well established that mandamus is available to
contest a patently erroneous error in an order denying
transfer of venue. See In re Apple, Inc., 602 F.3d 909 (8th
Cir. 2010); In re Nintendo Co., 589 F.3d 1194 (Fed. Cir.
2009); In re Hoffmann-La Roche Inc., 587 F.3d 1333
(Fed. Cir. 2009); In re Genentech, Inc., 566 F.3d 1338
(Fed. Cir. 2009); In re TS Tech USA Corp., 551 F.3d
1315 (Fed. Cir. 2008); In re Volkswagen of Am., Inc., 545
F.3d 304 (5th Cir. 2008) (en banc).
We must here address as a matter of first impression
whether mandamus can be an appropriate means to test a
district court's discretion in ruling on motions to sever
and transfer. While transfer motions are governed by
regional circuit law, see In re Link_A_Media Devices
Corp., 662 F.3d 1221, 1222-23 (Fed. Cir. 2011), motions
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. We thus apply
Federal Circuit law to determine the availability of
mandamus, and to the underlying issue of whether the
motion to sever should be granted. In other comparable
circumstances [**7] we have applied Federal Circuit
law. See, e.g., Manildra Milling Corp. v. Ogilvie Mills,
Inc., 76 F.3d 1178, 1182 (Fed. Cir. 1996) (meaning of
"prevailing party"); Reebok Int'l Ltd. v. J. Baker, Inc., 32
F.3d 1552, 1555 (Fed. Cir. 1994) (preliminary
injunctions); Beverly Hills Fan Co. v. Royal Sovereign
Corp., 21 F.3d 1558, 1564-65 (Fed. Cir. 1994) (personal
jurisdiction). Application of our law is particularly
appropriate since, as discussed below, Congress has
recently adopted a special statute governing joinder in
patent cases. Nonetheless, in developing our own law, we
frequently look to the law of our sister circuits for
guidance. See, e.g., Beverly Hills Fan, 21 F.3d at
1566-68.
We conclude that mandamus is available as a
remedy. With regard to the "no other means"

requirement, there is no meaningful distinction between a
petitioner's seeking review of an order denying transfer
because the district court clearly abused its discretion in
applying the § 1404(a) factors and a petitioner's seeking
review of an order denying a motion to transfer because
the district court clearly abused its discretion by not
severing the [*1355] claim as a predicate to determining
whether to transfer. In either [**8] case, a defendant
would not have an adequate remedy for an improper
failure to transfer or sever the case by way of an appeal
from an adverse final judgment because the defendant
would be unable to demonstrate "that it would have won
the case had it been tried in a convenient [venue]." In re
Volkswagen, 545 F.3d at 319 (alteration in original)
(quoting In re Nat'l Presto Indus., Inc., 347 F.3d 662, 663
(7th Cir. 2003)).
Nor does the "clear and indisputable" requirement
preclude us from issuing the writ. To be sure, Rule 21,
which authorizes a district court to "sever any claim
against a party," provides a district court broad discretion.
Fed. R. Civ. P. 21. Just as when weighing the § 1404(a)
factors, however, that discretion must be exercised within
the boundaries set by relevant statutes and precedent. See
In re Volkswagen, 545 F.3d at 310. A district court
abuses its discretion if it relies on an erroneous
conclusion of law. Id. On mandamus review, we review
for these types of errors, but we will only grant
mandamus relief in extraordinary circumstances. Id.
Here, if joinder was improper, the petitioners will not
have a meaningful opportunity to present individualized
defenses on [**9] issues such as infringement,
willfulness, and damages because each defendant will
have limited opportunities to present its own defense to
the jury. We note that district courts have expressed
similar concerns. See, e.g., WiAV Networks, LLC v. 3Com
Corp., No. C 10-03448, 2010 U.S. Dist. LEXIS 110957,
2010 WL 3895047, at *2 (N.D. Cal. Oct. 1, 2010) ("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--are also entitled to present
individualized assaults on questions of non-infringement,
invalidity, and claim construction.").
In an analogous case, the Fifth Circuit in In re
Fibreboard Corp., 893 F.2d 706, 712 (5th Cir. 1990),
granted mandamus to undo joinder based on procedural
fairness concerns in a "mass tort" action when it was not

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102 U.S.P.Q.2D (BNA) 1539; 82 Fed. R. Serv. 3d (Callaghan) 456
established that "the questions of law or fact common to
the members of the class predominate over any questions
affecting individual members" as required by Rule
23(b)(3). The procedural safeguards pertaining to class
certification do not apply here. But Rule 20's
requirements are designed to prevent similar unfairness.
Like the requirements [**10] of Rule 23 in class actions,
Rule 20's two requirements--that the claims share
"question[s] of law or fact common to all defendants,"
and "aris[e] out of the same transaction [or]
occurrence"--help ensure that the scope of the action
remains "consistent with fairness to the parties." United
Mine Workers of Am. v. Gibbs, 383 U.S. 715, 724, 86 S.
Ct. 1130, 16 L. Ed. 2d 218 (1966).
B
We turn to the issue of severance. We first note the
unusual circumstances from which this petition comes
before us. Recently, Congress addressed the issue of
joinder in patent cases in section 19 of the Leahy-Smith
America Invents Act, which was signed into law just days
after this petition was filed. See Leahy-Smith America
Invents Act, Pub. L. No. 112-29, sec. 19(d), § 299, 125
Stat. 284, 332-33 (2011) (to be codified at 35 U.S.C. §
299) (providing in relevant part that accused infringers
may be joined in one action as defendants or have their
actions consolidated for trial only if the allegations of
infringement "aris[e] out of the same transaction,
occurrence, or series of transactions or occurrences
relating to the making, using, importing into the United
[*1356] States, offering for sale, or selling of the same
accused product or process").
While [**11] petitioners argue that joinder here
would be improper under the new and old rules, they
wisely refrain from arguing that the new 35 U.S.C. § 299
itself mandates this outcome. As a general rule, we do not
give statutes retroactive effect "unless Congress clearly
indicates its intention to do so." Lowder v. Dep't of
Homeland Sec., 504 F.3d 1378, 1384 (Fed. Cir. 2007).
This new provision is not retroactive, applying only "to
any civil action commenced on or after the date of the
enactment of th[e] Act." Leahy-Smith America Invents
Act § 19(e), 125 Stat. at 333. The timing of this petition
means that our decision will only govern a number of
cases that were filed before the passage of the new
joinder provision.
When considering a motion to sever under Rule 21,
"courts have looked to Rule 20 for guidance." Acevedo v.

Allsup's Convenience Stores, Inc., 600 F.3d 516, 521 (5th
Cir. 2010); see also Coughlin v. Rogers, 130 F.3d 1348,
1351 (9th Cir. 1997) (applying the requirements of Rule
20 to a motion to sever under Rule 21). Defendants may
be joined in a single action only if the two independent
requirements of Rule 20 are satisfied: (1) the claims
against them must be asserted "with respect [**12] to or
arising out of the same transaction, occurrence, or series
of transactions or occurrences," and (2) there must be a
"question of law or fact common to all defendants." Fed.
R. Civ. P. 20(a)(2). Rule 20 clearly contemplates joinder
of claims arising from a "series of transactions or
occurrences"--a single transaction is not required.
It is clear that where defendants are alleged to be
jointly liable, they may be joined under Rule 20 because
the transaction-or-occurrence test is always satisfied. See
Temple v. Synthes Corp., 498 U.S. 5, 7, 111 S. Ct. 315,
112 L. Ed. 2d 263 (1990) (per curiam) (noting that a joint
tortfeasor is a permissive party). But the language of Rule
20 makes clear that joinder is not limited to such
situations. Defendants may be joined if "any right to
relief is asserted against them jointly, severally, or in the
alternative," Fed. R. Civ. P. 20(a)(2), so an allegation of
joint liability is not required.
The cases make equally clear that the fact that the
defendants are independent actors does not preclude
joinder as long as their actions are part of the "same
transaction, occurrence, or series of transactions or
occurrences." The decision of the Supreme Court in
United States v. Mississippi, 380 U.S. 128, 85 S. Ct. 808,
13 L. Ed. 2d 717 (1965), [**13] provides substantial
guidance. In that case, the United States sued Mississippi,
three election commissioners, and six county voting
registrars, alleging that the defendants were acting to
deny the right of black citizens to vote. Id. at 130. Five of
the voting registrars moved for severance, and the district
court held that they could not be sued jointly. Id. at 131.
The Supreme Court, however, held that joinder was
proper under Rule 20 because the registrars were engaged
in a "series of transactions or occurrences." Id. at 142-43.
The permissibility of joining defendants who act
independently is also clear from the origins of Rule 20.
The advisory committee notes specifically state that Rule
20(a)(2), concerning joinder of defendants, "is derived
from English Rules Under the Judicature Act (The
Annual Practice, 1937) O. 16, r. 4," which was the
English rule for joinder of defendants. Fed. R. Civ. P. 20

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advisory committee note. The referenced 1937 edition of
The Annual Practice explains that before the revision of
the English joinder rules, "it was held [*1357] that
claims for damages against two or more defendants in
respect of their several liability for separate torts could
not be combined [**14] in one action." W. Valentine
Ball et al., The Annual Practice 240 (55th ed. 1937)
(citing Sadler v. G. W. Ry. Co., [1896] A.C. 450 (H.L.)).
The joinder rule for plaintiffs (O. 16, r. 1) was then
revised in 1896 to allow joinder of claims "in respect of
or arising out of the same transaction or series of
transactions." Id. at 213. The courts held that this change
also required a revised interpretation of the joinder rule
for defendants. Id. at 240. As The Annual Practice stated,
under the revised rule, "claims in respect of separate torts
may be joined." Id. at 241.1
1 To determine when claims against different
alleged patent infringers do satisfy the
transaction-oroccurrence prong of Rule 20, it is
appropriate to look at joinder of defendants in
other tort cases because "[p]atent infringement is
a tort." Wordtech Sys. v. Integrated Networks
Solutions, Inc., 609 F.3d 1308, 1313 (Fed. Cir.
2010) (quoting Mars, Inc. v. Coin Acceptors, Inc.,
527 F.3d 1359, 1365 (Fed. Cir. 2008)); see also
Carbice Corp. of Am. v. Am. Patents Dev. Corp.,
283 U.S. 27, 33, 51 S. Ct. 334, 75 L. Ed. 819,
1931 Dec. Comm'r Pat. 727 (1931)
("Infringement, whether direct or contributory, is
essentially a tort, and implies invasion of some
right of the patentee.").
Based [**15] on this history, it follows that the mere
fact that a case involves independent actors as defendants
does not necessarily bring the case outside the scope of
Rule 20. The question then is under what circumstances is
the joinder of independent actors permissible under Rule
20.
In imposing both the transaction-or-occurrence
requirement and the requirement of a common question
of law or fact, Rule 20 makes clear that the existence of a
single common question of law or fact alone is
insufficient to satisfy the transaction-or-occurrence
requirement. In the present context the mere fact that
infringement of the same claims of the same patent is
alleged does not support joinder, even though the claims
would raise common questions of claim construction and
patent invalidity. District courts outside the Eastern

District of Texas have generally agreed in cases involving
patent, copyright, and trademark law.2 So too we have
previously held that claims of infringement of the same
patent by independent parties, without more, are not part
of the same transaction or occurrence for purposes of
Rules 13 and 14, and are instead "new claims against new
parties . . . not authorized by the joinder rules." [**16]
Frank's Casing Crew & Rental Tools, Inc. v. PMR
Techs., Ltd., 292 F.3d 1363, 1372 (Fed. Cir. 2002). Even
though the new claims in Frank's Casing "were based on
infringement of the same patent," they did not arise out of
the same transaction or occurrence because the factual
overlap was insufficient. Id. at 1372 n.6.
2 See, e.g., Rudd v. Lux Prods. Corp. Emerson
Climate Techs. Braeburn Sys., No. 09-CV-6957,
2011 U.S. Dist. LEXIS 4804, 2011 WL 148052, at
*3 (N.D. Ill. Jan. 12, 2011) ("After researching
the issue, the Court determines that [the Eastern
District of Texas's] approach [to Rule 20] is in the
minority."); WiAV Networks, LLC, 2010 U.S.
Dist. LEXIS 110957, 2010 WL 3895047, at *2
("[N]umerous courts have found that 'joinder is
often improper where [multiple] competing
businesses have allegedly infringed the same
patent by selling different products.'" (second
alteration in original)); Golden Scorpio Corp. v.
Steel Horse Bar & Grill, 596 F. Supp. 2d 1282,
1285 (D. Ariz. 2009) (holding that defendants
who independently infringed the same trademark
are not part of the same transaction or
occurrence); Arista Records LLC v. Does 1-4, 589
F. Supp. 2d 151, 154-55 (D. Conn. 2008) (holding
that defendants who independently infringed the
same copyright [**17] are not part of the same
transaction or occurrence).
As
other
courts
have
noted,
the
transaction-oroccurrence test of Rule 20(a) is similar to
the transaction-or-occurrence test of Rule 13(a) for
compulsory counterclaims, [*1358] which has been
construed as requiring a "logical relationship" between
the claims. See Moore v. N.Y. Cotton Exch., 270 U.S.
593, 610, 46 S. Ct. 367, 70 L. Ed. 750 (1926) (noting that
"'[t]ransaction' is a word of flexible meaning" and
holding that two claims arise from the same "transaction"
when there is a "logical relationship" between them);
Mosley v. Gen. Motors Corp., 497 F.2d 1330, 1333 (8th
Cir. 1974) (holding, based on analogy to Rule 13(a), that
the "transaction or occurrence" requirement of Rule 20

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permits "all reasonably related claims" to be tried
together); see also Alexander v. Fulton Cnty., 207 F.3d
1303, 1323 (11th Cir. 2000) (same), overruled on other
grounds by Manders v. Lee, 338 F.3d 1304 (11th Cir.
2003) (en banc).
Professors Wright and Miller concluded that "[t]he
logical-relationship test employed under Rule 13(a)
seems consistent with the philosophy underlying the
passage in Rule 20 that allows joinder of parties
whenever the claims arise out of 'the same series of
transactions [**18] or occurrences.'" 7 Charles Alan
Wright et al., Federal Practice and Procedure § 1653 (3d
ed. 2001). Courts have applied this "transaction or
occurrence" requirement using a "case-by-case approach"
based on a "flexib[le] . . . standard [that] enables the
federal courts to promote judicial economy by permitting
all reasonably related claims for relief by or against
different parties to be tried in a single proceeding under
the provisions of Rule 20." Id. The Supreme Court has
stated that under the Federal Rules of Civil Procedure,
"the impulse is toward entertaining the broadest possible
scope of action consistent with fairness to the parties;
joinder of claims, parties and remedies is strongly
encouraged." Gibbs, 383 U.S. at 724.
Thus,
independent
defendants
satisfy
the
transaction-or-occurrence test of Rule 20 when there is a
logical relationship between the separate causes of action.
The logical relationship test is satisfied if there is
substantial evidentiary overlap in the facts giving rise to
the cause of action against each defendant. In other
words, the defendants' allegedly infringing acts, which
give rise to the individual claims of infringement, must
share an aggregate of [**19] operative facts. The
Supreme Court in United States v. Mississippi, 380 U.S.
at 142-43, adopted this approach, as have several of our
sister circuits. For example, in Coughlin v. Rogers, 130
F.3d at 1350, the Ninth Circuit stated that the "same
transaction" requirement of Rule 20 "refers to similarity
in the factual background of a claim." And in the Fifth
Circuit, "[w]hile using the 'logical relationship' concept,
[the] Circuit gives weight to whether the claim and
counterclaim share an 'aggregate of operative facts.'" N.Y.
Life Ins. Co. v. Deshotel, 142 F.3d 873, 882 (5th Cir.
1998) (quoting McDaniel v. Anheuser-Busch, Inc., 987
F.2d 298, 304 (5th Cir. 1993)). The First Circuit has also
adopted this "aggregate of operative facts" approach. See
Iglesias v. Mut. Life Ins. Co., 156 F.3d 237, 242 (1st Cir.
1998), abrogated on other grounds by Global NAPs, Inc.

v. Verizon New Eng. Inc., 603 F.3d 71, 86 n.18 (1st Cir.
2010). Similarly, in Tank Insulation International, Inc. v.
Insultherm, Inc., the Fifth Circuit evaluated whether two
claims satisfy the transaction-or-occurrence test by
considering, among other things, whether the issues of
fact and law "largely are the same" and "whether [**20]
substantially the same evidence" will support or refute
the claims. 104 F.3d 83, 85-86 (5th Cir. 1997) (quoting
Park Club, Inc. v. Resolution Trust Corp., 967 F.2d 1053,
1058 (5th Cir. 1992)).
[*1359] We think the "not dramatically different"
standard used by the district court is inconsistent with
these authorities. That standard seems to require little
more than the existence of some similarity in the
allegedly infringing products or processes, similarity
which would exist simply because the same patent claims
are alleged to be infringed. See Oasis Research, 2011
U.S. Dist. LEXIS 80623, 2011 WL 3099885, at *2 (stating
that "each Defendant offers an online backup/storage
service to its customers that allegedly infringes Plaintiff's
patents" and that "the Court finds this is sufficient to
satisfy the first prong under Rule 20"). Where different
products or processes were accused of infringing the
same claims, the "not dramatically different" standard
would inevitably be satisfied. The petitioners here point
out the difficulties that would be presented by joinder of
claims involving "different" products or processes, see,
e.g., EMC Br. at 9-10 (noting "the prejudice and potential
confusion of being forced to defend claims [**21]
alongside unrelated parties with different products or
services and possibly different strategies"), and point to
cases outside the Eastern District of Texas that have
refused joinder where the products or processes are
"different."3
3 See, e.g., EIT Holdings LLC v. Yelp!, Inc., No.
C 10-05623, 2011 U.S. Dist. LEXIS 64034, 2011
WL 2192820, at *2 (N.D. Cal. May 12, 2011)
(finding joinder improper where defendants'
"websites implement different functionalities,
through different software, that works in different
ways"); Sorensen v. DMS Holdings, Inc., No.
08-cv-559, 2010 U.S. Dist. LEXIS 124516, 2010
WL 4909615, at *1 (S.D. Cal. Nov. 24, 2010)
("[A]lleging a common manufacturer and
infringement of the same patent is not enough to
support joinder where defendants are unrelated
companies,
selling
different
products.");
Children's Network, LLC v. PixFusion LLC, 722

Page 7
677 F.3d 1351, *1359; 2012 U.S. App. LEXIS 9159, **21;
102 U.S.P.Q.2D (BNA) 1539; 82 Fed. R. Serv. 3d (Callaghan) 456
F. Supp. 2d 404, 415 (S.D.N.Y. 2010) ("Joinder of
unrelated parties into one action is generally
inappropriate where, as here, the infringement of
the same patent is alleged, but the products are
different."); N.J. Mach. Inc. v. Alford Indus., Inc.,
No. 89-1879, 1991 U.S. Dist. LEXIS 20376, 1991
WL 340196, at *2 (D.N.J. Oct. 7, 1991) (finding
joinder of "claims of infringement against
unrelated defendants, involving [**22] different
machines" improper where "the plaintiff fails to
adequately allege or support any connection or
substantial similarity between the machines of the
proposed defendants").
We agree that joinder is not appropriate where
different products or processes are involved. Joinder of
independent defendants is only appropriate where the
accused products or processes are the same in respects
relevant to the patent. But the sameness of the accused
products or processes is not sufficient. Claims against
independent defendants (i.e., situations in which the
defendants are not acting in concert) cannot be joined
under Rule 20's transaction-or-occurrence test unless the
facts underlying the claim of infringement asserted
against each defendant share an aggregate of operative
facts. To be part of the "same transaction" requires
shared, overlapping facts that give rise to each cause of
action, and not just distinct, albeit coincidentally
identical, facts. The sameness of the accused products is
not enough to establish that claims of infringement arise
from the "same transaction." Unless there is an actual link
between the facts underlying each claim of infringement,
independently developed products [**23] using
differently sourced parts are not part of the same
transaction, even if they are otherwise coincidentally
identical.
In addition to finding that the same product or
process is involved, to determine whether the joinder test
is satisfied, pertinent factual considerations include
whether the alleged acts of infringement occurred during
the same time period, the existence of some relationship
among the defendants, the use of identically sourced
components, licensing or technology agreements [*1360]
between the defendants, overlap of the products' or
processes' development and manufacture, and whether
the case involves a claim for lost profits. The district
court enjoys considerable discretion in weighing the
relevant factors.4

4 As discussed above, we do not decide today
whether the new joinder provision at 35 U.S.C. §
299 changes the test for joinder of defendants in
patent infringement actions, and our approach to
the new provision is not dictated by this case. The
new statue only allows joinder of independent
defendants whose acts of infringement involve
"the same accused product or process." Id. §
299(a)(1) (emphasis added). We need not decide
whether the sameness test in the new legislation
[**24] is identical to the sameness test we adopt
here for cases not covered by the new legislation.
In exercising its discretion, the district court should
keep in mind that even if joinder is not permitted under
Rule 20, the district court has considerable discretion to
consolidate cases for discovery and for trial under Rule
42 where venue is proper and there is only "a common
question of law or fact." Fed. R. Civ. P. 42(a); see 9A
Wright et al., supra, § 2382 ("[T]he existence of a
common question by itself is enough to permit
consolidation under Rule 42(a), even if the claims arise
out of independent transactions."). Common pretrial
issues of claim construction and patent invalidity may
also be adjudicated together through the multidistrict
litigation procedures of 28 U.S.C. § 1407. See, e.g., In re
Cruciferous Sprout Litig., 301 F.3d 1343 (Fed. Cir.
2002) (affirming grant of summary judgment of patent
invalidity in consolidated cases involving the same three
patents). On the other hand, even if a plaintiff's claims
arise out of the same transaction and there are questions
of law and fact common to all defendants, "district courts
have the discretion to refuse joinder in the interest [**25]
of avoiding prejudice and delay, ensuring judicial
economy, or safeguarding principles of fundamental
fairness." Acevedo, 600 F.3d at 521 (citations omitted).
In a complicated patent litigation a large number of
defendants might prove unwieldy, and a district court
would be justified in exercising its discretion to deny
joinder "when different witnesses and documentary proof
would be required." Id. at 522.
C
Since the district court here applied an incorrect test,
the district court's ruling must be set aside, and the issues
of severance and joinder considered under the proper
standard. We therefore grant the petition to the limited
extent that we vacate the district court's order denying the
motions to sever and transfer, and direct the district court

Page 8
677 F.3d 1351, *1360; 2012 U.S. App. LEXIS 9159, **25;
102 U.S.P.Q.2D (BNA) 1539; 82 Fed. R. Serv. 3d (Callaghan) 456
to reconsider those motions in light of the correct test.

reconsider their motions in light of the correct test.

Accordingly,

IN RE EMC CORPORATION

IT IS ORDERED THAT:

FOR THE COURT

(1) The petition for a writ of mandamus is granted.

May 4, 2012

(2) Carbonite, Iron Mountain, GoDaddy, and Pro
Softnet's motions to join EMC's petition are also granted
to the extent that the district court is directed to

Date