In Re EMC Corporation
677 F.3d 1351
| Fed. Cir. | 2012Background
- Oasis Research LLC sued 18 defendants in the Eastern District of Texas alleging infringement of four online data storage patents.
- EMC, Decho, and Iomega sought to sever and transfer their claims to Utah based on Rule 20(a) joinder analysis and venue considerations.
- Other defendants (Carbonite, Iron Mountain entities, GoDaddy, Pro Softnet) joined EMC’s mandamus petition for severance and transfer evaluation.
- District court held that joinder was permissible because the accused services were not dramatically different and each defendant shared common questions of patent validity and claim construction.
- The panel treats mandamus as an available remedy to review a district court’s denial of severance/transfer, applying Federal Circuit law for joinder and severance standards, given patent-specific concerns.
- Congress later enacted 35 U.S.C. § 299 addressing joinder in patent cases, but the petition filed predated its effective date, so the court analyzes under pre-existing Rule 20 standards.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether mandamus may review denial of severance/transfer | EMC argues mandamus is appropriate for patent-joinder errors | Opponents contend mandamus is improper or unnecessary for severance decisions | Mandamus available; proper to review the district court’s severance/transfer ruling |
| What test governs joinder under Rule 20 in patent cases | Joinder appropriate if same transaction/occurrence and common questions | The district court used a narrow, post hoc standard not aligned with Rule 20 | Rule 20 requires transaction-or-occurrence plus common question of law/fact; not dramatically different products alone is insufficient |
| Whether the district court applied the correct standard for severance/joinder | District court erred by applying overly permissive standard | Defendants argued joinder would be impractical but permissible under Rule 20 | District court erred; vacate and remand to assess under proper Rule 20 standard |
Key Cases Cited
- In re Calmar, Inc., 854 F.2d 461 (Fed. Cir. 1988) (mandamus to correct abuse of discretion)
- In re Apple, Inc., 602 F.3d 909 (8th Cir. 2010) (transfer denial reviewability by mandamus)
- In re Nintendo Co., Ltd., 589 F.3d 1194 (Fed. Cir. 2009) (mandamus available to challenge venue rulings)
- In re Volkswagen of Am., Inc., 545 F.3d 304 (Fed. Cir. 2008) (abuse of discretion standard for transfer/severance)
- In re Link-A-Media Devices Corp., 662 F.3d 1221 (Fed. Cir. 2011) (test for severance/joinder under Rule 20 in patent cases)
- In re Fibreboard Corp., 893 F.2d 706 (5th Cir. 1990) (mass tort joinder fairness; Rule 23 analogy)
- United States v. Mississippi, 380 U.S. 128 (1965) (logical relationship/aggregate of operative facts concept)