No Joinder Under AIA Just Because Accused Smartphones All Use Android

Different manufacturers' use of the Android operating system in their respective smartphones did not arise out of the “same transaction or occurrence” under the joinder provision of the America Invents Act, 35 U.S.C. § 299Motorola Mobility, Inc. v. Apple Inc., nos. 1:12-cv-20271-RNS and 1:10-cv-23580-RNS, (S.D. Fla. July 31, 2012).  Accordingly, the court granted defendant HTC's motion to sever Apple's patent infringement claims against it from claims Apple had brought against Motorola.  (In addition, although not discussed in detail in this post, the court also granted HTC's motion to transfer venue.)

As anyone paying attention to current events involving either patent litigation or smartphones knows, the smartphone vendors have been vigorously litigating against one another in various fora.  In this case, Motorola had brought claims against Apple, which in turn had sued HTC by way of amended counterclaims. Apple had also brought actions in Delaware, and before the International Trade Commission, alleging that HTC's smart phones infringed various of Apple's patents.

Under the America Invents Act:

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

35 U.S.C. § 299.  Severance here turned on whether the first prong of the statute, the so-called “same transaction or occurrence test,” was satisfied.

This case was distinguishable from a recent case in which a manufacturer provided an accused product to a distributor under the distributor's private label; there, the relationship between the manufacturer and the distributor justified joinder.  Here, there was no relationship between HTC and Motorola, who were both downstream purchasers of the Android software. Neither company sells or distributes Android to one another.  Moreover, HTC and Motorola are competitors, not collaborators, in the smartphone market.

Further, the court rejected Apple's argument “that HTC's and Motorola's membership in the Open Handset Alliance ('OHA') classifies as joint development of the Android software.”  The OHA was a mere industry association for promoting Android, and any connection through this organization was “too tenuous.”

In addition, the court did not think that Motorola's and HTC's smart phones were the “same accused product or process,” as also required by the AIA's § 299. In adopting the AIA's joinder provision, the court explained, Congress “explicitly abrogated” the construction of Federal Rule of Civil Procedure 20 that “allowed plaintiffs in patent actions to join multiple defendants on the sole basis that they allegedly used the same patented invention in different products, in competing products, or in products that were related in some technical aspect.”

Motorola's and HTC's smart phones were not the same accused device; they ran on modified versions of Android.  Further, Motorola and HTC were competitors. These defendants' mere use of Android, and their mere position as accused infringers of the same patents, did “not satisfy the joinder provisions of the AIA.”