Patent Joinder

Before the America Invents Act (AIA), patent plaintiffs could join multiple unrelated defendants in a single lawsuit based on the sole basis that they all allegedly infringed the same patent; this was frequently used by non-practicing entities (NPEs/patent trolls) to sue dozens of companies — from airlines to retailers to restaurants — in a single lawsuit in a favorable venue; AIA § 299 JOINDER REFORM (effective September 16, 2011): 35 U.S.C. § 299 now prohibits joining multiple defendants in a patent infringement suit unless: (1) the right to relief is asserted against each defendant 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, 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; WHAT § 299 PROHIBITS: asserting joint infringement of the same patent against different companies that independently make and sell separate products — even if both allegedly infringe the same claims; WHAT § 299 PERMITS: joinder of related parties (parent + subsidiary; co-venturers on the same product); joinder of defendant + its customer for the same accused product; joint infringement scenarios where both parties are part of a single transaction; MISJOINDER: if multiple defendants are improperly joined, the court must sever or dismiss the misjoined defendants — each becomes a separate lawsuit.

AIA § 299 fundamentally changed the economics of mass NPE patent litigation: PRE-AIA NPE STRATEGY: an NPE could assert the same patent against 50 defendants in a single EDTX lawsuit; the filing fee ($350) and basic discovery costs were shared across all defendants; the in terrorem effect (50 defendants, one suit) created enormous settlement pressure even for weak patents; EDTX welcomed these multi-defendant suits with its favorable plaintiff docket; POST-AIA: each defendant requires a SEPARATE lawsuit; each lawsuit requires a separate filing fee; venue must be established independently for each defendant; discovery is conducted independently (no shared defendant document productions); LITIGATION ECONOMICS CHANGE: NPE must now file 50 separate suits for 50 defendants; filing + service costs multiply; attorney fees multiply (each case managed separately); defendants can assert different invalidity arguments, claim construction positions, and defenses independently; SETTLEMENT PRESSURE REDUCED: each defendant faces only its own case, not shared fate with 49 others; a defendant can settle early without it affecting other defendants or revealing a weakness to the group; VOLUME FILING: some NPEs still file hundreds of separate suits — Uniloc, Acacia, and similar entities have filed thousands of cases across multiple districts; the separate-filing requirement increased total patent case volume nationally while reducing per-case scale; VENUE INTERACTION: each separate suit must establish venue under TC Heartland (28 U.S.C. § 1400(b)); for large defendants, separate suits may land in different favorable venues.

Patent joinder and venue rules interact closely after TC Heartland LLC v. Kraft Foods Group Brands LLC (S.Ct. 2017): TC HEARTLAND HOLDING: venue in patent cases is governed by 28 U.S.C. § 1400(b), which limits venue to: (1) where the defendant resides (state of incorporation); OR (2) where the defendant has a regular and established place of business AND infringement occurred; COMBINED IMPACT WITH § 299: since defendants must be sued separately (§ 299), each defendant's venue must be independently analyzed under § 1400(b); this makes EDTX/WDTX venue (historically plaintiff-friendly) dependent on whether the specific defendant is incorporated in Texas or has a Texas place of business; multi-defendant NPE suits that previously could all land in EDTX must now be individually analyzed; JOINDER TO AVOID SEPARATE VENUE: plaintiffs sometimes try to join defendants who share a common product (e.g., a manufacturer and its retailer customer) to keep cases in a preferred venue; under § 299, this requires the same transaction requirement — plausible for manufacturer/customer of the same product; CONSOLIDATION FOR PRETRIAL: even when separate suits are required under § 299, courts may consolidate related patent cases for pretrial efficiency (same patent, overlapping claim construction); consolidation for pretrial does not cure joinder under § 299 — the cases remain separate for jury trial and settlement.

The § 299 joinder reform applies to defendants, not plaintiffs. Separate rules govern co-inventor and co-owner joinder on the plaintiff side: CO-INVENTOR JOINDER: all inventors must be named in the patent application (§ 116); if inventorship is incorrect post-issuance, correction under § 256; in litigation, all co-inventors are presumed to have an equal, undivided interest in the patent (§ 262); CO-OWNER STANDING: under § 262, any co-owner may practice the invention themselves or license it independently without the consent of other co-owners; STANDING TO SUE: ALL co-owners must join in a patent infringement lawsuit (or consent to the suit) — a co-owner who refuses to join cannot be involuntarily joined as a plaintiff; Ethicon Inc. v. U.S. Surgical Corp. (Fed. Cir. 1998): a co-owner who refuses to join cannot be joined without consent; result: if an assignor (e.g., an original inventor who assigned only part of the patent) refuses to join, the patent owner may be unable to sue; PRACTICAL RISK: in acquisition of patent portfolios, ensure all co-ownership interests are either (a) fully assigned to the acquirer; or (b) all co-owners contractually agree to join litigation at the acquirer's request; UNDIVIDED INTEREST TRAP: a co-owner licensee who was never intended to have ownership interests may acquire such interests if the license is mischaracterized; characterize exclusive licenses correctly as licenses (not assignments) unless full assignment is intended; JOINT INVENTOR DISPUTES: § 256 permits correction of inventorship (addition or deletion) without invalidating the patent; court can also order correction during litigation.

Joinder of COUNTERCLAIM defendants is addressed separately under § 299(b): PATENT OWNER COUNTERCLAIM DEFENDANTS: § 299(b) applies to counterclaim plaintiffs as well — a patent owner who asserts a counterclaim for infringement cannot join multiple accused infringers as counterclaim defendants unless the same § 299(a) transaction/occurrence test is met; CUSTOMER/MANUFACTURER JOINDER AS DEFENDANTS: a defendant accused of infringement of a different patent than the original suit may counterclaim for infringement and join the plaintiff as a counterclaim defendant — no § 299 issue because this involves the plaintiff, not a new third party; THIRD-PARTY COMPLAINTS: FRCP Rule 14 allows a defendant to join a third-party defendant who 'is or may be liable to it' for all or part of plaintiff's claim; this covers indemnification scenarios (manufacturer joins its supplier); third-party complaints for indemnity are not patent infringement claims and are not subject to § 299; IMPLEADER FOR INDEMNIFICATION: a customer defendant impleads the manufacturer from whom it purchased the accused product, asserting the manufacturer must indemnify; this is a contract/indemnification claim, not a patent infringement joinder under § 299; STRATEGIC SPLIT: defendants who want to consolidate related patent cases must rely on FRCP Rules 42 (consolidation for common questions of law or fact) and 16 (case management) rather than § 299 joinder — the cases remain separately filed, but courts can manage them together for efficiency.