In Re EMC Corporation

United States Court of Appeals
for the Federal Circuit
__________________________

IN RE EMC CORPORATION, DECHO
CORPORATION, AND IOMEGA CORPORATION,
Petitioners.
__________________________

Miscellaneous Docket No. 100
__________________________

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.
__________________________

ON PETITION FOR WRIT OF MANDAMUS
__________________________

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 Wash-
ington, DC.
2 IN RE EMC CORPORATION

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 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.
__________________________

Before RADER, Chief Judge, DYK and MOORE, Circuit
Judges.
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
IN RE EMC CORPORATION 3
Mountain Inc. and Iron Mountain Information Manage-
ment, 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,
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 web-
sites such as www.mozy.com and www.atmosonline.com
(EMC); www.carbonite.com (Carbonite);
backup.ironmountain.com (Iron Mountain);
www.godaddy.com/gdshop/email/vsdb_landing.asp (Go-
Daddy); and www.idrive.com (Pro Softnet). Id. at 8, 9, 11,
12.
4 IN RE EMC CORPORATION

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-in-
suit.” 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 com-
mon to all Defendants in this case.” Oasis Research, LLC
v. ADrive, LLC, No. 4:10-CV-435, 2011 WL 3099885, at *3
(E.D. Tex. May 23, 2011). Moreover, the claims “ar[ose]
out of the same transaction, occurrence, or series of trans-
actions or occurrences,” according to the magistrate judge,
because the accused services were “not dramatically
different.” Id. 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 differ-
ent lawsuits scattered across the country.” Id. at *4. The
district court adopted these findings and conclusions.
Oasis Research, LLC v. ADrive, LLC, No. 4:10-CV-435,
2011 WL 3103972 (E.D. Tex. July 25, 2011).
IN RE EMC CORPORATION 5
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 usur-
pation 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 ob-
taining the relief desired, see Mallard v. U.S. Dist. Court,
490 U.S. 296, 309 (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 (1980) (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 we have
6 IN RE EMC CORPORATION

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) (pre-
liminary 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 particu-
larly 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 guid-
ance. See, e.g., Beverly Hills Fan, 21 F.3d at 1566-68.

We conclude that mandamus is available as a rem-
edy. 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
claim as a predicate to determining whether to transfer.
In either 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 discre-
tion. Fed. R. Civ. P. 21. Just as when weighing the
§ 1404(a) factors, however, that discretion must be exer-
cised within the boundaries set by relevant statutes and
IN RE EMC CORPORATION 7
precedent. See In re Volkswagen, 545 F.3d at 310. A
district court abuses its discretion if it relies on an erro-
neous 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 issues such as infringement, willfulness, and
damages because each defendant will have limited oppor-
tunities 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 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 Fibre-
board 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 estab-
lished 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 require-
ments are designed to prevent similar unfairness. Like
the requirements 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 (1966).
8 IN RE EMC CORPORATION

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 infringe-
ment “aris[e] out of the same transaction, occurrence, or
series of transactions or occurrences relating to the mak-
ing, using, importing into the United States, offering for
sale, or selling of the same accused product or process”).

While 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 man-
dates this outcome. As a general rule, we do not give
statutes retroactive effect “unless Congress clearly indi-
cates 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
IN RE EMC CORPORATION 9
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 to or arising
out of the same transaction, occurrence, or series of trans-
actions 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 (1990) (per curium)
(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, sever-
ally, 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 occur-
rences.” The decision of the Supreme Court in United
States v. Mississippi, 380 U.S. 128 (1965), provides sub-
stantial 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.
10 IN RE EMC CORPORATION

The permissibility of joining defendants who act inde-
pendently 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 advisory commit-
tee note. The referenced 1937 edition of The Annual
Practice explains that before the revision of the English
joinder rules, “it was held that claims for damages against
two or more defendants in respect of their several liability
for separate torts could not be combined 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 al-
leged patent infringers do satisfy the transaction-or-
occurrence 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., Inc. v. Integrated
Network 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 (1931) (“In-
fringement, whether direct or contributory, is essentially
a tort, and implies invasion of some right of the pat-
entee.”).
IN RE EMC CORPORATION 11
Based 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 re-
quirement 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 sup-
port 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

2 See, e.g., Rudd v. Lux Prods. Corp. Emerson Cli-
mate Techs. Braeburn Sys., No. 09-CV-6957, 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 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 inde-
pendently 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 are not part of the same transaction or
occurrence).
12 IN RE EMC CORPORATION

claims of infringement of the same patent by independent
parties, without more, are not part of the same transac-
tion or occurrence for purposes of Rules 13 and 14, and
are instead “new claims against new parties . . . not
authorized by the joinder rules.” 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.

As other courts have noted, the transaction-or-
occurrence test of Rule 20(a) is similar to the transaction-
or-occurrence test of Rule 13(a) for compulsory counter-
claims, which has been construed as requiring a “logical
relationship” between the claims. See Moore v. N.Y.
Cotton Exch., 270 U.S. 593, 610 (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 “trans-
action or occurrence” requirement of Rule 20 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 or occur-
rences.’” 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
IN RE EMC CORPORATION 13
[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 defen-
dants’ allegedly infringing acts, which give rise to the
individual claims of infringement, must share an aggre-
gate of 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” require-
ment of Rule 20 “refers to similarity in the factual back-
ground 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. Desho-
tel, 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 transac-
tion-or-occurrence test by considering, among other
14 IN RE EMC CORPORATION

things, whether the issues of fact and law “largely are the
same” and “whether substantially the same evidence” will
support or refute the claims. 104 F.3d 83, 85-56 (5th Cir.
1997) (quoting Park Club, Inc. v. Resolution Trust Corp.,
967 F.2d 1053, 1058 (5th Cir. 1992)).

We think the “not dramatically different” standard
used by the district court is inconsistent with these au-
thorities. 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 in-
fringed. See Oasis Research, 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 differ-
ent” standard would inevitably be satisfied. The petition-
ers 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
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 WL 2192820, at *2 (N.D. Cal. May 12,
2011) (finding joinder improper where defendants’ “web-
sites implement different functionalities, through differ-
ent software, that works in different ways”); Sorensen v.
DMS Holdings, Inc., No. 08-cv-559, 2010 WL 4909615, at
*1 (S.D. Cal. Nov. 24, 2010) (“[A]lleging a common manu-
IN RE EMC CORPORATION 15
We agree that joinder is not appropriate where differ-
ent products or processes are involved. Joinder of inde-
pendent 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
using differently sourced parts are not part of the same
transaction, even if they are otherwise coincidentally
identical.

facturer and infringement of the same patent is not
enough to support joinder where defendants are unrelated
companies, selling different products.”); Children’s Net-
work, LLC v. PixFusion LLC, 722 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 prod-
ucts are different.”); N.J. Mach. Inc. v. Alford Indus., Inc.,
No. 89-1879, 1991 WL 340196, at *2 (D.N.J. Oct. 7, 1991)
(finding joinder of “claims of infringement against unre-
lated defendants, involving different machines” improper
where “the plaintiff fails to adequately allege or support
any connection or substantial similarity between the
machines of the proposed defendants”).
16 IN RE EMC CORPORATION

In addition to finding that the same product or proc-
ess 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 between the defen-
dants, 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

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 ques-
tion 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 transac-
tions.”). 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.,

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 in-
fringement 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 infringe-
ment 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 is iden-
tical to the sameness test we adopt here for cases not
covered by the new legislation.
IN RE EMC CORPORATION 17
301 F.3d 1343 (Fed. Cir. 2002) (affirming grant of sum-
mary 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 transac-
tion and there are questions of law and fact common to all
defendants, “district courts have the discretion to refuse
joinder in the interest of avoiding prejudice and delay,
ensuring judicial economy, or safeguarding principles of
fundamental fairness.” Acevedo, 600 F.3d at 521 (cita-
tions omitted). In a complicated patent litigation a large
number of defendants might prove unwieldy, and a dis-
trict 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 to reconsider those motions in light of the
correct test.

Accordingly,

IT IS ORDERED THAT:

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

(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 recon-
sider their motions in light of the correct test.
18 IN RE EMC CORPORATION

FOR THE COURT
May 4, 2012 /s/ Jan Horbaly
Date Jan Horbaly
Clerk