Friday, September 23, 2011

Joinder of Multiple Defendants in a Patent Infringement Suit

In a suit for patent infringement, would it be permissible for a Patentee to array all parties which infringe his patent as Defendants in the same suit? Obviously, the Patents Act cannot provide an answer to this question. One has to look into the Code of Civil Procedure.

If, for instance, 3 entities use the patented technology of X, the mere factum of use of the patented technology by all three parties does not allow the patentee to name all 3 entities as defendants in the same suit.

This is because under Order 1, Rule 3 of the Code of Civil Procedure, not only must there be a common question of fact or law arising with respect to all 3 entities, but all 3 entities must be connected by the same act/series of acts or transaction/series of transactions which gives rise to an actionable cause(s) in favour of the patentee.

Illustratively, C must be the retailer of a product which was purchased in bulk from B, who bought it from a manufacturer A. If the product uses the patented technology of X, X may name A, B and C as defendants in the same suit.

However, if A, B and C are 3 entities which have no connection to each other, nor have they entered into a transaction or series of transactions between themselves, then A, B and C cannot be named in the same suit. Instead, the patentee X will need to institute 3 different suits against each of the infringing entities/persons.

The US procedural law too appears to be the same on this point. In a decision passed in Optimum Power Solutions LLC v. Apple Inc., et. Al, a US Court held that joinder of parties needs involvement of the defendants in “same transaction, occurrence or series of transactions or occurrences”, and not just commonality in questions of fact and law. 

The same reasoning was applied in Tierravision, Inc. v. Research in Motion Ltd., et. al, where the US Court held that similarity in software applications used by different entities did not justify joinder as defendants in the same suit.

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