IPVenture, Inc. v. Acer, Inc.

879 F. Supp. 2d 426, 2012 WL 3016958, 2012 U.S. Dist. LEXIS 102446
CourtDistrict Court, D. Delaware
DecidedJuly 24, 2012
DocketCivil Action No. 11-588-RGA
StatusPublished
Cited by3 cases

This text of 879 F. Supp. 2d 426 (IPVenture, Inc. v. Acer, Inc.) is published on Counsel Stack Legal Research, covering District Court, D. Delaware primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
IPVenture, Inc. v. Acer, Inc., 879 F. Supp. 2d 426, 2012 WL 3016958, 2012 U.S. Dist. LEXIS 102446 (D. Del. 2012).

Opinion

MEMORANDUM OPINION

RICHARD G. ANDREWS, District Judge:

Before the Court are two motions. The ASUS defendants have filed a Motion to Dismiss or, in the Alternative, to Sever and Transfer to the Northern District of California. (D.I. 65). Defendant Dell has filed a Motion to Sever and Transfer to the Western District of Texas. (D.I. 97).

On July 5, 2011, Plaintiff sued Fujitsu and Lenovo alleging infringement of two patents relating to thermal and power management for computer systems. After extensions of time, Lenovo filed a motion to dismiss on November 7. (D.I. 31). On [429]*429November 28, Plaintiff filed an Amended Complaint, alleging infringement of four patents by the original defendants and Acer, Gateway, ASUS, Dell, Samsung, and Toshiba. (D.I. 36). The defendants filed motions to dismiss, which were briefed into April, and resolved on June 29, 2012, 2012 WL 2564893. (D.I. 118). Plaintiff filed its Second Amended Complaint on July 13, 2012. (D.I. 120).

Meanwhile, ASUS and Dell filed their separate pending motions. The motions to sever present identical issues. The motions to transfer present different issues.

The severance motions themselves present two issues. The first is, which joinder rule controls, that of Federal Rule of Civil Procedure 20(a), or that of the America Invents Act-35 U.S.C. § 299, enacted effective September 16, 2011? Dell states that § 299 applies. (D.I. 98, p. 8). ASUS states that it does too. (D.I. 102, p. 8 & n. 14). Plaintiff states that it does not. (D.I. 93, p. 15). I am inclined to think it does apply, see D.I. 119 (enclosing a transcript from Softview LLC v. Apple, Civ. Act. No. 10-389-LPS (D.Del. May 3, 2012)), but I think the outcome would be the same even if I were to accept Plaintiffs argument that Rule 20 controls.

The recent Federal Circuit authority, In re EMC Corp., 677 F.3d 1351 (Fed.Cir.2012), expressly states that “motions to sever are governed by Federal Circuit law,” and implicitly holds that the issue of proper joinder is also governed by Federal Circuit law. Id. at 1354 (“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.”). While the exact extent of the Federal Circuit’s ruling might be subject to debate (since the Court’s holding was merely that the district court used an erroneous standard in evaluating a motion to sever, and the Court remanded for further proceedings using the correct standard), the application of the standard set forth suggests that severance be granted in this case.

The Federal Circuit held that:

[J]oinder is not appropriate where different products or processes are involved. Joinder of independent 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-oroceurrence 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.
In addition to finding that the same product or process 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 defendants, overlap of the products’ or processes’ development [430]*430and manufacture, and whether the case involves a claim for lost profits. The district court enjoys considerable discretion in weighing the relevant factors.

In re EMC Corp., 677 F.3d 1351, 1359-60 (Fed.Cir.2012) (emphases added).

The Seconded Amended Complaint (unlike the Amended Complaint, written before EMC) makes an attempt to meet this standard (D.I. 120, ¶¶ 21-26), but, in the end, is insufficient because the allegations of commonality are painted with a broad brush and appear to be inconsequential to the critical patent issues. First, Plaintiff gives no hint in the complaint which claims of the four patents are at issue, and that lack of specificity undercuts its arguments. The patents appear to be narrow. For example, the '599 patent states that it “relates to novel techniques for providing thermal and power management for a computing device.” Col. 2,11.0 43-45. Further, “[t]he present invention relates to a computing device and, more particularly, to a method and apparatus for controlling a processor’s clock frequency.” Col. 1, 11. 24-26. (The other patents state the same things.). It thus appears the claimed novelty involves the “method and apparatus for controlling a processor’s clock frequency.” The novelty is not thermal and power management. Second, the allegations relating to joinder include that the accused computers include “common components” such as “Intel microprocessors, ... cooling fans, operating systems (such as Microsoft Windows ...), [and] embedded controllers.” (D.I. 120, ¶ 22). The rest of the component allegations are even more general. There is also an allegation that the infringing computers — that is, notebook computers — are “ACPI compliant,” which is asserted to mean that they have “common thermal management architecture.” The fact that computers generally have the same components and the same functionalities does not mean that they are “the same in respects relevant to the patent.” Thus, I do not think that the allegations are sufficient to show that these computer manufacturer defendants are all properly joined, since I do not think there is an allegation that they are selling the same products or processes. I think consequently that the claims of infringement against the defendants’ products do not share an aggregate of operative facts. They are all direct competitors, which also significantly counsels against their joinder in the same case. The only factor that Plaintiff raises that has any resonance is its referral to the ACPI standard, but since there is no alleged connection between the standard and the alleged infringement, I do not give it much weight.

Therefore, I will grant both severance motions.

The transfer motions have been fully briefed and orally argued.

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Bluebook (online)
879 F. Supp. 2d 426, 2012 WL 3016958, 2012 U.S. Dist. LEXIS 102446, Counsel Stack Legal Research, https://law.counselstack.com/opinion/ipventure-inc-v-acer-inc-ded-2012.