One-E-Way Inc. v. Plantronics Inc.: Central District of California Court Finds Improper Joinder of Defendants

In a recent order, a judge in the United States District Court for the Central District of California held that the defendants were misjoined because even though “some of the products incorporate the same wireless technology [it] does not alter the fact that Plaintiff brings suit against unrelated defendants for independent acts of infringement.” One-E-Way Inc. v. Plantronics Inc. et al, 2:11-cv-06673, at 2 (CD Cal. January 19, 2012).

Plaintiff sued several defendants accusing them of selling and manufacturing various products containing patented digital audio technology. Id. at 1. The Court issued an Order to Show Cause on January 4, 2012 why some or all of the defendants should not be dropped from the case as a result of improper joinder. Id. In response, the Plaintiff argued that the joinder was proper because all the Defendants incorporated allegedly infringing Bluetooth technology. Id. at 2. (It does not appear the Defendants were provided an opportunity to support the Court’s Order to Show Cause.)

The Court first outlined the permissive joinder standard and accompanying cases across various districts under Fed. R. Civ. P. 20(a). In undertaking this analysis, the Court determined that for joinder to be proper, the Defendants must have engaged in related activities or otherwise acted in concert. Id. The facts in this case, however, indicated that the Defendants were being sued for possible independent acts of infringement without any connection between them. Id. As a result, the Court held that the Defendants had been misjoined and thus dropped all–without prejudice–but the first-named defendant. Id.

In the alternative, Plaintiff requested that rather than dropping the parties, the Court sever and consolidate the cases for pre-trial purposes under Fed. R. Civ. P. 42(a). Id. at 3. The Court rejected that request finding the Defendants are each entitled to an individualized defense of claim construction, non-infringement, and invalidity. Id.

This case was filed on August 12, 2011, which is prior to the joinder provision of the America Invents Act (“AIA”) becoming effective. Attorneys at Gibbons have previously discussed some of the AIA’s provisions, including how that provision could limit the number of defendants in one case.