L.L. Bean Wins Motion to Sever and Transfer Where Plaintiff's "Lame" Response That All Accused Products Were Similar Is Insufficient to Establish Proper Joinder

December 23, 2011

Pinpoint filed a patent infringement action in the Northern District of Illinois against L.L. Bean, Orbitz, Groupon and Hotwire for allegedly infringing three patents pertaining to accessing data using customer profiles. L.L. Bean filed a motion to sever and transfer to the District of Maine. The district court granted the motion and transferred the case against L.L. Bean to Maine.

The first step in the district court's analysis was to analyze whether L.L. was misjoined in the action. Focusing on Fed.R.Civ.P. 20(a)(2), and in particular the requirement that "any right to relief is asserted against [the defendants] jointly, severally, or in the alternative with respect to or arising out of the same transaction, occurrence, or series of transactions or occurrences," the district court found that joinder was not proper. "As L.L. Bean points out, defendants are unrelated companies that have nothing in common except Pinpoint's allegation that they have infringed the same three patents." Referring to Pinpoint's response as "lame," the district court found that the argument that all of the accused products are extremely similar to be insufficient to satisfy the first prong of Fed.R.Civ.P. 20(a)(2). "The defendants' operations of unrelated websites does not establish a common transaction or occurrence.

Therefore, the defendants were misjoined. "Because Pinpoint does not assert a right to relief against the defendants that arises out of the same transaction or occurrence, the defendants have been misjoined, and L.L. Bean's motion to sever will be granted." The district court also required Pinpoint to dismiss two of the remaining three defendant without prejudice to proceed in a separate action.

The district court next turned to the question of transfer. In analyzing transfer, the district court examined the convenience factors and found that plaintiff's choice of forum should be given little weight because "this district has a weak connection with the operative facts of its claims." The district court also noted that L.L. Bean operates its website from Maine and that the employees most knowledgeable regarding these operations are located in Maine. Thus, the district court concluded that "[t]he alleged conduct that gives rise to Pinpoint's claims occurred in Maine, and the situs of material events is therefore the District of Maine."

The district court then examined the relative ease of access to sources of proof and concluded that because the majority of the documents were in Maine, this factor slightly favored transfer. Analyzing the convenience of the parties and witnesses, the district court found that this factor also favored transfer as the bulk of the witnesses would come from L.L. Bean and therefore Maine would be the more convenient forum. Finally, the district court concluded that the public interest factors favored transfer as well because of the desirability of resolving controversies in their locale, with the district court again relying on the fact that most witnesses would be in Maine.

Accordingly, the case against L.L. Bean was severed and transferred to the District of Maine.

Pinpoint Incorporated v. Groupon, Inc., Case No. 11 C 5597 (N.D. Ill. Dec. 5 2011)
The authors of www.PatentLawyerBlog.com are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. We represent inventors, patent owners and technology companies in patent licensing and litigation. Whether pursuing patent violations or defending infringement claims, we are aggressive and effective advocates for our clients. For more information contact Stan Gibson at 310.201.3548 or SGibson@jmbm.com.