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Eastern District of Texas Orders Parties to Address Issues Pertaining to Consolidating “Serially” Filed Patent Infringement Cases on the Same Patent Against Different Defendants

The plaintiff filed several patent infringement actions against different defendants in the Eastern District of Texas. Because of the America Invents Act (“AIA”), the plaintiff filed the actions separately. The district court scheduled a combined scheduling conference for the separate cases and prior to the scheduling conference requested that the parties address procedures for consolidation given the administrative burdens placed on the parties and the courts due to the new joinder provisions of the AIA.

As the district court explained, “Congress has recently addressed the issue of joinder in patent cases in section 19 of the Leahy-Smith America Invents Act, which was signed into law in September 2011. . . . In particular, the new joinder provision provides that accused infringers may be joined in one action as defendants, or have their actions consolidate for trial, only if the allegation of infringement arise out of the same transaction, occurrence, or series of transactions or occurrences relating to the making, using, importing into the United States, offering for sale, or selling of the same accused product or process.”

The district court noted that the new joinder provision significantly increase the filing of separate cases involving the same patents filed near in time naming different individual defendants and that such cases present administrative difficulties for the district court. Accordingly, the district court, in order to determine how to most effectively handle these cases, ordered that the “parties should be prepared to provide input at the combined scheduling conference regarding, at a minimum, the following issues: (1) other than common patents, what factors (and facts) can create common issues regarding infringement, both generally and specifically to the above-captioned cases; (2) is consolidation for pretrial under Federal Rule of Civil Procedure 42 a viable and efficient means of alleviating the administrative difficulties of serially filed cases on the Court while still serving the interests of the parties; (3) if the Court consolidates such cases for pretrial, how should the individual trials be structured, e.g., validity trial with all defendants, followed by separate infringement trial; (4) what effect, if any, do pending 1404(a) motions for transfer have, and when and how should they be determined; (5) absent consolidation, what other tools can the Court and/or parties use to promote judicial efficiency and alleviate the administrative difficulties on the Court; and (6) whether these cases should proceed with the combined claim construction hearing already scheduled March 12, 2013 or at a later date.”

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As more and more patent infringement actions are filed after the AIA against separate defendants involving the same patent or patents, we can expect the district courts to continue to try to alleviate the administrative burden of such actions. One way to do that will be to consolidate the cases for most pre-trial proceedings as much as practical and then to hold separate trials (or particular proceedings) for the individual defendants, which are likely to be far fewer than the number originally filed by the plaintiff.

TQP Development, LLC v., Case No. 2:12cv54 (and related cases) (E.D. Tex. June 21, 2012)