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Justin E. Gray

IP Litigation Attorney at Foley & Lardner LLP

Former Adjunct Professor at Northwestern University School of Law

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Wednesday
Nov062013

Do the Joinder Provisions of the AIA Encourage a Race for Early Claim Construction?

After the America Invents Act ("AIA") went into effect, plaintiffs could no longer join multiple unrelated defendants in a single patent litigation on the sole basis that each defendant allegedly infringed in the patent-in-suit.  See 35 U.S.C. 299.  As a result, we now see certain plaintiffs filing scores of lawsuits against individual defendants in a single day in the same district.

In this post-AIA world, it should now be (at least in theory) easier for such defendants to secure transfer of their cases to a different venue.  In the pre-AIA world this was more difficult because a defendant seeking transfer of a multi-defendant litigation would either need to (1) convince all the other defendants that transfer to another venue would be beneficial to all defendants; or (2) ask the Court to sever and transfer the individual defendant.  Now, defendants are not bound to their pre-AIA co-defendants and can more easily seek transfer to their preferred venue.  Given this new world, an interesting question arises:  do the joinder provisions of the AIA encourage defendants to race to a different venue to seek early claim construction?

Many times in the pre-AIA world when multiple unrelated defendants were sued together in a single case, during claim construction the defendants would jointly propose a single construction for a disputed claim term to the court.  Even in the post-AIA world we may still see this happening, especially when cases are consolidated under Rule 42 for pre-trial purposes.  Of course, while there are times when multiple defendants can agree on a single construction, there are also times when a single construction may not be as advantageous for all defendants.  In our post-AIA world, what happens when a defendant successfully gets its case transferred to a forum that conducts early claim construction?  That defendant may now hold a significant advantage against the plaintiff in its litigation as it will be better able to dictate its own proposed construction regardless of whether that proposed construction would have been amenable to the other defendants in their respective cases back in the original forum.  And, whatever the result of claim construction in the transferee forum, the original forum that still contains the vast majority of the filed cases may decide to defer to the claim construction ordered by the transferee forum.  Else the original forum could run into a situation of construing a claim term in a way that conflicts with the order already issued by the transferee forum. 

Thus, the joinder provisions of the AIA may encourage defendants who want to pursue an aggressive defense to have their cases transferred to district courts that hold early claim construction proceedings so those defendants are more in control of their proposed constructions.  Further, if the transferee court does in fact issue a claim construction order prior to the original court doing so, the defendants still sitting in the original court may be put at a disadvantage. 

These issues are even more important given the pending Lighting Ballast case at the en banc Federal Circuit which could change the standard of review for claim construction orders.