Cyberfone Systems LLC v. Federal Express Corporation et al

REPLY BRIEF re MOTION to Sever The Moving Defendants' Motion for Misjoinder Pursuant to Rules 20 and 21, 141 MOTION for Joinder

D. Del.February 9, 2012

IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE CYBERFONE SYSTEMS, LLC (formerly known as LVL PATENT GROUP, LLC), Plaintiff, v. FEDERAL EXPRESS CORPORATION; UNITED PARCEL SERVICE, INC.; DHL EXPRESS (USA), INC.; MOTOROLA SOLUTIONS, INC. ; GARMIN USA, INC.; MITAC DIGITAL CORPORATION; VERIFONE SYSTEMS, INC.; HYPERCOM CORPORATION; HYPERCOM U.S.A., INC.; EQUINOX PAYMENTS, LLC; INGENICO CORP.; INGENICO INC.; FIRST DATA CORPORATION; DELTA AIR LINES, INC.; UNITED AIR LINES, INC.; SOUTHWEST AIRLINES CO.; AMERICAN AIRLINES, INC.; US AIRWAYS, INC.; AIR CANADA; AIRTRAN AIRWAYS, INC.; JETBLUE AIRWAYS CORPORATION; MARRIOTT INTERNATIONAL, INC.; STARWOOD HOTELS & RESORTS WORLDWIDE, INC.; INTER-CONTINENTAL HOTELS CORPORATION; HYATT CORPORATION; HILTON WORLDWIDE, INC.; AMAZON.COM, INC.; PANDIGITAL, INC.; BARNES & NOBLE, INC.; SONY ELECTRONICS INC.; AND NINTENDO OF AMERICA INC., Defendants. ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) C.A. No. 11-834 (SLR) THE MOVING DEFENDANTS’ REPLY BRIEF IN SUPPORT OF THEIR MOTION FOR MISJOINDER PURSUANT TO RULES 20 AND 21 February 9, 2012 Case 1:11-cv-00834-SLR Document 151 Filed 02/09/12 Page 1 of 22 PageID #: 1000 - i - TABLE OF CONTENTS Page TABLE OF AUTHORITIES ...................................................................................................... ii I. INTRODUCTION ............................................................................................... 1 II. ARGUMENT ....................................................................................................... 3 A. Any Right to Relief Against the Moving Defendants Did Not Arise Out of The Same Transaction Or Occurrence ............................ 3 B. The AIA Applies to this Dispute Because the FAC Does Not Relate Back to the Original Complaint ............................................... 6 C. The Most Efficient Arrangement of Defendants Is Not the Twenty-Two Actions CyberFone Has Created .......................................... 9 III. CONCLUSION .................................................................................................. 10 Case 1:11-cv-00834-SLR Document 151 Filed 02/09/12 Page 2 of 22 PageID #: 1001 - ii - TABLE OF AUTHORITIES Page(s) CASES Brandywine Commc’ns Techs., LLC v. Apple, Inc., C.A. No. 11-1512-Orl-36KRS, (M.D. Fla. Jan. 24, 2012) ...................................................... 4 Braud v. Transp. Serv. Co. of Ill., 445 F.3d 801 (5th Cir. 2006) ............................................................................................. 7, 8 Codex Corp. v. Milgo Elec. Corp., 553 F.2d 735 (1st Cir. 1977) ................................................................................................ 10 DirecTV, Inc. v. Leto, 437 F.3d 842 (3d Cir. 2006) .................................................................................................. 3 Farina v. Nokia, Inc., 625 F.3d 97 (3d Cir. 2010) ................................................................................................ 7, 8 Hagan v. Rogers, 570 F.3d 146 (3d Cir. 2009) .................................................................................................. 4 MicroUnity Sys. Eng’g, Inc. v. Acer Inc., No. 2:10-CV-91-TJW-CE, 2011 WL 4591917 (E.D. Tex. Sept. 30, 2011) ............................. 6 MyMail, Ltd. v. Am. Online, Inc., 223 F.R.D. 455 (E.D. Tex. 2004) .......................................................................................... 6 Paine, Webber, Jackson & Curtis, Inc. v. Merrill Lynch, Pierce, Fenner & Smith, Inc., 564 F. Supp. 1358 (D. Del. 1983) .......................................................................................... 3 Philips Elecs. N. Am. Corp. v. Contec Corp., 220 F.R.D. 415 (D. Del. 2004) .............................................................................................. 3 Prime Care of Ne. Kan., LLC v. Humana Ins. Co., 447 F.3d 1284 (10th Cir. 2006).............................................................................................. 8 Rudd v. Lux Prods. Corp., C.A. No. 09-6957, 2011 WL 148052 (N.D. Ill. Jan. 12, 2011) ............................................... 4 Schiavone v. Fortune, 477 U.S. 21 (1986) ................................................................................................................ 7 Softview LLC v. Apple Inc., C.A. No. 10-389-LPS, 2011 U.S. Dist. LEXIS 112476, 2011 WL 4571793 (D. Del. Sep. 30, 2011) .......................................................................................................... 5 Case 1:11-cv-00834-SLR Document 151 Filed 02/09/12 Page 3 of 22 PageID #: 1002 - iii - Sony Elecs., Inc. v. Orion IP, LLC, C.A. No. 05-255-GMS, 2006 WL 680657 (D. Del. Mar. 14, 2006) ...................................... 10 SRI Int’l, Inc. v. Internet Security Sys., Inc., C.A. No. 04-1199-SLR, 2005 U.S. Dist. LEXIS 6797 (D. Del. Apr. 13, 2005) .................. 4, 5 United States v. Martinez, 195 U.S. 469 (1904) .............................................................................................................. 8 Wacoh Co. v. Kionix, Inc., C.A. No. 10-617-RGA, 2012 WL 70673 (D. Del. Jan. 9, 2012) ............................................. 3 RULES AND STATUTES Fed. R. Civ. P. 8 .......................................................................................................................... 9 Fed. R. Civ. P. 15 .................................................................................................................... 7, 8 Fed. R. Civ. P. 20 ................................................................................................................ 2, 3, 5 OTHER AUTHORITIES H.R. REP. No. 112-98, pt. 1 (2011) ............................................................................................. 5 Case 1:11-cv-00834-SLR Document 151 Filed 02/09/12 Page 4 of 22 PageID #: 1003 - 1 - I. INTRODUCTION In opposing Moving Defendants’ motion for misjoinder, CyberFone Systems, LLC (“CyberFone”) claims that “the primary purpose of permissive joinder is ‘to promote trial convenience and expedite the final determination of disputes, thereby preventing multiple lawsuits.’” (D.I. 144 at 3). Yet CyberFone itself initially filed nine separate actions against more than 150 defendants on five related patents, and then brought thirteen additional actions on one of those same five patents.1 In short, CyberFone always sought the “duplicity” that it now claims would be a waste of resources, including “conduct[ing] multiple claim construction hearings,” and “review[ing] parallel briefs on common issues in multiple cases.” (Id. at 8). Those arguments ring hollow. Nowhere in its answering brief does CyberFone even attempt to defend the particular arrangement of defendants in the 11-834 action, which spans more than twenty different defendants involved in a host of unrelated businesses, including package delivery, electronic payment processing, navigation systems, e-book readers, airlines, hotels, and gaming systems. Indeed, CyberFone never discusses the individual defendants’ products and services, or even their industries, in its answering brief. (D.I. 144). Instead, CyberFone states broadly that joinder is appropriate because the defendants’ “products function similarly to one another’s products for infringement purposes.” (Id. at 7). CyberFone, however, fails to identify any similarities among the more than 70 products accused in this action. Indeed the only similarity that CyberFone actually alleges among the defendants and their products is the patents in suit. That is not the 1 On January 30, 2012, CyberFone brought thirteen separate actions asserting infringement of the ‘060 patent: one against each of the unrelated defendants already a party in the 11- 828 action. These actions are C.A. No. 12-107 and 12-109 through 12-120. Case 1:11-cv-00834-SLR Document 151 Filed 02/09/12 Page 5 of 22 PageID #: 1004 - 2 - law of joinder. Although Rule 20 permits joinder of unrelated defendants when the facts show that a common transaction or occurrence links all the defendants, alleged infringement of the same patents-and the things that necessarily follow therefrom-without more, simply does not satisfy this standard. Moreover CyberFone’s arguments for joinder apply equally to the defendants across all the separate actions. CyberFone already expressed its preference for severance by filing nine original actions-six of which involve at least one of the patents asserted in this case. CyberFone then filed thirteen additional actions against each of the remaining defendants in the 11-828 action, asserting the ‘060 patent, which is already asserted in three of these cases. Coordination across the actions is already required to avoid duplication of effort, and CyberFone’s arrangement of defendants does not help. Nowhere does CyberFone explain why it gets to decide how to slice and dice 150 separate companies with hundreds of different products across many industries into twenty-two actions, where neither the defendants nor the Court have any say in the matter. Nor does it acknowledge that the Court retains the discretion to coordinate pretrial proceedings across separate actions so as to reduce any burden to the Court, or that any difficulties caused by severance are a problem of its own making-a natural consequence of having sued over 150 defendants. There is no reason to force the inclusion of otherwise uninterested parties into disputes simply because CyberFone chose to lump them together in a particular action.2 Separation 2 There is no inherent reason, for example, why two separate Motorola entities are accused of selling the same products in two separate actions, why the ‘024 patent is asserted only against Apple in the 11-827 action when the same claims are the only ones asserted in 11- 832, or why the same patents are asserted in different actions. Case 1:11-cv-00834-SLR Document 151 Filed 02/09/12 Page 6 of 22 PageID #: 1005 - 3 - solves this problem and reduces the number of parties before the Court for any given issue to only those parties with an interest in that dispute.3 II. ARGUMENT A. Any Right to Relief Against the Moving Defendants Did Not Arise Out of The Same Transaction Or Occurrence As discussed in the Moving Defendants’ Opening Brief, Rule 20 has two distinct tests, both of which must be satisfied to permit joinder, and the failure of either results in the misjoinder of the parties. DirecTV, Inc. v. Leto, 437 F.3d 842, 844 (3d Cir. 2006) (“Misjoinder . . . occurs when there is no common question of law or fact or when, as here, the events that give rise to the plaintiff’s claims against defendants do not stem from the same transaction.”); Philips Elecs. N. Am. Corp. v. Contec Corp., 220 F.R.D. 415, 417 (D. Del. 2004) (citing Paine, Webber, Jackson & Curtis, Inc. v. Merrill Lynch, Pierce, Fenner & Smith, Inc., 564 F. Supp. 1358, 1370 (D. Del. 1983) (“In order to permit joinder, both tests must be satisfied.”)); Wacoh Co. v. Kionix, Inc., C.A. No. 10-617-RGA, 2012 WL 70673, at *1 (D. Del. Jan. 9, 2012) (“there are two conditions that need to be met for joinder of defendants”). CyberFone claims that the “common ‘series of transaction or occurrences’ prong of Rule 20(a) is satisfied . . . when products of different defendants function similarly for infringement purposes.” (D.I. 144 at 6). Even accepting their standard arguendo, CyberFone contends only that “the Moving Defendants’ products function similarly to one another’s products for infringement purposes” (id. at 7), which is no different from contending that they infringe the 3 Separating the actions, for example, does not preclude the Court and the parties from coordinating proceedings as appropriate, such as by asserted patents or accused products. Case 1:11-cv-00834-SLR Document 151 Filed 02/09/12 Page 7 of 22 PageID #: 1006 - 4 - same patent.4 Yet CyberFone does not even attempt to explain what, other than the asserted patent, is “similar” among the more than 70 accused products across a host of different industries. Instead, CyberFone merely asserts a tautology. Because the “functionality accused in each of those products is similar” . . . “[t]here will therefore be common issues of fact and law relating to the architecture and functionality of the accused products.”5 (D.I. 144 at 7). CyberFone also does not explain its decision to separate this action from the 11-827 and 11-830 actions-both involving the same three patents asserted here, or its decision to separate this action from the 11-828, 11-833, and 11-835 actions, which all also involve the ‘382 patent. Moreover, the Delaware cases CyberFone cites are distinguishable from this action. For example, SRI Int’l, Inc. v. Internet Security Sys., Inc., C.A. No. 04-1199-SLR, 2005 U.S. Dist. LEXIS 6797 (D. Del. Apr. 13, 2005), does not support CyberFone’s position. In SRI, which was decided well before the AIA, the plaintiff alleged infringement by only two defendants in the 4 Construing alleged infringement of common patents as sufficient for joinder would “eviscerate[] the same transaction or occurrence requirement and make[] it indistinguishable from the requirement that there be a common question of law or fact.” Brandywine Commc’ns Techs., LLC v. Apple, Inc., C.A. No. 11-1512-Orl-36KRS, slip op. at 4 n.2 (M.D. Fla. Jan. 24, 2012) (quoting Rudd v. Lux Prods. Corp., C.A. No. 09- 6957, 2011 WL 148052, at *2-3 (N.D. Ill. Jan. 12, 2011)) (Ex. A). Even in CyberFone’s cited case, eSpeed, Inc. v. BrokerTec, USA, LLC, Judge Jordan explicitly held “[i]nfringement of the same patent by different machines and parties does not constitute the same transaction or occurrence to justify joinder.” C.A. No. 03-612-KAJ, 2004 U.S. Dist. LEXIS 13486, at *10 n.9 (D. Del. June 15, 2004) (emphasis added) (cited by CyberFone in D.I. 144 at 3). CyberFone’s joinder arguments are improperly based on “general assumptions” and not “based on the specific fact pattern presented by the plaintiff[].” Hagan v. Rogers, 570 F.3d 146, 157 (3d Cir. 2009) 5 CyberFone raises other purported commonalities with respect to the “common issues of fact and law” element, such as “conception and reduction to practice of the asserted patents, claim construction level of skill in the art, and relevance of prior art.” (Id.). All of these so-called commonalities, however, necessarily arise from the assertion of common patents, and do not relate to the requirement that the “right to relief . . . ar[ose] out of the same transaction, occurrence, or series of transactions or occurrences.” Congress has recently confirmed with the passage of the AIA that the mere assertion of a common patent is an insufficient basis for joinder. Case 1:11-cv-00834-SLR Document 151 Filed 02/09/12 Page 8 of 22 PageID #: 1007 - 5 - very narrow field of “computer network protection systems.” Id. at *11. This is more than a common patent alone, and more than CyberFone alleges in response to Moving Defendants’ motion. CyberFone also cites Softview LLC v. Apple Inc., C.A. No. 10-389-LPS, 2011 U.S. Dist. LEXIS 112476, at *1-3, 2011 WL 4571793, at *1 (D. Del. Sep. 30, 2011), arguing that the Court “granted the motion over defendants’ objection that there would be jury confusion.” (D.I. 77 at 3-4). In fact, Judge Stark explicitly reserved on the question of severance at trial. Softview, 2011 WL 4571793, at *1 (“Under the circumstances, it would be premature for the Court to decide the issue of separate trials”). Leave to amend was granted because the defendants’ objections “about jury confusion” were “premature” and therefore “d[id] not present a sufficient reason to deny Softview leave to amend.” Id. The issue of pre-trial joinder is not yet settled in Softview, as the new defendants have now sought severance in separate motions, which are currently pending. (C.A. No. 10-389 D.I. 143, 148, 153, 156, 185). CyberFone also tries to downplay the import of the AIA by suggesting that this Court should disregard the AIA merely because this action was filed an hour before its enactment. (D.I. 144 at 5). Not so. The AIA represents Congress’s intent to “abrogate[] the construction of Rule 20(a) adopted in MyMail . . . Sprint Communications Co. v. Theglobe.com, Inc. . . . Alford Safety Services, Inc. v. Hot-Hed, Inc. . . . -effectively conforming these courts’ jurisprudence to that followed by a majority of jurisdictions.” H.R. REP. No. 112-98, pt. 1, at 55 n.61 (2011) (emphasis added). Although CyberFone tries to pass these words off as arguments by Moving Defendants, they are not-they are Congress’s own words. The cases Moving Defendants cite do not “represent only one side of the pre-AIA judicial divide on joinder” (D.I. 144 at 7); they represent the Congressionally-approved, and now mandated, judicial interpretation of Rule 20 in Case 1:11-cv-00834-SLR Document 151 Filed 02/09/12 Page 9 of 22 PageID #: 1008 - 6 - patent actions.6 CyberFone’s arguments for joinder of any defendant-based on general statements in non-patent cases that “the impulse is towards entertaining the broadest scope of action,” and that “joinder of claims, parties and remedies is strongly encouraged” (D.I. 144 at 3)-simply ignore that Congress reached the exact contrary conclusion in the AIA. B. The AIA Applies to this Dispute Because the FAC Does Not Relate Back to the Original Complaint CyberFone does not contest that joinder would be improper under the AIA, but instead claims that the AIA is inapplicable because “this case was filed before the adoption of [the AIA].” (D.I. 144 at 1). There can be no dispute, however, that CyberFone filed the FAC well after the enactment of the AIA. It is telling that CyberFone chose only to collaterally attack the Moving Defendants’ arguments rather than presenting any evidence that the FAC should, in fact, relate back. Even CyberFone’s collateral attacks fail, and CyberFone should not be allowed to simply “tack on” whatever new allegations to its original Complaint without regard to the applicability of the AIA. First, CyberFone’s contention that the Moving Defendants “waive[d]” the argument that the FAC does not relate back to the original Complaint is without merit. (D.I. 144 at 11). 6 Indeed, other than the one District of Kansas opinion CyberFone now cites, the MyMail line of cases have been cited approvingly almost exclusively within the Fifth Circuit. The opinions Moving Defendants have cited in this and their Opening Brief (D.I. 106 at 10-14), on the other hand, reflect decisions in patent cases from the Second, Third, Fourth, Seventh, Eighth, Ninth, and Eleventh Circuits. Even the MyMail line of cases that CyberFone cites from the Fifth Circuit are much different than this one. In MyMail, Ltd. v. Am. Online, Inc., the Court noted that the defendants “shared resources, such as dial-up Internet access numbers.” 223 F.R.D. 455, 457 (E.D. Tex. 2004). Similarly, in MicroUnity Sys. Eng’g, Inc. v. Acer Inc., No. 2:10-CV-91-TJW-CE, 2011 WL 4591917, at *3 (E.D. Tex. Sept. 30, 2011), the Court noted that the accused products all used the same component (the ARM architecture and instruction set). CyberFone has made not a single allegation that there is any such connection between the defendants or their products. Case 1:11-cv-00834-SLR Document 151 Filed 02/09/12 Page 10 of 22 PageID #: 1009 - 7 - Although not their burden to do so, the Opening Brief’s discussion on pp. 14-15, 17-18 more than adequately sets forth Moving Defendants’ position that the FAC did not relate back to the original Complaint under Rule 15, especially for the defendants that were added without apparent or alleged connection to the original defendants or allegations. Next, CyberFone contends that “many of the Moving Defendants seeking this relief . . . are not even the newly-added defendants.” (D.I. 144 at 8) This is irrelevant as two of the four new parties do join in this motion.7 Moreover, the Farina court determined that the CAFA, on which federal subject matter jurisdiction was based, applied to all defendants, and not just the newly added ones. Farina v. Nokia, Inc., 625 F.3d 97, 114-15 (3d Cir. 2010) (“Federal jurisdiction over Farina’s suit arose on December 23, 2005, when the Second Amended Complaint commenced a new civil action [by including two new defendants] and brought the case under CAFA.”). CyberFone then argues that Farina is inapplicable because 1) Farina addressed the Fifth Circuit’s “Braud approach” to relation back, which relies upon Supreme Court precedent from 1932 and 1904, before the enactment of the Federal Rules,8 and 2) “it relies for the 7 The time to respond for newly added defendants Motorola Solutions, Inc. and Equinox Payments, LLC, had not yet passed when Moving Defendants filed the Motion. Since then, Motorola Solutions, Inc. and Equinox Payments, LLC, have joined in the motion. (D.I. 134, 141.) In addition, newly added defendant Hyatt Corporation has filed its own separate Motion to Dismiss Based on Misjoinder or In the Alternative to Sever and Transfer The Claims. (D.I. 138.) 8 CyberFone’s reliance on Schiavone v. Fortune, 477 U.S. 21, 24 (1986), is particularly confusing. In Schiavone, the Supreme Court held that an amended complaint did not relate back to an earlier filed complaint where the statute of limitations had expired between the original and amended complaints, even though the originally named defendant, Fortune, was a division of the party plaintiff Schiavone sought to add, Time. If anything, Schiavone supports the Moving Defendants’ position that relation back is not appropriate. Case 1:11-cv-00834-SLR Document 151 Filed 02/09/12 Page 11 of 22 PageID #: 1010 - 8 - commencement definition on Pennsylvania law.” (D.I. 144 at 9). As an initial matter, CyberFone’s suggestion that the Fifth Circuit ignored the Rules of Civil Procedure in its 2006 Braud decision because it relied on pre-Rules Supreme Court precedent is plainly wrong. In fact, the Braud court explicitly considered the import of Fed. R. Civ. P. 15(c)(3). Braud v. Transp. Serv. Co. of Ill., 445 F.3d 801, 806-07 (5th Cir. 2006). Moreover, the Farina court only applied Pennsylvania law after considering relation back precedent from the First, Fifth, Sixth, Seventh, Eighth, Ninth and Tenth Circuits. 625 F.3d at 111-13. It further traced the origins of its holding that “[g]enerally ‘a party brought into court by an amendment, and who has, for the first time, an opportunity to make defense to the action, has a right to treat the proceeding, as to him, as commenced by the process which brings him into court,’” to Federal, not Pennsylvania, law. Id. at 111 (quoting Braud, 445 F.3d at 805 (quoting United States v. Martinez, 195 U.S. 469, 473 (1904)). And although CyberFone claims that Farina “do[es] not dispose of the issue here” (D.I. 144 at 8), the Third Circuit in Farina considered exactly the question of how to determine whether a complaint filed before the enactment of a statute, but amended after enactment, “commenced” before or after the statute. Id. at 111-13. CyberFone’s attempt to completely ignore the effect of amending its Complaint is precisely what concerned the Farina court, which stated: [T]he unqualified disregard of any post-[Act] pleading amendments ... entails the practically untenable result that once a pre-[Act] case is filed, the plaintiff can tack on new causes of action so substantively independent of the original case that they would be properly treated as filed after [Act]'s effective date for all legal purposes ... except for [the Act]. Id. at 111 (quoting approvingly Prime Care of Ne. Kan., LLC v. Humana Ins. Co., 447 F.3d 1284, 1288 n.4 (10th Cir. 2006)). Case 1:11-cv-00834-SLR Document 151 Filed 02/09/12 Page 12 of 22 PageID #: 1011 - 9 - Finally, CyberFone simply ignores the Moving Defendants’ point that “CyberFone’s original thread-bare eleventh hour complaint to avoid the express misjoinder provisions of the AIA was facially defective because it, for most if not all of the defendants, failed to satisfy even the liberal pleading requirements of Fed. R. Civ. P. 8(a).” (D.I. 144 at 18) Indeed, CyberFone amended its original Complaint to identify products before the Defendants could respond-but even this was well after the enactment of the AIA. CyberFone’s bare original Complaint, filed at the literal eleventh hour, should not allow it to circumvent Congress’s intent for the AIA, when even CyberFone acknowledged further detail was necessary. C. The Most Efficient Arrangement of Defendants Is Not the Twenty-Two Actions CyberFone Has Created Joinder is also an inefficient use of the Court’s, and the parties’, resources. CyberFone argues that separating the Moving Defendants in this action would result in a parade of horribles for the Court, claiming that separation will “increase the burden on the Court.” (D.I. 144 at 8). What CyberFone neglects to mention, however, is that it has already chosen to inflict these very things upon the Court (and the defendants) by filing twenty-two separate actions against more than 150 defendants. If, as CyberFone suggests in its brief, the Court must hold a separate Markman hearing for each action, the Court is already faced with twenty-two hearings on the same five patents, six hearings including the patents in this action. The same can also be said for every argument that CyberFone makes about waste or inefficiency in its opposition to the defendants’ motion. CyberFone’s arguments are simply an attempt to misdirect blame for the burden it forced upon this Court when it filed these actions. In evaluating efficiency, therefore, the question is not one case or several, but instead how the several cases should be arranged. Indeed, CyberFone does not dispute the Moving Defendants’ arguments that they will be prejudiced at trial, but instead claims that “[s]everance Case 1:11-cv-00834-SLR Document 151 Filed 02/09/12 Page 13 of 22 PageID #: 1012 - 10 - for trial can be considered close to trial . . . .” (D.I. 144 at 8). Delaying until trial, however, does not serve efficiency with the multi-action nature of this case. As Chief Judge Sleet held, “[a]lthough there may be some efficiency to be gained by consolidating certain aspects of discovery, [plaintiff] ignores the possibility that collateral issues specific to any one of the many unrelated parties involved in both cases may create inefficiencies that would not arise if the proceedings remained separate.” Sony Elecs., Inc. v. Orion IP, LLC, C.A. No. 05-255-GMS, 2006 WL 680657, at *2 (D. Del. Mar. 14, 2006) (citing Codex Corp. v. Milgo Elec. Corp., 553 F.2d 735, 739 (1st Cir. 1977)). The Court is already faced with overlapping, but separate, actions that eliminate the potential efficiency of a single action. To the extent that efficiency can be gained before trial, it is by narrowing disputes and issues to only the interested parties-not by lumping disparate defendants together in a single action.9 Separate actions leave the Court and the parties free to choose the parties with whom to coordinate on any given issue, and will prevent a dispute among a limited number of parties from engulfing otherwise uninterested parties merely by virtue of being part of the same action. III. CONCLUSION For the foregoing reasons, and the reasons stated in their Opening Brief, the Moving Defendants respectfully request that the Court dismiss them from this case, or in the alternative, sever the claims against them from the other defendants. 9 CyberFone’s January 30, 2012 addition of thirteen lawsuits-one against each unrelated defendant in the 11-828 action-that alleged infringement of one of the same five patents further illustrates why joint actions are inappropriate. As facts and contentions are revealed throughout discovery, new issues that will likely be specific to some, but not all, defendants will be uncovered. Rather than rearranging the actions whenever a new issue is discovered, as CyberFone attempted to do on January 30 and which has the potential to add additional rounds of motion practice, separate actions can be coordinated as appropriate on each issue. Case 1:11-cv-00834-SLR Document 151 Filed 02/09/12 Page 14 of 22 PageID #: 1013 - 11 - MORRIS, NICHOLS, ARSHT & TUNNELL LLP /s/ Paul Saindon Jack B. Blumenfeld (#1014) Karen Jacobs Louden (#2881) Paul Saindon (#5110) 1201 N. Market Street P.O. Box 1347 Wilmington, DE 19899-1347 (302) 658-9200 jblumenfeld@mnat.com klouden@mnat.com psaindon@mnat.com Attorneys for US Airways, Inc., Air Canada and United Air Lines, Inc. OF COUNSEL: Stephen Baskin KILPATRICK TOWNSEND & STOCKTON LLP Suite 900 607 14th Street, N.W Washington, DC, 20005-2018 (202) 508-5899 John Alemanni Michael T. Morlock KILPATRICK TOWNSEND & STOCKTON LLP 1001 West Fourth Street Winston-Salem, NC 27101 (336) 607-7300 MORRIS, NICHOLS, ARSHT & TUNNELL LLP /s/ Paul Saindon Jack B. Blumenfeld (#1014) Karen Jacobs Louden (#2881) Paul Saindon (#5110) 1201 North Market Street P.O. Box 1347 Wilmington, DE 19899 (302) 658-9200 jblumenfeld@mnat.com klouden@mnat.com psaindon@mnat.com Attorneys for Hypercom Corporation and Verifone Systems, Inc. OF COUNSEL: Owen W. Dukelow KOLISCH HARTWELL, P.C. 520 S.W. Yamhill Street 200 Pacific Building Portland, Oregon 97204 (503) 224-6655 Case 1:11-cv-00834-SLR Document 151 Filed 02/09/12 Page 15 of 22 PageID #: 1014 - 12 - MORRIS, NICHOLS, ARSHT & TUNNELL LLP /s/ Paul Saindon Jack B. Blumenfeld (#1014) Karen Jacobs Louden (#2881) Paul Saindon (#5110) 1201 N. Market Street P.O. Box 1347 Wilmington, DE 19899-1347 (302) 658-9200 jblumenfeld@mnat.com klouden@mnat.com psaindon@mnat.com Attorneys for Inter-Continental Hotels Corp. OF COUNSEL: George L. Murphy, Jr. Vaibhav P. Kadaba KILPATRICK TOWNSEND & STOCKTON LLP 1100 Peachtree Street Suite 2800 Atlanta, GA 30309 (404) 815-6500 MORRIS, NICHOLS, ARSHT & TUNNELL LLP /s/ Paul Saindon Jack B. Blumenfeld (#1014) Karen Jacobs Louden (#2881) Paul Saindon (#5110) 1201 N. Market Street P.O. Box 1347 Wilmington, DE 19899-1347 (302) 658-9200 jblumenfeld@mnat.com klouden@mnat.com psaindon@mnat.com Attorneys for Defendant Hilton Worldwide, Inc. Case 1:11-cv-00834-SLR Document 151 Filed 02/09/12 Page 16 of 22 PageID #: 1015 - 13 - MORRIS, NICHOLS, ARSHT & TUNNELL LLP /s/ Paul Saindon Jack B. Blumenfeld (#1014) Karen Jacobs Louden (#2881) Paul Saindon (#5110) 1201 N. Market Street P.O. Box 1347 Wilmington, DE 19899-1347 (302) 658-9200 jblumenfeld@mnat.com klouden@mnat.com psaindon@mnat.com Attorneys for Ingenico Corp., Ingenico Inc. and United Parcel Service, Inc. OF COUNSEL: John Fry Kelly L. Whitehart MORRIS, MANNING & MARTIN, LLP 1600 Atlanta Financial Center 3343 Peachtree Road, NE Atlanta, GA 30326, USA MORRIS, NICHOLS, ARSHT & TUNNELL LLP /s/ Paul Saindon Jack B. Blumenfeld (#1014) Karen Jacobs Louden (#2881) Paul Saindon (#5110) 1201 N. Market Street P.O. Box 1347 Wilmington, DE 19899-1347 (302) 658-9200 jblumenfeld@mnat.com klouden@mnat.com psaindon@mnat.com Attorneys for Motorola Solutions Inc. OF COUNSEL: Michael L. Brody Jonathan E. Retsky Thomas M. Williams James Winn WINSTON & STRAWN LLP 35 West Wacker Drive Chicago, IL 60601 Krishnan Padmanabhan WINSTON & STRAWN LLP 200 Park Avenue New York, NY 10166-4193 (212) 294-6700 Case 1:11-cv-00834-SLR Document 151 Filed 02/09/12 Page 17 of 22 PageID #: 1016 - 14 - MORRIS, NICHOLS, ARSHT & TUNNELL LLP /s/ Rodger D. Smith II Rodger D. Smith II (#3778) 1201 N. Market Street P.O. Box 1347 Wilmington, DE 19899-1347 (302) 658-9200 rsmith@mnat.com Attorneys for Defendant Sony Electronics, Inc. OF COUNSEL: Charles Steenburg Michael Rader James J. Foster WOLF, GREENFIELD & SACKS P.C. 600 Atlantic Avenue Boston, MA 02210 FISH & RICHARDSON, P.C. /s/ Lauren M. Pringle Lauren M. Pringle (#5375) 222 Delaware Avenue, 17th Floor P.O. Box 1114 Wilmington, DE 19899-1114 (302) 778-8474 pringle@fr.com Attorney for Defendants Federal Express Corp. and Barnes & Noble, Inc. RATNERPRESTIA /s/ Rex A. Donnelly Rex A. Donnelly (#3492) 1007 Orange Street, Suite 1100 Wilmington, DE 19801 (302) 778-2500 radonnelly@ratnerprestia.com Attorneys for Equinox Payments, LLC OF COUNSEL: M. Elizabeth Day Marc C. Belloli Sal Lim FEINBERG DAY ALBERTI & THOMPSON LLP 401 Florence Street, Suite 200 Palo Alto, CA 94301 (650) 618-4360 RATNERPRESTIA /s/ Rex A. Donnelly Rex A. Donnelly (#3492) 1007 Orange Street, Suite 1100 Wilmington, DE 19801 (302) 778-2500 radonnelly@ratnerprestia.com Attorneys for Pandigital, Inc. OF COUNSEL: James P. Martin Lisa Stockholm SHARTSIS FRIESE LLP One Maritime Plaza, 18th Floor San Francisco, CA 94111 (415) 421-6500 Case 1:11-cv-00834-SLR Document 151 Filed 02/09/12 Page 18 of 22 PageID #: 1017 - 15 - POTTER ANDERSON & CORROON LLP /s/ David E. Moore Richard L. Horwitz (#2246) David E. Moore (#3983) Hercules Plaza, 6th Floor 1313 N. Market Street Wilmington, DE 19801 (302) 984-6000 rhorwitz@potteranderson.com dmoore@potteranderson.com Attorneys for Amazon.com, Inc. OF COUNSEL: J. David Hadden Darren E. Donnelly Saina S. Shamilov FENWICK & WEST LLP 801 California Street Mountain View, CA 94041 (650) 988-8500 Ryan J. Marton FENWICK & WEST LLP 555 California Street, 12th Floor San Francisco, CA 94104 (415) 875-2300 RICHARDS, LAYTON & FINGER, P.A. /s/ Kelly E. Farnan Allen Terrell, Jr. (#937) Kelly E. Farnan (#4395) One Rodney Square 920 N. King Street Wilmington, DE 19801 (302) 651-7700 terrell@rlf.com farnan@rlf.com Attorneys for Southwest Airlines Co. and AirTran Airways Inc. OF COUNSEL: Max Ciccarelli Justin S. Cohen THOMPSON & KNIGHT LLP One Arts Plaza 1722 Routh St., Suite 1500 Dallas, TX 75201 (214) 969-1700 Case 1:11-cv-00834-SLR Document 151 Filed 02/09/12 Page 19 of 22 PageID #: 1018 - 16 - DLA PIPER LLP (US) /s/ Aleine Porterfield Denise S. Kraft (#2778) Aleine Porterfield (#5053) 919 N. Market Street, Suite 1500 Wilmington, DE 19801 (302) 468-5645 denise.kraft@dlapiper.com aleine.porterfield@dlapiper.com Attorneys for Starwood Hotels & Resorts Worldwide Inc. OF COUNSEL: John Guaragna Brian Erickson Aaron Fountain DLA PIPER LLP (US) 401 Congress Avenue Suite 2500 Austin, TX 78701-3799 RICHARDS, LAYTON & FINGER, P.A. /s/ Anne Shea Gaza Frederick L. Cottrell, III (#2555) Anne Shea Gaza (#4093) Travis S. Hunter (#5350) One Rodney Square 920 N. King Street Wilmington, DE 19801 (302) 651-7700 cottrell@rlf.com gaza@rlf.com hunter@rlf.com Attorneys for Marriott International, Inc. OF COUNSEL: Brian M. Koide John L. Cuddihy CROWELL & MORING LLP 1001 Pennsylvania Avenue, NW Washington, DC 20004-2595 (202) 624-2500 Case 1:11-cv-00834-SLR Document 151 Filed 02/09/12 Page 20 of 22 PageID #: 1019 - 17 - POTTER ANDERSON & CORROON LLP /s/ Philip A. Rovner Philip A. Rovner (#3215) Jonathan A. Choa (#5319) Hercules Plaza, 6th Floor 1313 N. Market Street Wilmington, DE 19899 Tel: (302) 984-6000 provner@potteranderson.com jchoa@potteranderson.com Attorneys for Defendant First Data Corporation OF COUNSEL: Bobbie Wilson PERKINS COIE LLP Four Embarcadero Center, Suite 2400 San Francisco, CA 94111 (415) 344-7000 Christopher Kao PERKINS COIE LLP 3150 Porter Drive Palo Alto, CA 94304 (650) 838-4300 POTTER ANDERSON & CORROON LLP /s/ David E. Moore Richard L. Horwitz (#2246) David E. Moore (#3983) Hercules Plaza, 6th Floor 1313 N. Market Street Wilmington, DE 19899 (302) 984-6000 rhorwitz@potteranderson.com dmoore@potteranderson.com Attorneys for Nintendo of America Inc. OF COUNSEL: Timothy S. Teter Benjamin G. Damstedt COOLEY LLP Five Palo Alto Square 3000 El Camino Real Palo Alto, CA 94306 (650) 843-5000 Case 1:11-cv-00834-SLR Document 151 Filed 02/09/12 Page 21 of 22 PageID #: 1020 - 18 - GREENBERG TRAURIG, LLP /s/ Eve H. Ormerod Gregory E. Stuhlman (#4765) Eve H. Ormerod (#5369) 1007 North Orange Street, Suite 1200 Wilmington, DE 19801 (302) 661-7000 stuhlmang@gtlaw.com ormerode@gtlaw.com Attorneys for Defendant DHL Express (USA), Inc. OF COUNSEL: Michael A. Nicodema GREENBERG TRAURIG, LLP 200 Park Avenue Florham Park, NJ 07932 (973) 360-7932 Kimberly A. Warshawsky GREENBERG TRAURIG, LLP 2375 E. Camelback Rd., Suite 700 Phoenix, AZ 85016 (602) 445-8566 ASHBY & GEDDES /s/ John G. Day John G. Day (#2403) Tiffany Geyer Lydon (#3950) Andrew C. Mayo (#5207) 500 Delaware Avenue, 8th Floor P.O. Box 1150 Wilmington, DE 19899 (302) 654-1888 jday@ashby-geddes.com tlydon@ashby-geddes.com amayo@ashby-geddes.com Attorneys for Defendant JetBlue Airways Corporation OF COUNSEL: Jordan A. Sigale LOEB & LOEB LLP 321 North Clark Street Suite 2300 Chicago, IL 60654 February 9, 2012 Case 1:11-cv-00834-SLR Document 151 Filed 02/09/12 Page 22 of 22 PageID #: 1021