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Mednovus, Inc. and First Texas Holdings Corp v. Qinetiq Group Plc; Qinetiq Ltd.; Qinetiq Us Holdings

October 1, 2012

MEDNOVUS, INC. AND FIRST TEXAS HOLDINGS CORP., PLAINTIFFS,
v.
QINETIQ GROUP PLC; QINETIQ LTD.; QINETIQ US HOLDINGS, INC.; QINETIQ NORTH AMERICA, INC.; METRASENS LTD.; METRASENS INC.; ETS-LINDGREN L.P.; AND INVIVO CORP., DEFENDANTS.



The opinion of the court was delivered by: Otis D. Wright, II United States District Judge

ORDER SEVERING ETSLINDGREN AND INVIVO CORP. AND DENYING THEIR MOTION TO DISMISS AS MOOT [26]

I.INTRODUCTION

Pending before the Court is Defendants ETS-Lindgren and Invivo Corporation's Motion to Dismiss Plaintiffs' First Amended Complaint ("FAC") under Federal Rule of Civil Procedure 12(b)(6). (ECF No. 26.) Upon careful consideration of Plaintiffs' FAC, the Court finds that Plaintiffs have improperly joined ETSLindgren and Invivo in this action under 35 U.S.C. § 299. The Court will therefore sever these Defendants under Rule 21 and deny their pending Motion as moot.*fn1

II.BACKGROUND*fn2

On October 17, 2000, the United States Patent and Trademark Office ("USPTO") issued U.S. Patent number 6,133,829, titled "Walk-Through Metal Detector System and Method," to James C. Johnstone and Sidney G. Freshour.

On December 18, 2003, the USPTO issued U.S. Patent No. 7,113,092, titled "Ferromagnetic Object Detector," to QinetiQ. During the examination period for the '092 Patent the USPTO cited the '829 Patent as prior art against the '092 Patent.

In 2004, QinetiQ developed and commercialized the Ferroguard line of products and systems, which is protected by the '092 Patent, as well as other patents irrelevant here.

Metrasens is a spin-off company of QinetiQ licensed under the '092 Patent to manufacture and sell the Ferroguard products and systems. The'092 Patent was assigned to Mertasens's Chief Technology Officer, Mark N. Greene, on September 26, 2006.

ETS-Lindgren and Invivo Corp. are two of Metrasens's authorized distributors of the Ferroguard products and systems.

By letter dated December 27, 2010, QinetiQ informed Mednovus that it owned the '092 Patent and accused Mednovus's Safescan products of infringing the '092 Patent. By letter dated February 1, 2011, Mednovus responded that it was not infringing on the '092 Patent, which was invalid in light of prior art, including the '829 Patent. Mednovus in turn accused QinetiQ of infringement on the '829 Patent.

III.DISCUSSION

Joinder is normally governed by Federal Rule of Civil Procedure 20. But late last year, Congress passed the Leahy-Smith America Invents Act, which (among other things) altered the standard for joinder in patent suits. Leahy-Smith America Invents Act, Pub. L. No. 112-29, sec. 19(d), §299, 125 Stat 284, 332--33 (2011) (codified at 35 U.S.C. §299). This newly enacted statute sets a higher standard for joinder and prohibits joinder unless the claimed infringement by each defendant arises out of the same transactions relating to infringement of the patent-in-suit by the same accused product:

(a) Joinder of Accused Infringers.- With respect to any civil action arising under any Act of Congress relating to patents, other than an action or trial in which an act of infringement under section 271(e)(2) has been pled, parties that are accused infringers may be joined in one action as defendants or counterclaim defendants, or have their actions consolidated for trial, or counterclaim defendants only if-

(1) any right to relief is asserted against the parties jointly, severally, or in the alternative with respect to or arising out of the same transaction, occurrence, or series of transactions or occurrences relating to the making, using, importing into the United States, ...


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