Case: 1:24-cv-11211 Document #: 11 Filed: 11/21/24 Page 1 of 6 PageID #:92

IN THE UNITED STATES DISTRICT COURT FOR THE

NORTHERN DISTRICT OF ILLINOIS EASTERN DIVISION

NIPPON SEAL (SHENZHEN) CO., LTD. Case No.: 24-cv-11211

Plaintiff, Judge Sunil R. Harjani
v.
Magistrate Judge Heather K.
McShain
THE PARTNERSHIPS AND
UNINCORPORATED ASSOCIATIONS
IDENTIFIED IN SCHEDULE “A”,

Defendants.

PLAINTIFF’S SUPPLEMENTAL MEMORANDUM

IN SUPPORT OF JOINDER OF DEFENDANTS ON SCHEDULE A

Plaintiff provides this supplemental memorandum in support of joinder of Defendants

listed on Schedule A (Sealed).

I. PERMISSIVE JOINDER UNDER 35 U.S.C. §299 (“AIA”).

Under the American Invents Act (AIA), permissive joinder is found at subsection (a)(1)

and (2). See, In re EMC Corporation, 677 F.3d 1351, 1355 (Fed. Cir. 2012) (“Recently,

Congress addressed the issue of joinder in patent cases in section 19 of the Leahy-Smith

American Invents Act …”); See also, Leahy-Smith American Invents Act, Pub. L. No. 112-29,

sec 19(d), §299, 125 Stat. 284, 332-33 (2011); See also, Oakley, Inc. v. P’Ships Identified on

Schedule “A”, No. 21-cv-536 at *3 (N.D. Ill. Jan. 30, 2021). The new rule allows joinder “only

if” the claims asserted against various defendants is based on arising out of transactions or

occurrences or “a series of transactions or occurrences”, that involves infringement of the same

product. 35 U.S.C. §299(a)(1) et seq.

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A. What is a “series” of transactions or occurrences?

A determination of what makes transactions or occurrences a “series” set out in §299 is a

connection or logical relationship between the various transactions or occurrences. Bicycle

Peddler, LLC v. Doe, 295 F.R.D. 76 (E.D. Tex. 1993)(“What would make them a series? The

answer is some connection or logical relationship between the various transactions or

occurrences.”)

Applying a test to judge a logical relationship between transactions or occurrences has

been described as requiring an examination of the claims, and parties in a case. Bose

Corporation v. Partnerships and Unincorporated Associations Identified on Schedule A, 334

F.R.D. 511, 513 (N.D. Ill. 2020); See, Moore v. N.Y. Cotton Exchange, 270 U.S. 593, 610 (1926).

A logical relationship requires shared, overlapping facts that give rise to each cause of action.

Id., In re EMC Corporation, at 1358 (“The logical relationship test is satisfied if there is

substantial evidentiary overlap in the facts giving rise to the cause of action against each

defendant. In other words, the defendants’ allegedly infringing acts, which give rise to the

individual claims of infringement, must share an aggregate of operative facts.”). Courts have

discretion in the determination of a logical relationship. Id., Bose Corporation; See, UWM

Student Ass’n v. Lovell, 888 F.3d 854, 863 (7th Cir. 2018). Exhibits take precedence to

allegations. Tang v. The Partnerships & Unincorporated Associations Identified on Schedule A,

23-cv-4587 (N.D. Ill., Jan. 4, 2024), quoting, Forrest v. Universal Savings Bank, F.A., 507 F.3d

540, 542 (7th Cir. 2007)(“To the extent that an exhibit attached or referenced by the complaint

contradicts the … allegations, the exhibit takes precedence”).

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B. What is an “occurrence”?

An “occurrence”’ has not been explicitly limited or defined. That said, there is clear

difference between “occurrence” and “transaction”. Id., Bose Corporation at 516 (“… no court

has considered the meaning of “occurrence” apart from the meaning of “transaction” even

though “canons of construction ordinarily suggest that the terms connected by a disjunctive …

be given separate meanings”) quoting, Brooke Group Ltd. v. Brown & Williamson Tobacco

Corp., 509 U.S. 209, 229 (1993). This court has held that an occurrence is not necessarily the

product of joint or coordinated action. Id., Bose Corporation (“Unlike a “transaction”, an

“occurrence” is not necessarily the product of joint or coordinated action.”)

This court has held the internet frequently produces occurrences that are cooperative,

even if they are not intentionally coordinated. Id. “Individual actions only possible through the

internet can have a substantial impact through aggregation” (emphasis ours); Id., (“… an

“occurrence” of mass harm easily can be inflicted even if there is no express “transactional”

coordination among the attackers”). Id. FRCP Rule 20’s inclusion of the term “occurrence”

allows a plaintiff to join in a single case multiple defendants who participated in unlawful

occurrences- joinder is appropriate in the kind of harmful occurrences the internet enables. Id.

While patent litigation is subject to joinder under 35 U.S.C. §299, the enacted law still included

the provision of “occurrences” as found in FRCP 20. 35 U.S.C. §299(a)(1). Mass, unlawful

acts, which may be considered as a ‘swarm’, have been deemed an occurrence form which a

rights holder sought relief. See, Tang at *5.

C. Common Questions of Fact.

35 U.S.C. §299 (a)(2) allows joinder of defendants if there are questions of fact common

to all defendants. Discussed below, and in re-submitted Exhibit C (Sealed), each defendant in

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Schedule A sells the same, knock-off product. The selling of the same, knock-off product is a

common fact for each defendant.

D. Identifying the “same” products under 35 U.S.C. §299(a)(1).

Permissible joinder for patent litigation cases requires “the same accused product or

process”. 35 U.S.C. §299(a)(1). The level of ‘sameness’ has apparently not been set by the

court. Id., Tang at *4, quoting, Rudd v. Lux Products Corp., No. 09-cv-6957, 2011 WL 148052,

at *3 (N.D. Ill. Jan. 12, 2011) (“Simply alleging that Defendants manufacture or sell similar

products does not support joinder under Rule 20”); Id., In re EMC Corporation at 1359.

Nonetheless, if there is the same product, joinder has been deemed permissible. Richmond v.

Lumisol Elec., Ltd. Civil Action No. 13-1944 (MLC), at *7-8 (D.N.J. Jan. 31, 2014) (“…

Richmond has explicitly set forth [the] “same accused product” for each defendant in every case

involved in the present Motions.”)

II. THE ABOVE ANALYSIS APPLIED TO THE DEFENDANTS’ PRODUCTS IN

THIS CASE.

Plaintiff has prepared and submitted, under Seal, an Exhibit D, which shows elements of

Plaintiff’s product based on the claimed design of U.S. Pat. No. 8,117,706 (**706). Exhibit C

(DE 1, Sealed) shows the individual products of the defendants on Schedule A. Far from being

'similar', shown in Exhibit C, the defendants sell the same, knock-off product on the same online

platform (TEMU).

The fact that each defendant is selling the same, knock-off product, and that they are

having a substantial impact aggregated on the same platform, supports joinder of defendants as

there is a series of occurrence and facts common between the defendants. In essence, any

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defense offered by defendants would be the same. First Time Videos, LLC v. Does 1-500, 276

F.R.D. 241, 252 (N.D. Ill. 2011) (“joinder is proper if " any question of law or fact common to all

defendants will arise in the action.")

A. Plaintiff’s product significantly differs in appearance from the prior art.

Arbitrarily selecting four prior art documents, it is visually apparent that the Plaintiff’s

claimed design differs significantly from the prior art (see elements A, B, C, and D). Plaintiff’s

design was deemed patentable based on these visually, remarkable differences.

B. The Defendants are selling the same, knock-off product.

Exhibit C shows the various Defendants are selling the same, knock-off product. There

is no explanation for why each defendant should be selling the visually same product. Egyptian

Goddess v. Swisa, 543 F.3d 665, 670 (Fed. Cir. 2008) (“[I]f, in the eye of an ordinary observer,

giving such attention as a purchaser usually gives, two designs are substantially the same, if the

resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to

be the other the first one patented is infringed by the other”) quoting, Gorham Company v. White,

81 U.S. 511, 528 (1871).

The images shown at Exhibit C were collected contemporaneously at the time of the

filing of this lawsuit, supporting Plaintiff’s allegation that the Defendants are using internet-

based stores to appear to sell “licensed products, while actually and knowingly marketing,

selling, and distributing” infringing product. This evidence, along with the allegations, supports

Plaintiff’s belief that there is a logical relationship between the defendants on Schedule A, based

upon a series of occurrences. A logical relationship allegation under the AIA is supported

because there is evidentiary overlap in the facts, namely the Defendants each sell the same,

knock-off product through online platforms.

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Even though Plaintiff does not have proof of an express transactional collaboration

between the Defendants on Schedule A, the fact that they all sell the visually same, knock-off

product supports the occurrence of ‘mass harm’ (or swarming) from the Defendants- almost as a

form of ‘ganging up’ on Plaintiff’s legitimate product. Defendants acts should be considered

mass, unlawful acts falling under the category of ‘series of occurrences’, pursuant to the AIA.

Exhibit D to the Complaint sets out the infringing aspects of the knock-off product

against the claim limitations of the **706 patent. While it is true that each defendants' product

infringes the **706 patent, that is because they are the same knock-off product. The products are

not merely similar.

CONCLUSION

Because there was a series of occurrences in the sale of the same product as the claimed

design and Plaintiff’s product, by the Defendants on Schedule A, joinder between these

Defendants should be deemed proper.

DATED: November 21, 2024 Respectfully Submitted:

Robert M. DeWitty
DeWitty and Associates
Attorney for Plaintiff
1500 K Street, 2nd Floor
RM 249B
Washington DC 20005
Email:
[email protected]
Tele: 2025717070