A while back, I suggested here that defendants start thinking, early on, about joining sole-shareholders (and the like) of asset-less patentees if 285 liability was an issue. In a recent case, the district court allowed joinder of such a person, finding he was a necessary party under Rule 19. (I seriously doubt that is correct (what is the claim against the person being joined?), but Genentech managed to convince a judge to join such a person in Phigenix, Inc. v. Genentech, Inc., (N.D. Cal. Aug. 13, 2018) (here). (I’ve also written about counsel’s liability under 285, and the conflicts it can create, here.)
It discusses another case where this motion was held to be untimely, and there are serious questions about subject matter jurisdiction the court side-steps. Lawyers faced with 285 motions have a lot to think about: plan ahead.