Are you Smarter than a Law Student? (Civil Procedure Edition)

The following comes from my 2022 Civil Procedure I Exam. – Dennis

Introduction: Dryson makes a “hair wand” that styles as it dries.  The company also owns a design patent covering the product. In 2021, three different competitors started selling similar products. Dryson is considering suing them all together in a single lawsuit to be filed W.D. Tex. Federal Court. The action would allege both (1) Federal Patent Infringement; and (2) Unfair Competition (based upon Texas state law).  One note, Dryson’s attorneys believes that it has a good claim of Patent Infringement against all three parties, but the Unfair Competition claim would only be filed against two of the defendants.

1. Do the rules permit Dryson to file a single lawsuit that includes all these parties/claims? (Is Dryson required to bring them all together in one action?)

More facts for next question: Dryson filed the action as noted above. One of the defendants (Amaxon) sells the accused product, but does not actually manufacture the product.  Rather, Amaxon sells a product manufactured by Revloon. As part of their deal, Revloon agreed to indemnify Amaxon for any losses if the product turns out to be infringing on intellectual property owned by a third party.

2. The rules of Civil Procedure provide different ways that Revloon could become part of the lawsuit. Identify them and explain how it would work.

More facts for next couple of questions: When Amaxon first started selling the Revloon product, the company conducted a “freedom-to-operate” search.  To this end, Amaxon hired an attorney (Crunch) to opine on whether the knock-off version infringed anyone’s intellectual property rights. Crunch hired a technical expert to search through patent office records. The technical expert created a Technical Report showing several patents and trademarks that were implicated. Crunch then used that Technical Report to draft an Opinion Letter stating that: “Amaxon is infringing Dryson’s IP rights.” Despite the opinion letter, Amaxon decided that the profits were too lucrative and decided to keep selling the product. All of this occurred before Dyson sued or threatened to sue.

Later, during litigation, Dryson submitted a request to Amaxon seeking discovery of documents held by Amaxon that relate to Dryson’s intellectual property.  Amaxon identified  the Technical Report and Opinion Letter as responsive, and added them to its Privilege Log. But, Amaxon indicated that it would not disclose their contents to Dryson.  Dryson is interested in the documents because proof of willful infringement can lead to treble damages.

3. After attempting to negotiate to resolve the discovery dispute, Dryson filed a motion to compel – seeking an order requiring Amaxon to turn-over the two documents. How should the Judge rule?  

4. Assume that the court granted the motion to compel and ordered Amaxon to provide the requested documents. Can Amaxon appeal that order?

5. The case is headed to trial. What information would help you know whether the court will hold a bench trial or a jury trial (explain)?

More facts for next question: Dryson’s product has a problem.  It burns hair. Russell Brand is one of the people injured. Brand is a famous and wealthy comedian.  Although he is English, the incident happened on a trip to Missouri and so he filed suit in St. Louis Federal Court.  Rather than suing just for himself, Brand filed a class-action on behalf of all people whose hair had been burned within the State of Missouri (but excluding anyone whose skin was burned).  The case seeks both an injunction (stop selling harmful products) and monetary damages for hair loss.  Brand’s attorney is a leading class-action litigator and Brand has promised to pay all legal fees from his considerable wealth in pursuit of justice.

6. Should the court certify the class?

35 thoughts on “Are you Smarter than a Law Student? (Civil Procedure Edition)

  1. 9

    Totally off-topic, but M.C. Escher’s works entered the public domain today. Enjoy.

    1. 9.1

      Now there’s a guy who showed us it wasn’t always a bad thing not be able to tell up from down.

  2. 8

    Interesting that your law school teaches intellectual property civil procedure. It wouldn’t have meant much to me in law school, but learning all these things in a single semester or year would have been very welcome in years to come. At least your students are being taught the sorts of things they might want to think about. They are very lucky.

  3. 7

    Presumably you mean “Russell Bland”? He’s just the kind of person who would use a “Dryson” wand that he’d bought on “Amaxon”.

    1. 7.1

      No, Russell Brand. He’s a big fan of brands. Like Dryson, Amaxon, and Revloon.

  4. 6

    If the purpose of question (1) was to test the student’s knowledge within the domain of basic civil procedure under the Federal Rules of Civil Procedure, it’s a flawed question. The AIA joinder provision, 35 U.S.C. 299, expressly prohibits naming multiple different defendants in a patent lawsuit where the sole commonality between them is being accused of infringing the same patent.

    Congress enacted Section 299 to specifically curtail the practice of district courts that found it permissible under the FRCP 20 to name unrelated defendants in a single patent suit. So ironically, if your question was intended to test FRCP knowledge, the “correct” answer is actually the wrong answer in the real world.

    1. 6.1

      That is very likely the point of the question.

    2. 6.2

      iirc, only the EDTX had allowed joinder of accused infringers under FRCP 20. all others (that faced the question) had found such joinder not permissible. So the “correct” answer 299 or FCRP 20 is probably “no.”

      1. 6.2.1

        > iirc, only the EDTX had allowed joinder of accused infringers under
        > FRCP 20. all others (that faced the question) had found such joinder
        > not permissible. So the “correct” answer 299 or FCRP 20 is probably
        > “no.”

        Not sure that’s right. EDTX was certainly the epicenter of multiple defendant Rule 20 joinder in patent cases, a practice expressly approved by Judge Davis’ 2004 MyMail decision. But MyMail was cited and accepted in several other districts including Delaware, other districts in Texas, Louisiana, among other places.

        By 2011 when the AIA was enacted, there was a “split of authority” on this issue, with judges like Judge Alsup of the Northern District of California expressly rejecting MyMail. But because most defendants were being sued in districts that had already adopted MyMail, this wasn’t a true “split” in a weighted sense. Although even in EDTX, they’d occasionally grant a motion for severance under FRCP 21 if defendants could show after discovery that their products were dramatically different from one another, but most cases didn’t get that far.

        I was skeptical of MyMail’s reading of Rule 20, but admittedly the “same transaction or occurrence” language is sufficiently squishy that you could make an argument either way–which is presumably why it makes a decent law school exam question. Resolving that ambiguity against joinder was the very reason Congress wrote Section 299 the way it did.

        1. 6.2.1.1

          Turns out the Fed Cir. overturned MyMail in 2012 (which it called the ‘minority rule’– though, as you note, it may have been a minority rule in terms of districts, but not in terms of patent cases). It had little effect cause of the AIA.

          link to caselaw.findlaw.com

          “In the present context the mere fact that infringement of the same claims of the same patent is alleged does not support joinder, even though the claims would raise common questions of claim construction and patent invalidity.   District courts outside the Eastern District of Texas have generally agreed in cases involving patent, copyright, and trademark law. […] We agree that joinder is not appropriate where different products or processes are involved.   Joinder of independent defendants is only appropriate where the accused products or processes are the same in respects relevant to the patent.”

          1. 6.2.1.1.1

            Ocho – you may enjoy this discussion (prior to the CAFC 2012 case you reflect upon – and noting that the CAFC case would reflect the law as passed in that AIA in 2011:

            link to iicj.net

    3. 6.3

      I had a case once in the D.Del., I think after the AIA. A troll sued 20 companies, and brought separate actions against each. The cases were then consolidated before one judge, and one Magistrate, who treated them basically as a single case.
      Other than more filing fees and a lengthier combined caption, not clear to me what what accomplished.

      1. 6.3.1

        did any of them go to trial? i think the point is they would have each required separate trials, even if pre-trial stuff was consolidated.

        1. 6.3.1.1

          No, they all settled IIRC.

          Would the statute bar consolidated trials on common issues (e.g., validity)? How about a common Markman hearing? We actually had one of those in conjunction with a summary judgment motion.

  5. 5

    So that’s how Ginni Thomas’s hair got that way.

  6. 4

    “1. Do the rules permit Dryson to file a single lawsuit that includes all these parties/claims? (Is Dryson required to bring them all together in one action?)”

    Patent Examiner Answer:
    Your question is rejected as being vague and indefinite as it fails to particularly point out and distinctly identify/provide antecedent basis for the term “the rules”. While there is reference to “Civil Procedure” in the body of the article, hindsight and speculation is required. The questioner is requested to amend their question to resolve the indefiniteness.
    The question is also rejected for lacking enablement/written description.

    1. 4.1

      A PHOSITAoQ (Person Having Ordinary Skill In The Art of Questioning) would be fully enabled and adequately described, and the question being sufficiently clear so as to the student to proceed.

      Your argument is found not persuasive.

      1. 4.1.1

        Patent Examiner Response:
        “The rejection is final. Your choices are to abandon, pay to continue, or appeal to people who think like me more often than not.”

        1. 4.1.1.1

          Meh. On 112 issues, from my experience, the Board reverses 80-85% of the time.

        2. 4.1.1.2

          Lol – touché ipguy.

          1. 4.1.1.2.1

            Thank you, sir.

    2. 4.2

      Funny response. Please remember most patent examiners never have gone to law school. I was the exception along with a few of my colleagues in an odd ball art unit. Be thankful most examiners aren’t also lawyers.

      1. 4.2.1

        Oh, I’m well aware. I practiced law for over two years before I joined the USPTO as an Examiner back in the waning years of the 20th Century. Quite frankly, I’d be a lot happier if Examiners knew how to properly apply case law to the facts of a case.

        1. 4.2.1.1

          I very much agree with your reply here ipguy: quite the opposite of what Jr suggests; as ALL would be better off if examiners understood the law to which (and under which) they are directed to examine.

          Our jobs as practitioners would be easier, not more difficult.

  7. 3

    Prof. Crouch – will you be posting model answers to these problems? These are real-life problems for my company (minus the Russell Brand related issues).

  8. 2

    Seeing as any (and all) past such posts have never provided follow-up, I am truly curious as to why anyone would bother engaging on posts such as these.

      1. 2.1.1

        Reason #2 why all law school classes should use multiple choice exams.

        Side note: it’s impossible to be consistent if you need multiple days to grade exams.

      2. 2.1.2

        Prof. Crouch, respectfully, this is not about some ‘I am busy now and will get back to this later‘ type of thing – as most ALL of these types of posts of yours simply do not have that “come back later” follow through.

        Maybe you can commission one of your support staff to crawl the archives and see just how often — if ever — you had a subsequent non-busy time after grading to come back and share.

  9. 1

    Without doing any research, here is my initial take:
    1. No. The sales by different competitors are not the same transaction or series of transactions under Rule 20. Although some judges would allow it. The cases might end up consolidated as related cases.
    2. Rule 14 Third-Party Claim.
    3. Both reports are privileged. Assuming Amaxon is not insane and plans on relying on them at trial.
    4. No.
    5. What relief is requested. Injunction is a bench trial. Money damages is jury. Profits is a bench trial according to most courts. (That’s the trademark rules, I assume it’s the same for design patents.)
    6. Yes, as to liability and injuctive relief, no as to individual damages.

    (BTW, this confirms what one of my old law professors said, that every law professor is a repressed comedian. “Dryson’s product has a problem. It burns hair. ” ROFL)

    1. 1.1

      This all seems good (except 6, on which I have no opinion), but on 3, I can see a decent argument the technical report isn’t privileged.

    2. 1.2

      I only read #1, but I think your response assumes the “similar products” sold by those other companies are not identical products.

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