Force MOS Technology Co., Ltd. v. Lin

Background

Force MOS Technology Co., Ltd. alleged that defendant-attorney Bo-In Lin failed to maintain its patents. The patents expired and became unenforceable. Force MOS did not discover the expiration until after certain third parties allegedly infringed the patents. It then sued Lin, asserting claims including legal malpractice.

In his answer to Force MOS’s third amended complaint, Lin asserted that the alleged infringers—the “Third Parties”—were indispensable and necessary parties. After a case-management conference, the court ordered briefing on whether the Third Parties should be joined under Federal Rule of Civil Procedure 19. The parties consented to a magistrate judge’s jurisdiction, and the court resolved the dispute without oral argument.

Rule 19 standard

Rule 19 addresses when a person who is not already a party must be added to a case. The court identified three questions: whether the person is necessary; whether joining that person is feasible; and, if joinder is not feasible, whether the case must be dismissed because the person is indispensable. The party seeking joinder bears the burden of persuasion. If a person is not necessary, the court need not reach the other two questions.

A person is necessary if, without that person, the court cannot provide complete relief among the existing parties; if resolving the case without that person may impair the person’s ability to protect an interest; or if proceeding without that person may expose an existing party to inconsistent obligations.

The Third Parties were not necessary

The court concluded that none of those circumstances applied.

First, the court could provide complete relief without joining the Third Parties. Force MOS sought damages and attorneys’ fees and costs, and the court could award that relief against the parties already in the case. The court rejected Lin’s arguments that decisions in another case might conflict with this court’s decision or that Force MOS might obtain a double recovery. Those possibilities did not prevent this court from awarding complete relief in this action.

Second, the court found no risk that the Third Parties’ interests would be impaired. The Third Parties were not parties to this action and were not in privity with a party to it, so issue preclusion—also called collateral estoppel, which can prevent relitigation of an issue decided in an earlier case—would not bind them based on this court’s determinations. The court also explained that resolving patent issues in a malpractice case is backward-looking and hypothetical, and does not establish binding precedent for a later patent case involving the Third Parties.

Third, the court found no risk that Lin would face inconsistent obligations. Rule 19 addresses inconsistent obligations, meaning a party cannot comply with one court’s order without violating another court’s order concerning the same incident. It does not require joinder merely because different courts might reach inconsistent results. A different decision about the alleged infringement could create a logical inconsistency, but it would not require Lin to violate another court’s order. The possibility that Force MOS might recover from both Lin and the Third Parties also did not create double obligations for Lin under Rule 19.

Because the Third Parties were not necessary, the court did not address whether joining them was feasible or whether they were indispensable.

Additional briefing and disposition

After the briefing began, Force MOS filed a fourth amended complaint that referred to additional alleged infringers and a patent whose infringement had not been alleged in the third amended complaint. The court determined that these new allegations did not change the Rule 19 analysis and would not permit additional briefing.

The court DECLINED to join the Third Parties to the action.