United States District Court, E.D. Texas, Marshall Division
MEMORANDUM OPINION AND ORDER
PAYNE, UNITED STATES MAGISTRATE JUDGE
case is one of several patent infringement actions filed by
Plaintiff My Health, Inc. (“My Health”) in May
2016. For three years the parties have battled over the
patent-in-suit (U.S. Patent No. 6, 612, 985) (the
“'985 Patent”), with My Health contending
that Defendants infringed the patent, while Defendants
attacked the patent's invalidity under 35 U.S.C. §
101. Defendants were early victors in this action, prevailing
on their motion to dismiss pursuant to 35 U.S.C. § 101.
(Dkt. Nos. 66 and 68). After this Court declared the
patent-in-suit invalid for failure to claim patent-eligible
subject matter, Defendants sought attorneys' fees under
35 U.S.C. § 285.
Health appealed the § 101 decision (Dkt. No. 85) and
asked the Court to stay Defendants' § 285 motion
pending the appeal (Dkt. No. 89). In requesting the stay, My
Health argued that there “is no allegation or basis to
allege that My Health will be unable to pay an award of
reasonable attorneys' fees following a ruling from the
Federal Circuit should My Health lose the appeal.”
(Id. at 7). This Court declined My Health's
request to stay (Dkt. No. 98), and went on to declare this
case exceptional under § 285 (Dkt. No. 131) (the
“§ 285 Order). Plaintiff dismissed the appeal with
the Federal Circuit. My Health was ordered to pay
Defendants' attorneys' fees within 60 days of the
Order, entered on December 19, 2017. (Id. at 13).
Instead of paying, My Health appealed the Court's §
285 Order. Because My Health did not first object to the
District Judge for review of the § 285 Order, the
Federal Circuit dismissed the appeal for lack of
jurisdiction. (Dkt. No. 162).
Health then submitted objections to the § 285 Order to
the District Judge, arguing that this case was not
exceptional. (Dkt. No. 167). My Health also, alternatively,
sought relief from the § 285 Order, asking the District
Judge to deem this case as exceptional but to deny any award
of fees because “Defendants will suffer no prejudice
where, as a practical matter, My Health simply is incapable
of paying the fees award.” (Dkt. No. 168 at 7). The
District Judge overruled the objection, adopted the §
285 Order, denied My Health's request for relief from the
§ 285 Order, and ordered My Health to pay
Defendants' counsel within 30 days of the Order, entered
on November 30, 2018. (Dkt. No. 175). My Health has yet to
pay Defendants' attorneys' fees.
now come seeking to collect their fees, not only from My
Health, but from My Health's law firm, Pia Anderson Moss
Hoyt LLC (“PAMH”), and My Health's sole
officer, Dr. Michael Eiffert. PAMH seeks to withdraw as
counsel for My Health (Dkt. No. 179), contending that My
Health has failed to pay its attorneys' fees to PAMH.
Defendants not only oppose this withdrawal (Dkt. No. 179),
but also move to join PAMH and Dr. Eiffert under the premise
that either or both of these non-parties are responsible for
the conduct cited in this Court's § 285 Order (Dkt.
Nos. 182 and 230). Defendants also seek an order to show
cause why My Health should not be held in contempt of Court
for failing to pay their attorneys' fees. (Dkt. No. 183).
Defendants' Joinder Motion
Rule of Civil Procedure 19 provides for joinder of required
parties. Rule 19(a) states, in relevant part:
(a) Person to be Joined if Feasible.
(1) Required Party. A person who is subject to service of
process and whose joinder will not deprive the court of
subject-matter jurisdiction must be joined as a party if:
(A) in that person's absence, the court cannot accord
complete relief among existing parties; or
(B) that person claims an interest relating to the subject of
the action and is so situated that disposing of the action in
the person's absence may:
(i) as a practical matter impair or impede the person's
ability to protect the interest; or
(ii) leave an existing party subject to a substantial risk of
incurring double, multiple, or otherwise inconsistent
obligations because of the interest.
Civ. P. 19(a). Joinder of an additional party is mandatory
only under the circumstances described in 19(a). The movant
bears the initial burden of demonstrating that an absent
party is necessary. Hood ex rel. Mississippi v. City of
Memphis, 570 F.3d 625, 628 (5th Cir. 2009). When
“an initial appraisal of the facts indicates that a
possible necessary party is absent, the burden of disputing
this initial appraisal falls on the party who opposes
joinder.” Pulitzer-Polster v. Pulitzer, 784
F.2d 1305, 1309 (5th Cir. 1986).
argue that PAMH and Dr. Eiffert should be joined,
post-judgment, “as third parties to this case, at least
for purposes of being jointly and severally liable for
payment of Defendants' attorneys' fees.” (Dkt.
No. 182 at 2). Defendants assert that joinder of PAMH and Dr.
Eiffert is necessary because they are either individually or
jointly responsible for the conduct that made this case
exceptional and that My Health was created as a fiction for
PAMH and Dr. Eiffert. (Id. at 1, 7). Defendants
contend that “[i]n view of the pattern of litigation
misconduct in their frivolous case, misleading dealings with
this Court, the Federal Circuit, and Defendants, and repeated
defiance of the Court's orders and rules, the Pia Firm
and Dr. Eiffert should not now be allowed to hide behind the
empty shell that is My Health, Inc., which appears to have
been created by [PAMH] and Dr. Eiffert only as a vehicle to
monetize its ‘unquestionably abstract'
patent.” (Id. at 6). Defendants further asks the
Court to order additional payment of their attorneys'
fees and costs incurred since the § 285 Order was
issued, to permit post-judgment discovery to further explore
the misconduct, and to impose sanctions on Joseph G. Pia.
(Id. at 4, 8).