Case: 13-151    Document: 37   Page: 1    Filed: 09/25/2013




          NOTE: This order is nonprecedential.


   United States Court of Appeals
       for the Federal Circuit
                 ______________________

    IN RE NINTENDO CO., LTD., NINTENDO OF
  AMERICA INC., BEST BUY PURCHASING, LLC,
   BEST BUY STORES, L.P., BESTBUY.COM, LLC,
  BJ’S WHOLESALE CLUB, INC., COMPUSA.COM
 INC., GAMESTOP CORP., KMART CORPORATION,
 PC CONNECTION, INC., QVC, INC., RADIOSHACK
   CORPORATION, SEARS, ROEBUCK AND CO.,
  TARGET CORPORATION, TIGERDIRECT, INC.,
    TOYS “R” US-DELAWARE, INC., AND TRANS
    WORLD ENTERTAINMENT CORPORATION,
                    Petitioners.
              ______________________

               Miscellaneous Docket No. 151
                 ______________________

    On Petition for Writ of Mandamus to the United
States District Court for the Eastern District of Texas in
No. 11-CV-0496, Judge Leonard Davis.
                 ______________________

                     ON PETITION
                 ______________________
  Before LOURIE, O’MALLEY, and REYNA, Circuit Judges.
O’MALLEY, Circuit Judge.
                       ORDER
    Petitioners Nintendo Co. Ltd., its American subsidi-
ary, and a group of retailers that sell Nintendo’s Wii
Case: 13-151   Document: 37     Page: 2    Filed: 09/25/2013



2                                  IN RE NINTENDO CO., LTD.




gaming systems are currently engaged in a complicated
patent infringement action in the United States District
Court for the Eastern District of Texas. They seek a writ
of mandamus directing the district court to: (1) sever
infringement claims involving hundreds of Wii games and
accessories produced by approximately 35 companies
other than Nintendo from those claims against Nintendo;
and (2) consider their motion to sever and stay the claims
against the retailers from those against Nintendo and to
transfer the Nintendo claims to the United States District
Court for the Western District of Washington. We grant
the petition.
                     I. BACKGROUND
    In 2005, respondent UltimatePointer, L.L.C., filed a
patent application entitled, “Easily deployable interactive
direct-pointing system and presentation control system
and calibration method therefor,” which resulted in two
issued patents at the center of this case. The first, U.S.
Patent No. 7,746,321 (the ’321 patent), was issued to
respondent in 2010; and the second, U.S. Patent No.
8,049,729 (the ’729 patent), was issued to respondent in
November 2011—after this litigation had already com-
menced.
    UltimatePointer filed two complaints in the United
States District Court for the Eastern District of Texas.
The first complaint alleged that Nintendo Co., Ltd.,
Nintendo of America, Inc., and several retailers that sell
Nintendo products, infringe the ’321 patent by “making,
using, selling, offering to sell, and/or importing Nintendo
Wii systems, games, controllers, sensors and related
accessories.” The second complaint asserted the same
allegations regarding the later issued ’729 patent.
    Petitioners moved to sever and stay the claims
against the retailers, and transfer the case against Nin-
tendo to the United States District Court for the Western
District of Washington, arguing that the retailers were
Case: 13-151    Document: 37     Page: 3   Filed: 09/25/2013



IN RE NINTENDO CO., LTD.                                  3



merely peripheral defendants and the majority of wit-
nesses and evidence would be located at Nintendo’s head-
quarters in Seattle, Washington. Citing to its right to do
so under Rule 18 of the Federal Rules of Civil Procedure,
UltimatePointer asserted in its infringement contentions,
and ultimately amended its complaints to include, in-
fringement claims against the retailers based on their
sale and offer for sale of hundreds of Wii games and
accessories created and manufactured by third party
manufacturers. Petitioners filed a second motion to sever,
this time seeking to sever all non-Nintendo product
claims.
     The district court denied all of the motions. The court
first concluded that the defendants could permissibly be
joined in this case under Rule 20 of the Federal Rules of
Civil Procedure and 35 U.S.C. § 299 because Ultimate-
Pointer had asserted “at least one common claim of patent
infringement against all defendants for the same accused
product.” Because, in the court’s view, the joinder of the
retailers and Nintendo was permitted by Rule 20, the
district court then held that “Rule 18 [of the Federal
Rules of Civil Procedure] explicitly allows for the joinder
of as many claims as Plaintiff has against an opposing
party.” Based on these conclusions, the district court
rejected the motion to sever the non-Nintendo claims
against the retailers and found the motion to sever the
retailers and transfer the case against Nintendo moot. It
made these judgments without considering whether the
claims added under Rule 18 should be severed, whether
those claims should impact the court’s assessment of the
original motion to sever, or whether the transferee venue
was clearly more convenient for trial of the claims against
Nintendo.
         II. STANDARD OF REVIEW ON MANDAMUS
   The traditional use of mandamus has been “to confine
an inferior court to a lawful exercise of its prescribed
Case: 13-151    Document: 37      Page: 4    Filed: 09/25/2013



4                                     IN RE NINTENDO CO., LTD.




jurisdiction or to compel it to exercise its authority when
it is its duty to do so.” Roche v. Evaporated Milk Ass’n,
319 U.S. 21, 26 (1943). Even under this formulation,
however, courts have not confined themselves to any
narrow or technical definition of the term “jurisdiction.”
See Mallard v. U. S. Dist. Ct., 490 U.S. 296, 309 (1989).
Mandamus may thus be appropriate in certain cases to
further supervisory or instructional goals where issues
are unsettled and important. See In re BP Lubricants,
Inc., 637 F.3d 1307, 1313 (Fed. Cir. 2011).
    In order to ensure that writs of mandamus are re-
stricted to extraordinary situations, the Supreme Court
has set forth two conditions that must be satisfied: first,
petitioners must show a “clear and indisputable” right to
the writ and, second, petitioners must have “no other
adequate means to attain the relief . . . desire[d].” Kerr v.
U. S. Dist. Ct., 426 U.S. 394, 403 (1976). Once these two
prerequisites are met, the court’s decision whether to
issue the writ is largely one of discretion. Id.
                      III. DISCUSSION
     Petitioners argue that the district court erred when it:
(1) denied as moot petitioners’ Rule 21 motion to sever the
retailers for misjoinder; (2) denied petitioners’ request to
sever the non-Nintendo product claims, added under Rule
18; and (3) failed to examine whether the litigation
against Nintendo should be transferred to the Western
District of Washington.
    Resolution of this petition involves the interplay be-
tween Federal Rules of Civil Procedure 18, 20, and 21, the
recently adopted joinder provision of the America Invents
Act, 35 U.S.C. § 299, and 28 U.S.C. § 1404(a), the statuto-
ry provision applicable to transfer of venue. Because we
find that the district court erred in failing to first consider
whether the retailer defendants should have been severed
and whether transfer was appropriate prior to addressing
whether the non-Nintendo claims could be joined under
Case: 13-151    Document: 37     Page: 5   Filed: 09/25/2013



IN RE NINTENDO CO., LTD.                                  5



Rule 18, we grant the petition and remand for further
proceedings.

                            A.

    We begin by taking a closer look at the procedural
posture giving rise to the district court’s decision denying
Petitioners’ motion to sever for misjoinder and the district
court’s application of Rule 18.
    As noted, petitioners first moved to sever the claims
against the retailer defendants and transfer the case
against Nintendo to the Western District of Washington
(“First Motion to Sever”). In that motion, petitioners
argued that: (1) UltimatePointer’s claims identified only
Nintendo products; and (2) adjudication of the claims
against Nintendo would dispose of the claims against the
retailers. In response, UltimatePointer argued that its
contentions against the retailers were not limited to
Nintendo products. UltimatePointer subsequently served
its Preliminary Infringement Contentions (“PICs”) accus-
ing Nintendo products as well as non-Nintendo products
made by different non-party manufacturers of infringe-
ment of the ’321 and ’729 patents.
    Petitioners then filed a motion to sever the non-
Nintendo claims against retailer defendants. (“Second
Motion to Sever”). Specifically, petitioners asked the
district court to sever all allegations involving non-
Nintendo products and either dismiss or stay the case
against the retailer defendants involving those products.
    On September 21, 2012, the district court denied peti-
tioners’ First Motion to Sever as moot in light of the
Second Motion to Sever. UltimatePointer then amended
its complaint to add the non-Nintendo infringement
claims against the retailers which, to that point, had only
appeared in its PICs and its opposition to petitioner’s
First Motion to Sever. During this same timeframe,
Case: 13-151   Document: 37    Page: 6    Filed: 09/25/2013



6                                  IN RE NINTENDO CO., LTD.




petitioners sought reconsideration of the court’s Septem-
ber 21, 2012 decision, arguing that their First Motion to
Sever was not moot because, when the case was initially
filed, Nintendo was the single real party in interest, and
it was only later that UltimatePointer expanded the scope
of the litigation. Petitioners further argued that, by
denying their First Motion to Sever as moot, the district
court denied without discussion their request to sever the
retailer defendants from Nintendo entirely and to transfer
the case against Nintendo to the Western District of
Washington.
    The district court subsequently denied petitioners’
Second Motion to Sever. The court concluded that, be-
cause the defendants were properly joined in the original
complaint, Rule 18 allowed UltimatePointer to join as
many claims as it might have against the retailers, in-
cluding claims totally unrelated to Nintendo or its prod-
ucts. On this premise, the court denied petitioners’
request for severance of those new claims. The court also
denied the request for reconsideration, doing so, again,
without discussion of the merits of petitioners’ First
Motion to Sever and Transfer.
    On appeal, petitioners argue that UltimatePointer
should not have been allowed to use Rule 18 as a spring-
board to add claims involving products by other manufac-
turers and to use the mere presence of those claims to
defeat Nintendo’s request that the retailers be severed to
facilitate transfer. We agree.
    Rule 18—entitled “Joinder of Claims”—provides that
“[a] party asserting a claim, counterclaim, or third party
claim may join, as independent or alternative claims, as
many claims as it has against an opposing party.” Fed. R.
Civ. P. 18(a). Where, as here, a case involves multiple
defendants, a plaintiff may assert a claim under Rule 18
only if the defendants are properly joined in the first
instance. See Intercon Research Assocs. Ltd. v. Dresser
Case: 13-151    Document: 37     Page: 7    Filed: 09/25/2013



IN RE NINTENDO CO., LTD.                                   7



Indus., Inc., 696 F.2d 53, 57 (7th Cir. 1982) (“[J]oinder of
claims under Rule 18 becomes relevant only after the
requirements of Rule 20 relating to joinder of parties has
been met with respect to the party against whom the
claim is sought to be asserted”); see also generally Wheeler
v. Wexford Health Sources, Inc., 689 F.3d 680, 683 (7th
Cir. 2012) (“A litigant cannot throw all of his grievances,
against dozens of different parties, into one stewpot.”).
Consideration of which claims can be asserted under Rule
18 only comes into play once the court has decided which
parties are properly joined before it, and whether they
should remain so joined.
     While Rule 18 liberally permits joinder of claims,
moreover, it, in fact, “deals only with [the] pleadings.” See
Advisory Committee’s 1966 Amendment Notes (hereinaf-
ter Advisory Committee’s 1966 Note). As the Advisory
Committee’s 1966 Note explains, “a claim properly joined
as a matter of pleading need not be proceeded with to-
gether with the other claims if fairness or convenience
justifies separate treatment.” See also United Mine
Workers of Am. v. Gibbs, 383 U.S. 715, 724 (1966) (noting
that the joinder of claims, parties, and remedies must be
“consistent with fairness to the parties”). Accordingly,
when determining whether claims permissibly joined
should be severed for purposes of seeking transfer and a
stay of proceedings, a court should consider whether it
would be convenient or fair to keep the matters together.
If inconvenience or unfairness is alleged to arise from the
claims proceeding together, courts must exercise their
discretion to decide whether the claims should be severed
under Rule 21.
    Rule 21 provides that, “the court may at any time, on
just terms, add or drop a party. The court may also sever
any claim against a party.” The decision to deny a motion
to sever is committed to the discretion of the district
court. In re EMC Corp., 677 F.3d 1351, 1355 (Fed. Cir.
2012). This discretion is not unbridled, however; it “must
Case: 13-151    Document: 37     Page: 8   Filed: 09/25/2013



8                                   IN RE NINTENDO CO., LTD.




be exercised within the boundaries set by relevant stat-
utes and precedent,” and a “district court abuses its
discretion if it relies on an erroneous conclusion of law.”
Id. This court generally applies Federal Circuit law,
rather than regional circuit law, to the issue of severance.
Id. at 1354. We may, however, look to the decisions of our
sister circuits for guidance. See id.
     Because Rule 21 does not provide a standard for dis-
trict courts to apply in deciding whether parties or claims
are misjoined, “[w]hen considering a motion to sever
under Rule 21, ‘courts have looked to Rule 20 for guid-
ance.’” EMC, 677 F.3d at 1356 (quoting Acevedo v. All-
sup’s Convenience Stores, Inc., 600 F.3d 516, 521 (5th Cir.
2010)). Under Rule 20, which is entitled “Permissive
Joinder of Parties,” defendants may be joined in a single
action only if: (1) the claims against them are “with re-
spect to or arising out of the same transaction, occurrence,
or series of transactions or occurrences;” and (2) a “ques-
tion of law or fact common to all defendants will arise in
the action.” Fed. R. Civ. P. 20(a)(2).
    As the district court noted, effective September 16,
2011, joinder in patent cases is governed by the America
Invents Act (“AIA”). 1 Under the AIA, “accused infringers
may not be joined in one action as defendants . . . based
solely on allegations that they each have infringed the
patent or patents in suit.” 35 U.S.C. § 299(b). Instead,
defendants in patent infringement cases may be joined
only if:




    1   UltimatePointer’s first complaint was filed before
September 16, 2011 and later amended; the second com-
plaint was filed after September 16, 2011. For our pur-
poses, however, there is no difference in the analysis as to
whether Rule 20 or section 299 governs.
Case: 13-151    Document: 37     Page: 9   Filed: 09/25/2013



IN RE NINTENDO CO., LTD.                                   9



    (1) any right to relief is asserted against the par-
    ties jointly, severally, or in the alternative with
    respect to or arising out of the same transaction,
    occurrence, or series of transactions or occurrenc-
    es relating to the making, using, importing into
    the United States, offering for sale, or selling of
    the same accused product or process; and
    (2) questions of fact common to all defendants or
    counterclaim defendants will arise in the action.
35 U.S.C. § 299(a). The AIA’s joinder provision is more
stringent than Rule 20, and adds a requirement that the
transaction or occurrence must relate to making, using, or
selling of the same accused product or process.
     Given the permissive nature of the applicable rules,
we have characterized these requirements as necessary,
but not sufficient, conditions for joinder. See EMC, 677
F.3d at 1355 (“Rule 20’s two requirements—that the
claims share question[s] of law or fact common to all
defendants, and aris[e] out of the same transaction [or]
occurrence—help ensure that the scope of the action
remains consistent with fairness to the parties.” (citations
and quotations omitted)). Consistent with that descrip-
tion, we have explained that, “even if a plaintiff’s claims
arise out of the same transaction and there are questions
of law and fact common to all defendants,” joinder may
still be refused “in the interest of avoiding prejudice and
delay, ensuring judicial economy, or safeguarding princi-
ples of fundamental fairness.” Id. at 1360 (citing Acevedo,
600 F.3d at 521). In reaching the same conclusion, our
sister circuits have likewise said that “a district court
must examine whether permissive joinder would ‘comport
with the principles of fundamental fairness’ or would
result in prejudice to either side.” Coleman v. Quaker
Oats Co., 232 F.3d 1271, 1296 (9th Cir. 2000) (citation
omitted); see also Intercon, 696 F.2d at 57-58.
Case: 13-151     Document: 37     Page: 10    Filed: 09/25/2013



 10                                   IN RE NINTENDO CO., LTD.




     The district court did not assess the propriety of sev-
 erance or transfer with respect to Nintendo. Nothing in
 the court’s order even suggests that convenience and
 fairness were considered in reaching its conclusions.
 Instead, the court simply found that joinder is appropri-
 ate because there is at least one common claim of patent
 infringement against all defendants for the same accused
 product. Essentially, the court concluded that, because
 the retailer defendants can be joined under Rule 20 and
 the AIA, they will not be severed. If that were the appro-
 priate test, there could never be misjoinder, and the
 applicable rules would be rendered meaningless.
      The district court then found that, because the de-
 fendants can be joined, Rule 18 permits joinder of claims
 wholly unrelated to the claims in the original complaint.
 In reaching this decision, the district court failed to
 conduct any inquiry into whether the claims should
 remain joined for post-pleading purposes. That was error.
 “Failure to exercise discretion is not exercising discretion;
 it is making a legal mistake.” Munoz-Pacheco v. Holder,
 673 F.3d 741, 745 (7th Cir. 2012); Miller v. Hambrick, 905
 F.2d 259, 262 (9th Cir. 1990) (“A district court’s failure to
 exercise discretion constitutes an abuse of discretion.”);
 Faircloth v. Lamb-Grays Harbor Co., Inc., 467 F.2d 685,
 697 (5th Cir. 1972) (“‘[F]ailure to exercise discretion, or an
 abuse of it, may be corrected.’” (citations omitted)). And,
 in these circumstances, the failure to conduct a thorough
 assessment of whether these claims and defendants
 should remain joined is not a mere technicality. In fact,
 this court has specifically recognized that the joinder of a
 large number of claims in cases such as this could deprive
 defendants of “a meaningful opportunity to present indi-
 vidualized defenses on issues such as infringement,
 willfulness, and damages because each defendant will
 have limited opportunities to present its own defense to
 the jury.” EMC, 677 F.3d at 1355.            That concern is
 perhaps even more compelling here given that the vast
Case: 13-151    Document: 37    Page: 11    Filed: 09/25/2013



 IN RE NINTENDO CO., LTD.                                11



 majority of the defendants are retailers who lack technical
 information regarding the accused products and have no
 control over the technology employed.
     After careful consideration of the applicable rules and
 statutory provisions, we conclude that any determination
 as to whether the claims involving the non-Nintendo
 products should remain in this case was premature.
 Before the court addressed whether UltimatePointer
 could add claims against the retailer defendants under
 Rule 18, it first needed to assess whether the case against
 Nintendo—as it was originally filed—should be severed
 and transferred. The subsequent addition of new non-
 Nintendo product claims against the retailer defendants
 does not factor into this inquiry.
     Although Rule 18 permits the joinder of claims, it
 cannot change the character of the relationship between
 the original parties for purposes of assessing severance
 and transfer. And, the district court cannot simply as-
 sume that the retailer defendants are properly joined and
 move directly to a Rule 18 inquiry. If, for example, the
 court finds that the claims against Nintendo products
 should be severed and transferred, then there is no reason
 to look to Rule 18. In other words, resolution of the
 motion to sever and transfer the case against Nintendo
 should not be driven by claims that were later added
 under Rule 18. 2
     We find that the district court first should have ad-
 dressed Petitioners’ First Motion to Sever and transfer
 the case against Nintendo to the Western District of



     2   Petitioners contend that, if we allow Rule 18 to
 operate as UltimatePointer believes it can, it would
 frustrate the policy behind Congress’s adoption of sec-
 tion 299 of the AIA. We do not disagree, but we do not
 rely solely on policy reasons to reach our conclusions.
Case: 13-151     Document: 37     Page: 12    Filed: 09/25/2013



 12                                   IN RE NINTENDO CO., LTD.




 Washington prior to assessing whether additional claims
 against the retailer defendants could be asserted under
 Rule 18. And, the court should have exercised its discre-
 tion to determine whether fairness and convenience
 concerns weigh in favor of severance and transfer, with-
 out regard to what Rule 18 might allow should severance
 and transfer not occur.
      A district court may transfer a civil action “[f]or the
 convenience of parties and witnesses [and] in the interests
 of justice” to any other district “where it might have been
 brought.” 28 U.S.C. § 1404(a). Rule 21 provides courts
 with considerable latitude to order severance solely for
 purposes of facilitating transfer. See, e.g., Liaw Su Teng
 v. Skaarup Shipping Corp., 743 F.2d 1140, 1148 (5th Cir.
 1984), overruled on other grounds, In re Air Crash Disas-
 ter Near New Orleans, La., 821 F.2d 1147 (5th Cir. 1987)
 (“If, however, suit might have been brought against one or
 more defendants in the court to which transfer is sought,
 the claims against those defendants may be severed and
 transferred while the claims against the remaining de-
 fendants, for whom transfer would not be proper, are
 retained in the original court.”); Wyndham Assocs. v.
 Bintliff, 398 F.2d 614, 618 (2d Cir. 1968) (“We believe that
 where the administration of justice would be materially
 advanced by severance and transfer, a district court may
 properly sever the claims against one or more defendants
 for the purpose of permitting the transfer of the action
 against the other defendants[.]”).
     As Wyndham suggests, if the law were otherwise, the
 inclusion of some retailer defendants only peripherally
 involved in the alleged wrongdoing could prevent a court
 from following binding precedent that requires transfer to
 a more convenient venue for trial. 398 F.2d at 619; see
 also In re Radmax Ltd., 720 F.3d 285, 288 (5th Cir. 2013)
 (“A motion to transfer venue pursuant to § 1404(a) should
 be granted if ‘the movant demonstrates that the transfer-
 ee venue is clearly more convenient . . . .’”); In re Nintendo
Case: 13-151     Document: 37      Page: 13    Filed: 09/25/2013



 IN RE NINTENDO CO., LTD.                                    13



 Co., Ltd., 589 F.3d 1194, 1198 (Fed. Cir. 2009) (“This
 court has held and holds again in this instance that in a
 case featuring most witnesses and evidence closer to the
 transferee venue with few or no convenience factors
 favoring the venue chosen by the plaintiff, the trial court
 should grant a motion to transfer.”).
     Because it based its rulings solely on whether joinder
 was permissible under Rule 20 and 18, the district court
 never analyzed whether this litigation has any meaning-
 ful connection to the Eastern District of Texas. In fact,
 the court never even mentions § 1404(a) in its order. This
 approach to the motions before the court is contrary to the
 principle that a trial court must first address whether it is
 a proper and convenient venue before addressing any
 substantive portion of the case. Indeed, this court has
 specifically recognized “the importance of addressing
 motions to transfer at the outset of litigation.” In re EMC
 Corp., 501 Fed. Appx. 973, 975-76 (Fed. Cir. 2013); see
 also In re Horseshoe Entm’t, 337 F.3d 429, 433 (5th Cir.
 2003) (“[The] motion [to transfer] should have taken a top
 priority in the handling of this case by the . . . District
 Court.”); McDonnell Douglas Corp. v. Polin, 429 F.2d 30,
 30 (3d Cir. 1970) (“Judicial economy requires that [a]
 district court should not burden itself with the merits of
 the action until it is decided [whether] a transfer should
 be effected” and thus “it is not proper to postpone consid-
 eration of the application for transfer under § 1404(a)
 until discovery on the merits is completed.”).
     There are also practical reasons why a different order
 of proceedings should have been followed here. In all
 likelihood, the retailers will have very little to offer in the
 way of evidence regarding the substantive aspects of the
 infringement case. They can add little to nothing regard-
 ing how the technology underlying the accused products
 works. Indeed, we and other courts have all but said as
 much in the analogous context of the “customer suit
 exception,” which endorses staying a case against a cus-
Case: 13-151    Document: 37      Page: 14   Filed: 09/25/2013



 14                                  IN RE NINTENDO CO., LTD.




 tomer or retailer in light of the notion that the manufac-
 turer is the “true defendant.” Katz v. Lear Siegler, Inc.,
 909 F.2d 1459, 1464 (Fed. Cir. 1990); Codex Corp. v. Milgo
 Elec. Corp., 553 F.2d 735, 737-38 (1st Cir. 1977).
     Meanwhile, in the absence of considering the conven-
 ience factors, Nintendo contends that many of the wit-
 nesses in this case will be forced to undergo significant
 travel costs and time away from work and home to testify
 in the Eastern District of Texas. Thus, to the extent that
 severing the parties, staying the cases against the retail-
 ers, and transferring the case against Nintendo could
 “prevent the waste ‘of time, energy and money’” and
 “‘protect litigants, witnesses and the public against un-
 necessary inconvenience and expense[,]’” we think peti-
 tioners’ First Motion to Sever and transfer must be given
 serious consideration. See Van Dusen v. Barrack, 376
 U.S. 612, 616 (1964) (citation omitted). For these reasons,
 we conclude that the district court erred by not beginning
 its analysis by addressing whether the parties should
 have been severed for purposes of facilitating transfer of
 venue; that motion was certainly not “mooted” as the trial
 court concluded.
     If, moreover, after further proceedings, the district
 court finds that the parties should remain joined and the
 action against Nintendo should proceed in the Eastern
 District of Texas, the court must additionally consider
 whether fairness and convenience nonetheless warrant
 severance of the non-Nintendo product claims. The fact
 that Rule 18 permits the joinder of certain claims does not
 answer the question of how those claims should be adjudi-
 cated. Again, fairness and efficiency must guide that
 inquiry.
                             B.
     Because we find that the district court erred, we agree
 with petitioners that the writ should issue here.
Case: 13-151     Document: 37      Page: 15    Filed: 09/25/2013



 IN RE NINTENDO CO., LTD.                                    15



      In Hudson v. Parker, 156 U.S. 277 (1895), the Su-
 preme Court granted a writ in circumstances roughly
 analogous to these. In Hudson, the petitioner sought a
 writ of mandamus to compel the district court to approve
 his request to be released on bond pending the outcome of
 the appeal. Id. at 277-78. The issue before the Supreme
 Court was whether the writ could be used to compel the
 trial judge to take action. Agreeing with the petitioner,
 the Supreme Court held that the writ of mandamus may
 issue where the district court judge “declines to exercise
 his discretion, or to act at all, when it is his duty to do
 so . . .” Id. at 288.
     As in Hudson, here the district court had an obliga-
 tion to exercise its discretion to decide whether the action
 against the retailer defendants should be severed from
 the claims against Nintendo for purposes of fairness and
 convenience and, if not, whether any additional claims
 asserted under Rule 18 should themselves be severed
 from the Nintendo product claims. By improperly refus-
 ing to exercise that discretion, the district court effectively
 deprived petitioners of any meaningful review of the
 questions its motions posed. This case is thus similar to
 EMC, where we granted mandamus directing the lower
 court to apply the proper standard to a motion to sever
 and transfer. 677 F.3d at 1360. Like the defendants in
 EMC, petitioners would similarly “be unable to demon-
 strate ‘that it would have won the case had it been tried
 in a convenient [venue].’” Id. at 1355 (citation omitted).
     We are not unsympathetic to the fact that it is some-
 times difficult to sort out the interaction between the
 various procedural rules which govern joinder and venue.
 We also recognize that the parties did not make the
 district court’s task easy (purporting to assert new
 “claims” in PICs, rather than in a duly filed complaint,
 moving to “sever” those assertions before there was really
 anything to sever, and filing confusing briefs and respons-
 es thereto). Those realities do not excuse the district
Case: 13-151    Document: 37    Page: 16    Filed: 09/25/2013



 16                                 IN RE NINTENDO CO., LTD.




 court’s failure to exercise its discretion to consider the
 severance and transfer motions before it, however.
      Accordingly,
      IT IS ORDERED THAT:
     The petition is granted to the extent that the district
 court’s March 27, 2013 order is vacated and the district
 court is directed to conduct further proceedings as provid-
 ed herein.
