Uniloc 2017 LLC v. ESPN, Inc.

Last week, the Federal Circuit revived a wireless communications patent—asserted first by Australian NPE Uniloc Corporation Pty. Limited and then by Fortress Investment Group LLC—reversing an order from Judge Lucy M. Koh of the Northern District of California that invalidated all claims as directed to unpatentable subject matter (2019-1835). Last May, the Federal Circuit similarly overturned the Alice invalidation of two former IBM patents held and asserted by Fortress-Uniloc, in response to which the resuscitated assets began appearing in litigation anew. However, greater caution may prevail this year as to the patent just revived, which was originally developed by Philips, as claims 1 and 8 stand invalidated as indefinite as a result of an Eastern District of Texas claim construction order. Patent Trial and Appeal Board (PTAB) trials are also underway over the validity of claims 11 and 12, in response to separate petitions for inter partes review (IPR) filed by Apple, Microsoft, and LG Electronics (LGE).

Last month, RPX surveyed the effective use of inter partes review (IPR) by defendants in the many campaigns launched over patents once held by Uniloc Corporation Pty. Limited. The Australian NPE—and Fortress Investment Group LLC after its takeover of those campaigns in May 2018—has hit multiple invalidity walls in district court as well. For example, this past April was not a good month for a wireless communications patent, issuing to Philips, that Uniloc began asserting in early 2018. On April 5, Magistrate Judge Roy S. Payne of Texas invalidated claims 1 and 8 from that patent as indefinite, and four days later, District Judge Lucy H. Koh in California took the whole patent down as patent-ineligibly drawn to an abstract idea under Alice. However, recent decisions, in Fortress-Uniloc suits and elsewhere, may have provided the plaintiff additional motivation to clear a path, however rocky, for that embattled patent to survive in the end.

For Uniloc 2017 LLC—the Fortress Investment Group LLC entity that took ownership of Uniloc Corporation Pty. Limited’s patent portfolio last May—2019 has begun much as 2018 ended, with the NPE asserting those patents against various defendants across multiple litigation campaigns. January’s defendants include Bitmovin (1:19-cv-00179), Brightcove (1:19-cv-00180), Dailymotion (1:19-cv-00181), Sling TV (1:19-cv-00278), Telestream (1:19-cv-00182), and Wal-Mart (Vudu) (1:19-cv-00183), all sued as part of what might be called the “video streaming segment” of a campaign that has sprawled over more than two dozen defendants, with more than 15 patents asserted, since just last February. Uniloc 2017 has also filed two new suits against Microsoft (8:19-cv-00158, 8:19-cv-00196), one asserting a homegrown Uniloc patent (generally related to testing whether a remote device is secure) for the first time while the other concerns a patent (generally related to marking speaker changes in a videoconference application) already in suit against Alphabet (Google).

December saw continued litigation over patents from a portfolio that Uniloc Corporation Pty. Limited acquired from Pendrell Corporation in January 2018. Having taken ownership of seemingly all of Uniloc’s patents in May, including the former Pendrell patents, Fortress Investment Group LLC (through subsidiary Uniloc 2017 LLC) is the plaintiff asserting them now. Alphabet (Google) was the NPE’s principal target in December, with seven new Eastern District of Texas suits filed against the tech giant, but Fortress also sued Microsoft (8:18-cv-02224), Netflix (8:18-cv-02150), Roku (1:18-cv-01126), and Verizon (2:18-cv-00536) last month.

The May 2018 assignment of seemingly the entire patent portfolio of Uniloc Corporation Pty. Limited to Fortress Investment Group LLC triggered a legal throw-down over standing in the cases that Uniloc had filed over some of those patents before their transfer, as well as the dismissal and refiling of the cases that Fortress brought after their transfer. Undeterred, Fortress—through controlled plaintiff and apparent patent owner Uniloc 2017 LLC—also continues to file new suits, over the past two weeks adding HTC and Lenovo (Motorola Mobility) to several campaigns already underway against smartphone and tablet manufacturers Apple, BlackBerry, Huawei, LG Electronics, and/or Samsung, and asserting two media distribution patents already at issue in cases previously filed against Walt Disney (ABC) and Hulu.

In November 2018, Fortress Investment Group, LLC subsidiary Uniloc 2017 LLC was hit by a series of inter partes review (IPR) petitions filed by Apple as the two parties continue to brief a contentious dispute over standing in related district court litigation. November also saw the Patent Trial and Appeal Board (PTAB) institute trial in IPRs involving Japanese patent monetization firm IP Bridge, Inc. and issue final decisions in IPRs against Quarterhill Inc. and Alacritech, Inc., the latter an operating company-turned-NPE formed by SCSI inventor Larry Boucher.

The filing spree of Uniloc Corporation Pty. Limited continues unabated after handing over the reins of its monetization efforts to Fortress Investment Group LLC earlier this year. Last week alone, plaintiffs related to these entities jointly filed a new suit against Apple in the Western District of Texas, one against Cisco, two against Hike, and four against Alphabet (Google), all in the Eastern District of Texas. Since its acquisition of a large portfolio from Pendrell Corporation subsidiary Pendragon Wireless LLC this past January, Uniloc has been filing new lawsuits on nearly a weekly basis over those patents, on its own, before its transfer of over 600 US patent assets to Fortress in May, and together with Fortress since. That shift in patent ownership came as Fortress announced a new, $400M IP fund focused on patent assertion.

Fortress Investment Group LLC and Uniloc Corporation Pty. Limited have added two additional patents to one of their existing litigation campaigns with new suits against AT&T (AT&T Mobility) (2:18-cv-00379) and Verizon (Cellco Partnership d/b/a Verizon Wireless) (2:18-cv-00380). The plaintiffs accuse AT&T of infringing a patent generally related to system control using a “wireless terminal” through the provision of the Smart Home Manager mobile app, as used to change settings for a home Wi-Fi network; Verizon, of infringing a patent broadly related to the delivery of data through “beacon devices” through the use of Bluetooth Low Energy (LE) beacons in its retail stores, as used to send notifications to mobile devices running the Verizon app. The two complaints each assert additional patents already in suit in the campaign, all of them part of a large, January 2018 acquisition from Pendrell Corporation, with ownership moving to Fortress subsidiary Uniloc 2017 LLC this past May.

Uniloc Corporation Pty. Limited, through controlled subsidiaries and at least in some instances with the apparent backing of Fortress Investment Group LLC, has continued to roll out new cases in 2018, hitting Amazon (with four additional cases), BlackBerry (four new cases), Huawei (one case), Microsoft (one case), Samsung (one case), and ZTE (four cases) just last week. One of the new suits against Amazon returns to Uniloc’s earlier litigation strategy, asserting a patent naming Uniloc cofounder Craig Etchegoyen as inventor, but the other new suits continue the assertion of former Philips patents received this past January from publicly traded NPE Pendrell Corporation. Pendrell sold hundreds of patent assets from its “Pendragon” portfolio (held by subsidiary Pendragon Wireless LLC) to Uniloc in January—the patents deriving from multiple original sources, including the Electronics and Telecommunications Research Institute (ETRI) and IBM as well as Philips. Nearly all of the new complaints have been filed in Texas, confirming Uniloc’s commitment to litigate in that state, if not solely in the Eastern District, after the US Supreme Court’s TC Heartland decision in May 2017.

So far this year, Uniloc Luxembourg S.A. and Uniloc USA, Inc. (collectively, Uniloc) have initiated five new litigation campaigns, each with a suit against Apple, quickly adding Samsung to three of them; Logitech to one; LG Electronics to four; and now Huawei to the same four (2:18-cv-00072, 2:18-cv-00073, 2:18-cv-00074, 2:18-cv-00075). The patents asserted were apparently acquired from Pendrell Corporation subsidiary Pendragon Wireless LLC, and the accused products comprise a long list of smartphones, tablets, wireless speakers, and many other computing devices.

Last year, Uniloc Luxembourg S.A. and Uniloc USA, Inc. (collectively, Uniloc) initiated 11 new litigation campaigns, all but one of them with a suit filed against Apple. In the subsequent months, Uniloc added LG Electronics (LGE) as a defendant in seven of those campaigns; Huawei in six of them; HTC, Lenovo (Motorola Mobility), and Samsung in four of them; and a few other companies in just one. 2018 appears to be shaping up similarly. Uniloc has so far opened up five new litigation campaigns this year, each with a suit against Apple, quickly adding Samsung to three of them; Logitech to one, and now, LGE to four (3:18-cv-00557, 3:18-cv-00559, 3:18-cv-00560, 3:18-cv-00561). The patents asserted were apparently acquired from Pendrell Corporation subsidiary Pendragon Wireless LLC, and the accused products form a long list of smartphones, tablets, wireless speakers, and many other computing devices.

After filing multiple new cases in February, first against Apple, then Samsung, Uniloc Luxembourg S.A. and Uniloc USA, Inc. (collectively, Uniloc) closed out the month with a suit against Logitech (5:18-cv-01304). The patent asserted, generally related to delivering data through “beacon devices”, is one among several that Uniloc has apparently acquired from Pendrell Corporation subsidiary Pendragon Wireless LLC. In a 10-K recently filed with the SEC, Pendrell indicated that it had divested the “majority” of its “Pendragon portfolio”, which contained “patents related to cellular and digital wireless devices and infrastructure” from multiple sources, including the Electronics and Telecommunications Research Institute (ETRI), IBM, and Philips. Logitech joins Apple as defendants in this campaign, with Uniloc’s infringement allegations focused on devices that “utilize Bluetooth Low Energy version 4.0 and above”.