Uniloc USA, Inc. et al v. Motorola Mobility, LLC DC

Over the past few years, Uniloc 2017 LLC has been embroiled in several appellate battles over legal issues stemming from its complex relationship with parent Fortress Investment Group LLC and other affiliates. The Federal Circuit has just closed another chapter in one of those battles, this one focused on whether Uniloc would be forced to unseal the details of its licenses with third parties as a result of a dispute over standing. A divided panel of that court has answered that question in the negative, holding that the public does not have a broad interest in the consideration paid for patent licenses—ordering Northern District of California Judge William Alsup to revisit a sweeping unsealing order that had already been the subject of one appeal and remand. The decision prompted a heated dissent from Circuit Judge Haldane R. Mayer.

RPX detailed last week how the once-prolific litigant Uniloc 2017 LLC, a Fortress Investment Group LLC subsidiary, has ceased the active filing of litigation as it fights multiple appellate battles before the Federal Circuit. One of those appeals challenges a ruling that the NPE lacked standing in litigation with Google, while a second appeal deals with a related decision requiring Uniloc 2017 to disclose various details on its licensing activity. On December 6, oral arguments for the latter appeal took place before the Federal Circuit, with judges pressing counsel for Uniloc, defendant-appellee Apple, and intervenor Electronic Frontier Foundation (EFF) on the proper standard for weighing motions to seal third-party licensing information.

Uniloc 2017 LLC was a notably prolific litigant around three years ago, but the NPE has since ceased the active filing of litigation as it fights appellate battles on multiple fronts. Late last month, one of those appeals ended adversely for the Fortress Investment Group LLC subsidiary, when the Federal Circuit affirmed a consolidated Patent Trial and Appeal Board (PTAB) decision for Apple, Facebook and WhatsApp, Huawei, and LG Electronics (LGE) that invalidated claims from a Uniloc patent and ordered the PTAB to reconsider two additional claims previously upheld. Meanwhile, that same court is weighing Uniloc’s challenges of two rulings with an already sweeping impact: an order finding that Uniloc lacked standing when it sued Alphabet (Google) based on a provision from its funding agreements with Fortress, and another in litigation against Apple that forced the NPE to unseal a swath of documents detailing its licensing activity.

Last month, District Judge William Alsup of the Northern District of California dismissed one of the many cases filed against Apple by subsidiaries of Uniloc Corporation Pty. Limited, holding that the NPE lacked standing because it had relinquished certain patent rights to funder Fortress Investment Group LLC by defaulting on a financing agreement. Judge Alsup has now dealt Uniloc another blow, in a related battle over confidentiality. After previously rejecting Uniloc’s attempt to seal a wide swath of information about its patent assertion business, Judge Alsup has ordered the NPE to disclose further information about its licenses with third parties, ruling on remand after the Federal Circuit, while largely upholding his earlier decision, directed him to revisit that issue. Meanwhile, Judge Alsup’s order on the plaintiff’s standing defects has continued to ripple through Uniloc’s other campaigns, triggering the dismissal of another set of cases, against Google.

The Northern District of California has just dismissed one (3:18-cv-00358) of the many cases filed by subsidiaries of Uniloc Corporation Pty. Limited against Apple throughout 2017 and 2018—for reasons that could ripple through the whole set of Uniloc campaigns. Uniloc has been backed by Fortress Investment Group LLC for years, the two enterprises entering into a complex set of agreements that, according to District Judge William Alsup, deprived the Uniloc subsidiaries of standing to file suit by the time that they did. Judge Alsup had considered an Apple motion challenging standing before, reaching the opposite result in 2019. In reversing course, however, the court cited two previously missing “crucial facts”, both of which contributed to a “broader error of law” in the prior ruling.

In late 2018, subsidiaries of Australian NPE Uniloc Corporation Pty. Limited became embroiled in a dispute with Apple over whether the complex nature of the NPE’s relationship with Fortress Investment Group LLC caused a standing defect in four Uniloc infringement suits. While that dispute has gone dormant, another battle resulted from Uniloc’s related motion to seal—which covered not only certain facts cited by Apple in its standing challenge, but also a wide swath of information encompassing Uniloc’s patent assertion business, its various agreements with Fortress, details on Uniloc licenses with third parties, and even certain materials already in the public record. Last year, District Judge William Alsup denied Uniloc’s motion to seal and rejected its attempt to make a more limited set of redactions. The Federal Circuit has just upheld most of those rulings, affirming as to Uniloc-specific information and echoing Judge Alsup’s conclusion that Uniloc should have made its request narrower in the first place. However, the appeals court remanded as to whether details of certain third-party licenses should stay sealed.

An ongoing dispute over standing continues to simmer in litigation between Uniloc Corporation Pty. Limited and Apple, the latter of which has alleged that the NPE relinquished certain rights in the patents-in-suit by defaulting under a long series of agreements with Fortress Investment Group LLC—thereby depriving Uniloc of the right to sue. District Judge William Alsup of the Northern District of California rejected those arguments earlier this year, ruling that any default(s) by Uniloc had since been cured. While Judge Alsup declined to reconsider that decision in early August, he also allowed Apple to later seek a trial and conduct discovery on the issues of default and cure. Any additional evidence such discovery might uncover could now spill over into another Uniloc case, dismissed under Alice before the standing battle began and currently on appeal, as the result of a new Federal Circuit ruling. On August 30, the appeals court remanded that lawsuit for consideration of Apple’s subsequently raised standing challenge, ordering Judge Alsup to supplement the record and resolve the same jurisdictional issues hanging over the other four proceedings.

An ongoing dispute over standing in litigation between Apple and Uniloc Corporation Pty. Limited (Uniloc) continues to evolve. Last year, Apple sought the dismissal of four of Uniloc’s cases against it after learning of a complex set of agreements between the NPE and Fortress Investment Group LLC, arguing that Uniloc’s alleged “defaults” under those agreements had deprived Uniloc of standing by automatically shifting certain rights in the asserted patents to Fortress. District Judge William Alsup of the Northern District of California denied that motion in January, instead holding that Fortress had shown through its conduct that Uniloc had cured any such defaults. On August 7, Judge Alsup declined Apple’s request to reconsider that ruling but included two notable exceptions that could leave the door open for further litigation on standing: he permitted Apple to later seek a trial on the issues of default and cure and allowed it to seek discovery on those same topics. Judge Alsup’s decision to approve discovery is a notable setback for Uniloc, which continues to fight a prior order requiring it to disclose a variety of information about its agreements with Fortress, its prior licenses, and other related documents.

In October 2018, a battle over standing erupted in litigation between Apple and Uniloc Corporation Pty. Limited (Uniloc). Apple had moved to dismiss four of Uniloc’s cases against it after learning of a complex set of agreements between the NPE and Fortress Investment Group LLC, arguing that Uniloc’s purported “defaults” under those agreements had deprived Uniloc of standing by shifting sufficient rights in the asserted patents to Fortress. District Judge William Alsup of the Northern District of California denied that motion in January, holding in part that Fortress had shown through its conduct that Uniloc had cured any defaults that had occurred. Apple has now moved for reconsideration of that order, asserting that at least one of Uniloc’s defaults could not have been excused under the evidence presented and that the purported “cure” was really an implied waiver, which would be barred under the relevant agreements—under which any waiver by Fortress must be in writing. Uniloc, meanwhile, has asked the court to roll back certain redactions in Apple’s motion, arguing that only a narrower set of contractual terms between the NPE and Fortress needed to be withheld.

A contentious battle over standing has continued to develop in litigation between Apple and Uniloc Corporation Pty. Limited (Uniloc). Earlier this month, District Judge William Alsup of the Northern District of California rejected Apple’s argument that Uniloc’s purported “defaults” under a complex set of agreements with Fortress Investment Group LLC had deprived Uniloc of standing by shifting sufficient rights in the asserted patents to Fortress. Apple has now sought permission to move for reconsideration, asserting that Judge Alsup erred by adopting an argument not briefed by the parties and by finding that Uniloc had cured any defaults that had existed. Meanwhile, a related dispute over confidentiality has also heated up in the wake of Judge Alsup’s mid-January order that Uniloc could not justify the broad withholding of details about its agreements with Fortress. Uniloc has now filed a motion for reconsideration of that decision, seeking a much more limited set of redactions—in the process, revealing new details about the evolving Uniloc-Fortress relationship.

District Judge William Alsup in the Northern District of California has ruled on a motion questioning whether Uniloc Luxembourg S.a.r.l. (f/k/a Uniloc Luxembourg S.A.) and Uniloc USA, Inc., subsidiaries of Uniloc Corporation Pty. Limited, had standing to sue at the time that they filed a raft of lawsuits against Apple in their original forum, the Eastern District of Texas. Judge Alsup ruled that the Uniloc plaintiffs did have standing, rejecting Apple’s argument that a purported “default” under a set of December 2014 agreements between Uniloc and Fortress Investment Group LLC, as subsequently and repeatedly amended, had shifted sufficient rights to Fortress to destroy Uniloc’s standing. Apple had also opposed a motion to add Uniloc 2017 LLC as a plaintiff, arguing that joining new patent owner Uniloc 2017 could not fix a lapse in standing caused by a May 2018 transfer of the Uniloc patent portfolio from Uniloc Luxembourg to Uniloc 2017. Judge Alsup ruled in the plaintiffs’ favor, granting their motion to join Uniloc 2017.

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.

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.

In May 2018, Australian NPE Uniloc Corporation Pty. Limited (Uniloc) assigned more than 600 US patent assets, as well as a number of foreign counterparts—seemingly the bulk of its portfolio—to Fortress Investment Group LLC subsidiary Uniloc 2017 LLC, leading to an avalanche of new litigation. This deal represented the deepening of an existing relationship between the two parties, as a December 2014 security agreement between Uniloc and Fortress indicates that the latter has been funding the former’s litigation for years. That security agreement has now become the focus of a standing dispute in litigation filed by Uniloc prior to its May deal with Fortress. In an October motion to dismiss, defendant Apple has argued that by relinquishing certain licensing rights under the security agreement, and other related agreements, Uniloc’s former patent-holding subsidiary Uniloc Luxembourg S.à r.l. (f/k/a Uniloc Luxembourg S.A.) and its purported successor-in-interest, Uniloc 2017, were deprived of constitutional standing. Uniloc has just fired back, arguing in a November 12 opposition that the rights transferred in the security agreement did not deprive Uniloc Luxembourg of standing under Federal Circuit law. Meanwhile, Fortress has apparently reconsidered the posture of the cases that it has been filing since the May deal with Uniloc, refiling late last week over 40 of those suits with only Uniloc 2017 as the named plaintiff against defendants that include Alphabet (Google), Apple, AT&T, Barnes & Noble, BlackBerry, Cardo Systems, Cisco, Disney (ABC, ESPN), Hulu, Huawei, LG Electronics, Samsung, Terrano, Verizon, and ZTE.

Uniloc Luxembourg S.A. and Uniloc USA, Inc. (collectively, Uniloc) continues its 2018 assertion of patents apparently acquired from Pendrell Corporation. The NPE has opened up two more litigation campaigns—its sixth and seventh so far this year—each with a new case against Amazon (2:18-cv-00080, 2:18-cv-00081) filed in the Eastern District of Texas. In the first, Uniloc asserts a single patent generally related to “borrowing” media files, targeting Amazon’s Kindle e-readers and web service (and related servers). The Kindle platform, books, and app are the subject of the second lawsuit, over one patent as well, this one broadly concerning distributing “digital assets” across a network. A few days later Uniloc added Amazon to two campaigns (2:18-cv-00091, 2:18-cv-00092) that it began in 2017, each asserting a single patent acquired from HP Enterprise.

The Patent Trial and Appeal Board (PTAB) remained at the center of a heated public debate over the issue of tribal sovereign immunity in December 2017. Motions to dismiss filed by the Saint Regis Mohawk Tribe in IPRs against several Allergan patents—acquired by the tribe and licensed back to their original owner to shield them through sovereign immunity—remain pending as the PTAB considers a wave of amicus briefs filed on both sides of the issue. The Board has since denied the tribe’s motion for an oral hearing on discovery related to alleged bias held by the USPTO and its leadership, and that bias’s effect on the selection of judges for the tribe’s case. Meanwhile, among the petitions for inter partes review (IPR) filed in December was one brought by Apple against MEC Resources, LLC, an entity owned by another Native American tribe, which took over an existing lawsuit asserting the challenged patent against Apple in the fall. Also in December, the Board issued institution decisions in petitions against Iridescent Networks, Inc.; Lone Star Silicon Innovations LLC; and publicly traded Quarterhill Inc.; while an IPR against Packet Intelligence LLC ended in an adverse judgment after petitioner Sandvine prevailed in a November trial.

Uniloc Luxembourg S.A. and Uniloc USA, Inc. (collectively, Uniloc) have continued their string of consecutive weeks adding defendants to the dozen campaigns begun in 2017, last week adding Logitech (3:17-cv-06733) to their campaign asserting a patent broadly related to exercising remote control over a wireless network. Uniloc initiated this campaign by suing Apple in July, adding cases against LG Electronics, HTC, Huawei, Peel Technologies, Wink Labs, and Lenovo (Motorola Mobility), in that order. The campaign has targeted various devices (e.g., smartphones, smartwatches, home security products) used to control other devices wirelessly. At issue in the Logitech suit are Harmony remotes, with related apps.

Uniloc Luxembourg S.A. and Uniloc USA, Inc. (collectively, Uniloc) continue to grow the campaigns begun in 2017, of which there have been a dozen so far, even as USPTO assignment records suggest more litigation from the NPE may be coming. Last week, Uniloc added Lenovo (Motorola Mobility) (1:17-cv-01657) and Wink Labs (1:17-cv-01656) to a campaign over a patent, received from HP Enterprise (HPE), broadly related to exercising remote control over a wireless network. Motorola Mobility (1:17-cv-01658) was also added to the Uniloc campaign litigating another patent received from HPE, this one generally related to the exchange of information from a “portable computer” and a telephone, while Huawei (2:17-cv-01746) has been added to a sixth Uniloc campaign in 2017, that one litigating a former Fullpower Technologies patent broadly related to waking up a device based on its motion.

This past week, Uniloc Luxembourg S.A. and Uniloc USA, Inc. (collectively, Uniloc) added Huawei (2:17-cv-00722) to their campaign litigating a single former HP Enterprise (HPE) patent generally related to changing how a battery is charged based on temperature. Smartphones, smartwatches, and tablets are at issue throughout the campaign, which has already hit Apple, HTC, Lenovo (Motorola Mobility), and LG Electronics (LGE). Huawei is accused of infringement through the manufacture and sale of certain of its smartphones.

So far in 2017, Uniloc Luxembourg S.A. and Uniloc USA, Inc. (collectively, Uniloc) have filed eleven cases against Apple. Uniloc subsequently added Samsung and/or LG Electronics (LGE) to several of those campaigns and continued in that vein late this past week, adding HTC (2:17-cv-01558) and Huawei (2:17-cv-00707) to one of them, HTC (2:17-cv-01562) and LGE (4:17-cv-00858) to a second, and HTC (2:17-cv-01561) to a third. Each of these campaigns asserts against the defendants patents that Uniloc received from HP Enterprise (HPE) earlier this year.

So far in 2017, Uniloc Luxembourg S.A. and Uniloc USA, Inc. (collectively, Uniloc) have initiated ten litigation campaigns, all of them against Apple, six asserting patents received from HP Enterprise (HPE), three asserting patents originally developed by Fullpower Technologies, and one asserting Uniloc’s own patent. In August and September, Uniloc added cases against Samsung to four of those campaigns, and it has now added cases against LG Electronics (LGE) to seven of them. All of the cases brought so far this month have been filed in the Northern District of Texas.

In a mid-May 2017 transaction, Uniloc Luxembourg S.A. and Uniloc USA, Inc. (collectively, Uniloc) acquired 13 patents from HP Enterprise (HPE). With two cases filed this past week added to three filed back in May, Uniloc has now asserted six of those patents against Apple. On July 12, Uniloc sued Apple (2:17-cv-00534) over a single patent (6,622,018) generally related to exercising remote control over a wireless network, accusing Apple of infringement through the manufacture and sale of iOS and MacOS devices that can control remote devices over a wireless connection through AirPlay, with the iOS devices further alleged to infringe through the Apple TV Remote and Apple Home apps. The NPE then sued Apple (2:17-cv-00535), on that same day, over two patents (6,161,134; 6,446,127) generally related to the exchange of information from a “portable computer” and a telephone. The accused products identified in this second July case are various devices (iPhones, iPads, iPod touches, and Macs) that offer the Continuity feature, which in relevant part allows the user to make a phone call from a separate iPhone. Uniloc has now begun nine new litigation campaigns in 2017, each one against only Apple (so far).