Uniloc USA, Inc. et al v. Microsoft Corporation

In June 2018, the Patent Trial and Appeal Board (PTAB) saw petitioners wage validity challenges against a variety of prominent NPEs. Among those hit by petitions for AIA review in June was Intellectual Ventures LLC (IV), which has not filed any new litigation in the US since October 2017, but continues to assert patents overseas; and NPEs affiliated with Fortress Investment Group LLC and Industrial Technology Research Institute. Also in June, the PTAB instituted trial for two IPRs against affiliates of top litigant IP Edge LLC, which remains the most prolific patent plaintiff of the past 18 years by the number of defendants added to US patent suits. In addition, the Board issued final decisions in IPRs against IV, the California Institute of Technology, inventor Daniel L. Flamm, and frequent litigants Realtime Data LLC and Uniloc Corporation Pty. Limited.

The Patent Trial and Appeal Board (PTAB) had an eventful April, capped by two US Supreme Court decisions addressing inter partes review (IPR). While the Court found IPR constitutional in Oil States Energy Services, in its companion decision in SAS Institute, the Court also barred the PTAB’s practice of instituting trial as to a subset of the challenged claims (partial institution decisions). As a result, since those April 24 opinions, the PTAB has begun to institute trial for all challenged claims for IPR petitions where the petitioner is likely to prevail as to at least one claim (and for all petitioned grounds, a practice not required by SAS Institute). Among the affected IPRs instituted in late April were two against Lone Star Silicon Innovations LLC, while the PTAB saw IPR petitions filed in April against Oyster Optics, LLC and Uniloc Corporation Pty. Limited. The Board also issued final decisions throughout April in IPRs against ChriMar Systems, Inc.; Global Equity Management (SA) Pty. Ltd.; Papst Licensing GmbH & Company Kg; Skky, Inc.; and Uniloc.

The Patent Trial and Appeal Board (PTAB) saw petitions for AIA review filed against a variety of prolific litigants in June 2017, including General Patent Corporation, Intellectual Ventures LLC (IV), Quarterhill Inc. (f/k/a Wi-LAN Inc.), Realtime Data LLC, Uniloc Corporation Pty. Limited, and Xperi Corporation (f/k/a Tessera Holding Corporation). Also in June, the PTAB instituted trial for petitions brought against patents asserted in a variety of sprawling campaigns, including some waged by Acacia Research Corporation, IV, Papst Licensing, Quarterhill, and VirnetX Inc. The Board further issued final decisions throughout June in AIA reviews against patents involved in several notable campaigns, including some waged by Document Security Systems, Inc., Elm 3DS Innovations LLC, Empire IP LLC, and Quarterhill.

The Patent Trial and Appeal Board (PTAB) continued to see the filing of petitions for inter partes review (IPR) against publicly traded NPEs in March 2017, including Acacia Research Corporation; Finjan Holdings, Inc.; Pendrell Corporation; TiVo Corporation (formerly known as Rovi Corporation); and Wi-LAN Inc. (WiLAN). A variety of prolific, privately held NPEs were also targeted for IPR throughout March, including Blackbird Tech LLC, General Patent Corporation, IP Edge LLC, Realtime Data LLC, and Papst Licensing GmbH & Company Kg, along with several inventors and inventor-controlled NPEs and an assortment of other plaintiffs.

Uniloc USA, Inc. and Uniloc Luxembourg S.A. (Uniloc ) have filed three new cases, two against Alphabet (Google) (2:17-cv-00214; 2:17-cv-000224) and one against Amazon (2:17-cv-00228). The -214 case against accuses Google of infringing three patents (7,535,890; 8,724,622; 8,995,433) from a first family of five at issue in its group voice messaging campaign through its Android Messages app, while the company is accused in the -224 case of infringing those same three patents, as well as a fourth (8,199,747) from the same family, through its Google Hangout app. Uniloc asserts three patents from a second five-member family (7,853,000; 7,804,948; 8,571,194) against Amazon, targeting provision of Amazon Chime. This family generally relates to initiating conference calls from an instant message app.

Another wave of defendants has been added to the messaging apps campaign of Uniloc (Uniloc Luxembourg S.A. as patent owner and Uniloc USA, Inc. as exclusive licensee). The new complaints assert four (7,535,890; 8,199,747; 8,724,622; 8,995,433) of the five (8,243,723) patents already at issue in the campaign, against each of HTC (2:16-cv-00989), Huawei (2:16-cv-00994), Kyocera (2:16-cv-00990), LG Electronics (LGE) (2:16-cv-00991), Lenovo (Motorola Mobility) (2:16-cv-00992), and ZTE (2:16-cv-00993). The accused products are the defendants’ Android smartphones with messaging apps.

Uniloc USA, Inc. has begun asserting two software licensing and delivery patents (6,510,466; 6,728,766) recently acquired from IBM, filing seven lawsuits against the same number of defendants on April 12. The NPE has also continued to expand its unified communications campaign, filing a single complaint against ooVoo the following day. Like its European counterpart Uniloc Luxembourg S.A., Uniloc USA is a subsidiary of Australian NPE Uniloc Corporation Pty. Limited.

Uniloc USA, Inc. and Uniloc Luxembourg S.A. (collectively, Uniloc) appear to be launching a new campaign, suing a previous defendant, Microsoft. The suit asserts three patents that Uniloc has not used in its previous litigation (7,804,948, 7,853,000, 8,571,194) and that relate to initiating a conference call with an instant messaging service. The complaints accuse Microsoft’s enterprise-level communications platform of infringement. The patents-in-suit are owned by Uniloc Luxembourg and are exclusively licensed to Uniloc USA, similar to other patents asserted by the entity.