Uniloc USA, Inc. et al v. Huawei Device USA, Inc. et al

The Federal Circuit has breathed new life into a campaign begun by Uniloc Corporation Pty. Limited in April 2016—before the Australian NPE began ramping up its litigation activity in 2017, before it acquired the large portfolio of patents from Pendrell Corporation in early 2018, and before it transferred control over its patent assets to Fortress Investment Group LLC in May 2018. Throughout 2016 and 2017, Uniloc accused a wide range of defendants of infringing up to four patents, sourced from IBM, through their software licensing and delivery systems. Multiple decisions in the Eastern District of Texas, however, invalidated all four patents under Alice, stopping the campaign in its tracks. Now, in a May 24, 2019 nonprecedential opinion, the Federal Circuit has reversed the district court as to two of those patents while affirming the invalidity of the other two. The case has been remanded back to Texas for further proceedings in the underlying cases, filed against ADP, Big Fish Games, BitDefender, and Kaspersky Lab, but the decision could revive litigation dropped as to other defendants as well.

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.

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.

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.

Uniloc Corporation Pty. Limited’s barrage of litigation against Apple continues unabated. Its subsidiaries Uniloc Luxembourg S.A. and Uniloc USA, Inc. (collectively, Uniloc) have filed two new cases against the tech giant, one (1:18-cv-00293) asserting a patent generally related to blocking the normal operation of a “mobile radiotelephony device” under certain circumstances, and the other (1:18-cv-00296) to managing the reconfiguration of an electronic device. Uniloc acquired both patents from publicly traded NPE Pendrell Corporation, which sold hundreds of patent assets from its “Pendragon” portfolio (held by subsidiary Pendragon Wireless LLC) to Uniloc earlier this year. The transaction appears to be the divestiture that Pendrell described in a February SEC filing as comprising “patents related to cellular and digital wireless devices and infrastructure” from multiple sources, including Electronics and Telecommunications Research Institute (ETRI), IBM, and Philips.