The apportionment of patent rights can be a tricky business—particularly where a plaintiff has pledged its patents as collateral, as just illustrated by a new precedential decision from the Federal Circuit. In May 2022, Western District of Texas Judge Alan D. Albright dismissed a case brought by Intellectual Tech LLC (IT) against Zebra Technologies due to lack of standing, holding that because the plaintiff’s default on a loan gave its lender the option to sell the plaintiff’s patent or assert the patent itself, the plaintiff had been deprived of all substantial rights in that patent. However, the Federal Circuit ruled on May 1 that Judge Albright had fallen into an increasingly familiar trap by confusing the jurisdictional issue of standing, which requires a mere injury; with the issue of whether the plaintiff is a “patentee” as required to bring an infringement suit under 35 USC § 281.

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.

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).

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.