Uniloc 2017, LLC v. Apple Inc.

Background

Uniloc moved to amend its patent-infringement contentions under Patent Local Rule 3-6. The motion followed Uniloc’s receipt of material, nonpublic information about the Apple Watch. The court also noted that Uniloc’s original contentions improperly charted the Apple Watch together with the iPhone and iPad, rather than providing compliant contentions.

Motion to Amend

The court granted Uniloc’s motion to amend for good cause. It found that Uniloc moved in a timely manner and that Apple had not shown prejudice from the amendment. The court further stated that the amended contentions corrected the identified deficiency. Even without the amendment, the court said it would have required compliant contentions rather than imposing the severe sanction of striking them outright.

Motion to Strike

Apple moved to strike Uniloc’s amended infringement contentions. The court denied that motion in large part, finding that the contentions gave Apple reasonable notice of Uniloc’s theory of infringement. The court stated that the theory could ultimately be inconsistent with the patent’s proper claim construction—the court’s interpretation of the patent claims—or with the actual operation of Apple’s devices, but that Apple was not left unaware of the theory.

The court granted Apple’s motion to strike with respect to Uniloc’s boilerplate reservation of rights to argue the doctrine of equivalents. The doctrine of equivalents can support infringement when an accused device or process is not literally covered by the patent claim but is legally equivalent. The court said Uniloc could seek another amendment for good cause if later developments supported that doctrine, but could not include a placeholder without a present theory.

Disposition

The order granted Uniloc’s motion to amend and granted in part and denied in part Apple’s motion to strike. This was a case-management ruling about patent-infringement contentions; it did not decide whether Apple infringed the patent.