Uniloc USA, Inc. v. Apple Inc.

Background

This patent-infringement case raised questions about whether Uniloc USA, Inc. and related entities had sufficient rights in the asserted patents to sue. The opinion identifies two related concerns: whether Uniloc may have defaulted on a revenue-sharing agreement involving Fortress and whether the agreement gave Fortress too great an interest in the patents when the lawsuit was filed. The court also addressed whether later patent transfers changed which entities owned or could assert rights in the patents.

A December 16 order required Uniloc to produce jurisdictional discovery concerning these issues from related cases. Uniloc produced one document: a deposition transcript in which one of its officers referred to several draft agreements. Apple then requested additional discovery. Apple and Uniloc agreed that no discovery had actually occurred on this issue in the related cases because those cases were stayed pending inter partes review, a process for reviewing patent validity before the Patent Trial and Appeal Board.

Requested Discovery

Apple requested discovery in three areas:

The court explained that the contracting parties’ understanding of their obligations was relevant because the main issue included whether Uniloc defaulted and cured. The court also stated that the relevant question was what rights Uniloc held when the lawsuit was filed. It rejected Uniloc’s reliance on Lone Star Silicon Innovations LLC v. Nanya Technology Corp. as a reason to avoid discovery, explaining that although a plaintiff need not hold every exclusive right in a patent, it must hold enough rights to sue.

The court found updated ownership discovery appropriate because the earlier joinder of patent-rights holders was based on documents from November 2018, while Apple cited evidence of later transfer agreements and evidence that some relevant Uniloc entities might no longer exist.

Ruling

The court granted in part Apple’s request for more discovery. It did not permit depositions at that time. It allowed Apple to proceed with written discovery concerning:

- Drafts of the Fortress agreement, including drafts referenced in the produced deposition transcript; - The circumstances, communications, and actions concerning Uniloc’s alleged default and purported cure of its obligations to Fortress; and - Updated ownership interests in the asserted patents, including whether entities that currently or formerly asserted ownership interests still exist.

The limited discovery period was ordered to close on February 28 at 5:00 p.m. The order addressed the scope of discovery and did not itself decide who owned the patents or whether Uniloc ultimately had the right to sue.