Uniloc 2017 LLC v. Apple Inc.

Background

Uniloc 2017 LLC alleged that Apple Inc. infringed claims 1, 2, and 4 of U.S. Patent No. 7,020,252 through Apple devices capable of running software for the iMessage feature. Uniloc’s infringement contentions listed numerous iPhone, iPad, Mac, iPod touch, and Apple Watch products. The contentions relied on a single claim chart for functionality identified as “Messages for iOS.” Uniloc stated that it intended to update its contentions during discovery, after claim construction, or after inspecting source code.

Apple moved to strike the contentions on several grounds: Uniloc improperly used one unidentified product as representative of all accused products; the claim chart did not satisfy Patent Local Rule 3-1(c); and Uniloc did not disclose adequate factual bases for indirect infringement or infringement under the doctrine of equivalents.

Representative-product contentions

The court held that Uniloc could not rely on one claim chart for all accused products merely because it believed the iMessage feature operated the same way on each device. Uniloc had not explained how the charted product represented products using different operating systems, and at the hearing acknowledged that it had not obtained and examined all accused products.

The court struck the contentions to the extent they covered products other than the specific product on which the chart was based. Uniloc may amend. If it relies on a representative product, it must have a basis under Federal Rule of Civil Procedure 11 for claiming that the product represents the others and must explain how it is representative, including accounting for the different operating systems. Alternatively, Uniloc must provide a separate chart for each accused product.

Claim-chart requirements

Patent Local Rule 3-1(c) requires a chart that specifically identifies where and how each limitation of each asserted claim appears in each accused product. The court found that Uniloc’s color-coded images, without more, did not adequately explain its infringement theory. The court described the resulting chart as confusing and struck the claim chart in its entirety.

Uniloc may serve amended claim charts. The amended charts must use words, in addition to any pictures, and must use a conventional two-column format. The first column must contain the asserted claim’s text; the second must explain where and how each limitation is found in the accused product. Each claim limitation must appear in a separate row. The court also stated that Uniloc must consider the nonpublic technical documents, including source code, that Apple had produced because those materials likely expanded the information reasonably available to Uniloc.

Indirect infringement

Uniloc asserted both induced infringement and contributory infringement. For induced infringement, Uniloc alleged that Apple encouraged customers to use and follow instructions for the iMessage feature. For contributory infringement, Uniloc alleged that the iMessage software was especially made or adapted for infringing use and was not suitable for substantial noninfringing use.

The court held that these contentions did not adequately disclose the factual bases for either theory. It struck the indirect-infringement contentions but allowed Uniloc to amend them. For induced infringement, Uniloc must identify which specific instructions, advertisements, or promotions led to what infringing behavior. For contributory infringement, it must explain how the iMessage feature was especially made or adapted for infringement and why it was not a staple article or commodity suitable for substantial noninfringing use.

Doctrine of equivalents

The doctrine of equivalents is a patent-infringement theory under which a product may infringe even though it does not literally meet a claim limitation, if the differences are legally equivalent. Uniloc’s contentions stated that its claim elements were literally present but reserved the right to revise them later based on claim construction, discovery, source-code review, or Apple’s arguments.

The court held that this general reservation was improper under Patent Local Rule 3-1(e). It struck Uniloc’s assertion of infringement under the doctrine of equivalents without leave to amend at this time. The court stated that Uniloc may seek leave to amend under Patent Local Rule 3-6 if it later has good cause to assert that theory.

Apple’s requested schedule changes and disposition

Apple also asked to change deadlines for invalidity contentions and claim-construction proceedings. The court stated that requests to modify the case-management schedule should generally be directed to the presiding judge and that Apple’s request was premature because Uniloc’s permitted amendments might not affect Apple’s existing positions. After Uniloc serves amended contentions, Apple may seek permission to amend its invalidity contentions if it can satisfy Patent Local Rule 3-6. The court did not intend to move the claim-construction hearing scheduled for August 10, 2020.

The court granted Apple’s motion to strike Uniloc’s infringement contentions. Uniloc was permitted to amend the contentions as specifically described in the order and was required to serve them by March 11, 2020.