Uniloc USA, Inc. v. Apple Inc.
- Edward Davila
- 5:19-cv-01692
- U.S. District Court · Northern District of California
- 8
Uniloc v. Apple: Judge Demarchi granted Apple’s motion to strike Uniloc’s indirect-infringement contentions, allowed amendment, and ordered Uniloc to address possible fees.
Uniloc USA, Inc., Uniloc Luxembourg, S.A., and Apple Inc.; the order required Uniloc to amend its indirect-infringement contentions and address possible reimbursement of Apple’s motion-related fees and costs.
What happened
Uniloc USA, Inc. sued Apple Inc., alleging that Apple products, including iPhones, iPads, and iPods, infringed claims in the ’207 patent. Apple asked the court to strike Uniloc’s allegations of indirect infringement because they did not meet the patent-related local rule’s requirements.
The court found that Uniloc’s allegations about induced and contributory infringement were too general. The allegations did not adequately identify the instructions or promotions that allegedly led to infringement, the people or entities that directly infringed, Apple’s alleged knowledge, or facts supporting the contributory-infringement theory.
Judge Demarchi granted Apple’s motion to strike, but allowed Uniloc to amend its infringement contentions. The judge also ordered Uniloc to explain why it should not reimburse Apple for reasonable attorneys’ fees and costs related to the motion, with both the amended contentions and response due May 11, 2020.
The detailed version
- Uniloc USA, Inc. v. Apple Inc. · No. 5:19-cv-01692
- Edward Davila
- Apr. 27, 2020
Background
Uniloc USA, Inc. and Uniloc Luxembourg, S.A. sued Apple Inc. for allegedly infringing claims 1–3 and 5–11 of U.S. Patent No. 7,587,207, titled “Data Delivery Through Beacons.” The accused products included various Apple products, such as iPhones, iPads, and iPods.
Apple moved to strike Uniloc’s contentions concerning indirect infringement. Patent Local Rule 3-1 requires a patent plaintiff to identify the asserted claims, accused products, how each claim limitation is found in each accused product, and—when indirect infringement is alleged—the direct infringement and the accused party’s acts that allegedly contributed to or induced it.
Court’s analysis
The court addressed two forms of indirect infringement:
- Induced infringement: Uniloc alleged that Apple induced infringement by providing instructions about activating allegedly infringing features. The court found those allegations deficient because they did not identify which specific instructions, advertisements, or promotions allegedly led to particular infringing conduct. The contentions also referred to possible direct infringers in hypothetical terms, rather than providing enough information to give Apple reasonable notice of Uniloc’s theory. Uniloc also did not state a basis for alleging that Apple knew the acts it allegedly induced constituted infringement. - Contributory infringement: Uniloc alleged that Apple installed software that provided the accused functionality. The court found that Uniloc’s original and proposed amended contentions did not adequately identify facts showing that the software was especially made or adapted for infringement, had no substantial non-infringing use, or was a material part of the patented invention. The contentions also did not identify the alleged direct infringers or explain whether and how Apple knew its conduct contributed to infringement by others.
Disposition
The court granted Apple’s motion to strike Uniloc’s indirect-infringement contentions, with leave to amend. The court required Uniloc to serve amended contentions by May 11, 2020.
The court also ordered Uniloc to show cause why it should not be required to reimburse Apple for the reasonable attorneys’ fees and costs Apple incurred in bringing the motion. The court did not award those fees and costs in this order. Uniloc’s response to the order to show cause was also due May 11, 2020.
Read the full 8-page opinion on CourtListener, the free public archive maintained by the Free Law Project.