Uniloc USA, Inc. v. Apple Inc.

Background

This order addresses sealing requests in related patent-infringement suits. The court explained that Fortress Credit Co. LLC funded the suits, took a broad license in the asserted patents as security, and imposed annual monetization goals on Uniloc. Apple later discovered that Uniloc had not met the goals for the preceding twelve months. According to the opinion, that failure released the sole condition on Fortress’s license and allowed Fortress to sublicense the asserted patents to the world. In an earlier order, the court concluded that Uniloc lacked standing to sue.

The sealing disputes involved Uniloc’s requests to keep confidential patent-license tables, licensee names, transaction dates and dollar amounts, a licensing agreement between Uniloc and Microsoft, declarations from licensees, references to licensing information in Apple’s filings, and an internal Fortress investment memorandum. The Federal Circuit had remanded for the district court to reconsider the confidentiality interests of third parties. The Electronic Frontier Foundation (EFF) moved to intervene to oppose the sealing requests and protect public access to the record.

Court’s analysis

The court applied the strong presumption that federal court records are available to the public. For material connected to a dispositive motion, the court said sealing requires a compelling factual basis that outweighs the public interest in disclosure. It also found a special public interest in records concerning patents because patents are government-granted rights that affect commerce, licensing valuations, and reasonable-royalty disputes.

The court rejected Uniloc’s reliance on general categories of information that courts sometimes allow parties to seal. Instead, it required specific support showing why the particular information should remain secret. Although some licensees had previously expressed concern that disclosure could expose them to other non-practicing patent holders, no third party had filed a request or statement on the docket in connection with these motions. The court characterized the older declarations and Uniloc’s reports about licensee views as insufficient support for continued secrecy.

The court ordered disclosure of the licensees’ identities, the dates and nature of their licenses, and the licensing amounts. It found that the dates and amounts went to the heart of the standing dispute because they helped show whether Uniloc met its monetization goals and whether the Fortress arrangement deprived Uniloc of standing. The court also ordered disclosure of references to three licensees in a deposition transcript.

As to the Fortress investment memorandum, the court found that the claimed confidentiality interest belonged to Fortress, not Uniloc. Fortress had not submitted its own declaration establishing that the material was sealable, as required by the local rule. The court therefore ordered disclosure of the memorandum, references to it in Apple’s brief, and the license table.

Disposition

The court granted EFF’s motion to intervene. It denied Apple’s administrative motion to seal its motion to dismiss and denied Uniloc’s renewed motion to seal. It also stated that Uniloc had waived sealing of Apple’s opposition to Uniloc’s renewed motion concerning subject-matter jurisdiction and joinder, and denied that motion. Because the Federal Circuit had affirmed denial of Uniloc’s earlier sealing requests, the court granted the motion to place documents in the public record. The contested denials were stayed until 28 days after all appeals of this order were exhausted.