Uniloc 2017 LLC v. Apple Inc.

Background

This patent-infringement action concerns U.S. Patent No. 7,020,252, referred to as the ’252 patent. Uniloc 2017 LLC and Apple, Inc. entered into a stipulated protective order governing confidential material, which the court adopted with modifications. The order stated that protected material could be used only for this case or a related appeal, and not for other litigation or business purposes.

Apple and Intel Corporation separately sued Uniloc in an antitrust action. They alleged that Uniloc had acquired patent portfolios and used them to obtain patent royalties exceeding the value of the patents’ alleged contributions. The ’252 patent was one of the patents they identified. After the antitrust court dismissed their amended complaint for failure to state a claim, that court noted that Apple and Intel could ask the courts handling Uniloc’s infringement cases for relief from protective orders so they could file supporting evidence under seal.

Apple then asked this court for permission to disclose under seal documents concerning the purchase and licensing of the ’252 patent, or portfolios containing it, in the antitrust case. Uniloc and non-party Pendrell Corporation opposed the request. They argued that Apple had not shown the documents were relevant, that the request would circumvent a discovery stay in the antitrust case, and that they would be prejudiced because they had relied on the protective order’s restrictions.

Court’s analysis

The court discussed Ninth Circuit decisions stating that courts generally favor disclosure when needed for pending litigation. In deciding whether to modify a protective order for use in another case, courts consider the protected discovery’s relevance and whether it could generally be obtained in the other case. They also weigh the opposing party’s reliance on the protective order against avoiding duplicative discovery.

The court was not convinced that those decisions directly controlled because they involved parallel litigation and concerns about duplicating discovery. Here, the antitrust complaint had been dismissed, Apple was seeking information to help develop an antitrust claim it had not successfully pleaded, and discovery in that case was stayed. The parties also agreed that the documents did not contain a unique valuation for the ’252 patent; instead, the patent appeared as one of many patents in portfolio transaction documents. The court found it unclear whether the information sought was the type of evidence the antitrust court had contemplated.

Ruling

Judge Virginia K. Demarchi concluded that Apple had not shown sufficient justification for modifying the protective order to allow use of confidential documents obtained in discovery. The court denied Apple’s request for relief from the protective order.