Argument Preview

Only one case being argued next week at the Federal Circuit attracted an amicus brief. That case is Uniloc USA, Inc. v. Motorola Mobility LLC, which concerns Article III’s constitutional standing requirement in the context patent ownership. Specifically, in this case the Federal Circuit will review a district court’s determination that Uniloc USA, Inc. did not hold all exclusionary rights to the asserted patent for purposes of satisfying Article III’s standing requirement. This is our argument preview.

In its opening brief, Uniloc USA makes three points. First, it argues “[t]he district court erroneously ruled that [a third party’s] putative right to sublicense the patent-in-suit deprived Uniloc of standing under Article III of the Constitution.” On this point, Uniloc maintains Motorola’s argument must fall short because it is “predicated on breach of a contract to which it is not a party.” Moreover, Uniloc argues that the ability of the third party, a lender named Fortress Investments, “to sublicense the patent could not deprive Uniloc of standing regardless” because “a patent owner has standing even where a licensee has a ‘virtually unfettered right to sublicense’ the patent.” Uniloc also contends “[t]he district court erroneously relied on cases involving licensee standing to sue.” Second, Uniloc argues that, “[e]ven if Fortress once had a sublicensing right that could affect standing, it was extinguished before this suit was filed.” Third, according to Uniloc, the district court erred when it “declined to substitute Uniloc 2017 as plaintiff solely because its ruling that Uniloc lacked standing when the case was filed rendered the substitution request moot.”

Motorola, in its response brief, makes its first argument based on collateral estoppel. Namely, it points to Uniloc’s prior litigation with Apple, Inc., in which the Northern District of California decided the same standing issue that Uniloc raises in the present case. In the alternative, Motorola argues that Uniloc entered into a licensing scheme with Fortress that granted Fortress “an unfettered right to sublicense, to use in the event that Uniloc defaulted,” Uniloc “subsequently defaulted by failing to meet a monetization target by millions of dollars,” and “the sublicense destroyed [Uniloc’s] exclusionary rights.” Moreover, Motorola argues this Article III standing defect cannot be cured by substituting or adding Uniloc 2017 LLC as a plaintiff.

Uniloc, in its reply brief, reasserts the arguments it made in its opening brief. In addition, Uniloc counterargues that Motorola “waived preclusion by telling the district court the Apple judgment is ‘not binding.’”

In addition to each side’s comprehensive briefs, this case has also drawn support from a single amicus brief.

Cirba, Inc. (d/b/a “Densify”) submitted an amicus brief to the court in favor of Uniloc. Densify argues that “[t]his Court has decided that exclusionary rights and other statutory requirements are no longer necessary for Article III standing in patent infringement cases.” According to Densify, however, “district courts have been inconsistent in following this Court’s precedent . . . with some continuing to apply previous law that exclusionary rights are required for Article III standing, while others recogniz[e]
that such exclusionary rights are now unnecessary.” Densify calls on the Federal Circuit to provide “clarity on this question of federal courts’ power to hear patent cases.”

This case will be argued on Tuesday, September 6. We will report on any developments.