Intellectual Property News and Reports

Uniloc USA, Inc. and Uniloc Luxembourg, S.A. (together, “the Unilocs”) sued Motorola in the District of Delaware for infringement of U.S. Patent No. 6,161,134 (the “Motorola case”). The asserted patent concerns, in part, pairing a telephone with another device and using the other device to make a telephone call using the telephone’s cellular capabilities.

Motorola moved to dismiss, alleging the Unilocs lacked standing because they lacked the right to exclude, having granted Fortress Credit Co. LLC (“Fortress”) a license and an unfettered right to sublicense the asserted patent. The Unilocs argued that they had not granted such a license to Fortress and, even if they had, the license would not eliminate the Unilocs’ standing. The district court dismissed, agreeing that the Unilocs had granted a license and that the existence of a license deprived the Unilocs of standing.

In a related case, the Unilocs sued Blackboard Inc. in the Western District of Texas for infringement of U.S. Patents Nos. 6,324,578 and 7,069,293 which both concern technology that facilitates access to customized and licensed applications on individual computers within distributed networks (the “Blackboard case”). Uniloc 2017 (which acquired the relevant patents from Uniloc Luxembourg (“Uniloc Lux”)) was later substituted as the sole plaintiff, and the case was transferred to the District of Delaware. The district court then dismissed the Blackboard case for lack of subject matter jurisdiction, apparently applying the Motorola case as a matter of collateral estoppel.

Download Uniloc USA INC. v. Motorola Mobility LLC