52 F.4th 1340
Fed. Cir.2022Background
- In 2014 Uniloc USA and Uniloc Luxembourg (collectively "Uniloc") entered a Revenue Sharing Agreement (RSA) with Fortress that contemplated a patent license to Fortress upon an Event of Default.
- The formal Patent License Agreement described the Fortress license as non-exclusive, transferable, sublicensable, irrevocable, royalty-free, and worldwide.
- An Event of Default occurred when Uniloc failed to meet a $20 million monetization covenant for the applicable period, which (under the RSA) triggered Fortress’s license rights.
- Uniloc sued Motorola and Blackboard for patent infringement of patents included in the License Agreement; defendants moved to dismiss for lack of Article III standing alleging Fortress’s sublicense right divested Uniloc of exclusionary rights.
- A separate district-court decision in Uniloc v. Apple found the Fortress license (and sublicense right) deprived Uniloc of standing; Uniloc settled and voluntarily dismissed its appeal of Apple so the district-court judgment remained in place.
- The Federal Circuit held Apple’s judgment preclusive in the Motorola and Blackboard appeals and affirmed dismissal for lack of standing; a concurring judge emphasized that the Court did not decide whether a non-exclusive sublicenseable license necessarily strips the owner of standing.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Uniloc had Article III standing given Fortress’s license and right to sublicense | Even if Fortress got a license and sublicensing right, Uniloc (as patent owner) retains exclusionary rights and thus standing | Fortress’s license and unrestricted sublicensing ability meant Uniloc lacked exclusionary rights and cannot sue | Court did not reach the substantive rule; applying collateral estoppel from Apple, Uniloc is precluded from arguing it had standing, so dismissal affirmed |
| Whether the Apple district-court decision is collateral estoppel (issue preclusion) in the Motorola/Blackboard suits | Apple is not binding and Uniloc’s settlement/appeal meant Apple should not preclude other suits | Apple produced a valid, final judgment on the standing issue that is preclusive | Apple decision is valid, final, and the same issues were litigated; collateral estoppel applies; Uniloc precluded |
| Whether defendants forfeited or waived the estoppel defense by not raising it sooner | Defendants forfeited/waived estoppel by not raising it below or by limited notice | No forfeiture: estoppel may be raised after preclusive judgment resolves; appellate courts have discretion to hear it | No forfeiture or waiver here; appellate court may entertain estoppel and decline to find forfeiture |
| Whether a non-exclusive license with a right to sublicense inherently deprives the patent owner of standing | Uniloc relied on Fed. Cir. precedent (Aspex, Alfred Mann) saying licensors can retain standing despite sublicense rights | District court treated license as divesting exclusionary rights (citing non-patentee/licensee cases) | Panel avoided resolving the general rule; estoppel decided outcome. Judge Lourie (additional views) stated clearly a non-exclusive sublicensable license does not strip the licensor of the right to sue unlicensed infringers |
Key Cases Cited
- Aspex Eyewear, Inc. v. Miracle Optics, Inc., 434 F.3d 1336 (Fed. Cir.) (discusses patentee standing after licensing)
- Alfred E. Mann Found. for Sci. Rsch. v. Cochlear Corp., 604 F.3d 1354 (Fed. Cir.) (addressing standing where patentee granted licenses)
- Blonder-Tongue Labs., Inc. v. Univ. of Ill. Found., 402 U.S. 313 (1971) (defensive collateral estoppel doctrine and full-and-fair-litigaton requirement)
- Parklane Hosiery Co. v. Shore, 439 U.S. 322 (1979) (non-mutual offensive collateral estoppel principles)
- Rite-Hite Corp. v. Kelley Co., 56 F.3d 1538 (Fed. Cir.) (standing/rights issues where agreements affected enforcement)
- United States v. 5 Unlabeled Boxes, 572 F.3d 169 (3d Cir.) (treatment of preclusion where earlier judgment was pending appeal)
- Pharmacia & Upjohn Co. v. Mylan Pharms., Inc., 170 F.3d 1373 (Fed. Cir.) (res judicata/issue preclusion principles in Federal Circuit practice)