Fed Circ says judge ‘abused’ discretion in Apple, Uniloc patent battle
Senior US district court judge William Alsup did not conduct the proper analysis in his decision to release patent licensing information in a legal battle between Apple and patent assertion entity Uniloc, the US Court of Appeals for the Federal Circuit has ruled.
The majority claimed that the US District Court for the Northern District of California failed to follow the Federal Circuit’s prior remand instructions to determine whether third-party licensing information should be made public.
In Alsup's initial analysis, the district court judge ruled that the public had a “strong interest” in knowing the full extent of the terms and conditions involved in the exercise of its patent rights and seeing how Uniloc exercised a grant from the government affected its commerce.
To this point, the Federal Circuit majority said: “But this is not an antitrust case or an FTC investigation involving unlawful restraint of trade or monopolisation. It is a suit for patent infringement.
“Absent an issue raised by the parties concerning license rights and provisions, there is no public interest or entitlement to information concerning consideration for the grant of licences.”
The precedential opinion, handed down on Wednesday, November 9, called Alsup’s judgment an “abuse of discretion” and once again remanded the issue to perform the required analysis.
Mayer’s dissent
Judge Haldane Mayer offered a dissenting opinion, holding that the district court did adhere to its remand instructions when it “carefully weighed” the public right of access to the records against the interests of third-party patent licensees.
He called Alsup’s decision to deny the sealing motion “a sound exercise of discretion” and agreed that the dates and dollar amounts of the licenses went “to the heart of the primary dispute” between Uniloc and Apple.
Mayer also claimed that the decision whether or not to seal was “best left to the sound discretion of the trial court,” according to precedent in Nixon v Warner Commc’ns—the trial proceeding the Watergate investigation.
In this case, he called the situation “unusual” in that Uniloc had forfeited its right to keep its licensing information confidential because its original sealing request was “grossly excessive”.
Mayer concluded: “The fact that other courts, under other circumstances, have granted motions to seal patent licensing information does not mean that the district court abused its discretion in declining to do so here.”
Case background
This was Uniloc’s second appeal regarding the sealing of documents, with it trying attempting and failing o defend requests to seal matters of public record, including a list of patent cases it had filed. The US district court initially rejected Uniloc’s requests.
On appeal its first appeal, the Federal Circuit ruled that the district court ruled correctly but held that the district court must conduct a more detailed analysis on whether confidential licensing information of third-party licensees of Uniloc’s patents should be sealed.
On remand, Uniloc considered whether Fortress Credit Co should be considered a third party or a Uniloc-related entity for the purposes of sealing. The district court again denied Uniloc’s motion, explaining that “the public has every right to account for… anyone holding even a slice of the public grant.”
The district court also determined that “the dates and dollar amounts involved in Uniloc’s patent licenses go to the heart of the primary dispute, that of Uniloc’s standing (or lack of) to sue,” and ordered the licensing information, including the identity of licensees, to be unsealed in full.
In response, Uniloc filed another notice of appeal to the Federal Circuit. On appeal, both Uniloc and Apple argued that the district court erred in failing to follow the Federal Circuit’s remand instructions to make determinations as t whether third-party licensing information should be sealed.
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