Fed Circuit remands Google v Uniloc in ‘standing’ dispute
Uniloc found to have standing to file patent infringement lawsuits | Licensing clause gave investor the right to sublicense patents if there was a loan default
Go ogle must face a series of patent suits brought by tech company Uniloc again, after the US Court of Appeals for the Federal Circuit reversed its victory.
In a ruling handed down on November 4, the Federal Circuit concluded that a clause in Uniloc’s licence— which gave Softbank owned Fortress the right to sublicense patents—did not eliminate Uniloc’s standing to bring 11 cases against Google.
The decision reversed a ruling by the US District Court for the Northern District of California, which found that Uniloc lacked standing to bring the suits.
Back in 2014, Uniloc’s predecessors entered into a revenue sharing and note and warrant purchase agreement with Fortress in connection with a loan Fortress had made to the predecessors.
As part of the agreement, Fortress would obtain a licence if there was an event of default, such as where Uniloc failed to reach a revenue target.
Four years later, the Unilocs and Fortress entered into a termination agreement to completely pay off the loan obligations. The termination agreement stated that the revenue sharing agreement and patent licence would terminate.
Also in 2018, Uniloc brought 11 suits against Google, claiming infringement of patents (with each asserted patent having been included in the patent licence).
Google’s attempts to dismiss the suits were successful, with the Californian court finding that Uniloc had committed at least one event of default sufficient to trigger Fortress’s acquisition of the licence, and that the termination agreement didn’t eliminate the licence as the licence was irrevocable.
"Relying on cases involving exclusive licensees, as opposed to patent owners, the district court then concluded that a patent plaintiff must have exclusionary rights in the patent to have standing to sue for infringement and that a patent owner does not have such rights if another party can license the patent to the alleged infringer. It followed that Uniloc 2017 lacked standing,” said the Federal Circuit in its summary.
However, the Federal Circuit reversed the decision, finding that the licence didn’t survive the termination of the agreement.
