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Our Case of the Week is ostensibly a case about whether a patent owner has standing to sue when that patent holder has granted an exclusive license. But the case turns on the application of collateral estoppel, when Uniloc, the patent owner, dismissed an appeal against Apple in an unrelated suit concerning the same facts. The case sounds like a cautionary tale about dismissing cases on appeal.

In 2014, Uniloc entered into a loan agreement with Fortress. In related documentation, Uniloc granted Fortress a non-exclusive license in the event of a default. There was then a default, triggering this clause, and granting a license to Fortress.

While Uniloc was in default, it asserted a patent against Motorola and other patents against Blackboard, Inc. Motorola moved to dismiss for lack of standing, arguing that the license to Fortress deprived Uniloc of standing. The district court agreed that Uniloc did not have standing, and dismissed. It found that there had been at least one event of default in the Uniloc/Fortress agreement, and that because of the license, Uniloc lacked the exclusionary right necessary to confer standing. The same determination was made in the case against Blackboard.

Meanwhile, Apple had successfully made the same argument in a case brought against it by Uniloc. Uniloc appealed each of these decisions. Shortly thereafter, Apple and Uniloc settled and jointly moved to voluntarily dismiss the appeal pursuant to that settlement. Motorola then moved to dismiss the appeal in its case, arguing that Uniloc was collaterally estopped from raising the same argument that was fully and finally resolved in the Apple case.

The Federal Circuit held that there was “considerable force to Uniloc’s argument” that the license to Fortress did not deprive it of jurisdiction. Judge Lourie wrote separately because he found this to be “a regrettable understatement.” It appears all judges would have agreed that Uniloc had standing.

Notwithstanding, the Court dismissed the appeal, finding that the dismissal of the Apple appeal resulted in collateral estoppel as to the standing issue. In particular, the Apple case centered on the same issue—whether there was an event of default in the Uniloc/Fortress agreement, and whether the Fortress license deprived Uniloc of standing. When Uniloc dismissed the appeal, the district court’s decision became conclusive as to that issue.

Uniloc raise several arguments against collateral estoppel, arguing that it had been forfeited for failure to raise it earlier. The Federal Circuit disposed of each of these arguments in turn. In particular, relying on Third Circuit law, the Court found that failing to raise collateral estoppel until the appeal was dismissed did not forfeit the argument.

Ultimately, although strongly suggesting that the district courts in both the Apple case and these cases may have been wrong, the Court, in this case, dismissed the appeal.

The opinion can be found here.

By: Nika Aldrich

ALSO THIS WEEK

Uniloc 2017 LLC v. Google LLC, Appeal Nos. 2021-1498 et al. (Fed. Cir. Nov. 4, 2022)

In a parallel case to the Uniloc case discussed above, the Court reversed a district court dismissal against Google in a case also brought by Uniloc. Like Motorola and Blackboard, Google raised the standing argument based on the Uniloc/Fortress license. However, the Google case was filed after a termination agreement was executed between Uniloc and Fortress. The district court found that the license agreement survived the termination agreement, and thus the rationale of the Apple case still applied. The Federal Circuit reversed. The Court applied basic principles of contract interpretation to conclude that the termination agreement terminated the Fortress license. The parties agreed that, with the license terminated, Uniloc had standing. The case was thus remanded.

The opinion can be found here.

By: Nika Aldrich

Finjan LLC v. ESET, LLC, Appeal No. 2021-2093 (Fed. Cir. Nov. 1, 2022)

In an appeal from a district court summary judgment of invalidity, the Federal Circuit reversed. The case concerns patents directed to systems and methods for detecting computer viruses in a “downloadable” through a security profile. At issue was the meaning of the term “downloadable.” Relying on a definition of the term in an earlier patent in the family that was incorporated by reference into the patent in suit, the district court held that “downloadable” had to be “a small executable or interpretable application code,” such as an “applet.” Finding the word “small” indefinite, the district court entered summary judgment in favor of ESET. On appeal, the Federal Circuit reversed, holding that “[t]he use of a restrictive term in an earlier application does not reinstate that term in a later patent that purposely deletes the term, even if the earlier patent is incorporated by reference.” Because the incorporated patent and the patent-at-issue covered two different inventions (or aspects of the invention), the definition from the prior patent did not necessarily apply to the later patent. In context of the entire prosecution history, the Court found that “downloadable” was not limited to “applets” or “small downloadables.” The Court reversed the indefiniteness decision and remanded with a broader claim construction.

The opinion can be found here.

By: Nika Aldrich

Amgen Inc. et al. v. Sanofi et al., Case No. 21-757 (Sup. Ct. Nov. 4, 2022)

The Supreme Court on Friday granted Amgen Inc.’s petition for certiorari review of a February 2021 decision by the Federal Circuit Court of Appeals invalidating U.S. Patent Nos. 8,829,165 and 8,859,741 for lack of enablement. As we reported here, the Federal Circuit had found Amgen’s patents invalid because the claims—which were directed to synthetic antibodies with particular functional characteristics—covered a far broader class of antibodies than the examples disclosed in the specification. Because synthesizing antibodies that satisfied the claim limitations required substantial trial and error, the Federal Circuit found that the patents failed to enable the full scope of the claims. The Supreme Court granted certiorari on the question of whether a patent need only teach those skilled in the art to “make and use” the invention as expressly provided by 35 U.S.C. § 112, or whether the patent must enable the full scope of the claimed embodiments without undue experimentation.

The docket can be found here.

By Jason Wrubleski

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This article summarizes aspects of the law and does not constitute legal advice. For legal advice for your situation, you should contact an attorney.