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Uniloc 2017 LLC v. Google LLC

Uniloc 2017 LLC v. Google LLC

United States District Court for the Northern District of California

December 22, 2020, Decided; December 22, 2020, Filed

Case Nos. 4:20-cv-04355-YGR;; 4:20-cv-05330-YGR; 4:20-cv-05333-YGR; 4:20-cv-05334-YGR; 4:20-cv-05339-YGR; 4:20-cv-05341-YGR; 4:20-cv-05342-YGR; 4:20-cv-05343-YGR; 4:20-cv-05344-YGR; 4:20-cv-05345-YGR; 4:20-cv-05346-YGR

Opinion

 [*561]  Order Granting Motions To Dismiss

Plaintiff Uniloc 2017 LLC brings these eleven patent infringement actions against defendant Google LLC for infringement of certain patents. After pending in the Eastern District of Texas since late 2018, the cases were transferred, and now before the Court is Google's motions to dismiss pursuant to Federal Rules of Civil Procedure 12(b)(1) and 12(b)(6). Google asserts that Uniloc 2017 has not been injured by Google's alleged infringement because it lacks the right to exclude Google from practicing the invention and therefore lacks standing. Moreover, Google argues that Uniloc 2017 lacks "all substantial rights" in the asserted patents to have a cause of action under the Patent Act. Having considered the papers and pleadings in this [**10]  action, the Court GRANTS Google's motions.

I. Background

Uniloc 2017 is one of multiple Uniloc entities that have frequently asserted patent infringement in federal courts.1 Uniloc 2017 acquired the patents-at-issue from its predecessor, Uniloc Luxembourg, S.A. ("Uniloc Lux"), in May 2018. (See Dkt. No. 355-1 at 124-62.)2 At issue in this motion is the scope and meaning of a license agreement that Uniloc Lux entered into with Fortress Credit Co LLC ("Fortress"), as well as two subsequent agreements between Uniloc 2017 and Uniloc Licensing USA ("Uniloc Licensing") and CF Uniloc Holdings LLC ("CF Uniloc"). The following facts are undisputed.

A. Fortress License Agreement

On December 14, 2014, Uniloc Lux entered into a revenue sharing agreement ("RSA") with Fortress, which purchased notes, warrants, and future revenue shares from Uniloc Lux.3 (Dkt. No. 355-1 at 29-54.) Article II of the RSA (Closing and Terms of the Revenue Stream and Notes) included the issuance of a "Patent License" and provided that:

Effective as of the Closing Date, [Uniloc Lux] shall grant to [Fortress], for the benefit of the Secured Parties, a non-exclusive, royalty free, license (including the right to grant sublicenses) [**11]  with respect  [*562]  to the Patents, which shall be evidenced by, and reflected in, the Patent License Agreement. [Fortress] and the Secured Parties agree that [Fortress] shall only use such license following an Event of Default.

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508 F. Supp. 3d 556 *; 2020 U.S. Dist. LEXIS 241045 **; 2020 WL 7626430

UNILOC 2017 LLC, Plaintiff, v. GOOGLE LLC, Defendant.

CORE TERMS

license, patent, termination, rights, infringement, event of default, patentee, patent license, parties, survive, substantial rights, exclusionary, irrevocable, argues, cure, declarations, bring suit, sublicenses, transferred, invention, forgive, terms, licensee, default, cases, lack standing, non-exclusive, monetization, covenants, targets

Business & Corporate Compliance, Ownership, Conveyances, Assignments, Licenses, Civil Procedure, Justiciability, Standing, Injury in Fact, Constitutional Law, Case or Controversy, Elements, Governments, Courts, Rule Application & Interpretation, Jurisdiction, Subject Matter Jurisdiction, Jurisdiction Over Actions, Evidence, Burdens of Proof, Preponderance of Evidence, Responses, Defenses, Demurrers & Objections, Motions to Dismiss, Joinder of Parties, Compulsory Joinder, Indispensable Parties, Necessary Parties, Motions to Dismiss, Failure to State Claim, Jurisdictional Sources, Statutory Sources, Pleadings, Complaints, Requirements for Complaint, General Overview, Patent Law, Infringement Actions, Exclusive Rights, Personal Stake, Copyright Law, Assignments & Transfers, Licenses, Nonexclusive Licenses, Particular Parties, Weight & Sufficiency, Summary Judgment, Supporting Materials, Affidavits, Testimony, Lay Witnesses, Personal Knowledge, Contracts Law, Types of Contracts, Releases, Settlements, Releases From Liability, General Releases, Interpretation of Releases, Affirmative Defenses, Legislation, Interpretation, Contracts Law, Contract Interpretation, Contract Interpretation, Ambiguities & Contra Proferentem, Inferences & Presumptions, Inferences, Court Records