Uniloc: Targeting Cloud Computing with Volume, Repetition, and Resolve

Prolific Patent Assertion Entity (PAE) Uniloc filed its largest volume of cases in 2018. We previously reported a noticeable increase in filings during 2016-2017. The following year, Uniloc filed 186 cases. However, the number of filed cases significantly decreased to 50 in 2019. Of these 236 cases, 150 have already terminated. Uniloc targeted at least the following companies from 2018-2019:

This high volume NPE came on the scene several years back in a case against Microsoft – Uniloc USA, Inc. v. Microsoft Corp., 632 F.3d 1292 (Fed. Cir. 2011). In that case, Microsoft successfully appealed and eviscerated a $388 million jury award, which the Federal Circuit held as fundamentally tainted.

Uniloc now comprises a web of several related entities or shell companies:

  • Uniloc 2017 LLC (registered in New York)
  • Uniloc USA, Inc. (registered in Rhode Island)
  • Uniloc USA, Inc. (registered in Texas)
  • Uniloc Licensing USA LLC.
  • Uniloc (registered in California)
  • Uniloc Luxembourg S.A.
  • Uniloc Luxem
  • Uniloc (Singapore) Private Limited
  • Uniloc Luxembourg S.A.R.L.
  • Uniloc Luxembourg
  • Uniloc Licensing EU (also registered in Luxembourg)
  • Uniloc Deutschland GmbH

Cloud computing providers and their users are prominent targets of Uniloc’s patent assertion campaigns. Just a few examples include infringement lawsuits against (i) the Google Cloud platform and its use of the Anvato Media Content Platform, (ii) Netflix for tracking video streaming content, (iii) Barnes & Noble for its NOOK platform, (iv) the Kaspersky security platform for initiating and updating software, and (v) the Box configurable content management and collaboration system.

Below is a list of Uniloc patents asserted from 2018-2019, ordered by the number of total cases:

The vast number of infringement assertions, the wide range of various company-defendants, and the breadth of technology Uniloc is targeting is beyond troubling. Adding to this concern, the PTAB has so far only held two of the patents listed above as unpatentable and denied institution to each of the IPRs filed against the two most asserted patents.

Notably, IBM was the original assignee of the two most asserted patents. The most common original assignees of the Uniloc patents include the following:

  • Over 350 patents from Koninklijke Philips N.V. (Philips Corp.), a healthcare and consumer lifestyle company headquartered in the Netherlands with 21.7 billion USD in revenue
  • Over 110 patents from Electronics and Telecommunications Research Institute (ETRI), a non-profit government-funded research organization based in Yuseong-gu, Daejeon in South Korea with 506 million USD in revenue
  • Over 90 patents from IBM, the top U.S. patent recipient for the last 27 years
  • Over 40 patents from inventor Craig Stephen Etchegoyen. Etchegoyen has also assigned patents to NetAuthority, Inc. and DeviceAuthority, Inc.
  • Over 10 patents from inventor Ric Richardson, founder of Uniloc and co-founder of Haventec

As we lamented in our article on high volume NPE Sound View, it is beyond ironic to see the patents of highly respected institutions now owned and asserted by prolific patent trolls, this time Uniloc. We previously urged that abusive litigation like this underscores the need to expand collaborative efforts against aggressive patent trolls. Organizations dedicated to protecting companies against patent trolls include AST, Open Invention Network, Unified Patents, and LOT Network. In what some viewed as a shocking surprise (and a major turn of events if nothing else), IBM recently joined LOT Network, a patent non-aggression pact among LOT Network members. With this move, LOT Network members will enjoy immunity from more than 80,000 IBM patents and applications in the event IBM sells any patents to PAEs.

In addition to joining these protective organizations as a shield against PAE assertions, an attack on Uniloc’s purse strings may thwart its rampant litigiousness.  For example, two prominent high tech companies recently filed an antitrust lawsuit against Uniloc and its puppeteer Fortress Investment Group LLC and Fortress Credit Co., LLC (“Fortress”). Fortress uses PAEs to accumulate large patent portfolios, comprising patents the original owners never would have asserted, to target successful tech companies in an effort to extort settlements far in excess of any reasonable value.  Through Fortress’ aggressive and monopolistic tactics and the sheer size of its patent portfolio, in spite of the resolve to fight, many of their assertion victims have no other choice but to settle due to the threat of ever more patent assertions.  Perhaps these recent developments and other battles to come will meaningfully take a toll on Fortress and Uniloc and eventually put an end to their abusive manipulation of the patent system.

By | 2020-02-25T22:39:16+00:00 February 25th, 2020|Cloud Communications, High Volume Plaintiff, NPE, Software as a Service (SaaS)|Comments Off on Uniloc: Targeting Cloud Computing with Volume, Repetition, and Resolve

About the Author:

Angelica Andreoli
Angelica concentrates her practice on patent prosecution and intellectual property counseling. While in law school, Angelica earned the highest grade in artificial intelligence law for her paper on quantum computers. Angelica was a patent legal intern for IBM; she conducted inventor and examiner interviews, drafted responses overcoming statutory rejections, and drafted a patent for a computer application.