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`UNILOC 2017 LLC,
`Plaintiff,
`
`v.
`INFOR, Inc.,
`
`Defendant.
`________________________________
`UBISOFT, INC.
`
`Plaintiff,
`
`v.
`UNILOC 2017, LLC,
`Defendant.
`
` CASE NO. 8:19-cv-01150-DOC-KES
`(CONSOLIDATED)
`
`
`
`MEMORANDUM OF POINTS AND
`AUTHORITIES IN SUPPORT OF
`UBISOFT’S MOTION FOR
`JUDGMENT ON THE PLEADINGS
`AS TO UNILOC’S
`COUNTERCLAIMS OF
`INFRINGEMENT
`
`Judge: Hon. David O. Carter
`Date Filed: November 23, 2020
`Hearing Date: December 21, 2020
`Time: 8:30 AM
`Location: Ronald Reagan Federal
` Building, Courtroom 9D
`
`Case 8:19-cv-01150-DOC-KES Document 67-1 Filed 11/23/20 Page 1 of 12 Page ID
`#:1096
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`MICHELLE L. MARRIOTT (pro hac vice)
`michelle.marriott@eriseip.com
`ERIC A. BURESH (pro hac vice)
`eric.buresh@eriseip.com
`MARK C. LANG (pro hac vice)
`mark.lang@eriseip.com
`CHRIS R. SCHMIDT (SBN 298761)
` chris.schmidt@eriseip.com
`ERISE IP, P.A.
`7015 College Blvd, Suite 700
`Overland Park, Kansas 66211
`Telephone: 913.777.5600
`Facsimile: 913.777.5601
`
`Stephen S. Smith
`Law Offices of Stephen S. Smith, P.C.
`303 North Glenoaks Blvd., Suite 200
`Burbank, CA 91502
`Phone: (310)955-5824
`
`Attorneys for Ubisoft, Inc.
`
`
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`SOUTHERN DIVISION
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`TABLE OF CONTENTS
`INTRODUCTION ................................................................................................ 1
`I.
`LEGAL STANDARD .......................................................................................... 2
`II.
`III. FACTUAL BACKGROUND .............................................................................. 2
`A.
`The Akamai Litigation ............................................................................... 2
`B. Uniloc’s ’293 Patent Infringement Allegations Against Ubisoft
`Accuse Akamai’s CDN Of Infringement ................................................... 4
`C. Uniloc’s ‘578 Patent Infringement Allegations Against Ubisoft
`Accuse The Akamai CDN Of Infringement .............................................. 5
`IV. ARGUMENT ........................................................................................................ 5
`V.
`CONCLUSION .................................................................................................... 8
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`TABLE OF AUTHORITIES
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`Cases
`Buraye v. Equifax, 625 F. Supp. 2d 894, 897 (C.D. Cal. 2008) ..................................... 2
`Kessler ............................................................................................................................. 6
`McSherry v. City of Long Beach, 423 F.3d 1015, 1021 (9th Cir. 2005) ........................ 2
`Neev v. Abbott Med. Optics, Inc., No. SACV 15-01992 JVS (JCGx), 2016 WL
`9175925, at *1 (C.D. Cal. Aug .8, 2016) ................................................................... 2
`Parklane Hosiery Co. v. Shore, 439 U.S. 322, 326 (1979) ............................................ 5
`PersonalWeb Techs. LLC, 961 F.3d 1365, 1374, 1378, 1379 (Fed. Cir. 2020) ....... 5,7,8
`Rules
`Fed. R. Civ. P. 12(c) ....................................................................................................... 2
`Fed. R. Civ. P. 41 ........................................................................................................ 1, 4
`Fed. R. Civ. P. 41(a)(1)(B) ......................................................................................... 1, 4
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`I.
`
`INTRODUCTION
`Uniloc 2017 LLC’s (“Uniloc”) allegations of infringement against Ubisoft, Inc.
`(“Ubisoft”) accuse a server network provided by Akamai of practicing the asserted
`claims of U.S. Patent Nos. 6,324,578 and 7,069,293 (referred to herein as the ’293 and
`’578 Patents or “Asserted Patents”).1 Uniloc has previously sued Akamai for
`infringement of the same patents—several times—ultimately resulting in an ultimate
`dismissal with prejudice.
`In particular, Uniloc’s infringement allegations against Ubisoft, Inc. (“Ubisoft”)
`are predicated on Ubisoft’s use of a third-party server network—called a Content
`Delivery Network (“CDN”)—to distribute computer programs. See Ex. A, Uniloc’s
`’293 Patent Infringement Contentions; Ex. B, Uniloc’s ’578 Patent Infringement
`Contentions. Here, that CDN is provided by a third party—Akamai Technologies, Inc.
`(“Akamai”)—which Uniloc has repeatedly and unsuccessfully sued for infringing the
`‘578 and ’293 Patents. See Ex. C, Memo ISO Motion for Judgment on the Pleadings,
`Uniloc 2017 LLC v. Akamai Techs., Inc., No. 1:19-cv-11276-RGS, ECF No. 28, at 1 (D.
`Mass. Oct. 18, 2019) (the “Akamai Litigation”). At the conclusion of the Akamai
`Litigation, the Court admonished Uniloc for its repeat filings, held that Akamai cannot
`be sued for infringing the ’578 or ’293 Patents, and handed Uniloc a dismissal with
`prejudice:
`
`Akamai refuses to stipulate to a dismissal. Unless Uniloc wishes to engage
`in a Sisyphean labor of suing Akamai and paying for the defense, Uniloc
`has no choice but to notice a dismissal under Fed. R. Civ. P. 41. Because
`a previous incarnation of the Uniloc corporate soul has already noticed the
`dismissal of identical claims against Akamai in 2017, this second dismissal
`perforce “operates as an adjudication on the merits,” Fed. R. Civ. P.
`41(a)(1)(B), that is, with prejudice.
`
`
`
`1 The ’578 Patent expired on December 14, 2018, while the ’293 Patent expires February
`3, 2021.
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`Ex. G., Order, Uniloc 2017 LLC v. Akamai Techs., Inc., No. 1:19-cv-11276-RGS, ECF
`No. 44 (D. Mass. Dec. 12, 2019).
`Despite this adjudication on the merits, Uniloc now attempts an end-run around
`the Court’s order by targeting Akamai’s customers—in this case, Ubisoft. But the law
`is clear: Uniloc cannot circumvent the adjudication of its dismissal with prejudice from
`the Akamai Litigation by targeting Akamai’s customers on the exact same patents that
`Uniloc unsuccessfully asserted against Akamai. For at least these reasons, Uniloc’s
`claim for infringement of the ’578 and ’293 Patent against Ubisoft is barred and fails as
`a matter of law. Ubisoft therefore respectfully requests judgment on the pleadings
`pursuant to Fed. R. Civ. P. 12(c).
`II. LEGAL STANDARD
`Like the standard for Rule 12(b)(6) motions to dismiss, the court may grant a Rule
`12(c) judgment on the pleadings when “‘taking all the allegations in the pleading as true,
`the moving party is entitled to judgement as a matter of law.’” Neev v. Abbott Med.
`Optics, Inc., No. SACV 15-01992 JVS (JCGx), 2016 WL 9175925, at *1 (C.D. Cal. Aug
`.8, 2016) (quoting McSherry v. City of Long Beach, 423 F.3d 1015, 1021 (9th Cir. 2005)
`In addition to the pleadings, courts may also consider “matters subject to judicial notice
`when deciding Rule 12(c) motions.” Id. (citing Buraye v. Equifax, 625 F. Supp. 2d 894,
`897 (C.D. Cal. 2008)).
`III. FACTUAL BACKGROUND
`A. The Akamai Litigation
`On June 7, 2019, Uniloc filed a lawsuit accusing Akamai of infringing the ’293
`and ’578 patents through its “making, using, offering for sale, and/or selling” its CDN.
`Ex. D, Uniloc’s Complaint, Uniloc 2017 LLC v. Akamai Techs., Inc., No. 1:19-cv-
`11276-RGS, ECF No. 1 at 4, 6 (D. Mass. June 7, 2019). Specifically, as to the ’578
`Patent, Uniloc alleged that Akamai infringed because its CDN incorporated “software
`and associated architecture for installing an application program having configurable
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`preferences and authorized users on a server coupled to a network, distributing an
`application launcher program to a client, obtaining a user set of the configurable
`preferences, obtaining an administrator set of configurable preferences, and executing
`the application program using the user and administrator sets of configurable preferences
`responsive to a request from a user.” Id. at 4. Likewise, for the ’293 Patent, Uniloc
`alleged that Akamai infringed because its CDN incorporated “software and associated
`architecture allow[ing] for providing an application program for distribution to a
`network server, specifying source and target directories for the program to be distributed,
`preparing a file packet associated with the program including a segment configured to
`initiate registration operations for the application program at a target on-demand server,
`and distributing the file packet to the target on-demand server to make the program
`available for use by a client user.” Id. at 6.
`Uniloc’s June 2019 lawsuit against Akamai was the third time that Uniloc brought
`this exact claim against Akamai. See Ex. C, Memo ISO Motion for Judgment on the
`Pleadings, Uniloc 2017 LLC v. Akamai Techs., Inc., No. 1:19-cv-11276-RGS, ECF No.
`28, at 1 (D. Mass. Oct. 18, 2019). In both of the prior cases, Uniloc voluntarily dismissed
`its claims against Akamai. Id.
`On October 18, 2019, Akamai moved for Judgment on the Pleadings under
`Federal Rule of Civil Procedure 12(c) based on Akamai’s standing as a “Strategic
`Partner” of IBM, from whom Uniloc had purchased the asserted patents. Id. at 2-3. In
`the motion, Akamai argued that “[u]nder Uniloc’s agreement to purchase from IBM . . .
`Uniloc has no right to enforce the Asserted Patents against entities that qualify as ‘IBM
`Strategic Partners[.]’” Id. at 2. IBM Strategic Partners were deemed “Licensees” under
`the IBM/Uniloc purchase agreement, and the agreement further includes a provision to
`discourage Uniloc from over-zealously filing lawsuits on the Asserted Patents,
`mandating that if Uniloc knowingly brings or maintains a suit against one of IBM’s
`Strategic Partners, Uniloc is required to indemnify that Licensee/Strategic Partner for all
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`losses and expenses arising from the suit. See Ex. E, Reply ISO Motion for Judgment on
`the Pleadings, Uniloc 2017 LLC v. Akamai Techs., Inc., No. 1:19-cv-11276-RGS, ECF
`No. 37, at 1 (D. Mass. Nov. 12, 2019). There was no dispute on any of these points—
`Uniloc conceded that Akamai was an IBM Strategic Partner, and that its case against
`Akamai should be dismissed. Id. These uncontested facts remain true today.
`Following the close of briefings, the parties filed a joint stipulation with the Court
`reiterating that the parties jointly desired to dismiss the Akamai Litigation, but disagreed
`as to whether the dismissal should be with prejudice (as Akamai contended) or without
`prejudice (as Uniloc contended). Ex. F, Joint Stipulation, Akamai Litigation, ECF No.
`42. The Court agreed with Akamai, and entered an order dismissing the Akamai
`Litigation with prejudice, and making clear that its decision “operates as an adjudication
`on the merits”:
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`Akamai refuses to stipulate to a dismissal. Unless Uniloc wishes to engage
`in a Sisyphean labor of suing Akamai and paying for the defense, Uniloc
`has no choice but to notice a dismissal under Fed. R. Civ. P. 41. Because
`a previous incarnation of the Uniloc corporate soul has already noticed the
`dismissal of identical claims against Akamai in 2017, this second dismissal
`perforce “operates as an adjudication on the merits,” Fed. R. Civ. P.
`41(a)(1)(B), that is, with prejudice.
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`See Ex.G. Uniloc did not appeal this decision.
`B. Uniloc’s ’293 Patent Infringement Allegations Against Ubisoft Accuse
`Akamai’s CDN Of Infringement
`Uniloc has accused Ubisoft of infringing at least claims 1, 3-5, 8-10, 12, 14, 17,
`
`and 19 of the ’293 Patent. Ex. A. Uniloc’s infringement allegations against Ubisoft are
`directed to the Akamai’s CDN. Uniloc makes clear, starting with the preamble to Claim
`1, that its infringement allegations are centered on Ubisoft’s use of “Akamai’s CDN to
`distribute application program from a centralized network management server to target
`on-demand servers.” Id. at 1; see also Dkt. 29 (Uniloc’s Answer and Counterclaims) ¶
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`24 (alleging infringement based on a “backend server architecture” that contains a
`“target on-demand server”). Indeed, Ubisoft’s use of Akamai’s CDN forms the basis for
`Uniloc’s allegations for each and every element of the asserted claims. See, generally,
`Ex. A, at 3-17. The entirety of Uniloc’s ’293 Patent infringement allegations against
`Ubisoft rest upon the functionality of Akamai’s CDN.
`C. Uniloc’s ‘578 Patent Infringement Allegations Against Ubisoft Accuse The
`Akamai CDN Of Infringement
`The ‘578 Patent expired in December 14, 2018, prior to Uniloc’s infringement
`allegations in this case. Uniloc has accused Ubisoft of infringing at least claims 1, 2, 4,
`and 5-46 of the ’578 Patent. Ex. B. Each of the asserted claims requires, for example,
`“distributing an application launcher program associated with the application program
`to a client coupled to the network.” Id. For these limitations, Uniloc accuses Ubisoft’s
`distribution of “the Uplay PC application” to a client desktop. Ex B; see also Dkt. 29
`(Uniloc’s Answer and Counterclaims) ¶ 13 (accusing “backend server architecture” and
`“distributing an application launcher program to a client” of infringement. Accordingly,
`as in the ’293 Patent where Uniloc overtly alleges that Ubisoft uses “Akamai’s CDN to
`distribute application programs,” Uniloc’s infringement allegations regarding the ’578
`Patent similarly accuse the same distribution of application programs—which occurs
`through the Akamai CDN—of meeting elements of the asserted ‘578 Patent claims.
`IV. ARGUMENT
`The dismissal of the Akamai Litigation with prejudice operates as an adjudication
`on the merits, and bars Uniloc’s present infringement claim against Ubisoft, which
`accuses Akamai’s CDN of infringement. Uniloc separately sued Akamai for
`infringement of the ’578 and ’293 Patents (three times), its third lawsuit was ultimately
`dismissed with prejudice, and Uniloc cannot now attempt to bring the same claim a
`fourth time against Akamai’s customer, Ubisoft. Uniloc is legally precluded from
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`maintaining this claim by two interrelated doctrines—claim preclusion and the Kessler
`doctrine.
`“Under the doctrine of claim preclusion, ‘a judgment on the merits in a prior suit
`bars a second suit involving the same parties or their privies based on the same cause of
`action,’” and “bars both those claims that were brought as well as those that could have
`been brought in the earlier lawsuit.” In re PersonalWeb Techs. LLC, 961 F.3d 1365,
`1374 (Fed. Cir. 2020) (quoting Parklane Hosiery Co. v. Shore, 439 U.S. 322, 326 (1979)
`For patent cases, a cause of action is defined “by the transactional facts from which it
`arises,” and courts should “consider the extent of the factual overlap between the two
`alleged claims at issue.” Id. at 1375. The doctrine of claim preclusion cannot be
`sidestepped simply by advancing different arguments or assertions in support of
`liability—“[r]egardless of the number of substantive theories available to a party and
`regardless of the differences in the evidence needed to support each of those theories, a
`party may not split a single claim into separate grounds of recovery and raise those
`separate grounds in successive lawsuits.” Id.
`While claim preclusion does not itself apply to acts of alleged infringement that
`occur after the final judgment in the earlier suit, the Kessler doctrine fills in that gap in
`protection “by ‘allowing an adjudged non-infringer to avoid repeated harassment for
`continuing its business as usual post-final judgment in a patent action where
`circumstances justify that result.’” Id. at 1376. The policy underlying the Supreme
`Court’s decision in Kessler was protecting goods manufacturers: “if a manufacturer of
`goods were to prevail in a patent infringement suit, the manufacturer could be deprived
`of the benefits of its victory if the patentee were free to sue the manufacturer’s
`customers.” Id. at 1378. In furtherance of that policy, the Kessler doctrine provides that
`“a party that obtains a final adjudication in its favor obtains ‘the right to have that which
`it lawfully produces freely bought and sold without restraint or interference.’” Id. And
`“[t]he scope of that right is not limited to cases involving a finding of non-infringement
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`that was necessary to the resolution of an earlier lawsuit, but extends to protect any
`products as to which the manufacturer established a right not to be sued for
`infringement.” Id.
`These interrelated doctrines bar Uniloc’s infringement claim against Ubisoft.
`Uniloc asserted the ’578 and ’293 Patents against Akamai, and is now asserting the same
`patents against Ubisoft based on its use of the Akamai CDN. To be sure, Uniloc accused
`Akamai’s CDN of infringement in the Akamai Litigation, and is again accusing
`Akamai’s CDN of infringement in this case against Ubisoft. See generally, Exs. A, B.
`The patents are the same, and Akamai’s CDN is at issue in both cases.2 Given this one-
`to-one factual overlap, a straightforward application of the doctrine of claim preclusion
`clearly precludes Uniloc’s claim of infringement of the ’293 and ’578 Patents. And
`because Akamai is an adjudged non-infringer as a result of the Akamai Litigation, the
`Kessler doctrine guarantees Akamai “‘the right to have that which it lawfully produces
`freely bought and sold without restraint or interference,’” including by selling its CDN
`to Ubisoft. PersonalWeb, 961 F.3d at 1378. Ubisoft, by extension, is entitled to utilize
`Akamai’s CDN without harassment from Uniloc. Id. at 1379 (“[T]he stipulated
`dismissal with prejudice conferred upon Amazon a limited trade right to continue
`producing, using, and selling Amazon S3 without further harassment from Personal
`Web, either directly or through suits against Amazon’s customers for using that
`product.”) (emphasis added).
`The Federal Circuit recently addressed the exact scenario now before the court,
`holding that a patent holder was barred from pursuing the customers of a prior
`defendant’s allegedly infringing product where an infringement case against the prior
`defendant had already been dismissed with prejudice. See In re PersonalWeb Techs.
`LLC, 961 F.3d 1365 (Fed. Cir. 2020). In PersonalWeb, the plaintiff sued Amazon for
`
`2 Moreover, Akamai is immune from suit on the ’578 and ’293 Patents given its
`adjudicated status as an IBM “Strategic Partner”—i.e., it cannot be sued on the ’578
`or ’293 Patents for any reason. Ex. G.
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`patent infringement, accusing Amazon’s Simple Storage Service (S3), and lost. Id. at
`1372 (“After the district court issued its claim construction order in the Texas case,
`PersonalWeb stipulated to the dismissal of all its claims against Amazon with prejudice.
`Pursuant to that stipulation, the district court in June 2014 issued an order dismissing all
`claims against Amazon with prejudice”). But then the plaintiff began filing lawsuits in
`various districts across the country against dozens of Amazon’s customers, alleging
`infringement of the same patents based on those customers’ use of Amazon’s Simple
`Storage Service (S3). Id. This was improper—as a result of the prior final adjudication
`on the merits against Amazon itself, the plaintiff was barred from pursuing Amazon’s
`customers for alleged infringement based on their use of the same S3 cloud service at
`issue in the prior Amazon litigation. Id. at 1379.
`PersonalWeb is dispositive here. Uniloc sued Akamai on the ’578 and ’293
`Patents, and lost. Uniloc cannot sue Akamai’s customers, such as Ubisoft, for
`infringement of the same patents based on their use of Akamai’s non-infringing
`technology. Moreover, because Akamai is an IBM Strategic Partner and cannot be sued
`on the ‘578 and ‘293 Patents for any reason, Uniloc cannot short-circuit the adjudication
`of the Akamai Litigation by suing Akamai’s customers, as it would lead right back to
`the issue presented in the Akamai Litigation—i.e., “a Sisyphean labor of suing Akamai
`and paying for the defense.” Ex. G. The dismissal of the Akamai Litigation with
`prejudice means that Akamai is free to continue producing, using, and selling its CDN
`(or any other product) without further harassment from Uniloc on the ’578 or ’293
`Patents—a freedom that extends to Akamai’s customers like Ubisoft. PersonalWeb, 961
`F.3d at 1379. For at least these reasons, Ubisoft respectfully asks this Court to grant its
`motion for judgment on the pleadings, and dismiss this case with prejudice.
`V. CONCLUSION
`For the foregoing reasons, Ubisoft respectfully requests this Court grant its motion
`for judgment on the pleadings.
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`8
`UBISOFT’S MEMO ISO MOTION FOR JUDGMENT ON THE PLEADINGS
`CASE NO. 8:19-cv-01150-DOC-KES
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`Case 8:19-cv-01150-DOC-KES Document 67-1 Filed 11/23/20 Page 12 of 12 Page ID
`#:1107
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`Dated: November 23, 2020
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`Respectfully submitted,
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`/s/Michelle L. Marriott
`Michelle L. Marriott (pro hac vice)
`michelle.marriott@eriseip.com
`Eric A. Buresh (pro hac vice)
`eric.buresh@eriseip.com
`Mark C. Lang (pro hac vice)
`mark.lang@eriseip.com
`Chris R. Schmidt (SBN 298761)
`chris.schmidt@eriseip.com
`ERISE IP, P.A.
`7015 College Blvd., Suite 700
`Overland Park, KS 66211
`Phone: (913)777-5600
`Fax: (913)777-5601
`
`Stephen S. Smith (SBN 166539)
`ssmith@stephensmithlaw.com
`LAW OFFICES OF STEPHEN S. SMITH, P.C.
`303 North Glenoaks Blvd., Suite 200
`Burbank, CA 91502
`Phone: (310)955-5824
`Fax: (310)955-5824
`
`Attorneys for Ubisoft, Inc.
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`9
`UBISOFT’S MEMO ISO MOTION FOR JUDGMENT ON THE PLEADINGS
`CASE NO. 8:19-cv-01150-DOC-KES
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