Case 8:19-cv-01150-DOC-KES Document 76 Filed 12/07/20 Page 1 of 12 Page ID #:1280
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`Aaron S. Jacobs (Cal. Bar No. 214953)
`ajacobs@princelobel.com
`James J. Foster
`jfoster@princelobel.com
`PRINCE LOBEL TYE LLP
`One International Place, Suite 3700
`Boston, MA 02110
`Tel: (617) 456-8000
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`Matthew D. Vella (Cal. State Bar No. 314548)
`mvella@princelobel.com
`PRINCE LOBEL TYE LLP
`357 S. Coast Highway, Suite 200
`Laguna Beach, CA 92651
`Tel: (949) 232-6375
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`Attorneys for Plaintiff
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`UNILOC 2017 LLC,
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`v.
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`INFOR, INC.,
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`Defendant.
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`UNILOC 2017 LLC,
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`v.
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`UBISOFT, INC.,
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`Plaintiff,
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`Plaintiff,
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`Defendant.
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`UNITED STATES DISTRICT COURT
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`CENTRAL DISTRICT OF CALIFORNIA
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`SANTA ANA DIVISION
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`Case No. 8:19-cv-01150-DOC-KES
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`(CONSOLIDATED)
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`PLAINTIFF’S OPPOSITION TO
`UBISOFT’S MOTION FOR
`JUDGMENT ON THE PLEADINGS
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`PLAINTIFF’S OPPOSITION TO UBISOFT, INC.’S MOTION
`FOR JUDGMENT ON THE PLEADINGS
`3592839.v1
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`Case No. 8:19-cv-01150-DOC-KES
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`Case 8:19-cv-01150-DOC-KES Document 76 Filed 12/07/20 Page 2 of 12 Page ID #:1281
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`Plaintiff, Uniloc 2017 LLC (“Uniloc”), respectfully submits this brief in
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`Opposition to the Motion for Judgment on the Pleadings, Dkt. No. 67 (“Motion”), of
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`Defendant Ubisoft, Inc. (“Ubisoft”). For the reasons set forth below, the Motion
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`should be denied.
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`Ubisoft’s Motion argues a dismissal of an unrelated action Uniloc had brought
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`against Akamai Technologies, Inc. (“Akamai”) created claim preclusion that extends
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`to this action. But Ubisoft was not a party to that action, nor in privity with Akamai.
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`Further, the action was dismissed on the basis of a defense that was personal to
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`Akamai, which defense does not apply to Ubisoft. Finally, much of Ubisoft’s
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`infringing activity does not even involve Akamai.
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`I.
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`Background
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`a.
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`Preclusion in the Federal Courts.
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`Preclusion law or the law of judgments (sometimes referred to as res judicata
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`or collateral estoppel) is the jurisprudence that determines whether a court should
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`give preclusive effect to an earlier decision made in a different action. The purpose
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`of preclusion law is to avoid the needless relitigation of factual and legal issues that
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`have already been decided, and in some cases even those that were not but could
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`have been decided, in prior adjudications. Preclusion law is generally divided into
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`the broad categories of issue preclusion and claim preclusion.
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`Issue preclusion bars subsequent litigation on an issue of law or fact that was
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`actually litigated. Brain Life, LLC v. Elekta Inc., 746 F.3d 1045, 1054-55 (Fed. Cir.
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`2014). See Restatement (Second) of Judgments §27. If an issue of fact or law is
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`actually litigated and determined by final judgment, and the determination is
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`essential to the judgment, that determination is conclusive in any later action
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`between the parties on the same or a different claim. Brain Life, 746 F.3d at 1055.
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`By contrast, claim preclusion may bar subsequent litigation on issues that
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`were not actually litigated, but only if they would have been part of the same claim
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`that was resolved. The aim of claim preclusion is to avoid multiple suits on identical
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`PLAINTIFF’S OPPOSITION TO UBISOFT, INC.’S MOTION
`FOR JUDGMENT ON THE PLEADINGS
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`Case No. 8:19-cv-01150-DOC-KES
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`Case 8:19-cv-01150-DOC-KES Document 76 Filed 12/07/20 Page 3 of 12 Page ID #:1282
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`obligations between the same parties. Claim preclusion is invoked upon a
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`determination that the issues precluded should have been advanced in the earlier suit.
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`Whether a cause of action is barred by claim preclusion is a question of law.
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`Generally, the Federal Circuit will apply the law of the regional circuit in which the
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`trial court resides. Id. at 1052.
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`The Ninth Circuit has held that claim preclusion applies where the prior suit
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`(1) involved the same claim or cause of action as the later suit; (2) reached a final
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`judgment on the merits; and (3) involved identical parties or privies. Mpoyo v. Litton
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`Electro-Optical Sys., 430 F.3d 985, 987 (9th Cir. 2005). The Federal Circuit will
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`apply its own law as to whether two claims of infringement constitute the same
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`claim or cause of action. Brain Life, 746 F.3d at 1052.
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`Claim preclusion is an affirmative defense. And it is incumbent on the
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`defendant to prove such a defense. Taylor v. Sturgell, 553 U.S. 880, 908 (2008).
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`b.
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`The IBM assignment and the Akamai litigation.
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`IBM, the original owner of the patents-in-suit in this action, assigned those
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`patents to Uniloc. Gannon Decl., Ex. 1. In the assignment agreement, IBM retained
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`the right to grant a sublicense to “IBM Strategic Partners,” i.e., entities with which it
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`had done a certain volume of business prior to the assignment. Id., § 2.1(f), 5. The
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`assignment also imposed an indemnification obligation on Uniloc if it maintained a
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`claim against any third party “knowing” it was an IBM Strategic Partner. Id., §4.3.
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`IBM provided Uniloc with a written assurance that Akamai did not qualify as
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`an IBM Strategic Partner. See Gannon Decl., Ex. 2. Uniloc then sued Akamai for
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`patent infringement. The assurance from IBM, however, turned out to be wrong.
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`After the suit was filed, Akamai moved to dismiss, providing evidence that it had
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`done sufficient business with IBM to qualify as an IBM Strategic Partner. Dkt. No.
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`67-5, at 2.
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`PLAINTIFF’S OPPOSITION TO UBISOFT, INC.’S MOTION
`FOR JUDGMENT ON THE PLEADINGS
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`Case 8:19-cv-01150-DOC-KES Document 76 Filed 12/07/20 Page 4 of 12 Page ID #:1283
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`In view of that evidence, and despite the fact that IBM had not issued a license
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`to Akamai, Uniloc agreed to a dismissal because proceeding with the suit under the
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`circumstances would be impractical, but argued the dismissal should be without
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`prejudice. Dkt. No. 67-8; 67-9. The court, however, granted a dismissal with
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`prejudice, over Uniloc’s objection. Dkt. No. 67-9. (“Akamai Order.”)
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`c.
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`Ubisoft’s Motion.
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`Ubisoft was not a party to, and had no involvement in or relationship to, the
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`Akamai action. It did not control the Akamai litigation, nor did it have any
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`indemnification agreement with Akamai.
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`The indemnification issue that arose in the Akamai litigation, described above,
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`does not arise here. Ubisoft is not, and does not claim to be, an IBM Strategic
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`Partner1. Ubisoft does not claim IBM has a right to issue it a sublicense. And it does
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`not claim Uniloc has an obligation to indemnify it. The defense raised by Akamai for
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`its own benefit in the Akamai litigation was personal to Akamai. The defense does
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`not apply to the infringement claims asserted here against Ubisoft.
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`Because the Akamai action was dismissed at the outset based on that defense,
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`no other issues were actually litigated in the action. Ubisoft’s Motion thus does not
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`rely upon issue preclusion.
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`Instead, Ubisoft argues that because the Akamai Order was with prejudice it
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`created claim preclusion requiring the Court to dismiss this action. To support its
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`position, Ubisoft argues its activity accused of infringement in the counterclaims, see
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`Dkt. No. 29, was carried out on an Akamai content delivery network (CDN), and
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`thus Uniloc’s claim against Ubisoft is identical to its claim against Akamai.
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`1 In fact, the IBM assignment agreement identified Ubisoft as an entity that did not
`“meet the definition of” IBM Strategic Partner. Ex. 1, at 8, 12.
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`PLAINTIFF’S OPPOSITION TO UBISOFT, INC.’S MOTION
`FOR JUDGMENT ON THE PLEADINGS
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`Case 8:19-cv-01150-DOC-KES Document 76 Filed 12/07/20 Page 5 of 12 Page ID #:1284
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`II. Argument
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`a.
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`The Motion is limited to the use of an Akamai CDN.
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`Ubisoft’s Motion for judgment on the pleadings argues the dismissal with
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`prejudice of the action against Akamai, Dkt. No. 67-9, an unrelated entity, created
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`claim preclusion here.
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`But Uniloc had not mentioned Akamai in the pleadings in this action, nor had
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`Ubisoft.2 See Dkt. Nos. 1, 29. Uniloc did mention the Akamai CDN in its
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`infringement contentions in this action, but only with respect to one of the two
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`patents-in-suit, the ’293 patent. Those contentions named Akamai not as itself an
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`infringer, but simply as an entity that maintains a CDN on which Ubisoft had
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`conducted some of its infringing activity, as regards the ’293 patent.
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`Akamai’s CDN is not the only CDN that Ubisoft has used or is using to
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`conduct its infringing activity. Ubisoft acquired its own CDN, i3D.net, two years
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`ago, presumably to replace the Akamai CDNs, see Gannon Decl., Ex. 3. And Uniloc
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`believes that even before the acquisition Ubisoft also made extensive use of the
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`CDNs of i3D.net.3
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`Because of this factual problem, this Opposition will treat the Motion as
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`limited to claims of Ubisoft’s infringement by use of an Akamai CDN.
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`b.
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`Claim preclusion does not apply.
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`Ubisoft cannot argue issue preclusion because the only issue that was actually
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`argued and decided in the Akamai litigation does not arise in this action.
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`2 Although Ubisoft claims to direct its Motion to the pleadings, the pleadings
`themselves nowhere mention Akamai, or any suit against Akamai. As the Motion
`presents matters outside the pleadings, per Rule 12(d) the Court should treat it as one
`for summary judgment under Rule 56.
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` The above discussion pertains only to the ’293 patent. Ubisoft did not identify any
`documents in this action connecting Ubisoft’s infringement of the ’578 patent to
`Akamai.
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`PLAINTIFF’S OPPOSITION TO UBISOFT, INC.’S MOTION
`FOR JUDGMENT ON THE PLEADINGS
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`Case 8:19-cv-01150-DOC-KES Document 76 Filed 12/07/20 Page 6 of 12 Page ID #:1285
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`Instead, Ubisoft argues claim preclusion, which is a doctrine normally
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`invoked to bar a plaintiff from pursuing in a second action a claim which could have
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`been, but was not, pursued in a first action against the same party or its privies.
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`As discussed above, however, Ubisoft was neither a party or a privy to the
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`Akamai action. In any event, claim preclusion does not apply where, as here, the first
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`action was decided on a defense that was personal to the defendant in the first action.
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`On issues of preclusion, the Federal Circuit has repeatedly stated it “would
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`receive guidance from Restatement (Second) of Judgments (1982).” Young Eng’rs,
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`Inc. v. United States Int’l Trade Comm’n, 721 F.2d 1305, 1314 (Fed. Cir. 1983); Jet,
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`Inc. v. Sewage Aeration Sys., 223 F.3d 1360, 1362 (Fed. Cir. 2000). This Opposition
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`thus relies on principles from that Restatement.
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`c.
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`Ubisoft was not a privy to the Akamai action.
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`Uniloc, as the patent owner, sued Akamai and Ubisoft in separate actions.
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`Separate actions against different defendants generally do not result in claim
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`preclusion, even where they could be liable for the same loss. The Restatement
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`(Second) of Judgments § 49 sets forth the applicable rule:
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`Judgment against One of Several Persons Liable for the Same Loss:
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`A judgment against one person liable for a loss does not terminate a
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`claim that the injured party may have against another person who
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`may be liable therefor.
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`Comment: a. Rationale. When a person suffers injury as the result
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`of the concurrent or consecutive acts of two or more persons, he has
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`a claim against each of them. If he brings an action against one of
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`them [and] judgment is rendered against him, he is barred from
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`bringing a subsequent action against the obligor…. But the claim
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`against others who are liable for the same harm is regarded as
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`PLAINTIFF’S OPPOSITION TO UBISOFT, INC.’S MOTION
`FOR JUDGMENT ON THE PLEADINGS
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`Case 8:19-cv-01150-DOC-KES Document 76 Filed 12/07/20 Page 7 of 12 Page ID #:1286
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`separate. Accordingly, a judgment for … one obligor does not result
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`in … bar of the claim that the injured party may have against
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`another obligor.
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`(Emphasis added).
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`Claim preclusion operates only against parties to the first suit and others who
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`bear such a relationship to the suit or to the parties that it is thought proper to
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`preclude them – generally referred to as privies. The Supreme Court, in Taylor, 553
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`U.S. at 893-95, after restating the rule against extending claim preclusion to cases
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`involving nonparties, described the various categories of recognized exceptions,
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`none of which would seem to apply to Ubisoft’s argument here.
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`In Taylor, the Court rejected an attempt to make an additional exception for
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`situations where a party in the first action was argued to have “virtually represented”
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`the party in the second action because of “an identity of interest and some kind of
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`relationship” between the party and a nonparty. Id. at 900-01. The Court was
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`concerned that approach would circumvent procedural protections grounded in due
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`process. Id. at 901.
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`For patent infringement actions, Transclean Corp. v. Jiffy Lube Int’l, Inc., 474
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`F.3d 1298, 1306 (Fed. Cir. 2007) states the rule:
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`a manufacturer or seller of product who is sued for patent
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`infringement typically is not in privity with a party, otherwise
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`unrelated, who does no more than purchase and use the product. In
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`other words, ordinarily such parties are not so closely related and
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`their litigation interests are not so nearly identical that a patentee’s
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`suit against one would bar a second action against the other under
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`the doctrine of claim preclusion.
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`Ubisoft claims to be a customer of Akamai, but, as Taylor holds, that two
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`parties are aligned in interest and have some kind of relationship does not, without
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`PLAINTIFF’S OPPOSITION TO UBISOFT, INC.’S MOTION
`FOR JUDGMENT ON THE PLEADINGS
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`Case 8:19-cv-01150-DOC-KES Document 76 Filed 12/07/20 Page 8 of 12 Page ID #:1287
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`more, create privity. A judgment against Akamai, had one been entered, thus would
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`not have bound Ubisoft, because Ubisoft did not control the Akamai litigation, nor
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`did it have an indemnification relationship with Akamai.
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`d.
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`The Akamai action was decided on a defense personal to the
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`defendant in that action.
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`Claim preclusion does not apply where, as here, the first action was decided
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`on a defense that was personal to the defendant in the first action. The Restatement
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`(Second) of Judgments §51 sets forth the applicable rule:
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`Persons Having a Relationship in Which One Is Vicariously Responsible
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`for the Conduct of the Other
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`If two persons have a relationship such that one of them is
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`vicariously responsible for the conduct of the other, and an action
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`is brought by the injured person against one of them, the judgment
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`in the action has the following preclusive effects against the
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`injured person in a subsequent action against the other.
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`(1) A judgment against the injured person that bars him
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`from reasserting his claim against the defendant in the first
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`action extinguishes any claim he has against the other person
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`responsible for the conduct unless … (b) the judgment in the
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`first action was based on a defense that was personal to the
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`defendant in the first action.
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`(Emphasis added). See Gillig v. Nike Inc., 602 F.3d 1354, 1362 (Fed. Cir. 2010)
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`(claim preclusion does not apply where the only issue determined in the earlier
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`lawsuit had no bearing on the party in the second lawsuit); Sharp Kabushiki Kaisha
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`v. Thinksharp, Inc., 448 F.3d 1368, 1372 (Fed. Cir. 2006) (“when a party did not
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`FOR JUDGMENT ON THE PLEADINGS
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`have an opportunity to litigate disputed issues, a decision to permit such litigation is
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`favored”); Burdette v. Carrier Corp., 158 Cal. App. 4th 1668, 1684, 71 Cal. Rep. 3d
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`185, 197-98 (Ct. App. 2008) (successful privilege defense in prior defamation action
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`against employer did not prevent the assertion of a defamation claim against lower
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`level employees who did not have that defense).
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`Due process requires such a result. The issue of whether Ubisoft’s use of an
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`Akamai CDN infringed the claims of either of the patents could not have been
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`determined in the Akamai litigation for the simple reason that Akamai’s
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`indemnification defense prevented the court from reaching that issue. Because that
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`defense would not have been available to Ubisoft, the defense would not prevent
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`Uniloc from recovering from Ubisoft. A finding of claim preclusion would thus
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`deprive Uniloc of its day in court.
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`e.
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`Personal Web is distinguishable
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`Ubisoft relies heavily on PersonalWeb Technologies LLC, 961 F.3d 1365,
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`1372-74 (Fed. Cir. 2020), where the second action was brought against customers of
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`the defendant (Amazon) in the first action, and the court found claim preclusion. But
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`that case differs from this one in two fundamental ways.
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`In Personal Web, the plaintiff agreed the customers were in privity with
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`Amazon because Amazon had agreed to indemnify its customers and had assumed
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`the defense of its customers against PersonalWeb. Id. at 1373, 1374. By contrast, as
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`discussed above, Akamai and Ubisoft had no such arrangements, and thus Ubisoft
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`was not in privity with Akamai.
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`Personal Web can be distinguished on another ground, namely, the dismissal
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`with prejudice had been stipulated to as part of a voluntary dismissal of all of
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`PersonalWeb’s claims in the first action. The Federal Circuit identified that as the
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`reason that preclusion would not be unfair, because where a case is settled plaintiff
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`could have reserved the right to sue Amazon’s customers:
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`PLAINTIFF’S OPPOSITION TO UBISOFT, INC.’S MOTION
`FOR JUDGMENT ON THE PLEADINGS
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`Case 8:19-cv-01150-DOC-KES Document 76 Filed 12/07/20 Page 10 of 12 Page ID #:1289
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`To the extent that a plaintiff wishes to settle an infringement action
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`while preserving its rights to sue the same or other parties in the
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`future, it can do so by framing the dismissal agreement to preserve
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`any such rights that the defendant is willing to agree to. Settling
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`parties will remain free to limit the preclusive effect of a dismissal;
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`they simply have to fashion their agreement in a way that makes
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`clear any limitations to which they wish to agree as to the
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`downstream effect of the dismissal.
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`Id. at 1379.
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`By contrast, Uniloc did not stipulate to a dismissal with prejudice in Akamai,
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`but rather vigorously opposed it. Unlike the parties in PersonalWeb, Uniloc was not
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`free to preserve its rights to sue other parties in the future by limiting the preclusive
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`effect of a dismissal. As the Federal Circuit has held in another action: “In a
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`settlement agreement, the parties to an action can determine for themselves what
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`preclusive effect the settlement of the first action will have has to any potential
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`subsequent actions between the parties.” Aspex Eyewear, Inc. v. Marchon Eyewear,
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`Inc., 672 F.3d 1335, 1345 (Fed. Cir. 2012).
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`For that reason, dismissal here would deprive Uniloc of due process, because
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`it would deprive Uniloc of its day in court as to whether Ubisoft’s actions infringe.
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`f.
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`The Kessler doctrine.
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`The Motion, at 6-7, briefly mentions the discussion in PersonalWeb of the
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`doctrine of Kessler v. Eldred, 206 U.S. 285 (1907), as support for extending the
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`effect of what would otherwise be claim preclusion to the period after the judgment
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`relied upon. 961 F.3d at 1376-79. Putting aside the issue of temporality, the Motion
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`does not appear to argue the Kessler doctrine would apply where claim preclusion
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`does not.
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`PLAINTIFF’S OPPOSITION TO UBISOFT, INC.’S MOTION
`FOR JUDGMENT ON THE PLEADINGS
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`Case 8:19-cv-01150-DOC-KES Document 76 Filed 12/07/20 Page 11 of 12 Page ID #:1290
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`In any event, PersonalWeb found the Kessler doctrine would not bar a second
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`lawsuit where a license that ended the first lawsuit was no longer in effect, citing
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`Mentor Graphics Corp v. EVE-USA, Inc., 851 F.3d 1275 (Fed. Cir. 2017). The court
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`held that because “EVE was a willing licensee, not an adjudicated non-infringer,”
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`Kessler did not apply. Here, as in Mentor Graphics, the Akamai court did not find
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`Akamai to be a non-infringer, but dismissed the action on indemnification grounds,
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`not reaching any infringement-related issues.
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`III. Conclusion
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`The Akamai court dismissed that action because of a defense based on a
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`contractual indemnification provision to which Ubisoft is not a third-party beneficiary.
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`Further, Akamai and Ubisoft are not in privity. Claim preclusion thus does not apply
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`and Ubisoft’s Motion should be denied.
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`PLAINTIFF’S OPPOSITION TO UBISOFT, INC.’S MOTION
`FOR JUDGMENT ON THE PLEADINGS
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`Case 8:19-cv-01150-DOC-KES Document 76 Filed 12/07/20 Page 12 of 12 Page ID #:1291
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`Dated: December 7, 2020
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`Respectfully submitted,
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`/s/ James J. Foster
`Aaron S. Jacobs (Cal. Bar No. 214953)
`ajacobs@princelobel.com
`James J. Foster
`jfoster@princelobel.com
`PRINCE LOBEL TYE LLP
`One International Place, Suite 3700
`Boston, MA 02110
`Tel: (617) 456-8000
`
`Matthew D. Vella (Cal. State Bar No. 314548)
`mvella@princelobel.com
`PRINCE LOBEL TYE LLP
`357 S. Coast Highway, Suite 200
`Laguna Beach, CA 92651
`Tel: (949) 232-6375
`
`Attorneys for Plaintiff
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`PLAINTIFF’S OPPOSITION TO UBISOFT, INC.’S MOTION
`FOR JUDGMENT ON THE PLEADINGS
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