Case 1:19-cv-11276-RGS Document 28 Filed 10/18/19 Page 1 of 26
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF MASSACHUSETTS
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`Civil Action No. 1:19-cv-11276
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`FILED UNDER SEAL
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`UNILOC 2017 LLC,
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`Plaintiff,
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`v.
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`AKAMAI TECHNOLOGIES, INC.,
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`Defendant.
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`MEMORANDUM OF LAW IN SUPPORT OF AKAMAI TECHNOLOGIES, INC.’S
`MOTION FOR JUDGMENT ON THE PLEADINGS
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`Case 1:19-cv-11276-RGS Document 28 Filed 10/18/19 Page 2 of 26
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`TABLE OF CONTENTS
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`Page
`INTRODUCTION ..................................................................................................................1
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`I.
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`II. STATEMENT OF FACTS .....................................................................................................3
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`A. Uniloc’s Rights in the Asserted Patents Are Subject to Its Patent Purchase
`Agreements .......................................................................................................................3
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`B. Uniloc Has No Right to Enforce the Asserted Patents against “IBM Strategic
`Partners” and “Licensees” .................................................................................................5
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`C. Akamai Is an “IBM Strategic Partner” and Thus a “Licensee” under the Patent
`Purchase Agreements ........................................................................................................7
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`D. This Is the Third Time That Uniloc and Its Predecessors Have Filed and Then
`Dismissed the Same Infringement Claims against Akamai ..............................................9
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`E. Uniloc Failed to Conduct a Reasonable Pre-Suit Investigation and Failed to
`Disclose the Patent Purchase Agreements from Akamai ................................................10
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`III. ARGUMENT ........................................................................................................................12
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`A. Legal Standard ................................................................................................................12
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`B. Uniloc’s Infringement Claims Should Be Dismissed with Prejudice .............................13
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`1. Uniloc Has Failed to State a Valid Infringement Claim Because It Has No Right to
`Sue Akamai for Infringement of the Asserted Patents ..............................................13
`2. This Case Should Be Dismissed with Prejudice Because Uniloc Has Repeatedly
`Dismissed the Same Claims against Akamai ............................................................15
`C. Uniloc Has Asserted Its Infringement Claims Unreasonably and Vexatiously ..............17
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`IV. CONCLUSION .....................................................................................................................20
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`i
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`Case 1:19-cv-11276-RGS Document 28 Filed 10/18/19 Page 3 of 26
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`
`
`Federal Cases
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`TABLE OF AUTHORITIES
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`
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`Page(s)
`
`Aldabe v. Cornell Univ.,
`2018 WL 7917918 (1st Cir. Dec. 7, 2018) ........................................................................13, 15
`
`Captiva RX, LLC v. Daniels,
`2014 WL 5428295 (M.D. Ga. Oct. 23, 2014) ..........................................................................17
`
`Deep Sky Software, Inc. v. Sw. Airlines Co.,
`2015 WL 11202634 (S.D. Cal. June 1, 2015) ..........................................................................19
`
`Limited v. Compal Elecs. Inc Grp.,
`2015 WL 11570939 (S.D. Cal. Dec. 11, 2015)........................................................................18
`
`Mass. Nurses Ass’n v. N. Adams Reg’l Hosp.,
`396 F. Supp. 2d 30 (D. Mass. 2005) aff’d, 467 F.3d 27 (1st Cir. 2006) ..................................13
`
`McLaughlin Transp. Sys., Inc. v. Rubinstein,
`390 F. Supp. 2d 50 (D. Mass. 2005) ........................................................................................13
`
`Octane Fitness, LLC v. ICON Health & Fitness, Inc.,
`572 U.S. 545 (2014) .................................................................................................................17
`
`Ottah v. Fiat Chrysler,
`884 F.3d 1135 (Fed. Cir. 2018)................................................................................................15
`
`Perez-Acevedo v. Rivero-Cubano,
`520 F.3d 26 (1st Cir. 2008) ......................................................................................................13
`
`Pool v. F. Hoffman-La Roche, Ltd.,
`386 F. Supp. 3d 1202 (N.D. Cal. 2019) ...................................................................................17
`
`Schwann v. FedEx Ground Package Sys., Inc.,
`2018 WL 4119686 (D. Mass. Aug. 29, 2018) ...................................................................13, 15
`
`Thermolife Int’l LLC v. GNC Corp.,
`922 F.3d 1347 (Fed. Cir. 2019)..........................................................................................18, 20
`
`Uniloc USA, Inc. v. ADP, LLC,
`279 F. Supp. 3d 736 (E.D. Tex. 2017) aff’d in part, rev’d in part and
`remanded, 772 F. App’x 890 (Fed. Cir. 2019) ..........................................................................1
`
`Wicks v. Putnam Inv. Mgmt., LLC,
`2005 WL 705360 (D. Mass. Mar. 28, 2005) ............................................................................16
`
`ii
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`Case 1:19-cv-11276-RGS Document 28 Filed 10/18/19 Page 4 of 26
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`Federal Statutes
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`35 U.S.C. § 285 ...................................................................................................................... passim
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`Rules
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`Fed. R. Civ. P. 12(b)(6)............................................................................................................14, 15
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`Fed. R. Civ. P. 12(c) ................................................................................................................12, 13
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`Fed. R. Civ. P. 12(h)(2)(B) ............................................................................................................12
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`Fed. R. Civ. P. 41 ................................................................................................................... passim
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`iii
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`Case 1:19-cv-11276-RGS Document 28 Filed 10/18/19 Page 5 of 26
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`I.
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`INTRODUCTION
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`Uniloc 2017 LLC (“Uniloc”) has no basis to maintain this case against Akamai
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`Technologies, Inc. (“Akamai”). Indeed, as stated in its October 2, 2019 Reply to Defendant’s
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`Counterclaims, Uniloc agrees that the case should be dismissed. See Dkt. 25 (“Uniloc Reply”)
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`¶ 49 (admitting that Uniloc “will ask this Court to dismiss the action”). Thus, the only questions
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`left for the Court to decide are: (1) whether the case should be dismissed with prejudice; and
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`(2) whether Uniloc and its counsel should reimburse Akamai’s fees and costs because they
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`unreasonably filed multiple litigations against Akamai alleging infringement of U.S. Patent Nos.
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`7,069,293 and 6,324,578 (“Asserted Patents”), despite having no right to assert them against
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`Akamai. Akamai respectfully submits that this case should be dismissed with prejudice.
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`This is the third time that Uniloc entities have sued Akamai for infringement of the
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`Asserted Patents. See Dkt. 21 (“Akamai Counterclaims”) ¶ 47; Uniloc Reply ¶ 47. Uniloc is the
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`successor of two prior Uniloc entities that also sued Akamai on these same patents, namely:
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`Uniloc Luxembourg S.A. and Uniloc USA, Inc. All three Uniloc entities are patent assertion
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`entities that are managed by the same person, Craig Etchegoyen, and in each of these three cases
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`they have been represented by the same counsel at Prince Lobel Tye LLP. See Akamai
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`Counterclaims ¶¶ 50-51; Uniloc Reply ¶¶ 50-51. In each case, the Uniloc plaintiffs filed suit,
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`demanded that Akamai pay a significant settlement, and then dismissed the case shortly
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`thereafter (once in response to an Akamai motion to dismiss and a second time in response to a
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`district court finding the patents invalid under 35 U.S.C. § 101).1 Akamai Counterclaims ¶ 48;
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`Uniloc Reply ¶ 48. Uniloc now concedes that this case should be dismissed as well. See
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`Akamai Counterclaims ¶ 49; Uniloc Reply ¶ 49.
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`1 See Uniloc USA, Inc. v. ADP, LLC, 279 F. Supp. 3d 736 (E.D. Tex. 2017), aff’d in part, rev’d
`in part and remanded, 772 F. App’x 890 (Fed. Cir. 2019).
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`1
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`Case 1:19-cv-11276-RGS Document 28 Filed 10/18/19 Page 6 of 26
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`These cases should never have been brought in the first place. Uniloc bought the
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`Asserted Patents from IBM. Under Uniloc’s agreements to purchase the patents from IBM
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`(“Patent Purchase Agreements”), Uniloc has no right to enforce the Asserted Patents against
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`entities that qualify as “IBM Strategic Partners,”
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`. See Akamai Counterclaims
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`¶¶ 35-45; Dkt. 22-1, Ex. 1 (“2016 Agreement”), § 4.3. On September 6, 2019, Akamai notified
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`Uniloc that Akamai qualifies as an IBM Strategic Partner and that Uniloc has no basis to
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`maintain this suit. See Dkt. 22-3, Ex. 4 (September 6, 2019 Letter). Uniloc subsequently
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`contacted IBM, and it now concedes that Akamai is an IBM Strategic Partner and that this case
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`should be dismissed. See Uniloc Reply ¶ 49. However, despite Akamai’s repeated attempts to
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`resolve this matter, Uniloc refuses to dismiss the case with prejudice. See Akamai
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`Counterclaims ¶¶ 42-43; Uniloc Reply ¶¶ 42-43.
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`Akamai therefore brings this motion for judgment on the pleadings on Uniloc’s
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`infringement claims. Now that Uniloc concedes that Akamai is an IBM Strategic Partner,
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`Uniloc’s infringement claims should be dismissed with prejudice because: (1) Uniloc has no
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`right to sue Akamai for infringement of the Asserted Patents and has no valid claim for relief;
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`and (2) under Federal Rule of Civil Procedure 41, a notice of dismissal of this action operates as
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`an adjudication on the merits because the Uniloc entities previously dismissed actions against
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`Akamai on the same claims.
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`If the Court grant’s Akamai’s motion for judgment on the pleadings, Akamai submits that
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`an award of fees would be appropriate and intends to separately move for attorneys’ fees and
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`costs under 35 U.S.C. § 285. An award of fees and costs is appropriate because Uniloc and its
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`2
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`Case 1:19-cv-11276-RGS Document 28 Filed 10/18/19 Page 7 of 26
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`counsel have unreasonably and vexatiously asserted their infringement claims against Akamai.
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`Uniloc and its counsel never conducted a reasonable investigation to determine if Akamai is an
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`“IBM Strategic Partner” before filing suit. Even a cursory pre-suit investigation of Uniloc’s
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`claims should have led Uniloc to realize that Akamai is an “IBM Strategic Partner” that cannot
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`be sued by Uniloc for alleged infringement of the Asserted Patents. Indeed, Akamai’s close
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`partnership with IBM has long been public. See, e.g., Dkt. 23-4, Ex. 8 (Akamai 2014 Annual
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`Report: identifying IBM as one of Akamai’s “active channel partners” and most important
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`“customers”); Dkt. 23-7, Ex. 11 (Akamai webpage: “Akamai enables IBM to ensure a flawless
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`web experience for customers—no matter where they are.”). Despite the extensive public
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`information regarding Akamai’s relationship with IBM, Uniloc’s counsel did not contact IBM to
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`determine whether Akamai is an IBM Strategic Partner before filing suit. See Dkt. 22-4, Ex. 5 at
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`2 (Sept. 12, 2019 email from Uniloc counsel stating, months after filing suit, that they would
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`contact IBM). Further, despite having a duty to disclose the Patent Purchase Agreements that
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`exempt Akamai from suit, Uniloc improperly failed to disclose the agreements to Akamai, while
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`simultaneously demanding a significant payment to settle the case. See Akamai Counterclaims
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`¶ 54; Uniloc Reply ¶ 54. In fact, Uniloc did not disclose the Patent Purchase Agreements until
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`after Akamai independently discovered their existence and requested them on September 6,
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`2019. Dkt. 22-3, Ex. 4 (Akamai September 6, 2019 letter); Dkt. 22-4, Ex. 5 at 1-2 (Uniloc
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`September 12, 2016 emails).
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`II.
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`STATEMENT OF FACTS
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`A.
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`Uniloc’s Rights in the Asserted Patents Are Subject to Its Patent Purchase
`Agreements
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`Uniloc admits that it “purchased the Asserted Patents and had no role in the development
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`of the alleged inventions of the Asserted Patents.” See Uniloc Reply ¶ 9. Uniloc further admits
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`Case 1:19-cv-11276-RGS Document 28 Filed 10/18/19 Page 8 of 26
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`that: “Uniloc is in the business of litigating and attempting to monetize patents”; “Uniloc does
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`not make, sell, or offer for sale any products”; and “Uniloc does not employ any engineers that
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`develop products.” See Uniloc Reply ¶¶ 5-7.
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`The Asserted Patents were initially assigned to IBM. IBM transferred certain rights to
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`Uniloc’s predecessor-in-interest Uniloc Luxembourg in a February 3, 2016 Patent Assignment
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`Agreement. Dkt. 22-1, Ex. 1 (“2016 Agreement”). Under the 2016 Agreement,
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`. See,
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`e.g., 2016 Agreement § 2 (“Reserved Rights”), § 4 (“Miscellaneous”).2
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`Uniloc acquired the Asserted Patents from Uniloc Luxembourg pursuant to a March 28,
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`2018 “Asset Purchase Agreement” (“2018 Purchase Agreement”) and a May 3, 2018 “Patent
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`Assignment” Agreement (“2018 Assignment Agreement”) (collectively, the “2018
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`Agreements”). See Uniloc Reply ¶ 37. Akamai has repeatedly requested a copy of the 2018
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`Agreements between Uniloc Luxembourg and Uniloc 2017 LLC, but Uniloc has refused to
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`provide them. Nevertheless, Uniloc does not deny that it purchased the asserted patents “subject
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`to the same terms and obligations that applied to Uniloc Luxembourg under the 2016 Agreement,
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`as required by the 2016 Agreement at Section 2.5.” See Akamai Counterclaims ¶ 38; Uniloc
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`Reply ¶ 38. See also 2016 Agreement § 2.4
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`2 As discussed below, Akamai did not become aware of these restrictions until Uniloc provided
`the 2016 Agreement to Akamai on September 12, 2019, after Akamai requested a copy of the
`agreement on September 6, 2019. See Dkt. 22, Coviello Declaration ¶¶ 4-6; see also Dkt. 22-3,
`Ex. 4 (September 6, 2019 Letter); Dkt. 22-4, Ex. 5 at 1 (Email from counsel for Uniloc attaching
`the 2016 Agreement).
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`4
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`Case 1:19-cv-11276-RGS Document 28 Filed 10/18/19 Page 9 of 26
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` id. § 2.5
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` The 2016 Agreement and the 2018 Agreements
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`are collectively referred to herein as the “Patent Purchase Agreements.”
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`B.
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`Uniloc Has No Right to Enforce the Asserted Patents against “IBM Strategic
`Partners” and “Licensees”
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`Under the Patent Purchase Agreements, IBM retained rights to license the Asserted
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`Patents to any “IBM Strategic Partner” (among other third parties):
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`See 2016 Agreement § 2.1. The 2016 Agreement defines “IBM Strategic Partner” to include:
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`The 2016 Agreement also provides that
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` See 2016 Agreement § 5.
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`Case 1:19-cv-11276-RGS Document 28 Filed 10/18/19 Page 10 of 26
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`Moreover, because IBM Strategic Partners are
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`See 2016 Agreement § 2.4. Likewise, Section 4.2 confirms that Uniloc’s discretion to enforce
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`the asserted patents against third parties is
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`Case 1:19-cv-11276-RGS Document 28 Filed 10/18/19 Page 11 of 26
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`See 2016 Agreement § 4.2. IBM thus reserved for itself the right to license the Asserted Patents
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`to IBM Strategic Partners and did not convey to Uniloc any right to enforce the Asserted Patents
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`against any IBM Strategic Partner. See id.
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`Further, the Patent Purchase Agreements provide that if Uniloc
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`Finally, the Patent Purchase Agreements provide that
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`; Akamai Counterclaims ¶ 39.
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`See 2016 Agreement § 2.5; see also Uniloc Reply ¶ 38 (admitting that Uniloc’s rights to the
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`Asserted Patents are subject to the same provisions and restrictions as the 2016 Agreement).
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`C.
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`Akamai Is an “IBM Strategic Partner” and Thus a “Licensee” under the
`Patent Purchase Agreements
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`Uniloc does not dispute that Akamai is an IBM Strategic Partner under the Patent
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`Purchase Agreements. Uniloc has known that Akamai is an IBM Strategic Partner since at least
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`7
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`Case 1:19-cv-11276-RGS Document 28 Filed 10/18/19 Page 12 of 26
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`September 6, 2019, when Akamai notified Uniloc that it qualified as an IBM Strategic Partner
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`based on its sales to IBM. See Dkt. 22-3, Ex. 4 (September 6, 2019 Letter). Indeed, in the
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`relevant timeframe (the five-year period prior to the February 3, 2016), Akamai sold more than
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` in content delivery services to IBM and its Subsidiaries—far more than the $10
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`million required to qualify as an IBM Strategic Partner. See Dkt. 23 (Declaration of William
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`Kamenides) at ¶ 3; Dkt. 23-1, Ex. 3 (Akamai Sales Data for IBM); 2016 Agreement § 5 (defining
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`“IBM Strategic Partner”); Dkt. 21 (Akamai Amended Answer) ¶ 53.
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`As explained above, because Akamai is an IBM Strategic Partner,
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`. See 2016 Agreement § 2.1
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`; id. § 5
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` Uniloc
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`therefore cannot sue Akamai for infringement of the Asserted Patents, because Akamai already is
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`a “Licensee” to the Asserted Patents under the Agreement. See id.; see also § 2.4 (
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`; § 4.2
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`; Dkt. 21 (Akamai Amended Answer) ¶ 55.
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`Moreover, because Akamai is a Licensee,
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` since at least September 6,
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`2019, when Akamai notified Uniloc that Akamai is an IBM Strategic Partner. See 2016
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`Agreement § 4.3 (providing that
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`Counterclaims ¶ 39.
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`); Akamai
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`8
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`Case 1:19-cv-11276-RGS Document 28 Filed 10/18/19 Page 13 of 26
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`D.
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`This Is the Third Time That Uniloc and Its Predecessors Have Filed and
`Then Dismissed the Same Infringement Claims against Akamai
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`Despite the Patent Purchase Agreements’ clear prohibitions on bringing or maintaining
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`suits against IBM Strategic Partners, this is the third case that Uniloc, its predecessors (Uniloc
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`USA and Uniloc Luxembourg), and its counsel have brought against Akamai alleging
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`infringement of the Asserted Patents. First, on May 9, 2017, Uniloc USA and Uniloc
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`Luxembourg sued Akamai for infringement of these patents in the Eastern District of Texas. See
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`Uniloc USA, Inc. et al. v. Akamai Technologies Inc., No. 17-cv-00405 (E.D. Tex.). After
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`Akamai moved to dismiss that case for improper venue, Uniloc USA and Uniloc Luxembourg
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`voluntarily dismissed the case. See id. at Dkt. 26. Second, Uniloc USA and Uniloc Luxembourg
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`filed an action asserting the same infringement claims in the Northern District of Texas on
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`August 11, 2017. See Uniloc USA, Inc. et al. v. Akamai Technologies Inc., No. 17-cv-02118
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`(N.D. Tex.). That case was dismissed by stipulation on October 10, 2017 after a district court
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`found the Asserted Patents to be invalid under 35 U.S.C. § 101 (a decision later reversed by the
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`Federal Circuit). See id. at Dkt. 20. Third, Uniloc filed the present case re-asserting the same
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`infringement claims on June 7, 2019. Dkt. 1 (Complaint); Akamai Counterclaims ¶ 47.
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`Each of the Uniloc entities that brought these three suits were managed by the same
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`person, Craig Etchegoyen (Uniloc Reply ¶ 50), and represented by the same counsel at Prince
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`Lobel (Uniloc Reply ¶ 51). In each case, Uniloc filed the suit, demanded that Akamai pay a
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`significant settlement, and then dismissed the case. See Akamai Counterclaims ¶ 48; Uniloc
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`Reply ¶ 48.
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`This case has proceeded in similar fashion. On August 30, 2019, Uniloc served its Initial
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`Disclosures in this case, but did not identify or produce the Patent Purchase Agreements, instead
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`incorrectly stating that “Uniloc 2017 does not currently have in effect any indemnity or insurance
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`9
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`Case 1:19-cv-11276-RGS Document 28 Filed 10/18/19 Page 14 of 26
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`agreements relevant to this lawsuit.” This statement is contradicted by
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`. See Akamai Counterclaims ¶¶ 35-45; 2016 Agreement,
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`§ 4.3.
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`On September 6, 2019, Akamai’s counsel informed Uniloc’s counsel that Akamai had
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`learned of the 2016 Agreement from the public dockets in other cases, explained that Akamai is
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`an IBM Strategic Partner, and requested a copy of the 2016 Agreement. See Dkt. 22, Coviello
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`Declaration ¶ 4; see also Dkt. 22-3, Ex. 4 (September 6, 2019 Letter). Uniloc responded on
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`September 11, 2019 that Uniloc would seek to dismiss this case. See Uniloc Reply ¶ 49. Uniloc
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`did not provide the 2016 Agreement to Akamai until September 12, 2019. See Dkt. 22, Coviello
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`Declaration ¶¶ 4-6; see also Dkt. 22-3, Ex. 4 (September 6, 2019 Letter); Dkt. 22-4, Ex. 5 at 1
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`(email from counsel for Uniloc attaching the 2016 Agreement).
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`On September 11, 2019 Akamai asked Uniloc to reimburse Akamai for its fees and costs
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`in this case. Uniloc Reply ¶ 42. On September 13, 2019, Uniloc responded that “Uniloc will not
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`pay Akamai any money.” Uniloc Reply ¶ 43.
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`On October 2, 2019, Uniloc filed its Answer to Akamai’s Counterclaims, admitting that
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`Uniloc “will ask this Court to dismiss the action.” Uniloc Reply ¶ 49; Akamai Counterclaims
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`¶ 49. However, Uniloc has “refused to dismiss the case with prejudice.” See Uniloc Reply
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`¶ 43; Akamai Counterclaims ¶ 43.
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`E.
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`Uniloc Failed to Conduct a Reasonable Pre-Suit Investigation and Failed to
`Disclose the Patent Purchase Agreements from Akamai
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`Uniloc and its counsel undisputedly filed suit against Akamai alleging infringement of
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`the Asserted Patents without contacting IBM to determine that Akamai is an IBM Strategic
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`Partner and Licensee of the Asserted Patents. See Dkt. 22-4, Ex. 5 at 2 (September 12, 2019
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`email from Uniloc’s counsel stating, months after filing suit, that they would contact IBM).
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`10
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`Case 1:19-cv-11276-RGS Document 28 Filed 10/18/19 Page 15 of 26
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`Even a cursory investigation would have revealed the longstanding partnership between
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`Akamai and IBM. In each of its publicly available Annual Reports from 2012 through 2016,
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`Akamai identified IBM as a customer and/or partner. See Dkt. 23, Kamenides Declaration ¶¶ 4-
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`9; see also, e.g., Dkt. 23-4, Ex. 8 (Akamai 2014 Annual Report: identifying IBM as one of
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`Akamai’s “active channel partners” and most important “customers”).3 Akamai’s public website
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`also explains that IBM is a key Akamai customer. Dkt. 23-7, Ex. 11 (Akamai webpage:
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`“Akamai enables IBM to ensure a flawless web experience for customers—no matter where they
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`are.”).4
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`Despite the extensive public information regarding Akamai’s relationship with IBM,
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`Uniloc’s counsel admittedly did not investigate Akamai’s relationship with IBM before filing
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`suit. See Dkt. 22-4, Ex. 5 at 2 (Sept. 12, 2019 email from Uniloc Counsel). Uniloc’s counsel
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`made this inquiry to IBM only after Akamai wrote to Uniloc on September 6, 2019 to explain
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`that Akamai qualifies as an IBM Strategic Partner. See Dkt. 22-3, Ex. 4 (September 6, 2019
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`letter from Akamai to Uniloc).
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`In addition, each time that Uniloc and its counsel filed suit, they failed to disclose to
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`Akamai the Patent Purchase Agreements that exempted IBM Strategic Partners and Licensees
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`from suits by Uniloc. See Akamai Counterclaims ¶ 54; Uniloc Reply ¶ 54; Dkt. 22-4, Ex. 5 at 1-
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`3 (correspondence showing that Uniloc provided the Patent Purchase Agreements only after
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`Akamai independently discovered their existence and requested them). In fact, Uniloc’s
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`3 Dkt. 23, Exs. 6-10 (Akamai 2012-2016 Annual Reports identifying IBM as a partner/customer
`of Akamai).
`4 Dkt. 23-7, Ex. 11 (an Akamai webpage titled “IBM,” available at
`https://www.akamai.com/us/en/our-customers/customer-stories-ibm.jsp.) This webpage has
`been available since at least September 19, 2015. See Dkt. 21 (Akamai Amended Answer) ¶ 64
`(citing https://web.archive.org/web/20150919171015/https://www.akamai.com/us/en/our-
`customers/customer-stories-ibm.jsp).
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`11
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`Case 1:19-cv-11276-RGS Document 28 Filed 10/18/19 Page 16 of 26
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`predecessors, Uniloc USA and Uniloc Luxembourg, and their counsel at Prince Lobel did not
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`disclose the Patent Purchase Agreements in either of the cases filed in 2017, and Uniloc and
`
`Prince Lobel similarly failed to disclose them during the first three months of this case. See id.
`
`As noted above, Uniloc did not disclose the 2016 Agreement until September 12, 2019—after
`
`Akamai independently learned of it and requested it on September 6, 2019. See Dkt. 22-3, Ex. 4
`
`(September 6, 2019 Akamai letter requesting 2016 Agreement); Dkt. 22-4, Ex. 5 at 1 (September
`
`12, 2019 email from Uniloc counsel attaching 2016 Agreement). Despite Akamai’s repeated
`
`requests, Uniloc has failed to disclose to Akamai all of the 2018 Agreements. See Uniloc Reply
`
`¶ 37.
`
`At the same time that Uniloc failed to disclose the Patent Purchase Agreements from
`
`Akamai, Uniloc and its counsel sought a significant settlement payment from Akamai. See
`
`Akamai Counterclaims ¶ 54; Dkt. 22, Coviello Declaration ¶¶ 3-6. Most recently, on August 22,
`
`2019, Uniloc sought a significant payment for a license to the Asserted Patents. See id. Uniloc’s
`
`counsel stated that the offer would expire in two weeks—i.e., by September 5, 2019. See id.
`
`Uniloc did not disclose the Patent Purchase Agreements to Akamai at any time before that
`
`settlement demand or during the two-week period that Uniloc gave to Akamai to respond to the
`
`demand. See id.
`
`III. ARGUMENT
`
`A.
`
`Legal Standard
`
`A party may move for judgment on the pleadings “[a]fter the pleadings are closed—but
`
`early enough not to delay trial.” See Fed. R. Civ. P. 12(c).
`
`A defense that the plaintiff has failed to state a claim on which relief can be granted may
`
`be raised in a motion for judgment on the pleadings under Rule 12(c). See Fed. R. Civ. P.
`
`12(h)(2)(B). In addition, dismissal with prejudice is appropriate when the plaintiff has failed to
`
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`Case 1:19-cv-11276-RGS Document 28 Filed 10/18/19 Page 17 of 26
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`
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`state a claim on which relief can be granted and any amendment to the complaint would be futile.
`
`See Aldabe v. Cornell Univ., 2018 WL 7917918, at *1 (1st Cir. Dec. 7, 2018) (affirming a
`
`dismissal with prejudice for failure to state a claim and noting that dismissal with prejudice was
`
`appropriate because “further amendment of the complaint would have been futile”); Schwann v.
`
`FedEx Ground Package Sys., Inc., 2018 WL 4119686, at *4 (D. Mass. Aug. 29, 2018)
`
`(dismissing claims with prejudice because they were “time-barred” and finding that “any attempt
`
`to amend those claims would be futile”).
`
`Courts consider the parties’ pleadings and attachments thereto in deciding a motion for
`
`judgment on the pleadings. See Mass. Nurses Ass’n v. N. Adams Reg’l Hosp., 396 F. Supp. 2d
`
`30, 31 (D. Mass. 2005) aff’d, 467 F.3d 27 (1st Cir. 2006); McLaughlin Transp. Sys., Inc. v.
`
`Rubinstein, 390 F. Supp. 2d 50, 57-58 (D. Mass. 2005). When considering Rule 12(c) motions
`
`for judgment on the pleadings, courts “view the facts contained in the pleadings in the light most
`
`favorable to the nonmovant and draw all reasonable inferences therefrom.” Perez-Acevedo v.
`
`Rivero-Cubano, 520 F.3d 26, 29 (1st Cir. 2008).
`
`Here, Akamai’s Motion for Judgment on the Pleadings is based on Uniloc’s Complaint,
`
`Akamai’s Amended Answer and Counterclaims, Uniloc’s Reply, and the documents attached as
`
`exhibits thereto. See Dkt. 1 (Uniloc Complaint); Dkt. 21 (Akamai Amended Answer and
`
`Counterclaims); Dkt. 22 (Coviello Declaration and attached Exhibits 1, 2, 4, 5); Dkt. 23
`
`(Kamenides Declaration and attached Exhibits 3, 6-11); Dkt. 25 (Uniloc Reply).
`
`B.
`
`Uniloc’s Infringement Claims Should Be Dismissed with Prejudice
`
`1.
`
`Uniloc Has Failed to State a Valid Infringement Claim Because It Has
`No Right to Sue Akamai for Infringement of the Asserted Patents
`
`Under the Patent Purchase Agreements, and Uniloc’s admission that Akamai is an IBM
`
`Strategic Partner, Uniloc has no right to bring or maintain a suit against Akamai for alleged
`
`13
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`

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`Case 1:19-cv-11276-RGS Document 28 Filed 10/18/19 Page 18 of 26
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`
`
`infringement of the Asserted Patents, and it has failed to state a valid claim for infringement
`
`under Federal Rule of Civil Procedure 12(b)(6). See Dkt. 21 (Akamai Amended Answer) ¶¶ 39-
`
`56.
`
`As explained above, Uniloc has known that Akamai is an IBM Strategic Partner since at
`
`least September 6, 2019. See Dkt. 22-3, Ex. 4 (September 6, 2019 Letter notifying Uniloc that
`
`Akamai is an IBM Strategic Partner); Dkt. 22-4, Ex. 5 at 3 (September 11, 2019 email from
`
`Uniloc’s counsel conceding that they will dismiss the case). The fact that Akamai is an IBM
`
`Strategic Partner is undisputed. See id.; Uniloc Reply ¶ 49 (conceding that Uniloc will dismiss
`
`the case). Moreover,
`
`. See 2016 Agreement § 2.1
`
`; id. § 5
`
`
`
`
`
`
`
`
`
`; Dkt. 21 (Akamai Amended Answer) ¶¶ 45-48, 53-55.
`
`Because Akamai already qualifies as an IBM Strategic Partner and Licensee to the
`
`Asserted Patents under the Patent Purchase Agreements, Uniloc has no right to sue Akamai for
`
`infringement of the Asserted Patents. See 2016 Agreement §§ 2.1, 5
`
`
`
`
`
`
`
`
`
` See 2016 Agreement, §§ 2.1, 2.4, 4.2, 5; Dkt. 21
`
`(Akamai Amended Answer) ¶¶ 46-49; 55-56.
`
`Uniloc’s lack of a valid infringement claim against Akamai is further confirmed by the
`
`. See 2016 Agreement, § 4.3
`
`14
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`

`

`
`
`(
`
`Case 1:19-cv-11276-RGS Document 28 Filed 10/18/19 Page 19 of 26
`
`). Specifically, the Patent Purchase Agreements provide
`
`
`
`
`
` See Dkt. 21 (Akamai Amended Answer) ¶¶ 50-51, 56; Akamai Counterclaims
`
`¶¶ 35-45; 2016 Agreement, § 4.3.
`
`
`
`
`
` See id.; Dkt. 21
`
`(Akamai Amended Answer) ¶¶ 50-51.
`
`Accordingly, because Akamai is an IBM Strategic Partner, and therefore is a Licensee to
`
`the Asserted Patents, Uniloc has no right to enforce the Asserted Patents against Akamai, and
`
`any attempt by Uniloc to amend its claims would be futile. Uniloc’s claims therefore should be
`
`dismissed with prejudice. See Ottah v. Fiat Chrysler, 884 F.3d 1135, 1138-39, 1142 (Fed. Cir.
`
`2018) (affirming dismissal with prejudice under Rule 12(b)(6) where the district court concluded
`
`that the patentee presented “legally implausible” arguments as to patent recovery); Aldabe, 2018
`
`WL 7917918, at *1 (affirming the district court’s determination that “further amendment of the
`
`complaint would have been futile and that dismissal with prejudice, therefore, was appropriate”);
`
`cf. Schwann, 2018 WL 4119686, at *4 (dismissing claims with prejudice because they were
`
`“time-barred [ ] [and] any attempt to amend those claims would be futile”).
`
`2.
`
`This Case Should Be Dismissed with Prejudice Because Uniloc Has
`Repeatedly Dismissed the Same Claims against Akamai
`
`Fed. R. Civ. P. 41(a)(1)(B) provides that “if the plaintiff previously dismissed any
`
`federal- or state-court action based on or including the same claim, a notice of dismissal operates
`
`as an adjudication on the merits.” Here, Uniloc admits that it intends to voluntarily dismiss this
`
`lawsuit. See Uniloc Reply ¶ 49; Akamai Counterclaims ¶ 49. Under Rule 41(a)(1)(B), Uniloc’s
`
`15
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`Case 1:19-cv-11276-RGS Document 28 Filed 10/18/19 Page 20 of 26
`
`
`
`dismissal should be treated as an adjudication on the merits, and its claims should be dismissed
`
`with prejudice, because the Uniloc entities have repeatedly filed and dismissed the same
`
`infringement claims against Akamai.
`
`First, as described above, this is the third case that Uniloc and its predecessors, Uniloc
`
`USA and Uniloc Luxembourg, have brought against Akamai for alleged infringement of the
`
`asserted patents. Uniloc USA and Uniloc Luxembourg brought two prior cases asserting
`
`substantially identical infringement claims against Akamai. See Uniloc USA, Inc. et al. v.
`
`Akamai Technologies Inc., Case No. 17-cv-00405 (E.D. Tex.); Uniloc USA, Inc. et al. v. Akamai
`
`Technologies Inc., Case No. 17-cv-02118 (N.D. Tex.). Uniloc USA and Uniloc Luxembourg
`
`voluntarily dismissed both of those prior cases. Uniloc’s dismissal in this case would therefore
`
`be the third time that a Uniloc entity has voluntarily dismissed the same infringement claims
`
`against Akamai. See Wicks v. Putnam Inv. Mgmt., LLC, Civ. A. 04-10988-GAO, 2005 WL
`
`705360, at *2 (D. Mass. Mar. 28, 2005) (noting that under plain language of Rule 41(a)(1), the
`
`two-dismissal rule is triggered if a prior dismissal was made either by notice or by stipulation).
`
`Second, for purposes of Rule 41, Uniloc should be treated as the same plaintiff as the
`
`prior Uniloc entities, Uniloc USA and Uniloc Luxembourg. Uniloc admits that the Uniloc
`
`entities are all managed by the same person,