Case 1:19-cv-11276-RGS Document 31 Filed 11/01/19 Page 1 of 6
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`UNITED STATES DISTRICT COURT
`DISTRICT OF MASSACHUSETTS
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`Plaintiff,
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`UNILOC 2017 LLC,
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`v.
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`AKAMAI TECHNOLOGIES, INC.,
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`Defendant.
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`Civil Action No. 1:19-cv-11276-RGS
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`UNILOC’S OPPOSITION TO MOTION FOR JUDGMENT ON THE PLEADINGS
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`REQUEST FOR ORAL ARGUMENT.
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`Uniloc1 requests oral argument.
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`OPPOSITION TO MOTION
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`Uniloc opposes the motion, for the reasons discussed below. Uniloc also submits the
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`accompanying Declaration of James J. Foster to provide certain background facts and to respond
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`to ad hominem attacks in Akamai’s motion.
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`Akamai Technologies, Inc. (“Akamai”) claims the level of business it did with
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`International Business Machines (IBM) qualifies it as an “IBM Strategic Partner” and that status
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`requires this action be dismissed. That argument, however, has factual and legal infirmities.
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`I.
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`Akamai does not have a license to the patents-in-suit.
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`An agreement between IBM and Uniloc (Coviello Decl., Ex.1) (“Agreement”) assigned
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`the patents-in-suit to Uniloc. As a result, Uniloc has the exclusive right to bring suit on the
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`patents and the right to license the patents to anyone it chooses, including Akamai. But the
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`1 Uniloc 2017 obtained the patents in May 2018 from Uniloc Luxembourg S.A. This Opposition
`uses “Uniloc” collectively to refer to whichever entity owned the rights at the relevant time.
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`3323849.v1
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`1
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`UNITED STATES DISTRICT COURT
`DISTRICT OF MASSACHUSETTS
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`Plaintiff,
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`UNILOC 2017 LLC,
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`
`
`v.
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`AKAMAI TECHNOLOGIES, INC.,
`
`
`
`Defendant.
`
`Civil Action No. 1:19-cv-11276-RGS
`
`
`
`
`
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`UNILOC’S OPPOSITION TO MOTION FOR JUDGMENT ON THE PLEADINGS
`
`
`
`REQUEST FOR ORAL ARGUMENT.
`
`Uniloc1 requests oral argument.
`
`OPPOSITION TO MOTION
`
`Uniloc opposes the motion, for the reasons discussed below. Uniloc also submits the
`
`accompanying Declaration of James J. Foster to provide certain background facts and to respond
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`to ad hominem attacks in Akamai’s motion.
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`Akamai Technologies, Inc. (“Akamai”) claims the level of business it did with
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`International Business Machines (IBM) qualifies it as an “IBM Strategic Partner” and that status
`
`requires this action be dismissed. That argument, however, has factual and legal infirmities.
`
`I.
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`Akamai does not have a license to the patents-in-suit.
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`An agreement between IBM and Uniloc (Coviello Decl., Ex.1) (“Agreement”) assigned
`
`the patents-in-suit to Uniloc. As a result, Uniloc has the exclusive right to bring suit on the
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`patents and the right to license the patents to anyone it chooses, including Akamai. But the
`
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`1 Uniloc 2017 obtained the patents in May 2018 from Uniloc Luxembourg S.A. This Opposition
`uses “Uniloc” collectively to refer to whichever entity owned the rights at the relevant time.
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`3323849.v1
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`1
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`Case 1:19-cv-11276-RGS Document 31 Filed 11/01/19 Page 2 of 6
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`Agreement also
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`” Ex. 1, Section 2.1(f). The Agreement did not i
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` To practice the patents without infringing, an
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`.
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`As of this writing, Akamai has not obtained a license, and thus remains liable for any
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`infringement.
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`Akamai tries to sneak around this inconvenient fact by referring to itself as a
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`. Mot. at 6-8. But the Agreement
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`uses the capitalized
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` Ex. 1, Section 5.
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`II.
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`Because Akamai does not have a license, it may be sued for infringement by Uniloc.
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`Akamai implies its status allows it to infringe the patents with impunity. Uniloc does not
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`agree nor, we suspect, does IBM.
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`To carry on activity covered by the claims of the patents, Akamai needs to obtain a
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`license; it does not have one. Akamai may, therefore, be sued for its infringement. To avoid
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`suit, Akamai would need to obtain a license from either Uniloc or IBM, in return for appropriate
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`consideration. It has not done so.
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`Akamai argues Uniloc has neither a “right to sue” nor a “valid claim for relief.” Mot. at 2.
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`But a parsing of its argument reveals an unfamiliarity with basic contract doctrine.
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`Akamai first cites a provision of the Agreement that bars Uniloc from “
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`Case 1:19-cv-11276-RGS Document 31 Filed 11/01/19 Page 3 of 6
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`7. But Akamai does not identify any contract or contractual relationship this action interferes
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`” Ex. 1, Section 2.4. Mot. at 6-
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`with.
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`Akamai next cites a provision of the Agreement that mentions
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`” Ex. 1, Section 4.3. Mot. at 7. At worst, this provision would discourage
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`Uniloc from suing, not bar it from doing so. But Akamai‘s interpretation of this provision is in
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`doubt, because the Federal Circuit has ruled, with respect to this very section of this Agreement,
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`that the ostensible third-party beneficiary (in this case, Akamai) must show “that IBM, which is
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`not a party to this litigation, considers Uniloc to be in breach or has asserted a right to sublicense
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`and release Movants from liability relating to the patents at issue.” Uniloc USA, Inc. v. ADP,
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`LLC, 772 F. App’x 890, 895 (Fed. Cir. 2019). Akamai’s motion shows neither.
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`In a letter Akamai sent to Uniloc, Coviello Decl. Ex. 4, Akamai asserted Uniloc did not
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`have standing to sue, because IBM also had a right to license the patents. Uniloc responded:
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`Your suggestion Uniloc 2017 does not have standing to maintain the present action
`suggests you have not fully digested the law. As a professional courtesy, let me
`direct you to the Federal Circuit’s May 30 decision in Lone Star Silicon Innovations
`LLC v. Nanya Technology Corporation.
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`Foster Decl., Ex. C. Akamai must have then read the Lone Star opinion, 925 F.3d 1225 (Fed Cir.
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`2019), because Akamai does not argue in its motion that Uniloc lacks standing or that this Court
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`lacks subject matter jurisdiction. Uniloc will therefore forgo briefing those issues.
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`But IBM’s nonexclusive right to license Akamai might raise an issue, under Rule 19, as
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`to whether IBM needs to be joined as an involuntary plaintiff. See Lone Star, 925 F.3d at 1236-
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`39. But, for the reasons discussed below, this Court need not decide that issue at this time.
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`Case 1:19-cv-11276-RGS Document 31 Filed 11/01/19 Page 4 of 6
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`III. Uniloc has requested Akamai to stipulate to dismissal.
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`It does not make business sense for Uniloc 2017 to continue this action if IBM could
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`terminate it at any time by licensing Akamai. So when Akamai notified Uniloc on September 6
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`of its putative status as an IBM Strategic Partner, within days Uniloc requested Akamai to
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`stipulate to dismiss the action. Foster Decl. ¶ 19. But Akamai refused, insisting a dismissal must
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`be with prejudice. But that would allow Akamai to infringe the patents at will.
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`If this Court dismissed this action because Uniloc lacked sufficient rights in the patents,
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`that dismissal would not go to the merits and thus would not ordinarily be with prejudice. The
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`Federal Circuit has held that that type of issue can be corrected and, when corrected, a party can
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`file a new action on the patent, despite a previous dismissal. Univ. of Pittsburgh v. Varian
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`Medical Systems, Inc., 569 F.3d 1328, 1333 (Fed. Cir. 2009).
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`In the particular situation here, if IBM and Uniloc were to resolve the contractual issue,
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`the action could continue. But as of this writing, that has not yet happened. Which is why
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`Uniloc has requested Akamai to stipulate to dismiss the action.
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`Akamai cannot rely on the two-dismissal rule, Rule 41(a)(1)(B). Mot. at 15-17. That rule
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`only applies if the second dismissal is by “notice,” under Rule 41(a)(1)(A)(i). Here, the
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`dismissal of the second action was by stipulation, not notice. And any voluntary dismissal of this
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`action, if it occurs, would also be by stipulation, not notice.
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`IV. Akamai’s ad hominem attacks.
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`As discussed above, if this action is dismissed it should be without prejudice, because the
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`Court has not reached the merits. But to persuade the Court to sanction Uniloc 2017, by
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`imposing a with-prejudice dismissal, Akamai launches ad hominem attacks against counsel. The
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`accompanying declaration of James J. Foster responds to those attacks.
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`Case 1:19-cv-11276-RGS Document 31 Filed 11/01/19 Page 5 of 6
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`The attacks have several themes. One is that counsel recklessly filed suit against Akamai
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`without investigating whether Akamai qualified as an IBM Strategic Partner (and thus could be
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`granted a license by IBM). Mot. at 2-3. But the opposite is true.
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`Because it would not make business sense for Uniloc to sue an entity that could be
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`granted a license by IBM, its practice had been to
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`. Foster Decl., ¶ 5. It followed that course with respect to
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`Akamai, and, on February 14, 2017, IBM reported in writing
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` Id. ¶ 6-7, Ex. A. Counsel for Akamai were provided that
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`document on September 12. Id., ¶20.
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`Although counsel for Akamai thus knew there had been an investigation by counsel and
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`, their motion papers omitted any mention of it. Akamai should have
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`disclosed this fact; it did not.
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`A second theme of the ad hominem attacks is the allegation counsel “improperly failed to
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`disclose the agreement to Akamai.”
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`As laid out in the Foster declaration, ¶ ¶ 9-15, the two previous actions were short-lived –
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`for the reasons discussed – and thus neither reached the discovery stage. As a result, neither
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`party produced discovery to the other. This action had also not reached the discovery stage.
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`Akamai suggests counsel was motivated by a desire to prevent Akamai from learning of
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`the Agreement. But, as discussed above and in the Foster declaration, ¶ ¶ 6-8, 17-18, until
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`receiving Akamai’s September 6, 2019, letter neither Uniloc nor its counsel had a clue Akamai
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`would qualify as an IBM Strategic Partner. IBM itself had represented it would not. And Uniloc
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`has regularly produced this Agreement to other defendants in cases that did reach the discovery
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`phase. Foster Decl., ¶ 26.
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`Case 1:19-cv-11276-RGS Document 31 Filed 11/01/19 Page 6 of 6
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`Akamai also argues Uniloc’s counsel “unreasonably filed multiple litigations.” There
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`have been three actions filed, but the reasons for that are articulated in the Foster Declaration, ¶¶
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`10, 13-14. Akamai fails to explain why those dismissals and subsequent refilings were
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`unreasonable. The second action was merely a re-filing of the first in a different district because
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`the Federal Circuit had abruptly changed the law on venue. Id., ¶ 10. And Akamai itself
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`stipulated to a without-prejudice dismissal (as opposed to simply a stay) of the second action
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`because of the pending appeal. That stipulation was without prejudice because the parties,
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`including Akamai, contemplated the action would be re-filed if the Federal Circuit reversed,
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`which is what happened.
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`Dated: November 1, 2019
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`Respectfully submitted,
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`James J. Foster
`/s/
`Paul J. Hayes (BBO # 227000)
`James J. Foster (BBO # 553285)
`Kevin Gannon (BBO # 640931)
`PRINCE LOBEL TYE LLP
`One International Place, Suite 3700
`Boston, MA 02110
`Tel: (617) 456-8000
`Email: phayes@princelobel.com
`Email: jfoster@princelobel.com
`Email: kgannon@princelobel.com
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`Attorneys for Plaintiff
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`CERTIFICATE OF SERVICE
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`I certify that all counsel of record who have consented to electronic service are being
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`served with a copy of this document via the Court’s CM/ECF system.
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`/s/ James J. Foster
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`3323849.v1
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