Case 1:19-cv-11276-RGS Document 41 Filed 11/18/19 Page 1 of 4
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`UNITED STATES DISTRICT COURT
`DISTRICT OF MASSACHUSETTS
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`Civil Action No. 1:19-cv-11276-RGS
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`Leave to file granted on November 18, 2019
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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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`UNILOC’S SURREPLY IN OPPOSITION TO
`MOTION FOR JUDGMENT ON THE PLEADINGS
`
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`Here is a summary of the current situation and how we got there:
`
`The Agreement with IBM assigning the patents-in-suit reserved to IBM the right to
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`sublicense IBM Strategic Partners. For business reasons, Uniloc would not file suit against
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`someone if the suit could be aborted at any time by the defendant’s receiving a license from
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`IBM. So before filing suit, Uniloc informed IBM of its intention to sue Akamai and was assured
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`by IBM, in writing, Akamai does “not meet the definition of ‘IBM Strategic Partner.’” Dkt. No.
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`31-2. Uniloc had no reason to question IBM’s representation, and thus reasonably relied on it in
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`pursuing litigation against Akamai. That was the situation from February 2017 through
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`September 5, 2019.
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`On September 6, 2019, Akamai surprised Uniloc with a notice that Akamai’s level of
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`business with IBM had qualified it as an IBM Strategic Partner. Although Akamai had not
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`received (and, as of this writing, still has not received) a license from IBM, for the same business
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`reasons as described above Uniloc does not want to pursue the action if IBM could sublicense
`
`Akamai.
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`3333310.v1
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`1
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`
`
`UNITED STATES DISTRICT COURT
`DISTRICT OF MASSACHUSETTS
`
`
`Civil Action No. 1:19-cv-11276-RGS
`
`Leave to file granted on November 18, 2019
`
`Plaintiff,
`
`UNILOC 2017 LLC,
`
`
`
`v.
`
`AKAMAI TECHNOLOGIES, INC.,
`
`
`
`
`Defendant.
`
`UNILOC’S SURREPLY IN OPPOSITION TO
`MOTION FOR JUDGMENT ON THE PLEADINGS
`
`
`Here is a summary of the current situation and how we got there:
`
`The Agreement with IBM assigning the patents-in-suit reserved to IBM the right to
`
`sublicense IBM Strategic Partners. For business reasons, Uniloc would not file suit against
`
`someone if the suit could be aborted at any time by the defendant’s receiving a license from
`
`IBM. So before filing suit, Uniloc informed IBM of its intention to sue Akamai and was assured
`
`by IBM, in writing, Akamai does “not meet the definition of ‘IBM Strategic Partner.’” Dkt. No.
`
`31-2. Uniloc had no reason to question IBM’s representation, and thus reasonably relied on it in
`
`pursuing litigation against Akamai. That was the situation from February 2017 through
`
`September 5, 2019.
`
`On September 6, 2019, Akamai surprised Uniloc with a notice that Akamai’s level of
`
`business with IBM had qualified it as an IBM Strategic Partner. Although Akamai had not
`
`received (and, as of this writing, still has not received) a license from IBM, for the same business
`
`reasons as described above Uniloc does not want to pursue the action if IBM could sublicense
`
`Akamai.
`
`3333310.v1
`
`1
`
`
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`Case 1:19-cv-11276-RGS Document 41 Filed 11/18/19 Page 2 of 4
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`
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`So on September 11, Uniloc sent Akamai a stipulation, which would discontinue the
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`entire action, including counterclaims. But Akamai refused to sign, and the action drags on.
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`For the reasons discussed below, Uniloc is legally entitled to pursue this action, and the
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`Court may thus not dismiss it with prejudice. Once that is established, perhaps the parties can
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`find some way to end the action. But before discussing possible options, this Surreply will clarify
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`a few legal points.
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`1.
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`Akamai does not have a license to the patents in suit.
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`
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`Uniloc’s Opposition, Dkt. No. 31 at 1-2, pointed out Akamai does not have a license to
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`the patents-in-suit. Although the Reply, Dkt. No. 37 (“Rep.”), claims the Agreement gives IBM a
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`(nonexclusive) right to sublicense Akamai, it tacitly admits IBM has not done so. The Reply, like
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`the Motion, refers to Akamai only as a “Licensee,” using the capitalized form of the word,
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`which, per the IBM Agreement, includes certain non-licensees, of which Akamai is one.
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`2.
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`Because Akamai does not have a license, it may be sued for infringement – by
`Uniloc.
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`
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`If Akamai does not have a license and is infringing the patents, it may be sued. But by
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`whom? The Reply never answers that question. It seems Akamai is angling for a result that
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`permits it to infringe at will, without compensation.
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`IBM initially owned the patents and thus had the right to sue. But in the Agreement
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`(section 1.1), IBM transferred to Uniloc “all right, title and interest in” the patents, including the
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`“right to sue for injunctive relief and damages for infringement.” Dkt. 22-1, sec.1.1. So the
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`obvious plaintiff would be Uniloc.
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`Akamai attempts to muddy the waters, Rep. at 1-2, by referring to section 2.4 of the
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`Agreement, which provides Uniloc “shall not interfere” with contracts IBM might have with
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`Akamai. But that section would relate only to activity Akamai performs for IBM itself. That
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`2
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`Case 1:19-cv-11276-RGS Document 41 Filed 11/18/19 Page 3 of 4
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`provision has no relationship to infringing activities Akamai performs for its non-IBM
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`customers. The Agreement does not bar Uniloc from suing Akamai for infringement involving
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`customers of Akamai other than IBM.
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`Akamai’s argument as to the indemnification provision, Reply at 2-4, confirms Uniloc’s
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`position, which was that the provision discourages a lawsuit, but does not prevent it. Akamai
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`argues that because the indemnification provision could make an infringement action
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`unprofitable for Uniloc, the Court must interpret the Agreement to bar such an action, even
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`though the Agreement does not explicitly do so. But under that interpretation, no one could sue
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`Akamai for its unlicensed infringement. IBM did not itself maintain that right, but transferred it
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`to Uniloc. Interpreting the indemnification provision as barring suit by Uniloc would leave no
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`one with the right to enforce the patents. That interpretation would effectively license Akamai –
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`and for free! If that result had been intended, the Agreement would have flat out licensed IBM
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`Strategic Partners, as opposed to reserving to IBM the right to do so.
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`So in the absence of a license, which Akamai has not received from either Uniloc or
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`IBM, Uniloc has the right to continue the action, and thus the motion for judgment on the
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`pleadings – the relief Akamai requested – must be denied.
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`3.
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`There are no other issues for the Court to decide.
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`
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`Because Uniloc has the right to continue the action, this Court cannot dismiss the
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`complaint on that ground over Uniloc’s objection. And Akamai has chosen not to raise other
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`grounds for dismissal, such as a lack of standing or jurisdiction, or a failure to join a party under
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`rule 19. So a decision Uniloc has the right to continue the action leaves nothing else for the Court
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`to decide.
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`3
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`Case 1:19-cv-11276-RGS Document 41 Filed 11/18/19 Page 4 of 4
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`The issues of whether to allow voluntary dismissal or to order dismissal without
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`prejudice are not before the Court at least at this point. Although Uniloc had requested Akamai
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`to stipulate to dismissal of the entire action, Akamai has refused. Uniloc is thus not asking this
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`Court to dismiss its complaint, because Akamai will not accede to the request to dismiss its
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`counterclaims.
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`There is much in the Motion, the Opposition, and the Reply relating to ad hominem
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`attacks on counsel. But as those attacks now seem unrelated to any remaining issue before the
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`Court, Uniloc will forgo further comment.
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`As the parties seem to want to find a way to bring this action to an end, Uniloc requests
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`the Court order this case to mediation, before a Magistrate Judge of this Court.
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`
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`Dated: November 18, 2019
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`Respectfully submitted,
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`/s/ James J. Foster
`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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