Uniloc USA, Inc. et al v. Apple Inc.

Filing 126

ORDER HOLDING IN ABEYANCE PLAINTIFFS' MOTION 125 FOR DECLARATION OF JURISDICTION AND JOINDER. Signed by Judge Alsup on 12/16/2019. (whalc2, COURT STAFF) (Filed on 12/16/2019)

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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UNILOC USA, INC., et al.,
Plaintiffs,

United States District Court
Northern District of California

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APPLE, INC.,

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ORDER HOLDING IN ABEYANCE
PLAINITFFS' MOTION FOR
DECLARATION OF JURISDICTION
AND JOINDER

v.

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No. 18-00358 WHA

Defendant.

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In this instance of several patent infringement suits between the parties, plaintiffs
created a mess of patent licenses and assignments. An order dated May 18, 2019, granted
defendant’s motion for judgment on the pleadings, finding the asserted United States Patent
No. 6,661,203 (“the ’203 patent”) was abstract and therefore invalid (Dkt. No. 99). Judgment
was entered (Dkt. No. 100) and plaintiffs appealed (Dkt. No. 101). The other suits between
the parties remain before this Court. See, e.g., Uniloc USA, Inc., et al. v. Apple Inc., No. C
18-00360.
On appeal, defendant learned of the patent licensing and assignment scheme which
threatened plaintiffs’ standing to sue (Dkt. No. 124 at 2). Defendant raised these
jurisdictional concerns to the Court of Appeals for the Federal Circuit, which remanded the
case with the instruction to “supplement[] the record with the documents pertaining to
jurisdiction and resolv[e] the presented jurisdictional issues in the first instance.” Uniloc

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USA, Inc. v. Apple Inc., 784 Fed. App’x 763, 768 (Fed. Cir. 2019). Plaintiffs now move for a

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declaration of jurisdiction and for joinder of Uniloc 2017 as a party (Dkt. No. 125).

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Plaintiffs’ motion is premature. In accord with the Federal Circuit’s direction:

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1. ALL discovery in the related cases between the parties, Nos. C 18-00360 WHA, C

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18-00363 WHA, C 18-00365 WHA, and C 18-00572 WHA, is deemed taken in the

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present case. Any objection must be filed herein and supplemented with good cause

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by DECEMBER 19, 2019 AT NOON.

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2. Plaintiffs otherwise have until DECEMBER 19, 2019 AT NOON to certify to the Court

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that they have turned over ALL discovery on this jurisdictional issue in this and any

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other cases.

United States District Court
Northern District of California

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3. Apple has until DECEMBER 23, 2019 AT NOON to show why plaintiffs’ disclosure is

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insufficient to resolve this jurisdictional issue and show what further discovery is

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warranted to comply with the Federal Circuit’s direction.

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4. Plaintiffs may then reply by DECEMBER 27, 2019 AT NOON.

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5. During this discovery, plaintiffs’ motion is HELD IN ABEYANCE.

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6. Once the requisite discovery is completed, Apple must file a supplemental

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opposition to plaintiffs’ motion. The Court will set the due date once the dust settles

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on discovery. Plaintiffs shall have the opportunity to respond within SEVEN DAYS.

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IT IS SO ORDERED.

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Dated: December 16, 2019.

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WILLIAM ALSUP
UNITED STATES DISTRICT JUDGE

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