Uniloc 2017 LLC v. Google LLC, No. 21-1498 (Fed. Cir. 2022)
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Uniloc brought multiple infringement suits against Google concerning patents directed to innovations in multimedia content delivery, IT security, high-resolution imaging, network connectivity, video conferencing, and image and text searching. Google alleged Uniloc lacked standing because its predecessors had granted Fortress a license and an unfettered right to sublicense to the asserted patents as part of a financing arrangement. Uniloc argued that any license had been eliminated by a Termination Agreement executed between Uniloc’s predecessors and Fortress before the suits commenced.
The district court dismissed, finding that a license had been granted and survived the Termination Agreement. The Federal Circuit reversed. The district court erred in interpreting the Termination Agreement. The License Agreement granted Fortress a “non-exclusive, transferrable, sub-licensable, divisible, irrevocable, fully paid-up, royalty-free and worldwide license” to several of Uniloc’s patents, including those at issue. The Termination Agreement stated that the License Agreement “shall terminate and shall be of no further force or effect without any further documentation or action and without liability to any party hereto, and the rights of each of the applicable parties under the applicable agreement shall terminate.” By terminating the License Agreement and rights under that agreement, the Termination Agreement terminated Fortress’s license. Although the License Agreement describes the license as “irrevocable” the context clearly refers to the license’s being “irrevocable” by the licensor and does not preclude revocation by mutual agreement.
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