Litigation

Uniloc Luxembourg S.A. v. Mojang AB

Dismissed

6:12-cv-01013

Court: Texas Eastern District Court
Filed: 2012-07-20
Terminated: 2016-10-14

Patents at issue (1)

5490216

Plaintiffs (1)

π Uniloc Luxembourg S.A.

Defendants (1)

Δ Mojang AB

Summary

The suit against Minecraft developer Mojang AB was dismissed on October 14, 2016.

Case overview & background

Plain-language overview of the case: parties, accused product, patents at issue, and why the suit matters.

Case Overview and Background

This patent infringement lawsuit pitted Uniloc, a well-known patent assertion entity (PAE), against Mojang AB, the Swedish developer of the globally popular sandbox video game Minecraft. Uniloc, originally founded in Australia to develop software licensing technology, has since become a prolific litigant, suing dozens of technology companies over its patent portfolio. Mojang, at the time an independent studio founded by Markus "Notch" Persson, was responsible for creating and distributing Minecraft, a best-selling video game. Persson famously announced the lawsuit on Twitter and vowed to vigorously defend against what he characterized as a "patent troll" and an attack on innovation.

The lawsuit, filed in the U.S. District Court for the Eastern District of Texas, alleged that the Android version of Minecraft, specifically Minecraft: Pocket Edition, infringed U.S. Patent No. 5,490,216. The patent, titled "System for software registration," generally describes a method to prevent unauthorized use of software by requiring a device to communicate with a server to perform a license check. Uniloc claimed that the way Mojang's game verified a user's license on Android devices utilized this patented technology. Notably, the same patent had been successfully asserted by Uniloc against Microsoft in a high-profile case that resulted in a significant jury verdict and a subsequent confidential settlement.

The case drew significant attention for several reasons. It highlighted the aggressive tactics of PAEs like Uniloc targeting successful software developers, including those in the gaming industry. The choice of venue was also critical; the Eastern District of Texas was widely regarded at the time as a plaintiff-friendly "rocket docket" for patent cases, known for its fast trial schedules and disinclination to dismiss cases early, which often pressured defendants into settling. The public and vocal stance taken by Mojang's founder against software patents brought mainstream attention to the ongoing debate over their impact on the software industry. The asserted patent itself was heavily litigated, having been the subject of over 65 district court cases and multiple challenges at the Patent Trial and Appeal Board (PTAB).

Key legal developments & outcome

Major rulings, motions, claim construction, settlements, and the present posture or final disposition.

Patent Infringement Action Against Minecraft Developer Dismissed Following Patent Invalidation

Case Summary: Uniloc Luxembourg S.A.'s patent infringement lawsuit against Mojang AB, the developer of the popular game Minecraft, was dismissed on October 14, 2016. The dismissal followed the invalidation of the asserted patent, U.S. Patent No. 5,490,216, in a parallel proceeding before the Patent Trial and Appeal Board (PTAB).

Key Legal Developments

Filing and Initial Pleadings (2012)

2012-07-20: Complaint Filed
Uniloc Luxembourg S.A. and its US subsidiary filed a patent infringement complaint against Mojang AB in the U.S. District Court for the Eastern District of Texas. The suit alleged that the Android version of Minecraft: Pocket Edition infringed U.S. Patent No. 5,490,216. This patent, titled "System for Software Registration," generally relates to a method for preventing unauthorized use of software by requiring communication with a server for a license check. The complaint was one of many filed by Uniloc against various game developers in the same district, alleging infringement of the same patent. Notably, the complaint initially misspelled the accused product as "Mindcraft."
Initial Response
Markus "Notch" Persson, the creator of Minecraft, publicly decried the lawsuit as an example of the problems with software patents and vowed to vigorously defend against the infringement claims. He tweeted, "if needed, I will throw piles of money at making sure they don't get a cent." Specific details regarding Mojang's formal answer and any counterclaims are not available in public web sources, but would have been filed in late 2012.

Parallel PTAB Proceedings and Their Impact

While the district court case was in its early stages, the '216 patent came under significant attack at the U.S. Patent and Trademark Office. Other companies sued by Uniloc, including Sega, Ubisoft, and Kaspersky Lab, challenged the patent's validity by filing petitions for Inter Partes Review (IPR) before the PTAB.

2014-10-28: IPR Petition Filed
Kaspersky Lab filed an IPR petition (IPR2015-00178) against the '216 patent. Other petitions from companies like Sega and Ubisoft were also filed around this time. These proceedings argued that the patent's claims were not novel and were obvious in light of prior art.
Strategic Significance: Motion to Stay
Given the active IPR proceedings that could invalidate the patent entirely, it is standard practice for defendants in district court litigation to file a motion to stay the case pending the outcome of the PTAB review. While a specific docket entry for such a motion in the Mojang case is not publicly available, the timing of the case's termination strongly suggests that a stay was likely granted or that the case saw little activity pending the PTAB's decision.
2016-03-00: Patent Claims Invalidated by PTAB
In a final written decision in the consolidated IPRs brought by Sega and others, the PTAB found all 20 claims of U.S. Patent No. 5,490,216 to be unpatentable. The Board determined the patent was invalid as anticipated and obvious over prior art. This decision was a fatal blow to Uniloc's litigation campaign based on the '216 patent.

Final Disposition (2016)

2016-10-14: Case Dismissed
Following the PTAB's invalidation of the '216 patent, the district court case against Mojang was dismissed. Although the specific dismissal order is not available through public web search, patent litigation is typically terminated when the patent-in-suit is found invalid. The dismissal was likely the result of a joint motion by the parties or a motion by Mojang, arguing that the invalidation of the patent rendered Uniloc's infringement claims moot.

Post-Dismissal Developments

2017-10-23: Federal Circuit Affirms Invalidation
Uniloc appealed the PTAB's decision to the U.S. Court of Appeals for the Federal Circuit. The appellate court affirmed the PTAB's finding of invalidity, cementing the demise of the '216 patent. This decision in Uniloc USA, Inc. v. Sega of America, Inc. ultimately validated the defense strategy employed by the various companies Uniloc had targeted.

Plaintiff representatives

Counsel of record for the plaintiff(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).

Defendant representatives

Counsel of record for the defendant(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).

Kirkland & Ellis
- Gregory S. Arovas · lead counsel
- Todd M. Friedman · lead counsel
- Robert A. Appleby · of counsel
- Jeanne M. Heffernan · of counsel
O'Melveny & Myers
- Stephen C. Steinberg
- Darrell S. Gay
Wolf, Greenfield & Sacks

Counsel for Defendant Mojang AB

Mojang AB assembled a robust defense team from the intellectual property powerhouse Kirkland & Ellis LLP, known for its extensive patent litigation experience. While some initial notices of appearance were filed by attorneys from other firms, the primary defense was handled by the Kirkland team.

Lead Counsel:

Gregory S. Arovas - Partner, Kirkland & Ellis LLP (New York)
- A nationally recognized top-tier IP litigator, Arovas has led numerous high-stakes patent cases for major technology clients like Intel, Samsung, and IBM.
Todd M. Friedman - Partner, Kirkland & Ellis LLP (New York)
- An experienced trial lawyer focusing on intellectual property, Friedman has litigated high-profile patent cases across the country and before the ITC for clients including Samsung and Intel.

Of Counsel / Additional Counsel:

Robert A. Appleby - Partner, Kirkland & Ellis LLP (New York)
- An IP litigation partner with extensive experience in federal courts, including jury trials involving complex electrical and software technologies.
Jeanne M. Heffernan - Partner, Kirkland & Ellis LLP (New York, later Austin)
- A seasoned trial lawyer who now leads the firm's IP litigation practice in Texas, Heffernan has won numerous patent infringement trials across the U.S. and at the ITC.

Early in the case, Mojang was also represented by attorneys from O'Melveny & Myers LLP and Wolf, Greenfield & Sacks, P.C. who filed initial appearances or were involved in pre-trial motions.

Stephen C. Steinberg - O'Melveny & Myers LLP (San Francisco)
- A trial lawyer specializing in intellectual property and complex business litigation, including patent cases related to software and networking technologies. This information may refer to a different attorney with the same name, as public records show multiple attorneys named Stephen Steinberg.
Darrell S. Gay - O'Melveny & Myers LLP (New York)
- An experienced attorney, though his primary focus appears to be in labor and employment law rather than patent litigation.
Michael D. Rader - Wolf, Greenfield & Sacks, P.C. (New York)
- Head of Wolf Greenfield's New York Office, Rader is an experienced trial lawyer who has been lead counsel in numerous patent and trade secret cases and is highly ranked for his work in inter partes reviews (IPRs) before the PTAB.
Christina A. Liro (now Christina M. Licursi) - Wolf, Greenfield & Sacks, P.C. (Boston)
- An attorney whose practice focuses on trademark and copyright matters, including prosecution and litigation.
Neil P. Ferraro - Wolf, Greenfield & Sacks, P.C. (Boston)
- Chair of the firm's Mechanical Technologies Practice, Ferraro's work centers on patent procurement, clearance analyses, and counseling.

Record id: 5490216-6-12-cv-01013 · edit in Admin