Uniloc USA, Inc. v. McAfee, Inc.

Case Overview and Background

This litigation involved a dispute between Uniloc USA, Inc., a well-known patent assertion entity (PAE), and McAfee, Inc., a major cybersecurity technology company. Uniloc, which originally developed copy protection software, shifted its business model in the early 2000s to focus on licensing and litigating its patent portfolio. McAfee is an operating company that develops and sells security software to consumers and businesses, including antivirus and internet security suites. The lawsuit alleged that McAfee's software, particularly its security suites like McAfee Total Protection 2009 and McAfee Internet Security 2009, infringed Uniloc's patent covering software activation and anti-piracy technology. These McAfee products contained features designed to prevent unauthorized copying and ensure valid licenses, which became the focal point of the infringement claims.

The case centered on a single patent: U.S. Patent No. 5,490,216. This patent, foundational to Uniloc's litigation campaigns, describes a system for software registration that prevents piracy by creating a unique identification for the user's machine to ensure the software is used on only one platform. The technology was aimed at combatting "casual copying" of software in violation of license agreements. The lawsuit was filed in the U.S. District Court for the Eastern District of Texas, a venue famously popular with patent plaintiffs during this era. Known for its fast docket, plaintiff-friendly juries, and reluctance to transfer cases, the Eastern District of Texas was a strategic choice for PAEs like Uniloc seeking to pressure defendants into early settlements.

This case is notable as part of Uniloc's extensive and high-profile litigation campaign involving the '216 patent, which was asserted against over a hundred technology companies, including a major lawsuit against Microsoft that resulted in a $388 million jury verdict (though this was later vacated and confidentially settled). The sheer volume of litigation solidified Uniloc's reputation as a prolific and formidable PAE. The widespread assertion of the '216 patent made it infamous in the tech industry. While this specific case against McAfee was dismissed, likely due to a settlement, the broader campaign around the '216 patent had a significant market impact, forcing many companies to expend resources on litigation or licensing. The patent was eventually invalidated years later by the Patent Trial and Appeal Board (PTAB), but not before Uniloc had generated substantial revenue from it.

An analysis of the patent infringement litigation Uniloc USA, Inc. v. McAfee, Inc. reveals a case that was part of a broader, aggressive litigation campaign by Uniloc, which ultimately concluded with a likely settlement and dismissal before any substantive court rulings on the merits of the infringement claims.

Filing and Initial Pleadings

Uniloc USA, Inc. filed its complaint against McAfee, Inc. on November 19, 2009, in the U.S. District Court for the Eastern District of Texas, a venue known at the time for being favorable to patent holders. The lawsuit accused McAfee's software products of infringing U.S. Patent No. 5,490,216, which relates to a system for software registration and activation designed to prevent unauthorized copying.

This lawsuit was one of many filed by Uniloc against a wide array of technology companies following a significant jury verdict in its favor against Microsoft over the same '216 patent. This wave of litigation led critics to label Uniloc as a "patent troll." McAfee would have filed an answer to the complaint, likely denying infringement and asserting affirmative defenses and counterclaims of patent invalidity, although the specific document is not publicly available through general web searches.

Pre-trial and Discovery Phase

The case proceeded through the initial stages of litigation, including discovery. However, information regarding specific pre-trial motions, such as motions to dismiss, transfer, or for summary judgment, is not readily available in public sources. Similarly, details on the claim construction (Markman) process and any subsequent rulings by the court are not publicly documented. The case's relatively short lifespan of approximately 17 months suggests it did not advance to a trial.

Final Disposition: Settlement and Dismissal

The court docket for case number 6:09-cv-00538 indicates that the case was terminated and formally dismissed on April 12, 2011. The absence of any publicly available judicial opinions, trial records, or a verdict, combined with the dismissal, strongly indicates that the parties reached a confidential settlement agreement.

Settling was a common outcome for defendants in Uniloc's litigation campaign. Of the 73 companies Uniloc sued around this period, at least 25 were reported to have settled out of court. These settlements were often driven by the high costs and risks associated with patent litigation, rather than the merits of the infringement claims.

Parallel PTAB Proceedings

There were no parallel proceedings at the Patent Trial and Appeal Board (PTAB) concerning the '216 patent during the pendency of the Uniloc v. McAfee litigation. The America Invents Act (AIA), which introduced the inter partes review (IPR) process that allows for administrative challenges to patent validity, was signed into law in September 2011 and its IPR provisions took effect in 2012, after this case had already been dismissed.

Notably, the '216 patent was later the subject of multiple IPR petitions and was eventually invalidated, but these proceedings occurred years after the resolution of the McAfee case. This subsequent invalidation had no direct effect on the outcome of this litigation but was a significant development in Uniloc's broader patent assertion campaign.

Based on court filings in similar patent cases involving Uniloc USA, Inc. in the Eastern District of Texas, the following attorneys were the likely counsel of record representing the plaintiff in its case against McAfee, Inc. Uniloc consistently used a combination of the same law firms for its litigation campaigns in this jurisdiction during the period this case was active.

Plaintiff's Counsel

• Name: James L. Etheridge

  • Role: Lead Counsel
  • Firm: Etheridge Law Group, PLLC (Southlake, TX)
  • Note: A registered patent attorney, Mr. Etheridge has represented Uniloc as lead counsel in numerous patent infringement cases and has been involved in over 550 patent litigations and more than 185 inter partes review (IPR) proceedings.

• Name: T. John "Johnny" Ward, Jr.

  • Role: Local Counsel
  • Firm: Ward & Smith Law Firm (now Miller Fair Henry, PLLC) (Longview, TX)
  • Note: Mr. Ward, Jr. is a prominent East Texas trial attorney well-known for handling patent litigation in the district; his father, T. John Ward, was a U.S. District Judge in the same court.

• Name: J. Wesley "Wes" Hill

  • Role: Local Counsel
  • Firm: Ward & Smith Law Firm (now practicing at J. Wesley Hill, P.C.) (Longview, TX)
  • Note: An experienced trial lawyer in the Eastern District of Texas, Mr. Hill has been counsel of record in over 1,100 cases and served as chairman of the district's Local Rules Advisory Committee.

Although a definitive complaint for the 6:09-cv-00538 case was not located in the search, a complaint from a 2012 Uniloc case filed in the same court lists these three attorneys and their respective firms as counsel for Uniloc. This pattern of representation was common for Uniloc's litigation campaigns.

Based on a thorough review of available legal and news databases, the specific attorneys who represented defendant McAfee, Inc. in its litigation with Uniloc have not been publicly identified in readily accessible records.

Court filings from the 2009-2011 period for case number 6:09-cv-00538 in the Eastern District of Texas, which would definitively list the counsel of record, are not available through standard legal research platforms. The case was filed and terminated before widespread digitization and free access to such dockets became common.

During this era, McAfee was frequently represented in major intellectual property litigation by attorneys from the now-defunct law firm Howrey LLP. Given Howrey's prominent patent litigation practice and its known representation of technology companies in the Eastern District of Texas, it is highly probable that McAfee retained the firm for this matter. However, without access to the specific docket sheet or subsequent reporting on the case, the names of individual attorneys who appeared on behalf of McAfee cannot be confirmed. The case's dismissal in April 2011, likely due to a confidential settlement, further limits the public record. The dissolution of Howrey LLP in March 2011 also complicates historical attorney searches.

Therefore, while circumstantial evidence points to the likelihood of representation by Howrey LLP, the specific counsel for McAfee in this case remains unconfirmed from available sources.