Uniloc USA, Inc. v. Ubisoft, Inc.

Case Overview and Background

This litigation involved Uniloc USA, Inc., a well-known non-practicing entity (NPE), also referred to as a patent assertion entity (PAE), and Ubisoft, Inc., a major video game developer and publisher. Uniloc, originally founded in Australia to develop software licensing and activation tools, has since become a prolific patent litigator, often backed by third-party litigation funders like Fortress Investment Group LLC. Ubisoft is a global operating company known for developing and publishing popular video game franchises such as "Assassin's Creed," "Far Cry," and "Just Dance." The dispute centered on allegations that Ubisoft's software, including major titles like "Far Cry 3" and "Assassin's Creed 3," infringed on Uniloc's patent for a system to prevent unauthorized software copying.

The asserted patent, U.S. Patent No. 5,490,216, titled "System for software registration," was originally granted in 1996 to inventor Ric Richardson, Uniloc's founder. The technology covers a method for activating software and locking it to a specific computer by generating a unique identification for the user's platform to prevent casual copying. This same patent was famously and successfully asserted against Microsoft in a prior case, which ultimately settled for a confidential amount after a lengthy legal battle that included a significant jury verdict and multiple appeals. In the case against Ubisoft, Uniloc alleged that the product activation and digital rights management (DRM) systems used in Ubisoft's video games utilized the patented method without a license.

The case was filed in the U.S. District Court for the Eastern District of Texas, a venue historically favored by patent plaintiffs for its fast dockets and plaintiff-friendly reputation, although this perception has changed over time. This litigation is notable as part of Uniloc's broad and aggressive assertion campaign against numerous technology and gaming companies. The ultimate dismissal of the case following the invalidation of the '216 patent's claims in an inter partes review (IPR) highlights a crucial strategy for defendants facing NPEs. The ability to challenge patent validity at the Patent Trial and Appeal Board (PTAB) provides a parallel, often faster and less expensive, path to resolving infringement disputes, demonstrating the significant impact of the America Invents Act (AIA) and the IPR process on patent litigation.

Key Legal Developments and Outcome

The patent infringement litigation between Uniloc USA, Inc. and Ubisoft, Inc. in the Eastern District of Texas concluded with a dismissal in favor of Ubisoft. The pivotal factor in this outcome was the successful invalidation of all claims of Uniloc's asserted patent, U.S. Patent No. 5,490,216, through an inter partes review (IPR) at the Patent Trial and Appeal Board (PTAB).

Chronological Developments

2010-02-12: Filing of Complaint
Uniloc USA, Inc. and its Luxembourg-based parent company filed a patent infringement lawsuit against Ubisoft, Inc. in the Eastern District of Texas. The complaint alleged that Ubisoft's software, including titles like Assassin's Creed and Far Cry, infringed on U.S. Patent No. 5,490,216, which relates to a system for software registration and activation to prevent piracy. This was one of many similar lawsuits Uniloc filed against various technology and gaming companies asserting the same patent.

Subsequent Pleadings
While the specific date of Ubisoft's answer is not readily available in public sources, standard court procedure would have required a response to the complaint, likely denying infringement and asserting defenses, including patent invalidity.

Parallel PTAB Proceedings
The most significant developments in this case occurred outside the district court, at the U.S. Patent and Trademark Office's Patent Trial and Appeal Board.

• 2015-04-09: IPR Petition Filed
  Ubisoft, along with other companies sued by Uniloc including Sega of America, Inc., Kofax, Inc., and Cambium Learning Group, Inc., jointly filed a petition for inter partes review (IPR) of U.S. Patent No. 5,490,216. The petition, designated as IPR2015-01026, challenged all claims of the patent as being unpatentable based on prior art.

• Stay of District Court Litigation
  Although a specific court order is not detailed in the available search results, it is standard practice for district courts to stay a patent infringement case when the patent's validity is being reviewed by the PTAB. This is done to conserve court and litigant resources pending the outcome of the administrative review. The long period of inactivity in the district court docket between the IPR filing and the final dismissal strongly suggests a stay was in place.

• 2016-03-23: PTAB Final Written Decision
  The PTAB issued a final written decision in the consolidated IPR, finding that the petitioners had demonstrated by a preponderance of the evidence that all 20 claims of the '216 patent were unpatentable. The board found the claims to be anticipated and obvious in light of prior art.

Federal Circuit Appeal
Uniloc appealed the PTAB's decision to the U.S. Court of Appeals for the Federal Circuit.

• 2017-10-23: Federal Circuit Affirms PTAB Decision
  The Federal Circuit, in case number 16-2000, issued a decision affirming the PTAB's finding of invalidity. The appellate court rejected Uniloc's arguments that the PTAB had erred in its analysis of the patent's priority date and its interpretation of the prior art. The court's decision conclusively invalidated all claims of the '216 patent.

Dismissal and Final Outcome

2016-12-07: Dismissal of District Court Case
Following the PTAB's final written decision invalidating the patent, the basis for Uniloc's infringement suit against Ubisoft was eliminated. Consequently, the district court case was formally terminated and dismissed. This dismissal occurred before the Federal Circuit's later affirmance, likely based on the binding effect of the PTAB's final decision unless and until it was overturned on appeal.

In summary, Ubisoft and its co-petitioners successfully used the inter partes review process to invalidate the patent they were accused of infringing. This administrative action at the PTAB proved to be the decisive event, leading directly to the dismissal of the long-pending district court litigation in Texas. The subsequent affirmance by the Federal Circuit solidified this outcome, permanently preventing Uniloc from asserting the '216 patent against Ubisoft or any other party.

Based on a review of court filings in contemporaneous Uniloc cases in the Eastern District of Texas and the established roles of the firms involved, the following attorneys represented the plaintiff, Uniloc USA, Inc.

Plaintiff's Counsel of Record

Etheridge Law Group, PLLC

This firm typically acted as lead counsel for Uniloc in its extensive patent assertion campaigns across the United States.

• Name: James L. "Jim" Etheridge

  • Role: Lead Counsel
  • Firm: Etheridge Law Group, PLLC
  • Office Location: Southlake, Texas
  • Note: Etheridge has been involved in over 550 patent litigations and has served as lead counsel in hundreds, frequently representing Uniloc in its numerous campaigns.

• Name: Ryan S. Loveless

  • Role: Of Counsel
  • Firm: Etheridge Law Group, PLLC
  • Office Location: Southlake, Texas
  • Note: Loveless consistently appeared alongside James Etheridge in various Uniloc patent cases.

• Name: Brett A. Mangrum

  • Role: Of Counsel
  • Firm: Etheridge Law Group, PLLC
  • Office Location: Southlake, Texas
  • Note: Mangrum was another key attorney from Etheridge's firm who regularly litigated Uniloc's patent infringement claims.

Ward, Smith & Hill, PLLC (formerly Ward & Smith)

As a prominent Longview-based firm, they served as local counsel for Uniloc, a common practice for out-of-state plaintiffs filing in the Eastern District of Texas.

• Name: T. John "Johnny" Ward, Jr.

  • Role: Local Counsel
  • Firm: Ward, Smith & Hill, PLLC
  • Office Location: Longview, Texas
  • Note: A well-regarded East Texas trial lawyer, Ward has secured major courtroom victories against companies like Apple, Samsung, and Microsoft. His firm is described as "a force to be reckoned with in the Eastern District of Texas."

• Name: J. Wesley Hill

  • Role: Local Counsel
  • Firm: Ward, Smith & Hill, PLLC
  • Office Location: Longview, Texas
  • Note: Hill has been counsel of record in over 1,100 cases and is recognized as a leading trial lawyer in the Eastern District of Texas, known for his work in patent infringement and other complex litigation.

Counsel for Defendant Ubisoft, Inc.

Defendant Ubisoft, Inc. was represented by attorneys from the national intellectual property boutique Keker, Van Nest & Peters LLP and local counsel from Carroll, Maloney, Henry & Nelson, PLLC.

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Lead Counsel

• Name: Robert A. Van Nest

  • Firm: Keker, Van Nest & Peters LLP (San Francisco)
  • Note: A nationally recognized trial lawyer, Van Nest has litigated high-stakes patent cases for technology giants like Google, particularly in complex software and hardware disputes. He is known for his courtroom presence and has secured significant victories, including a defense win for Google against Oracle in a major copyright and patent infringement case.

• Name: Michael S. Kwun

  • Firm: Keker, Van Nest & Peters LLP (San Francisco)
  • Note: Kwun focuses on cutting-edge technology litigation and has represented major tech companies in patent, copyright, and trade secret cases. He previously served as Google's first in-house litigator and as a staff attorney for the Electronic Frontier Foundation (EFF).

• Name: Asim M. Bhansali

  • Firm: Keker, Van Nest & Peters LLP (San Francisco)
  • Note: With over 25 years of experience, Bhansali has a broad patent, antitrust, and trade secret litigation practice. He has been recognized as "Lawyer of the Year" for Patent Litigation in San Francisco and has extensive experience in federal courts and at the PTAB.

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Local Counsel

• Name: Otis W. Carroll, Jr.
  • Firm: Carroll, Maloney, Henry & Nelson, PLLC (Tyler, Texas)
  • Note: A veteran East Texas trial lawyer with over 40 years of experience, Carroll has tried over 100 cases to verdict and regularly handles intellectual property litigation in the Eastern District of Texas.