United States Court of Appeals 

for the Federal Circuit ______________________ 

UNILOC USA, INC., UNILOC LUXEMBOURG S.A.,

Plaintiffs-Appellants

UNILOC 2017 LLC,

Plaintiff

v.

APPLE INC.,

Defendant-Appellee

ELECTRONIC FRONTIER FOUNDATION,

Intervenor-Appellee

______________________ 

2021-1568, 2021-1569, 2021-1570, 2021-1571, 2021-1573

______________________ 

Appeals from the United States District Court for the 

Northern District of California in Nos. 3:18-cv-00358-

WHA, 3:18-cv-00360-WHA, 3:18-cv-00363-WHA, 3:18-cv00365-WHA, 3:18-cv-00572-WHA, Judge William H. 

Alsup.

______________________ 

Decided: February 9, 2022

______________________ 

AARON JACOBS, Prince Lobel Tye LLP, Boston, MA, argued for plaintiffs-appellants. Also represented by JAMES 

J. FOSTER. 

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2 UNILOC USA, INC. v. APPLE INC. 

 DOUG J. WINNARD, Goldman Ismail Tomaselli Brennan 

& Baum LLP, Chicago, IL, argued for defendant-appellee. 

Also represented by ALAN ERNST LITTMANN, MICHAEL T.

PIEJA; CATHERINE CARROLL, DAVID P YIN, Wilmer Cutler 

Pickering Hale and Dorr LLP, Washington, DC; MARK D.

SELWYN, THOMAS GREGORY SPRANKLING, Palo Alto, CA. 

 ALEXANDRA HELEN MOSS, Electronic Frontier Foundation, San Francisco, CA, argued for intervenor-appellee. 

Also represented by AARON DAVID MACKEY. 

 ______________________ 

Before LOURIE, MAYER, and CUNNINGHAM, Circuit Judges. 

Opinion for the court filed by Circuit Judge LOURIE. 

Dissenting opinion filed by Circuit Judge MAYER. 

LOURIE, Circuit Judge. 

Uniloc USA, Inc., and Uniloc Luxembourg, S.A. (collectively, “Uniloc”) appeal from a decision of the United States 

District Court for the Northern District of California refusing to seal certain documents in several related cases between Uniloc and Apple Inc. (“Apple”). See Uniloc USA, 

Inc. v. Apple, Inc., 508 F. Supp. 3d 550 (N.D. Cal. 2020) 

(“Decision”). For the reasons provided below, we vacate 

and remand. 

BACKGROUND

This is Uniloc’s second appeal regarding the sealing of 

documents. In its first appeal, Uniloc attempted to defend 

requests to seal matters of public record, such as quotations of this court’s opinions and a list of patent cases 

Uniloc had filed. See Uniloc 2017 LLC v. Apple, Inc., 964 

F.3d 1351 (Fed. Cir. 2020). The district court correctly applied its local rules to reject these requests in their entirety 

and to reject Uniloc’s request for reconsideration. This 

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UNILOC USA, INC. v. APPLE INC. 3

court affirmed the district court’s rulings in nearly all respects.

We also held, however, that the district court must conduct a more detailed analysis on whether confidential licensing information of certain third-party licensees of 

Uniloc’s patents should be sealed. Id. at 1363–64. As for 

this subset of information, we remanded for the district 

court to “make particularized determinations as to whether 

and, if so, to what extent, the materials of each of these 

parties should be made public.” Id. at 1364. The present 

appeal is narrowly directed to this third-party licensing information. 

One threshold issue raised by this court in its remand 

order was whether Uniloc’s financier, Fortress Credit Co. 

LLC (“Fortress”), should be considered a third party or a 

Uniloc-related entity for purposes of sealing. Uniloc moved

to seal or redact third-party documents that revealed licensing terms, licensees’ names, amounts paid, and dates. 

One document at issue was a Fortress investment memorandum that contained Fortress’s investment criteria and 

other third-party licensing information. Apple did not oppose Uniloc’s motion. The Electronic Frontier Foundation 

(“EFF”) moved to intervene to argue in favor of unsealing, 

and the district court granted its motion.

The district court denied Uniloc’s motion. The court 

explained that “[t]he public has every right to account 

for . . . anyone holding even a slice of the public grant.” Decision at 554. It added that “patent licenses carry unique 

considerations” that bolster the public’s right of access, including the valuation of patent rights. Id. at 555. The 

court further stated that “[t]he public has an interest in inspecting the valuation of the patent rights” reflected in 

Uniloc’s licenses. Id. It then suggested that disclosure of 

patent licensing terms would facilitate “up-front cost evaluations of potentially infringing conduct,” “driv[e] license 

values to a more accurate representation of the 

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4 UNILOC USA, INC. v. APPLE INC. 

technological value of the patent,” and help “inform reasonable royalties in other courts.” Id.

The district court also determined that “the dates and 

dollar amounts involved in Uniloc’s patent licenses go to 

the heart of the primary dispute, that of Uniloc’s standing 

(or lack of) to sue.” Id. (internal quotation marks omitted). 

The court then ordered that the licensing information, including the identity of the licensees, be unsealed in full.

With respect to the Fortress investment memorandum, 

the district court found that Fortress did not comply with 

Local Rule 79-5(e)(1) of the Northern District of California 

because Uniloc filed a declaration in support of sealing, instead of Fortress, as required by the rules. Id. On this 

basis alone, the court denied Uniloc’s request to seal this 

document. 

Uniloc filed the present notice of appeal to this court. 

We have jurisdiction pursuant to the collateral order doctrine. See Uniloc 2017, 964 F.3d at 1357–58. 

DISCUSSION

This appeal involves the standard for sealing court records, not substantive issues of patent law. Thus, Ninth 

Circuit law applies. Uniloc 2017, 964 F.3d at 1357. “In the 

Ninth Circuit, a district court’s decision to seal or unseal 

court records is reviewed for abuse of discretion.” Id. “A 

district court abuses its discretion if it bases its decision on 

an erroneous legal standard or clearly erroneous findings 

of fact.” Apple Inc. v. Samsung Elecs. Co., 727 F.3d 1214, 

1221 (Fed. Cir. 2013) (internal quotation marks omitted). 

A district court also abuses its discretion if the reviewing 

court “has a definite and firm conviction that the court below committed a clear error of judgment in the conclusion 

it reached upon a weighing of the relevant factors.” Id.

Sealing may be appropriate to keep records from being 

used “as sources of business information that might harm 

a litigant’s competitive standing.” Nixon v. Warner 

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UNILOC USA, INC. v. APPLE INC. 5

Commc’ns, Inc., 435 U.S. 589, 598 (1978). In the Ninth Circuit, “compelling reasons” are needed to seal judicial records related to a dispositive motion. Kamakana v. City & 

Cnty. of Honolulu, 447 F.3d 1172, 1179 (9th Cir. 2006). 

Such compelling reasons include preventing the release of 

trade secrets. Id. 

Uniloc and Apple both argue that the district court 

erred in failing to follow this court’s remand instructions to 

make particularized determinations as to whether thirdparty licensing information should be sealed. The parties 

contend that the court erroneously applied heightened 

scrutiny to requests to seal licensing information. Apple 

adds that such information can rise to the level of a trade 

secret, which is the type of information that the Ninth Circuit has deemed sealable. Uniloc cites various cases from 

the district court and the Ninth Circuit sealing similar 

types of information. See, e.g., Uniloc 2017 LLC v. Google 

LLC, 508 F. Supp. 3d 556, 575 n.23 (N.D. Cal. 2020); In re 

Elec. Arts, Inc., 298 F. App’x 568, 569 (9th Cir. 2009).

Intervenor EFF counters that denying Uniloc’s motion 

was a sound use of the district court’s discretion. EFF adds 

that the court conscientiously weighed Uniloc’s submissions in support of sealing and concluded that they were 

insufficient to overcome the public’s strong interest in access.

We conclude that the district court failed to follow our 

remand instructions to make particularized determinations as to whether the third-party licensing information 

sought to be sealed should be made public. That failure 

was an abuse of discretion. The first time this case appeared before us, “the district court failed to make findings 

sufficient to allow us to adequately assess whether it 

properly balanced the public’s right of access against the 

interests of the third parties in shielding their financial 

and licensing information from public view.” Uniloc 2017, 

964 F.3d at 1364. We explained that “there is no indication 

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6 UNILOC USA, INC. v. APPLE INC. 

in the record that the court assessed whether any of the 

third-party information was protectable as a trade secret 

or otherwise entitled to protection under the law.” Id. (internal quotation marks omitted). We thus remanded and 

instructed that the district court “make particularized determinations as to whether and, if so, to what extent, the 

materials of each of these parties should be made public.” Id. Yet, on remand, the district court again neglected 

to make sufficient findings. Nowhere in the record does the 

district court discuss whether any of the third-party materials constitute protectable trade secrets. See Decision. For that reason, and because it is relevant to the 

protectability of the license information, we remand for the 

district court to carry out the examination this court instructed it to do.

We also disagree with the district court’s statements 

purportedly supporting its decision concerning the public’s 

right of access to information relating to patent licenses. 

The court stated that “[t]he public has an interest in inspecting the valuation of patent rights . . . particularly 

given secrecy so often plays into the patentee’s advantage 

in forcing bloated royalties.” Decision at 555. The court 

thus made an error of law in making a blanket ruling that 

the public has a broad right to licensing information relating to patents. 

The public indeed does have an interest in patents, but 

it is an interest in ensuring that patents are not procured 

by fraud, or other improper means. See U.S. v. Glaxo Grp. 

Ltd., 410 U.S. 52, 57–58 (1973) (discussing the public interest in free competition and ensuring that patents are not 

obtained by fraudulent means). This is because patents are 

to be granted only if they are valid, i.e., they describe and 

claim inventions meeting the requirements of the law, inventions that are novel, not obvious, and described in an 

enabling manner.

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UNILOC USA, INC. v. APPLE INC. 7

The enforcement of patents is also imbued with the 

public interest. Litigants and their counsel are subject to

Rule 11 of the Federal Rules of Civil Procedure, requiring 

that parties presenting a case perform an “inquiry reasonable under the circumstances” as to the legal and factual 

merits of the claim, and they are subject to sanctions for an 

exceptional case and for a frivolous appeal. Fed. R. Civ. 

P. 11. Moreover, a patent can be held to be unenforceable 

for inequitable conduct in its procurement. But no rule of 

law or binding precedent says that the public is generally 

entitled to know what consideration a patentee receives for 

licensing its patent.

The district court stated that patents are granted in 

derogation of the usual free flow of goods and ideas. It 

stated colorfully that “a patent owner is a tenant on a plot 

within the public realm of public knowledge, and a licensee 

a subtenant.” Decision at 554. Those statements are incorrect, as patents are granted for inventions that, until 

their disclosure, did not constitute any flow of goods. Goods 

claimed in a patent, if the patent is valid, did not previously 

flow. Patents are granted for new inventions, those which 

did not flow in commerce before the invention. A properlyissued patent creates new land, keeping within the court’s 

metaphor. It expands public knowledge.

The district court stated that the public has a strong 

interest in knowing the full extent of the terms and conditions involved in the exercise of its patent rights and in seeing the extent to which the patentee’s exercise of the 

government grant affects commerce. But this is not an antitrust case or an FTC investigation involving unlawful restraint of trade or monopolization. It is a suit for patent 

infringement. Absent an issue raised by the parties concerning license rights and provisions, there is no public interest or entitlement to information concerning 

consideration for the grant of licenses. The parties are in 

agreement that license information here should be sealed 

and protected. The only differing voice has come from an 

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8 UNILOC USA, INC. v. APPLE INC. 

independent nonparty, appointed by the district court to 

advocate unsealing the information that neither party 

wished to unseal. But we have seen no citation of a rule of 

law providing a presumption of access in a patent infringement suit to information concerning consideration for the 

licensing of a patent.

An earlier issue in this case was a question of alleged 

indiscriminate oversealing in patent and commercial cases 

nationwide. For that reason, in the earlier appearance of 

this case in our court, we affirmed-in-part the district 

court’s refusal to seal all the requested information and remanded for the limited purpose of assessing whether thirdparty licensing information should be sealed. But oversealing was no longer the issue on remand.

The district court did note that a key issue in this case 

was whether Uniloc had received at least $20 million in 

royalties needed under licensing agreements to provide it 

with standing to sue. But that fact can be proved without 

opening up all the licenses that the court granted access to.

Lastly, for the Fortress investment memorandum, any 

procedural failings of Uniloc and Fortress cannot justify 

unsealing the information of third parties. The district 

court should have considered whether the interests of the 

implicated third parties outweigh the public’s interest in 

seeing individual licensing details that are not necessary 

for resolving this case.

We therefore vacate and remand for the district court 

to comply with this court’s previous remand instructions. 

CONCLUSION

We have considered EFF’s remaining arguments, but 

we find them unpersuasive. Because the district court 

failed to follow our previous remand instructions to make 

particularized determinations as to whether third-party licensing information should be sealed, we vacate the court’s 

denial and remand for the court to perform that analysis. 

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UNILOC USA, INC. v. APPLE INC. 9

VACATED AND REMANDED

COSTS

No costs.

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United States Court of Appeals 

for the Federal Circuit ______________________ 

 

UNILOC USA, INC., UNILOC LUXEMBOURG S.A.,

Plaintiffs-Appellants

UNILOC 2017 LLC,

Plaintiff

v.

APPLE INC.,

Defendant-Appellee

ELECTRONIC FRONTIER FOUNDATION,

Intervenor-Appellee

______________________ 

2021-1568, 2021-1569, 2021-1570, 2021-1571, 2021-1573

______________________ 

Appeals from the United States District Court for the 

Northern District of California in Nos. 3:18-cv-00358-

WHA, 3:18-cv-00360-WHA, 3:18-cv-00363-WHA, 3:18-cv00365-WHA, 3:18-cv-00572-WHA, Judge William H. 

Alsup.

______________________ 

MAYER, Circuit Judge, dissenting.

The district court adhered to our remand instructions 

when it carefully weighed the public’s right of access to 

court records against the interests of third-party patent licensees in shielding their licensing information from public 

view. The court’s decision to deny the motion by Uniloc 

Case: 21-1568 Document: 72 Page: 10 Filed: 02/09/2022
2 UNILOC USA, INC. v. APPLE INC. 

USA, Inc., and Uniloc Luxembourg, S.A. (collectively, 

“Uniloc”) to seal information related to its licenses with 

third parties was a sound exercise of discretion given that 

the dates and dollar amounts of those licenses went “to the 

heart of the primary dispute” between Uniloc and Apple 

Inc., which was whether Uniloc had generated sufficient licensing revenue to provide it with standing to sue. Uniloc 

USA, Inc. v. Apple, Inc., 508 F. Supp. 3d 550, 555 (N.D. Cal. 

2020) (“District Court Decision”) (internal quotation marks 

omitted). Uniloc’s third-party licensees, moreover, failed to 

demonstrate a compelling interest in keeping their licensing information confidential. See id. at 554. I therefore 

respectfully dissent.

The public’s right of access to documents filed in connection with a dispositive pleading is sacrosanct. See

Kamakana v. City & Cnty. of Honolulu, 447 F.3d 1172, 

1179 (9th Cir. 2006) (explaining that “the strong presumption of access to judicial records applies fully to dispositive 

pleadings, including motions for summary judgment and 

related attachments,” given that “the resolution of a dispute on the merits, whether by trial or summary judgment, 

is at the heart of the interest in ensuring the public’s understanding of the judicial process and of significant public 

events” (citations and internal quotation marks omitted)); 

see also DePuy Synthes Prods., Inc. v. Veterinary Orthopedic Implants, Inc., 990 F.3d 1364, 1369 (Fed. Cir. 2021) 

(stating that the “longstanding right” of access to judicial 

records and documents “helps secure the integrity and 

transparency of the judicial process”); In re Chiquita 

Brands Int’l, Inc., 965 F.3d 1238, 1242 (11th Cir. 2020) (“A 

lawsuit is a public event. Parties who ask a court to resolve 

a dispute must typically walk in the public eye.”); In re 

Cendant Corp., 260 F.3d 183, 192 (3d Cir. 2001) (explaining 

that “[t]he public’s right of access extends beyond simply 

the ability to attend open court proceedings” and includes 

“a pervasive common law right to inspect and copy public 

records and documents, including judicial records and 

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UNILOC USA, INC. v. APPLE INC. 3

documents” (citations and internal quotation marks omitted)). The right can be abridged only in certain narrow circumstances, and the party seeking to seal information 

bears the burden of providing “sufficiently compelling reasons for doing so.” Foltz v. State Farm Mut. Auto. Ins. Co., 

331 F.3d 1122, 1135 (9th Cir. 2003). While “[m]any a litigant would prefer that the subject of [its] case . . . be kept 

from the curious (including its business rivals and customers),” those who “call on the courts . . . must accept the 

openness that goes with subsidized dispute resolution by 

public (and publicly accountable) officials.” Union Oil Co. 

v. Leavell, 220 F.3d 562, 567–68 (7th Cir. 2000). 

What constitutes a compelling reason to seal documents is a determination “best left to the sound discretion 

of the trial court.” Nixon v. Warner Commc’ns, Inc., 435 

U.S. 589, 599 (1978). Here, the district court did not abuse 

its discretion in concluding that Uniloc’s third-party licensees failed to make out a compelling case for shielding their 

licensing information from public view. Notably, not a single licensee directly filed a request with the district court 

seeking to seal its licensing information. See District Court 

Decision, 508 F. Supp. 3d at 554. Instead, when this case 

was initially pending before the district court, “Uniloc solicited the views of all one hundred nine licensees regarding the sealing of their patent license details.” Id. While 

thirty-one licensees requested that all or part of their licensing information be kept confidential, only thirteen licensees submitted declarations in support of their 

requests. See id.; J.A. 436–50, 805–37 (sealed third-party 

declarations).

These declarations, by and large, are vague and conclusory and fail to provide concrete evidence that the dissemination of licensing information would cause the licensees 

significant competitive injury in future licensing negotiations or that the licensing information in question otherwise qualifies as a trade secret. See J.A. 436–50, 805–37; 

see also Total Recall Techs. v. Luckey, No. 21-15590, 2021 

Case: 21-1568 Document: 72 Page: 12 Filed: 02/09/2022
4 UNILOC USA, INC. v. APPLE INC. 

WL 5401664, at *1 (9th Cir. Nov. 18, 2021) (affirming a district court’s order denying seven motions to seal where the 

party seeking sealing failed to provide “specific” or “compelling” evidence for doing so); DePuy, 990 F.3d at 1373 (affirming a district court order unsealing purportedly 

confidential business information where the declarations 

filed by the party seeking to prevent disclosure failed to address how making the information public “would harm its 

proprietary and competitive business interests” (citations 

and internal quotation marks omitted)); Kamakana, 447 

F.3d at 1182 (explaining that a party’s “conclusory”declarations about the confidential nature of certain documents 

did “not rise to the level of ‘compelling reasons’ sufficiently 

specific to bar the public access to the documents”). Indeed, 

only one of the publicly available declarations even uses 

the term “trade secret” and that declaration broadly, and 

without meaningful support, states that all the company’s 

“financial records” qualify as trade secrets. J.A. 438. Importantly, moreover, none of the declarations adequately 

explain why redacting the names of the third-party licensees—but fully disclosing the dates and dollar amounts of 

their licenses with Uniloc—would not serve to eradicate 

any even arguable concern regarding the disclosure of 

trade secret information. See N.D. Cal. Civ. Local R. 79-

5(b) (2018) (emphasizing that any motion to seal “must be 

narrowly tailored to seek sealing only of sealable material”

(emphasis added)).

The fact that other courts, under other circumstances, 

have granted motions to seal patent licensing information 

does not mean that the district court abused its discretion 

in declining to do so here. This case involves the unusual 

situation in which Uniloc, the party seeking the sealing order, forfeited its right to keep its licensing information confidential because its “original sealing request was grossly 

excessive and its flouting of Local Rule 79-5 particularly 

flagrant.” Uniloc 2017 LLC v. Apple, Inc., 964 F.3d 1351, 

1361 (Fed. Cir. 2020).

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UNILOC USA, INC. v. APPLE INC. 5

I disagree with this court’s conclusion that the district 

court “made an error of law in making a blanket ruling that 

the public has a broad right to licensing information relating to patents.” Ante at 6. The public presumptively has a 

broad right of access to all information filed with a court in 

connection with a dispositive motion, and this includes patent licensing information. See, e.g., Kamakana, 447 F.3d 

at 1180 (explaining that “judicial records are public documents almost by definition, and the public is entitled to access by default”).

“The political branches of government claim legitimacy 

by election, judges by reason. Any step that withdraws an 

element of the judicial process from public view makes the 

ensuing decision look more like fiat, which requires compelling justification.” Union Oil, 220 F.3d at 568. Because 

the third-party licensees failed to supply compelling reasons for overriding the strong presumption in favor of public access, I would affirm.

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