NOTE: This disposition is nonprecedential.

United States Court of Appeals 

for the Federal Circuit ______________________

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

Plaintiffs-Appellants

v.

APPLE INC.,

Defendant-Appellee

______________________

2018-2094

______________________

Appeal from the United States District Court for the 

Northern District of California in No. 3:18-cv-00358-WHA, 

Judge William H. Alsup.

______________________

Decided: August 30, 2019

______________________

JAMES J. FOSTER, Prince Lobel Tye LLP, Boston, MA, 

argued for plaintiffs-appellants. Also represented by 

AARON JACOBS, PAUL J. HAYES, I. 

 MICHAEL T. PIEJA, Goldman Ismail Tomaselli Brennan 

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

Also represented by LAUREN ABENDSHIEN, JENNIFER 

GREENBLATT, ALAN ERNST LITTMANN, ANDREW RIMA, EMMA 

ROSS, DOUG J. WINNARD. 

 ______________________
2 UNILOC USA, INC. v. APPLE INC.

Before PROST, Chief Judge, PLAGER and HUGHES, Circuit 

Judges.

HUGHES, Circuit Judge

Uniloc USA, Inc. and Uniloc Luxembourg S.A. appeal 

a final judgment on the pleadings in the United States District Court for the Northern District of California holding

the claims of U.S. Patent No. 6,661,203 ineligible. Uniloc 

USA, Inc. v. Apple Inc., No. C 18-00358 WHA, 2018 WL 

2287675, at *1 (N.D. Cal. May 18, 2018). After Uniloc filed 

the appeal, Apple, Inc., uncovered material suggesting

multiple jurisdictional defects. Because this material is

outside the record, we remand for the district court to supplement the record, determine whether Uniloc has standing in the first instance, and, if appropriate, cure any 

jurisdictional defects.

I

A.

This case began when Uniloc sued Apple for infringement of the ’203 patent. It is one of several ongoing patent 

infringement cases between the Uniloc entities and Apple 

in the Northern District of California.1 During discovery 

in a related proceeding, Apple requested information about

the ownership and licensing of Uniloc’s patents. Uniloc did 

not comply with those requests. 

According to Apple, on May 3, 2018, Uniloc Luxembourg, the entity that owned the ’203 patent, transferred 

its patent holdings to Uniloc 2017 LLC (May 3 transfer). 

It failed to inform Apple or the district court about this 

transfer. Uniloc 2017 then entered into a licensing agreement with Uniloc USA that gave Uniloc USA authority to 

 

1 Uniloc USA, Inc., v. Apple Inc., 3:18-cv-360, 3:18-

cv-363, 3:18-cv-365, 3:18-cv-572 (N.D. Cal.).
UNILOC USA, INC. v. APPLE INC. 3

enforce the patents. Under the licensing agreement, 

Uniloc USA would remit all enforcement proceeds to Uniloc 

2017. 

On May 18, 2018, the district court granted Apple’s motion for judgment on the pleadings after finding the claims 

of the ’203 patent were directed to non-patentable subject 

matter. Uniloc appealed. 

B.

Apple did not learn about the May 3 transfer until late 

August 2018, after the district court entered judgment in 

this case. But, because the related cases were still before 

the district court, Apple asked Uniloc to produce any documents regarding the transfer of ownership in those cases. 

Uniloc did not respond to Apple’s request, so the district 

court ordered Uniloc to “provide the Court and [Apple] with 

a detailed account setting forth the exact history of ownership of the patents-in-suit by Uniloc Luxembourg, S.A. and 

Uniloc USA, Inc. and the exact history of any ownership 

interest by Uniloc 2017, LLC” along with “complete details 

about ownership (including licensing) of the patents-insuit.” Apple’s Opp’n to Pl.-Appellant’s Mot. to Substitute 

Uniloc 2017 as Appellant, ECF No. 48, Ex. A at 9 (providing

the Court with Defendant Apple Inc.’s Notice of Motion in

Uniloc USA v. Apple Inc., 3:18-cv-360 (N.D. Cal. Oct. 25, 

2018)).

Uniloc only partially complied with the court’s order. 

While it provided documents related to the May 3 transfer 

and licensing agreements between Uniloc 2017 and Uniloc 

USA, it neglected to include documents on Uniloc Luxembourg’s patent portfolio before the May 3 transfer. After 

Apple uncovered evidence of this deficiency, the district 

court again compelled Uniloc to produce all documents in 

the related proceedings, “not just 99 percent,” about the 

ownership of the patents-in-suit. Tr. of Proceedings held 

on Sept. 4, 2018 at 18, Uniloc USA v. Apple Inc., 3:18-cv360 (N.D. Cal. Sept. 5, 2018).
4 UNILOC USA, INC. v. APPLE INC.

Uniloc produced documents relating to a loan agreement between Uniloc Luxembourg and Fortress Credit Co.

LLC. Under the loan agreement, Uniloc Luxembourg collateralized its patent portfolio in exchange for a loan. According to Apple, default would give Fortress the right to 

transfer or sublicense any of Uniloc’s patents.

Apple moved to dismiss for lack of subject matter jurisdiction in the pending related cases arguing: (1) no plaintiffs currently in the suit had standing to bring an 

infringement claim, and (2) Uniloc’s default on the loan 

agreement meant that the plaintiffs lacked standing to 

bring an infringement claim when they filed for infringement. Uniloc moved to add Uniloc 2017 as a party to those 

cases. 

The district court cured the ongoing jurisdictional defect by adding Uniloc 2017 as a party to the related cases. 

And the district court determined that the loan agreement 

with Fortress did not deprive Uniloc Luxembourg of standing to bring those suits when the claims were filed. On August 7, 2019, the court denied reconsideration on the 

Fortress issue, but stated that “at the final pretrial conference (and not before), Apple will be allowed to ask that the 

issue of default and cure be tried to the jury (or possibly the 

judge).” Citation of Supplemental Authority, ECF No. 57, 

Ex. A at 1 (providing the Court with Order Den. Mot. for 

Recons., Uniloc 2017 LLC v. Apple Inc., 3:18-cv-360 (N.D. 

Cal. Aug.7, 2019)).

C.

As to this case, because this case was already on appeal, Apple could not move to dismiss or supplement the 

record with its recent discoveries. Uniloc moved under

Federal Rule of Civil Procedure 62.1 for an indicative ruling from the district court indicating that if we remand, the 

district court would join Uniloc 2017. Apple opposed this 

motion.
UNILOC USA, INC. v. APPLE INC. 5

The district court abstained from granting an indicative ruling under Rule 62.1, noting that “[t]he instant mess 

is one of [Uniloc’s] own making. The best that the shortness of life allows is reference to the companion order in 

the related actions addressing Apple’s motion to dismiss 

and [Uniloc’s] motion to join Uniloc 2017.” Notice Regarding Decision on Rule 62.1 Mot., ECF 46, Ex. A at 2 (providing the Court with Order Den. Mot. for an Indicative 

Ruling, Uniloc USA, Inc. v. Apple Inc., 3:18-cv-358 (N.D. 

Cal. Jan. 17, 2019)).

II

A.

“Federal courts are not courts of general jurisdiction; 

they have only the power that is authorized by Article III 

of the Constitution and the statutes enacted by Congress 

pursuant thereto.” Bender v. Williamsport Area Sch. Dist.,

475 U.S. 534, 541 (1986). “A party, or the court sua sponte, 

may address a challenge to subject matter jurisdiction at 

any time, even on appeal.” Booth v. United States, 990 F.2d 

617, 620 (Fed. Cir. 1993). “[S]ubject matter jurisdiction 

cannot be conferred by waiver, estoppel, or consent.” Diggs 

v. Dep’t of Hous. & Urban Dev., 670 F.3d 1353, 1355 (Fed. 

Cir. 2011). “[S]tanding is an essential and unchanging part 

of the case-or-controversy requirement of Article III.” 

Lujan v. Defs. of Wildlife, 504 U.S. 555, 560 (1992). 

“The Patent Act provides that only ‘[a] patentee shall 

have remedy by civil action for infringement of his patent.’” 

Paradise Creations, Inc. v. UV Sales, Inc., 315 F.3d 1304, 

1308 (Fed. Cir. 2003) (quoting 35 U.S.C. § 281). “[W]here 

the patentee makes an assignment of all substantial rights 

under the patent, the assignee may be deemed the effective 

‘patentee.’” Prima Tek II, L.L.C. v. A-Roo Co., 222 F.3d 

1372, 1377 (Fed. Cir. 2000). “[I]n order to assert standing 

for patent infringement, the plaintiff must demonstrate 

that it held enforceable title to the patent at the inception 

of the lawsuit.” Paradise Creations, Inc., 315 F.3d at 1309.
6 UNILOC USA, INC. v. APPLE INC.

Apple claims that Fortress may have been the true 

owner of the patent at issue when this case was filed. If 

true, this would indicate an incurable jurisdictional defect.

But we are an appellate court, and “[a]ppellate review concentrates on considering the factual record presented in the 

trial courts.” Rosaura Bldg. Corp. v. Municipality of Mayaguez, 778 F.3d 55, 64 (1st Cir. 2015). We restrict our review to the record before the district court when it entered 

judgment. Swanson Grp. Mfg. LLC v. Jewell, 790 F.3d 235, 

241 (D.C. Cir. 2015). It is “the trial forum,” not us, that is 

“vested with authority to determine questions of fact [and 

that should have] the opportunity to evaluate all the evidence the parties believe relevant to the issues.” Id. 

(cleaned up).

Uniloc invites us to rely on the record and decisions in 

the related cases to resolve the subject matter jurisdiction 

issue. It argues that the district court’s denial of Apple’s 

motion to dismiss and motion for reconsideration in those

cases are opinions with a record that we can rely on for review. We disagree. 

The record before the district court in the related cases 

is not the record before us on appeal. And in any event, the 

district court’s opinion is not final. Although the court denied Apple’s motion for reconsideration, it noted that it

would consider jurisdiction again before trial. 

Because the facts relating to the Fortress loan agreement came to light after the district court’s final judgment, 

we lack the necessary record to rule on the jurisdictional 

issue. And because Apple raised the prospect of a foundational defect in jurisdiction, we must remand for the district court to supplement the record and resolve any 

outstanding jurisdictional issues.

B.

Apple also argues that the May 3 transfer caused a second jurisdictional defect by depriving the court of a named 
UNILOC USA, INC. v. APPLE INC. 7

plaintiff with standing to assert an infringement claim 

when it entered final judgment on May 18, 2018. Uniloc 

argues that we can remedy this jurisdictional defect on appeal by adding Uniloc 2017 as a party. Apple opposes adding Uniloc 2017 as a party to the appeal, arguing that

remand is more appropriate.

“[I]f, at the end of the day and case, a jurisdictional defect remains uncured” when the district court enters judgment, “the judgment must be vacated.” Caterpillar Inc. v. 

Lewis, 519 U.S. 61, 76–77 (1996). The Supreme Court has 

long held that “[t]he profits or damages for infringement 

cannot be sued for except on the basis of title as patentee, 

or as such assignee or grantee, to the whole or a part of the 

patent, and not on the basis merely of the assignment of a 

right to a claim for profits and damages, severed from such 

title.” Prima Tek II, L.L.C., 222 F.3d at 1381 (parenthetically quoting Crown Die & Tool Co. v. Nye Tool & Mach. 

Works, 261 U.S. 24, 42 (1923)). We have held “a ‘right to 

sue’ clause cannot confer standing on a bare licensee.” Id. 

The license agreement between Uniloc 2017 and Uniloc 

USA appears to be little more than a “‘hunting license,’ 

solely for the purpose of litigation.” See id. Thus, Apple 

has a basis for contesting the district court’s jurisdiction at 

final judgment.

Adding a party after judgment to cure a technical jurisdictional defect is not a new practice. Mullaney v. Anderson, 342 U.S. 415, 417 (1952). We have significant 

latitude in deciding between adding a party to a pending 

appeal or remanding a case for the district court to cure 

any jurisdictional defect. Compare Mentor H/S, Inc. v. 

Med. Device All., Inc., 244 F.3d 1365, 1373 (Fed. Cir. 2001) 

(finding that adding the proper plaintiff during the appeal 

would not prejudice the defendant), with Prima Tek II, 

L.L.C., 222 F.3d at 1381 (finding that remand was the most 

appropriate course given the defendant had raised the issue and may be prejudiced by allowing the real patent 

owner to escape discovery).
8 UNILOC USA, INC. v. APPLE INC.

We decline to determine whether it is appropriate to 

add Uniloc 2017 as a party. Apple opposes the joinder and 

determining the propriety of joining Uniloc 2017 involves 

reviewing facts that are outside the record. Moreover, because we must remand the case on the issue relating to the 

Fortress loan agreement, we find it appropriate to leave 

this issue for the district court to address on remand as 

well. 

III

We remand this case to the district court for the purpose of supplementing the record with the documents pertaining to jurisdiction and resolving the presented 

jurisdictional issues in the first instance. 

VACATED AND REMANDED

No costs.