United States Court of Appeals 

for the Federal Circuit ______________________ 

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

Plaintiffs-Appellants

v.

MOTOROLA MOBILITY LLC,

Defendant-Appellee

______________________ 

2021-1555

______________________ 

Appeal from the United States District Court for the 

District of Delaware in No. 1:17-cv-01658-CFC, Chief 

Judge Colm F. Connolly.

-------------------------------------------------

UNILOC 2017 LLC,

Plaintiff-Appellant

v.

BLACKBOARD INC.,

Defendant-Appellee

______________________ 

2021-1795

______________________ 

Case: 21-1555 Document: 77 Page: 1 Filed: 11/04/2022
2 UNILOC USA, INC. v. MOTOROLA MOBILITY LLC

Appeal from the United States District Court for the 

District of Delaware in No. 1:20-cv-00665-CFC, Chief 

Judge Colm F. Connolly.

______________________ 

Decided: November 4, 2022 

______________________ 

JEFFREY A. LAMKEN, MoloLamken LLP, Washington, 

DC, argued for plaintiffs-appellants in 21-1555. Also argued by LUCAS M. WALKER for plaintiff-appellant in 21-

1795. Also represented by KENNETH E. NOTTER, III; 

JORDAN RICE, Chicago, IL. Also represented in 21-1555 by

AARON JACOBS, Prince Lobel Tye LLP, Boston, MA; SEAN T.

O'KELLY, O'Kelly & O'Rourke, LLC, Wilmington, DE. Also 

represented in 21-1795 by JAMES J. FOSTER, Prince Lobel 

Tye LLP, Boston, MA. 

LOUIS A. KLAPP, Riley Safer Holmes & Cancila LLP, 

Chicago, IL, argued for defendant-appellee Motorola Mobility LLC. Also represented by STEPHEN MAXWELL

HANKINS, San Francisco, CA.

PAUL WHITFIELD HUGHES, McDermott, Will & Emery 

LLP, Washington, DC, argued for defendant-appellee 

Blackboard Inc. Also represented by MICHAEL S. NADEL; 

CHARLES M. MCMAHON, Chicago, IL.

COURTLAND L. REICHMAN, Reichman Jorgensen Lehman & Feldberg LLP, Redwood Shores, CA, for amicus curiae Cirba Inc. in 21-1555. Also represented by ARIEL C.

GREEN ANABA; CHRISTINE E. LEHMAN, AISHA MAHMOOD

HALEY, Washington, DC.

______________________ 

Case: 21-1555 Document: 77 Page: 2 Filed: 11/04/2022
UNILOC USA, INC. v. MOTOROLA MOBILITY LLC 3

Before LOURIE, DYK, and HUGHES, Circuit Judges. 

Opinion for the court filed by Circuit Judge DYK. 

Additional views filed by Circuit Judge LOURIE. 

DYK, Circuit Judge. 

Uniloc USA, Inc. and Uniloc Luxembourg, S.A. (together, “the Unilocs”) sued Motorola in the District of Delaware for infringement of U.S. Patent No. 6,161,134 (the 

“Motorola case”). The asserted patent concerns, in part, 

pairing a telephone with another device and using the 

other device to make a telephone call using the telephone’s 

cellular capabilities. 

Motorola moved to dismiss, alleging the Unilocs lacked 

standing because they lacked the right to exclude, having 

granted Fortress Credit Co. LLC (“Fortress”) a license and 

an unfettered right to sublicense the asserted patent. The 

Unilocs argued that they had not granted such a license to 

Fortress and, even if they had, the license would not eliminate the Unilocs’ standing. The district court dismissed, 

agreeing that the Unilocs had granted a license and that 

the existence of a license deprived the Unilocs of standing. 

In a related case, the Unilocs sued Blackboard Inc. in 

the Western District of Texas for infringement of U.S. Patents Nos. 6,324,578 and 7,069,293 which both concern 

technology that facilitates access to customized and licensed applications on individual computers within distributed networks (the “Blackboard case”). Uniloc 2017 

(which acquired the relevant patents from Uniloc Luxembourg (“Uniloc Lux”)) was later substituted as the sole 

plaintiff, and the case was transferred to the District of 

Delaware. The district court then dismissed the Blackboard case for lack of subject matter jurisdiction, apparently applying the Motorola case as a matter of collateral 

estoppel. 

Case: 21-1555 Document: 77 Page: 3 Filed: 11/04/2022
4 UNILOC USA, INC. v. MOTOROLA MOBILITY LLC

On appeal, in addition to defending the district courts’ 

decisions, both Motorola and Blackboard assert that the 

decision in another Uniloc case, Uniloc USA, Inc. v. Apple, 

Inc., No. C 18-00358, 2020 WL 7122617 (N.D. Cal. Dec. 4, 

2020) (the “Apple case”), (which has now become final by 

the dismissal of Uniloc USA’s appeal), establishes that the 

Unilocs and Uniloc 2017 lack standing as a matter of collateral estoppel in the Motorola and Blackboard cases. We 

agree and find the Apple decision is collateral estoppel in 

those cases. We thus affirm the district courts’ determinations that the Unilocs and Uniloc 2017 lack standing. 

In a companion case, also issued today, we concluded 

that a Termination Agreement entered into between the 

Unilocs and Fortress on May 3, 2018 eliminated the Fortress license and that Uniloc 2017 has standing going forward once the Agreement was executed. Uniloc 2017 LLC 

v. Google LLC, -- F.4th -- (Fed. Cir. 2022) (the “Google

case”). 

BACKGROUND

The factual backgrounds of the Motorola and Blackboard cases are identical in all respects relevant to this appeal. On December 30, 2014, Uniloc 2017’s predecessors, 

the Unilocs, entered into a Revenue Sharing and Note and 

Warrant Purchase Agreement (“RSA”) with Fortress in 

connection with a loan Fortress made to the Unilocs. The 

RSA stated:

[T]he [Unilocs] shall grant to [Fortress] . . . a nonexclusive, royalty free, license (including the right 

to grant sublicenses) with respect to the Patents, 

which shall be evidenced by, and reflected in, the 

Patent License Agreement. [Fortress] . . . shall 

only use such license following an Event of Default.

Motorola J.A. 152, § 2.8. In other words, Fortress effectively would obtain a license if there was an Event of 

Case: 21-1555 Document: 77 Page: 4 Filed: 11/04/2022
UNILOC USA, INC. v. MOTOROLA MOBILITY LLC 5

Default. The Patent License Agreement, which formally 

granted the license referenced in the RSA, stated that the 

license was “non-exclusive, transferrable, sub-licensable, 

divisible, irrevocable, fully paid-up, royalty-free and worldwide.”1 Motorola J.A. 174, § 2.1. The patents involved in 

these cases were all included in the RSA and License 

Agreement. 

There were three enumerated Events of Default, one of 

which was the failure “to perform or observe any of the covenants or agreements contained in Article VI.” Motorola 

J.A. 162, § 7.1.2. One such covenant was: “As of March 31, 

2017 and the last day of each fiscal quarter thereafter, the 

[Unilocs] shall have received at least $20,000,000 in Actual 

Monetization Revenues during the four fiscal quarter period ending on such date.” Motorola J.A. 156, § 6.2.2. 

There was no dispute the Unilocs failed to reach the 

$20,000,000 monetization target for the four quarters ending in March 2017. Under the terms of the RSA, this appeared to constitute an Event of Default resulting in an 

effective license grant to Fortress. 

I. The Motorola Case

Against this background, on November 15, 2017, the 

Unilocs filed the Motorola case, a patent infringement suit 

in the District of Delaware against Motorola, alleging infringement of U.S. Patent No. 6,161,134, which was included in the License Agreement. In response, Motorola 

moved to dismiss for lack of standing. Following briefing 

1 Unlike the situation in Uniloc 2017 LLC v. Google, 

-- F.4th -- (Fed. Cir. 2022), both the RSA and the Patent 

License Agreement were in effect at the time the Unilocs 

sued Motorola and Blackboard because both of these suits 

were filed before May 3, 2018, the date the Termination 

Agreement was signed.

Case: 21-1555 Document: 77 Page: 5 Filed: 11/04/2022
6 UNILOC USA, INC. v. MOTOROLA MOBILITY LLC

and oral argument on the motion, on December 6, 2020, 

Motorola filed a Notice of Subsequent Authority alerting 

the district court to the recently decided Apple case where 

the district court had found lack of standing on virtually 

identical facts. There, the court found that Uniloc USA 

lacked standing because the asserted patent had been licensed to Fortress, and Fortress had the right to sublicense 

the asserted patent to the alleged infringer. Apple 2020 

WL 7122617 (N.D. Cal. Dec. 4, 2020). Motorola characterized the Apple decision as “not binding.” Motorola 

J.A. 1076. On December 30, 2020, the district court 

granted Motorola’s motion and dismissed the Motorola case 

for lack of subject matter jurisdiction without reference to 

the Apple case. 

The district court concluded that the Unilocs committed at least one Event of Default sufficient to trigger Fortress’s acquisition of the license and that this Event of 

Default was neither cured nor annulled. Relying on cases 

involving exclusive licensees, as opposed to patent owners, 

the district court held that the Unilocs lacked standing to 

sue for infringement because Fortress had the theoretical 

right to sublicense the asserted patent to the alleged infringer, and the Unilocs, as a result, lacked the exclusionary right necessary to confer standing. 

On May 3, 2018, Uniloc 2017 acquired all relevant patents from Uniloc Lux. On December 11, 2018, the Unilocs 

filed a motion to substitute Uniloc 2017 as a party. After 

deciding that Uniloc USA and Uniloc Lux lacked standing, 

the district court dismissed the motion to substitute as 

moot. 

II. The Blackboard Case

At about the same time as the filing of the Motorola

case, on August 11, 2017, the Unilocs filed the Blackboard

case, a patent infringement suit in the Western District of 

Texas against Blackboard, alleging infringement of U.S. 

Case: 21-1555 Document: 77 Page: 6 Filed: 11/04/2022
UNILOC USA, INC. v. MOTOROLA MOBILITY LLC 7

Patent Nos. 6,324,578 and 7,069,293, both of which were 

included in the License Agreement. On January 10, 2020, 

Uniloc 2017 having acquired all relevant patents, the court 

granted the Unilocs’ motion to substitute Uniloc 2017 as 

plaintiff. The Western District of Texas transferred the 

case to the District of Delaware on May 15, 2020. After the 

decision in the Motorola case, see Uniloc USA, Inc. v. 

Motorola Mobility, LLC, 17-1658, 2020 WL 7771219 (D. 

Del. Dec. 30, 2020), the district court dismissed the Blackboard case for lack of standing, apparently on grounds of 

collateral estoppel based on the Motorola decision. 

The Unilocs appealed the decision in the Motorola case, 

and Uniloc 2017 appealed the decision in the Blackboard

case. We have jurisdiction under 28 U.S.C. § 1295(a)(1). 

We review a dismissal for lack of subject matter jurisdiction de novo. Microsoft Corp. v. GeoTag, Inc., 817 F.3d 

1305, 1311 (Fed. Cir. 2016).

DISCUSSION

Uniloc2 argues that the Delaware District Court erred 

in dismissing these two actions for lack of standing. Uniloc 

maintains that even if it granted a license and right to sublicense to Fortress, the district courts’ rulings are not consistent with our decisions in Aspex Eyewear, Inc. v Miracle 

Optics, Inc., 434 F.3d 1336 (Fed. Cir. 2006) and Alfred E. 

Mann Found. for Sci. Rsch. v. Cochlear Corp., 604 F.3d 

1354 (Fed. Cir. 2010). There we held that the patentee’s 

grant of a license that includes the right to sublicense did

not deprive the patent owner of Article III standing. Aspex 

Eyewear, 434 F.3d at 1339–44; Alfred E. Mann Found. for 

Sci. Rsch., 604 F.3d at 1358–63. Uniloc distinguishes cases 

2 For simplicity, we hereinafter refer collectively to 

the Unilocs (that is, Uniloc USA and Uniloc Lux) and 

Uniloc 2017 as Uniloc.

Case: 21-1555 Document: 77 Page: 7 Filed: 11/04/2022
8 UNILOC USA, INC. v. MOTOROLA MOBILITY LLC

relied on by the district court as involving the standing of 

licensees (rather than patentees) who lacked an exclusive 

license. 

We recognize there is considerable force to Uniloc’s argument that, even if Fortress had been granted a license 

and an unfettered right to sublicense, Uniloc would have

Article III standing. Patent owners and licensees do not 

have identical patent rights, and patent owners arguably 

do not lack standing simply because they granted a license

that gave another party the right to sublicense the patent 

to an alleged infringer. But, we need not resolve the question of whether a patent owner who granted a right to sublicense lacks standing here. We hold that, in light of Apple 

2020 WL 7122617, Uniloc is collaterally estopped from asserting that it has standing in these cases.

The patent at issue in the Apple case was included in 

the License Agreement between the Unilocs and Fortress. 

Apple, 2020 WL 7122617, at *1. The district court reached 

three conclusions in the Apple case: (1) the Unilocs committed an Event of Default and failed to cure or annul said 

Event, granting Fortress a license, including a right to sublicense, to the asserted patent, id. at *4–6; (2) a patent 

plaintiff must have exclusionary rights in the patent to 

have standing to sue for infringement, id. at *2–4; and 

(3) Uniloc USA lacked exclusionary rights in the asserted 

patent because Fortress had the ability to license the asserted patent to the alleged infringer (Apple), which deprived Uniloc USA of standing. Id. *7–8.

On January 25, 2021, Uniloc USA’s appeal of the Apple 

decision was docketed, and on May 25, 2021, Uniloc filed 

its opening appeal brief in the Apple case requesting reversal on the issue of standing. On June 22, 2021, Uniloc and 

Apple moved jointly to voluntarily dismiss the Apple appeal pursuant to settlement but did not request that we vacate the lower court decision or remand the case to the 

Case: 21-1555 Document: 77 Page: 8 Filed: 11/04/2022
UNILOC USA, INC. v. MOTOROLA MOBILITY LLC 9

district court to vacate the decision. We dismissed the Apple appeal on June 29, 2021. The district court decision 

was not vacated.

Whether the law of the regional circuit—in this case 

the Third Circuit—governs principles of issue preclusion or 

whether we apply our own law, the same principles of collateral estoppel apply. So, we need not decide which law 

governs.3 

3 This court has developed its own law with respect 

to res judicata (including collateral estoppel) in non-patent 

cases. See, e.g., Jet, Inc. v. Sewage Aeration Sys., 223 F.3d 

1360, 1365–66 (Fed. Cir. 2000). But in patent cases, despite our exclusive jurisdiction, we have generally stated 

that we look to regional circuit law for general principles of 

res judicata and to our own law for principles that are related to patent law. See Aspex Eyewear, Inc. v. Zenni Optical Inc., 713 F.3d 1377, 1380 (Fed. Cir. 2013). This 

distinction leads to the potential anomaly of a single judgment of this court having different consequences in later 

cases depending on the regional circuit in which the later 

case arose. This anomaly is illustrated by the facts of this 

case in which the effect of the Apple judgment was litigated 

in cases from both the Northern District of California (the 

Google case) and the District of Delaware (the Motorola 

and Blackboard cases). Moreover, our cases have hardly 

been consistent in determining which aspects of res judicata are governed by regional circuit law, and which are 

governed by Federal Circuit law. Compare Foster v. Hallco 

Mfg. Co., 947 F.2d 469, 475–77 (Fed. Cir. 1991) (applying 

Federal Circuit law to determine whether a decision was 

sufficiently final for issue preclusion to apply), with Intell. 

Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 

1337–38 (Fed. Cir. 2017) (applying regional circuit law to 

determine whether a decision was sufficiently final); 

Case: 21-1555 Document: 77 Page: 9 Filed: 11/04/2022
10 UNILOC USA, INC. v. MOTOROLA MOBILITY LLC

There are four requirements for collateral estoppel to 

apply:

(1) the issue sought to be precluded must be the 

same as the one involved in the prior action; 

(2) the issue must have been actually litigated; 

(3) the issue must have been determined by a valid 

and final judgment; and 

(4) the determination must have been essential to 

the prior judgment.4

In re Docteroff, 133 F.3d 210, 214 (3d Cir. 1997) (formatting 

changed); see also Tex. Instruments Inc. v. Cypress Semiconductor Corp., 90 F.3d 1558, 1568 (Fed. Cir. 1996) (similar). 

In general, collateral estoppel is applied against the 

losing party in the original action even in situations where 

Compare also Pharmacia & Upjohn Co. v. Mylan Pharms., 

Inc., 170 F.3d 1373, 1379–80 (Fed. Cir. 1999) (applying 

Federal Circuit law to determine whether a party had a full 

and fair opportunity to litigate such that issue preclusion 

should apply), with Dana v. E.S. Originals, Inc., 342 F.3d 

1320, 1323–25 (Fed. Cir. 2003) (applying regional circuit 

law to determine whether a party had a full and fair opportunity to litigate). Here, as in other cases, see, e.g., Foster, 

947 F.2d at 477 n.7, we need not resolve which circuit’s law 

should govern because our law and Third Circuit law are 

in relevant respects the same. 4 The party against whom preclusion is asserted 

must also have been a party or been in privity with a party 

to the prior adjudication. Doe v. Hesketh, 828 F.3d 159, 171 

(3d Cir. 2016); Lee by Lee v. United States, 124 F.3d 1291, 

1296 (Fed. Cir. 1997), amended by 129 F.3d 1482 (Fed. Cir. 

1997). There is no issue of lack of privity here. 

Case: 21-1555 Document: 77 Page: 10 Filed: 11/04/2022
UNILOC USA, INC. v. MOTOROLA MOBILITY LLC 11

the party asserting collateral estoppel was not a party to 

the original action. In other words, non-mutual collateral 

estoppel is available. Blonder-Tounge Labs., Inc. v. Univ. 

of Ill. Found., 402 U.S. 313, 334 (1971); Hartley v. Mentor 

Corp., 869 F.2d 1469, 1470–71 (Fed. Cir. 1989); Peloro v. 

United States, 488 F.3d 163, 175 (3d Cir. 2007). “For defensive collateral estoppel . . . to apply, the party to be precluded must have had a ‘full and fair’ opportunity to litigate 

the issue in the first action.” Peloro, 488 F.3d at 174–75 

(citing Parklane Hosiery Co. v. Shore, 439 U.S. 322, 328, 

332 (1979)); Blonder-Tongue Labs., 402 U.S. at 331, 333); 

Banner v. United States, 238 F.3d 1348, 1354 (Fed. Cir. 

2001); Restatement (Second) of Judgments § 29 (Am. L. 

Inst. 1982). 

There is no question here that the Apple case addressed 

and decided the very same issues as are presented here; 

those issues were actually litigated; the issues were determined by a valid and final judgment; and the determination of all three issues was essential to the prior judgment. 

On its face, collateral estoppel would appear to apply. To 

be sure, there is some discretion to deny the application of 

non-mutual collateral estoppel, see Restatement (Second) of 

Judgments § 29; Nat’l R.R. Passenger Corp. v. Pa. Pub. 

Util. Comm’n, 288 F.3d 519, 528 (3d Cir. 2002), but this 

discretion is confined to defined situations where application of collateral estoppel is not appropriate under various 

rules established by case law, such as when one party lacks 

a full and fair opportunity to litigate. The discretion is not 

unbounded discretion to apply collateral estoppel whenever the court thinks that outcome might be desirable.

Uniloc argues collateral estoppel should not apply for 

several reasons, none of which we find persuasive. First, 

Uniloc argues that Motorola and Blackboard forfeited their 

collateral estoppel argument by failing to raise the argument in the district court. The Apple case was decided by 

the district court on December 4, 2020. Although the 

Case: 21-1555 Document: 77 Page: 11 Filed: 11/04/2022
12 UNILOC USA, INC. v. MOTOROLA MOBILITY LLC

primary briefing and oral argument in the Motorola case 

were completed by October 1, 2020, a decision was not rendered until December 30, 2020. A decision was not rendered in the Blackboard case until January 28, 2021. 

Thus, both decisions were rendered by the district court after the decision in the Apple case. The parties debate 

whether Motorola and Blackboard had the opportunity to 

raise the collateral estoppel issue before the district court, 

but even assuming the issue could have been raised, there 

was no forfeiture.

To be sure, collateral estoppel can be applied based on 

a district court decision that is still pending on appeal,5 and 

we have affirmed the application of issue preclusion even 

when the preclusive judgment was pending appeal. Pharmacia & Upjohn Co. v. Mylan Pharms., Inc., 170 F.3d 1373, 

1380–81 (Fed. Cir. 1999). Further, the general rule is that 

issue preclusion must be “raised at the first reasonable opportunity after the rendering of the decision having the 

5 See SSIH Equip. S.A. v. U.S. Int’l Trade Comm’n, 

718 F.2d 365, 370 (Fed. Cir. 1983) (“[T]he law is well settled 

that the pendency of an appeal has no affect on the finality 

or binding effect of a trial court’s holding.” (citing Deposit 

Bank v. Frankfort, 191 U.S. 499 (1903))); United States v. 

5 Unlabeled Boxes, 572 F.3d 169, 175 (3d Cir. 2009) (“[T]he 

pendency of an appeal does not affect the potential for res 

judicata flowing from an otherwise-valid judgment.”); 18A 

Charles Alan Wright, Arthur R. Miller, & Edward H. 

Cooper, Federal Practice & Procedure § 4433, at 66 (3d ed.

2017) (“[I]t is . . . held in federal courts that the preclusive 

effects of a lower court judgment cannot be suspended 

simply by taking an appeal that remains undecided.”); Restatement (Second) of Judgments § 13, cmt. f (“[A] judgment otherwise final remains so despite the taking of an 

appeal . . . .”). 

Case: 21-1555 Document: 77 Page: 12 Filed: 11/04/2022
UNILOC USA, INC. v. MOTOROLA MOBILITY LLC 13

preclusive effect.” Mendenhall v. Barber-Greene Co., 26 

F.3d 1573, 1579–80 n.8 (Fed. Cir. 1994); see also Arizona v. 

California, 530 U.S. 392, 410 (2000) (“[R]es judicata [is] an 

affirmative defense ordinarily lost if not timely raised.”). 

So while it is true that, in general, issue preclusion cannot 

be raised for the first time on appeal, see SimpleAir, Inc. v. 

Google LLC, 884 F.3d 1160, 1170–71 (Fed. Cir. 2018), we 

have not had occasion to address whether issue preclusion 

must be raised before the preclusive judgment ceases to be 

subject to further appeal. The Third Circuit in 5 Unlabeled 

Boxes (a decision with which we agree) concluded that the 

failure to raise collateral estoppel before the appeal process 

in the preclusive case has concluded should not necessarily

be a work of forfeiture. United States v. 5 Unlabeled Boxes, 

572 F.3d 169 (3rd Cir. 2009).

5 Unlabeled Boxes involved two parallel proceedings involving the same facts between the same parties (the 

United States and Hi-Tech Pharmaceuticals, Inc.), one in 

the Northern District of Georgia and one in the Western 

District of Pennsylvania. Id. at 173. The Georgia district 

court was the first to reach a decision and ruled in favor of 

the United States on August 15, 2007. Id. On September 

13, 2007, Hi-Tech filed a notice of appeal to the Eleventh 

Circuit. Id. The United States did not notify the Pennsylvania district court of the Georgia district court’s decision. 

On October 15, 2007, the Pennsylvania district court also 

ruled in favor of the United States, and Hi-Tech promptly 

appealed. Id. On October 7, 2008, the Eleventh Circuit 

affirmed the decision of the Georgia District Court. Id. 

One week later, the United States raised the defense of issue preclusion in the Third Circuit case for the first time. 

Id.

Despite Hi-Tech’s argument that the government 

“waived [forfeited] the res judicata defense by not asserting 

it until [a] ‘late hour,’” the Third Circuit found that collateral estoppel applied. Id. at 175-76. Although the court

Case: 21-1555 Document: 77 Page: 13 Filed: 11/04/2022
14 UNILOC USA, INC. v. MOTOROLA MOBILITY LLC

noted that “the pendency of an appeal does not affect the 

potential for res judicata flowing from an otherwise-valid 

judgment,” the court found no forfeiture by the delay of 

raising the issue until the resolution of the appeal because 

of the problems that can be created “if a first judgment, relied on in a second proceeding, is reversed on appeal.” Id. 

at 175 (citing 18A Charles Alan Wright, Arthur R. Miller

& Edward H. Cooper, Federal Practice & Procedure, § 4433 

(2d ed. 2002)). 

As recognized in 5 Unlabeled Boxes, the rule that a decision is final for the purposes of preclusion while that decision is pending appeal creates “[s]ubstantial difficulties.” 

18A Charles Alan Wright, Arthur R. Miller & Edward H. 

Cooper, Federal Practice and Procedure § 4433, at 79 (3d 

ed. 2017) [hereinafter 18A Wright & Miller]. “The major 

problem is that a second judgment based upon the preclusive effects of the first judgment should not stand if the 

first judgment is reversed.” Id. (footnote omitted); see also 

Restatement (Second) of Judgments § 13, cmt. f. If preclusion is raised while the preclusive judgment is pending appeal, it is possible the final outcome will be “the grotesque 

result of perpetuating a judgment that rests on nothing 

more than a subsequently reversed judgment.” 

18A Wright & Miller § 4433, at 83. Therefore, there are 

strong policy reasons supporting a finding of no forfeiture 

of collateral estoppel when the argument was first raised 

after the appeal process of the preclusive case was concluded, and we conclude that forfeiture is not appropriate 

here. 

In any event, courts of appeals have discretion to entertain a party’s res judicata (including issue preclusion)

argument when it is raised for the first time on appeal, especially “when the res judicata defense rests on a judgment 

entered pending appeal.” 18 Charles Alan Wright, Arthur 

R. Miller & Edward H. Cooper, Federal Practice and Procedure § 4405, at 107–08 (3d ed. 2016) (footnote omitted); see 

Case: 21-1555 Document: 77 Page: 14 Filed: 11/04/2022
UNILOC USA, INC. v. MOTOROLA MOBILITY LLC 15

also 5 Unlabeled Boxes, 572 F.3d at 175–76. In cases involving res judicata, “there is more at stake than relitigation between the parties.” Bechtold v. City of Rosemount, 

104 F.3d 1062, 1068 (8th Cir. 1997). Res judicata also protects the public interest in avoiding inconsistent results 

and conserving judicial resources. Clements v. Airport 

Auth., 69 F.3d 321, 330 (9th Cir. 1995). In some cases, “if 

the Court were to fail to raise the issue of res judicata, then 

[it] would threaten the public interest in avoiding judicial 

waste and inconsistent judgments.” Akanthos Cap. Mgmt., 

LLC v. Atlanticus Holdings Corp., 734 F.3d 1269, 1272 

(11th Cir. 2013) (citing Arizona, 530 U.S. at 412–13). We 

conclude that there was no forfeiture and, even if there 

were, we have discretion to excuse any forfeiture.

Second, the Unilocs argue that Motorola waived its issue preclusion argument when, in a Notice of Subsequent 

Authority made to the district court, Motorola stated: 

On Friday, December 4, 2020, . . . the Northern 

District of California granted a pending Motion to 

Dismiss for Lack of Standing by Apple, Inc., . . . because “[Plaintiffs’] patent licensing scheme divested them of exclusionary rights and, thus, of 

Article III standing.” . . . 

Although not binding on this Court, as the parties have previewed in the past, [the California 

District Court’s decision is] based on roughly the 

same set of facts as Motorola’s pending Motion to 

Dismiss.

Motorola J.A. 1076 (first set of brackets in original) (quoting Apple, 2020 WL 7122617. The Unilocs argue that “a 

judgment’s ‘binding’ effect includes both precedential and 

preclusive effect.” Motorola Appellants’ Reply Br. 17 (emphasis in original). However, we think, in the context of 

the Notice of Subsequent Authority, Motorola used “not 

Case: 21-1555 Document: 77 Page: 15 Filed: 11/04/2022
16 UNILOC USA, INC. v. MOTOROLA MOBILITY LLC

binding” only in the sense that the Apple decision was not 

binding as a matter of stare decisis. We see no waiver. 

Third, Uniloc argues that collateral estoppel should not 

apply because Uniloc lacked the necessary incentive to litigate the Apple judgment through appeal because of the 

settlement opportunity that presented itself.6 Uniloc argues: “Given the opportunity to resolve litigation and reduce numerous dockets, Uniloc lacked the ‘incentive to 

litigate’ the Apple judgment ‘to the finish’ . . . .” Blackboard 

Appellant’s Br. 27 (citations omitted). Essentially, Uniloc 

argues that collateral estoppel should not apply here because Uniloc lacked the incentive to litigate when confronted with a desirable settlement opportunity. While it 

is proper to decline to apply collateral estoppel if a party 

lacked sufficient incentive to litigate the preclusive case, 

see Kaiser Indus. Corp. v. Jones & Laughlin Steel Corp., 

515 F.2d 964, 977 (3d Cir. 1975), amended by 524 F.2d 1154 

(3d Cir. 1975), we find Uniloc’s argument unpersuasive.

The standing issues were central to the Apple case on 

appeal. They were indeed the only issues on appeal. This

is not a situation in which potentially preclusive issues 

were overshadowed on appeal by issues to which preclusion 

would not apply, see Oren Techs., LLC v. Proppant Express 

Invs. LLC, 2019-1778, 2021 WL 3120819, at *3 (Fed. Cir. 

2021) (per curiam), i.e., a situation in which Uniloc “will be 

bound in unforeseen ways by half-hearted litigation of an 

apparently trivial claim.” 18A Wright & Miller § 4465.1, at 

726 (footnote omitted); see also Mackris v. Murray, 397 

6 The settlement agreement resolved not only the 

Apple case but also included an agreement between Uniloc 

and Apple that other infringement actions would be dismissed; Apple would withdraw inter partes review-related 

challenges to Uniloc patents; and Apple would dismiss antitrust claims against Uniloc. 

Case: 21-1555 Document: 77 Page: 16 Filed: 11/04/2022
UNILOC USA, INC. v. MOTOROLA MOBILITY LLC 17

F.2d 74, 81 (6th Cir. 1968). Nor is this a situation in which 

the issues sought to be precluded were embodied in a decision not subject to immediate appeal. The fact that Uniloc 

was able to resolve numerous other disputes in an overall 

settlement with Apple is not relevant to the determination 

of whether Uniloc had sufficient incentive to litigate the issues in the Apple case itself.

Fourth, to the extent Uniloc argues that collateral estoppel should not apply because the decision in the Apple

case is incorrect, this is simply not a proper basis to deny 

collateral estoppel. Generally, collateral estoppel cannot 

be denied because the decision was incorrect. See 

18A Wright & Miller § 4465.2, at 750–51 (“[P]reclusion 

cannot be defeated simply by arguing that the prior judgment was wrong.”).7

 Fifth, Uniloc argues that application of issue preclusion in this case would prejudice Uniloc because Uniloc 

would have acted differently in settlement had it known 

that Motorola and Blackboard would assert issue preclusion arguments on appeal. This argument has no merit. 

Parties are charged with knowledge of the law and, particularly in the case of a sophisticated litigant like Uniloc, are 

presumed to know background legal principles like collateral estoppel. Uniloc should have known about the 

7 In Blonder-Tongue Labs., the Supreme Court found 

that estoppel cannot be used against a party unless that 

party has had “a full and fair chance to litigate” and that a 

party may not have had that chance if “the prior case was 

one of those relatively rare instances where the courts 

wholly failed to grasp the technical subject matter and issues in suit.” 402 U.S. at 333. That is not alleged to be the 

situation here.

Case: 21-1555 Document: 77 Page: 17 Filed: 11/04/2022
18 UNILOC USA, INC. v. MOTOROLA MOBILITY LLC

potential for the Apple case to have preclusive effects and 

cannot argue now that it was ignorant of this possibility. 

In conclusion, Uniloc is collaterally estopped from arguing that it did not grant a license, including a right to 

sublicense, to Fortress, and that the existence of that license deprived Uniloc of standing. We therefore affirm the 

district court’s dismissal of these cases for lack of standing.8

AFFIRMED

8 We deny the Unilocs’ request to substitute Uniloc 

2017 as moot. 

Case: 21-1555 Document: 77 Page: 18 Filed: 11/04/2022
United States Court of Appeals 

for the Federal Circuit ______________________ 

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

Plaintiffs-Appellants

v.

MOTOROLA MOBILITY LLC,

Defendant-Appellee

______________________ 

2021-1555

______________________ 

Appeal from the United States District Court for the 

District of Delaware in No. 1:17-cv-01658-CFC, Chief 

Judge Colm F. Connolly.

-------------------------------------------------

UNILOC 2017 LLC,

Plaintiff-Appellant

v.

BLACKBOARD, INC.,

Defendant-Appellee

______________________ 

2021-1795

______________________ 

Case: 21-1555 Document: 77 Page: 19 Filed: 11/04/2022
2 UNILOC USA, INC. v. MOTOROLA MOBILITY LLC

Appeal from the United States District Court for the 

District of Delaware in No. 1:20-cv-00665-CFC, Chief 

Judge Colm F. Connolly.

______________________ 

LOURIE, Circuit Judge, additional views.

I join the opinion of the court in all respects, except 

that I believe the paragraph at page 8, lines 11–23, beginning “[w]e recognize there is considerable force to Uniloc’s 

argument that, even if Fortress had been granted a license 

and an unfettered right to sublicense, Uniloc would have 

Article III standing,” is a regrettable understatement. In 

my view, there is more than considerable force to the argument; it is clear that Uniloc still had the right to sue unlicensed infringers after it granted the license. 

We normally do not opine on issues that are not necessary to decide a case, and our panel soundly affirms the 

district court on the ground of estoppel. But here, I believe 

the district court so misconstrued the license issue that 

something further needs to be said about it.

The district court, respectfully, incorrectly dealt 

with this issue as one of determining what is an exclusive 

license, citing cases on whether an exclusive licensee alone 

has standing to sue without joining the owner of a patent. 

That is not the case before us. The court began its analysis 

by citing the Rite-Hite decision. See Rite-Hite Corp. v. Kelley Co., 56 F.3d 1538 (Fed. Cir. 1995) (en banc). But RiteHite wasn’t even a case involving a licensee; it involved distributors. We held that distributors had no standing to 

pursue an infringement claim because the relevant agreements conveyed rights to sell products covered by the asserted patents and did not convey exclusive patent rights. 

See id. at 1553–54. 

The court went on to discuss our Mars, Textile, and 

WiAV cases, which did involve exclusive licenses and 

Case: 21-1555 Document: 77 Page: 20 Filed: 11/04/2022
UNILOC USA, INC. v. MOTOROLA MOBILITY LLC 3

whether the exclusive licensee could sue. See Mars, Inc. v. 

Coin Acceptor, Inc., 527 F.3d 1359 (Fed. Cir. 2008) (holding 

that a subsidiary was not the exclusive licensee of patents, 

and therefore did not have standing to bring infringement 

action); Textile Prods. Inc. v. Mead Corp., 134 F.3d 1481 

(Fed. Cir. 1998) (holding that plaintiff was not an exclusive 

licensee under the asserted patent and thus lacked standing to bring an infringement action); WiAV Sols. LLC v. 

Motorola, Inc., 631 F.3d 1257, 1267 (Fed. Cir. 2010) (holding that “an exclusive licensee does not lack constitutional 

standing to assert its rights under the licensed patent 

merely because its license is subject not only to rights in 

existence at the time of the license but also to future licenses that may be granted only to parties other than the 

accused”). 

Those cases are not on point either, as our case here 

is not concerned with exclusive licenses, but with non-exclusive licenses. The question is whether by granting those 

licenses the patent owner was precluded from suing parties 

not licensed. The cited cases do not support that conclusion. 

The grant of a non-exclusive license with the right to 

sublicense, as here, gives the licensee the right to sublicense others. But the patentee still retains the right to sue 

unlicensed infringers. A non-exclusive license only grants 

a licensee freedom from suit; it does not divest the licensor 

of its right to sue or license other parties, or to practice the 

patent itself. See 14B Chisum on Patents 6240 (2022) (“A 

license may amount to no more than a covenant by the patentee not to sue the licensee for making, using or selling 

the patented invention, the patentee reserving the right to 

grant others the same right.”) (internal quotation marks 

and citation omitted). 

It is true that the licensee could preempt such a suit 

by granting a sublicense, immunizing the purported 

Case: 21-1555 Document: 77 Page: 21 Filed: 11/04/2022
4 UNILOC USA, INC. v. MOTOROLA MOBILITY LLC

infringer. But that is a far cry from holding that the patent 

owner, simply by having granted a non-exclusive license 

with the right to sublicense, loses the power to sue an unlicensed infringer. 

Thus, while agreeing in full that Uniloc loses its appeal 

by being estopped from suing Motorola because it settled 

its suit with Apple rather than appealing it, it is not because it lost the power to sue by granting Fortress a nonexclusive license with the right to sublicense. 

Case: 21-1555 Document: 77 Page: 22 Filed: 11/04/2022