Uniloc USA, Inc. v. Microsoft Corp.

290 F. App'x 337
CourtCourt of Appeals for the Federal Circuit
DecidedAugust 7, 2008
Docket2008-1121
StatusUnpublished
Cited by5 cases

This text of 290 F. App'x 337 (Uniloc USA, Inc. v. Microsoft Corp.) is published on Counsel Stack Legal Research, covering Court of Appeals for the Federal Circuit primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Uniloc USA, Inc. v. Microsoft Corp., 290 F. App'x 337 (Fed. Cir. 2008).

Opinions

MOORE, Circuit Judge.

Plaintiff-appellants Uniloc USA, Inc. and Uniloc Singapore Private Limited (collectively, Uniloc), the exclusive licensee and owner respectively of U.S. Patent No. 5,490,216 (the '216 patent), base their appeal on two grounds. Uniloc appeals the denial of their motion to recuse the district court judge on the basis that an intern he had hired to assist with the case allegedly had ties to Microsoft that would cause a reasonable person to question the judge’s impartiality. Uniloc also appeals the summary judgment of noninfringment entered in favor of defendant-appellee Microsoft by the United States District Court for the District of Rhode Island. We affirm the district court’s denial of Uniloc’s motion for recusal as Uniloc has failed to establish how the denial was an abuse of discretion, but reverse and remand the district court’s grant of summary judgment as Uniloc has pointed to evidence submitted below that would create a genuine issue of material fact.

BACKGROUND

The '216 patent is directed to a software registration system wherein a particular piece of software may run on a platform in use mode if and only if a specified licensing procedure has taken place. See '216 patent Abstract. Uniloc sued Microsoft, alleging that Microsoft’s Product Activation system, an anti-piracy registration system used to reduce unlicensed use of its software products, infringed sixteen claims of the '216 patent under eight different infringement theories over twenty-four different disputed claim terms. See generally Uniloc USA, Inc. v. Microsoft Corp., 447 F.Supp.2d 177 (D.R.I.2006).

After having construed all disputed claim terms, the district judge indicated that he was inclined to appoint an independent expert or special master to assist in deciding the motions given the complicated subject matter of this dispute. Ultimately, the district court hired an evening law student who was finishing his Ph.D. in computer science as an unpaid judicial intern to work on the case. Uniloc objected to the intern’s involvement with the case, alleging that the intern had numerous ties to Microsoft. At a hearing to address Uniloc’s objections, the judge informed Uniloc that it had no “veto power” over his hiring of chambers staff and that Uniloc’s only recourse was to move for recusal of the judge himself. Uniloc filed a motion for recusal of the judge, which was denied.

On the merits of Uniloc’s claims for infringement, the district court granted summary judgment of noninfringement concluding that Product Activation did not infringe any of the independent claims of the '216 patent. The district court concluded that the '216 patent claims at issue required the same algorithm on both the client and server side to generate licensee unique IDs. If these licensee unique IDs match, the registration authority validates the registration and the intending licensee is then able to use the software. After determining that Uniloc had failed to offer proof that Microsoft’s Product Activation software employed the same algorithm on both the client and server side to generate licensee unique IDs that could then be compared to determine authorization, the district court granted summary judgment of noninfringement. Subsequently, the district court granted the parties’ subsequent joint motion to dismiss all remaining claims and counterclaims without prejudice.

Uniloc timely filed their appeal. We have jurisdiction over this appeal pursuant to 28 U.S.C. § 1295(a)(1).

[340]*340DISCUSSION

I. Denial of Motion for Recusal

We start by examining the district court’s denial of Uniloc’s motion for recusal. As it does not involve issues unique to our exclusive subject matter jurisdiction, we follow regional circuit law in reviewing a denial of a motion for recusal. 28 U.S.C. § 455(a) provides that “[a]ny justice, judge, or magistrate judge of the United States shall disqualify himself in any proceeding in which his impartiality might reasonably be questioned.” The key to the analysis is perception, not reality; a judge may be required to be recused, even in the absence of an actual bias. See Liteky v. United States, 510 U.S. 540, 548, 114 S.Ct. 1147, 127 L.Ed.2d 474 (1994). Despite the statute’s catch-all nature, the First Circuit has held that a judge is required to step down “only if the charge against her is supported by a factual foundation and ‘the facts provide what an objective, knowledgeable member of the public would find to be a reasonable basis for doubting the judge’s impartiality.’ ” In re United States, 158 F.3d 26, 30 (1st Cir. 1998) (quoting In re United States, 666 F.2d 690, 695 (1st Cir.1981) (emphasis in original)). And, since in many cases reasonable deciders may disagree, the district judge is allowed a range of discretion. As a reviewing court, therefore, we do not ask whether we would have decided as the trial court did, but only whether the trial court’s decision can be defended as a rational conclusion supported by a reasonable reading of the record. In re United States, 666 F.2d at 695.

Uniloc contends that the district judge should have recused himself because the intern he hired to assist with this case possessed “financial and contractual relationships” with Microsoft. These connections, as characterized by the district court, include: 1) the receipt of royalty payments by Microsoft Press pursuant to publishing contracts for four programming guides co-authored by the intern and published 9-11 years ago; 2) the assignment of copyrights for his books to Microsoft; 3) a generic expression of thanks to certain Microsoft and Microsoft Press employees in his books; 4) an expression of admiration for Microsoft products in articles written and published by him in Microsoft journals; and 5) indirect financing for his graduate studies from a Microsoft research grant scheduled to expire before the start of his summer internship with the district court.

Although reasonable minds could very well differ over the propriety of hiring this intern to work on the case given his financial ties, no matter how small the monetary amount, to one of the parties involved, the district court did not abuse its discretion in denying the motion for recusal. Uniloc emphasized below in their recusal brief that they were not questioning the impartiality of the judge himself. Rather, Uniloc argues that it was the intern’s connections with Microsoft that objectively created an appearance of partiality. As the district court’s thorough analysis indicates, its conclusion to the contrary is rationally based on a reasonable reading of the record. The intern’s connections to Microsoft do not create a conflict of interest under the Code of Conduct for Judicial Employees. The intern has never worked for Microsoft himself, and none of his publications related to Microsoft’s Product Activation technology such that he might have personal knowledge of disputed evi-dentiary facts in this case.

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290 F. App'x 337, Counsel Stack Legal Research, https://law.counselstack.com/opinion/uniloc-usa-inc-v-microsoft-corp-cafc-2008.