uCloudlink's (NASDAQ, ULC) WiFi Devices and Data Service Still at Risk of Infringement After SIMO Defeats uCloudlink's Motion for Summary Judgment
Following SIMO's May 2019 summary judgment and jury trial verdict that Hong Kong uCloudlink Network Technology Limited ("uCloudlink Hong Kong") and uCloudlink (America) Ltd. ("uCloudlink America") willfully infringed SIMO's U.S. Patent No. 9,736,689 (the "'689 Patent") by selling and enabling the use of its G2 (News - Alert), G3, and U2 mobile hotspots and S1 mobile phone in the United States, the District Court for the Southern District of New York enjoined uCloudlink Hong Kong and uCloudlink America from selling, offering to sell, or enabling the use of these infringing devices in the United States. uCloudlink-related entities subsequently allegedly redesigned these products and uCloudlink Hong Kong and uCloudlink America asked the Court to permit the sale and use of these redesigned products. The Court agreed that the redesigned products were sufficiently different from those products found to infringe such that the injunction order did not apply to them.
SIMO thereafter filed a lawsuit against uCloudlink Hong Kong and additional uCloudlink entities in the Eastern District of Texas alleging that the redesigned products (and newly released products such as the G4 hotspot and P3 mobile phone) continue to infringe the '689 Patent, despite the redesign, in addition to claims that uCloudlink is liable for misappropriation of IMO's trade secrets.
Four months later, in response to SIMO's Texas Complaint, uCloudlink Hong Kong and uCloudlink America filed their own complaint in the Southern District of New York seeking a declaratory judgment that the redesigned and newly released products do not infringe the '689 Patent. The District Court permitted uCloudlink to file an early motion for summary judgment, which was based entirely on uCloudlink's previously disclosed argument position that the redesigned products do not infringe. In its opposition, SIMO identified several factual issues that, if resolved in SIMO's favor, establish that uCloudlink may still be infringing the '689 Patent by selling and/or enabling the use of the redesigned and newly released products in the United States.
The Court denied uCloudlink's motion, finding that SIMO had established issues of fact that required further discovery and resolution. In so doing, the Court found that the case should proceed, and early disposal on summary judgment was inappropriate. The Court ordered that the discovery period would proceed into November, and that the Court would hear motions for summary judgment in January 2021 based on evidence developed to that point. In the meanwhile, the sales of uCloudlink's allegedly redesigned devices and data use through those devices are all potentially at issue in the Southern District of New York.
uCloudlink Hong Kong is a direct subsidiary of uCloudlink Group, Inc. (Nasdaq: UCL), and is the direct parent company of most of the sales and R&D entities related to the products and services marked under at least the uCloudlink, Glocalme, and Roaming Man brand names, in addition to providing White Label products and services to American companies such as DHI Telecom.
Skyroam is a subsidiary of SIMO. Skyroam developed and patented its virtual SIM (vSIM) technology, which delivers on-demand local wireless data through local carrier partnerships around the world. Enjoyed by over 15 million users worldwide, Skyroam's global hotspots, embedded with a vSIM, enable unlimited mobile WiFi (News - Alert) in 130+ countries. Skyroam's vSIM technology also provides global mobile data access to IoT, M2M, and wearables applications.