Judge William Alsup, U.S. District Court for the Northern District of California. (Jason Doiy/The Recorder)

On the same day the U.S. Supreme Court ruled that the president can, in theory, be forced to divulge personal financial records, the U.S. Court of Appeals for the Federal Circuit forcefully backed a district judge's power to compel a patent owner to disclose private material during litigation.

A Federal Circuit panel led by Judge Haldane Mayer ruled that because Uniloc 2017 LLC's initial motion to seal confidential information in its dispute with Apple Inc. was wildly overbroad, U.S. District Judge William Alsup did not abuse his discretion when he compelled Uniloc to disclose information about its relationship with Fortress Credit Co. and more than 100 third-party licensees.

"In denying Uniloc's sweeping motion to seal, the district court sent a strong message that litigants should submit narrow, well-supported sealing requests in the first instance," Mayer wrote for a unanimous panel in Uniloc 2017 v. Apple. Chief Judge Sharon Prost and Judge Richard Taranto concurred.

But as with the Supreme Court's decisions Thursday, the devil will be in the details on remand. The Federal Circuit instructed Alsup to reconsider the most contentious issue: the redaction of confidential licenses with companies such as Microsoft. Uniloc has argued that confidential licenses and royalty rates are "the life blood of a company that relies on licensing its intellectual property."

Alsup, of the Northern District of California, had refused Uniloc's request to seal multiple pages of information covering Uniloc's governance, its financial arrangement with Fortress, and the licensing agreements. Alsup argued that the request was "astonishing" in its overbreadth, as the redactions covered entire exhibits and declarations, and such clearly nonconfidential matter as quotations from public case law. As for the licenses, Alsup reasoned that because Uniloc's patent rights flow from a government-conferred power to exclude, "the public in turn has a strong interest in knowing the full extent of the terms and conditions involved in Uniloc's exercise of its patent rights."

On remand, Alsup will need to make specific findings that can help the Federal Circuit balance the public's right of access against the third parties' rights of confidentiality, including whether any of the licenses are protectable as a trade secret and whether disclosing them could cause material injury to the third party, Mayer wrote.

Still, Uniloc will have to make public certain information about itself and its related entities. But whether Fortress will be considered a Uniloc-related entity or a third party is also up for debate. The Federal Circuit said it would leave to Alsup's sound discretion "the question of whether the interests of Fortress are so closely aligned with those of Uniloc that it should be deemed a Uniloc-related entity for purposes of determining whether its purportedly confidential materials should be sealed or redacted."

Electronic Frontier Foundation staff attorney Alex Moss argued the appeal for intervenor EFF. Prince Lobel Tye partner Aaron Jacobs argued for Uniloc. Goldman Ismail Tomaselli Brennan & Baum partner Doug Winnard argued for Apple.