IPR2018-00067
`U.S. 8,577,813
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`UNIFIED PATENTS INC.
`Petitioner
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`UNIVERSAL SECURE REGISTRY LLC
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`Patent Owner
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`IPR2018-00067
`U.S. 8,577,813
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`DECLARATION OF KEVIN JAKEL
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`HIGHLY CONFIDENTIAL
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`ATTORNEYS' EYES ONLY
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`IPR2018-00067
`Unified EX1043 Page 1
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`U.S. 8,577,813
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`UNIFIED PATENTS INC.
`Petitioner
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`V.
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`UNIVERSAL SECURE REGISTRY LLC
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`Patent Owner
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`IPR2018-00067
`U.S. 8,577,813
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`DECLARATION OF KEVIN JAKEL
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`HIGHLY CONFIDENTIAL
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`ATTORNEYS' EYES ONLY
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`IPR2018-00067
`Unified EX1043 Page 1
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`IPR2018-00067
`U.S. 8,577,813
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`I, Kevin Jakel, inake the following Declaration pursuant to 28 U.S.C. § 1746:
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`1. I am the Chief Executive Officer and Co-Founder of Unified Patents,
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`Inc. ("Unified").
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`2. I provide this Declaration in connection with the above-identified
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`No. 8,577,813 U.S. Patent partes review proceeding, IPR2018-00067, regarding
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`("the '813 patent'} Unless otherwise stated, the facts stated in this Declaration are
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`based on my personal knowledge.
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`3. Prior to the filing of this petition, Unified had no communications with
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`or any other member of Unified regarding the '813 patent, the
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`Owner, Universal Secure Registry, LLC ("USR"), any litigation involving
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`the '813 patent or USR, or the strategy, preparation, or filing of the petition in this
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`proceeding.
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`Unified also had no discussions with or any other member
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`regarding whether or any other member desired that Unified challenge the
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`'813 patent.
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`Unified also had no pre-filing communications with
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`regarding the '813 patent, USR, any litigation
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`involving the '813 patent or USR, or the strategy, preparation, or filing of the petition
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`in this proceeding. and has never been a member of Unified.
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`4. The only communication
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`that r any Unified member may have
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`received from Unified regarding this challenge would have been after the petition
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`was filed in Unified's general, periodic electronic newsletters that are sent out via e-
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`HIGHLY CONFIDENTIAL
`ATTORNEYS' EYES ONLY
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`IPR2018-00067
`Unified EX1043 Page 2
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`mail using an e-mail application called "MailChimp" that is used to distribute the
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`IPR2018-00067
`U.S. 8,577,813
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`newsletter to a distribution list of thousands of e-mail addresses of individuals who
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`have requested to receive this publicly available newsletter on Unified's website.
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`After the filing of the petition in this matter, Unified announced that it had filed this
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`petition in an e-mail newsletter dated November 15, 2017 (see EX 1040 at UNIFIED
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`USR-00047). And Unified announced that this IPR had been instituted in an e-mail
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`newsletter dated June 21, 2018 (see EX1041 at UNIFIED-USR-00006). Other than
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`those two e-mail newsletters sent out to thousands of newsletter recipients, Unified
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`has had no other communications with any member regarding this challenge.
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`5. Neither nor any other Unified member had any involvement in
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`the preparation of or decision to file the petition, and neither nor any other
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`member provided funds designated to be used to prepare or file this petition. Unified
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`has solely directed, controlled, and funded this petition and proceeding.
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`6. Unified independently controls all aspects of its patent challenge
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`activities, without any input or direction from its members.
`For example, Unified
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`does not discuss the preparation of any patentability challenge, including whether
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`Unified will or will not file a petition, whether any Unified member desires that
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`Unified file a challenge, or any strategy related to an ongoing challenge or litigation.
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`7. Membership fees paid by members are not designated to be used to file
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`challenges, much less any particular challenge. Rather, Unified works to deter NPE
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`HIGHLY CONFIDENTIAL
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`ATTORNEYS' EYES ONLY
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`IPR2018-00067
`Unified EX1043 Page 3
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`activity
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`m technology sectors called "zones," not on behalf of any specific
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`member(s) to resolve its litigation. For example, Unified has challenged unlitigated
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`IPR2018-00067
`U.S. 8,577,813
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`patents and has challenged many patents not asserted against any member. Unified
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`has also filed reissue protests. Unified also performs NPE-deterrent and monitoring
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`activities, such as data analytics and crowdsourced prior art searching, that do not
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`involve filing challenges.
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`8. Unified does not discuss strategy relating to any pending litigation or
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`any ongoing challenge with members and does not know whether a challenge will
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`benefit any particular member, and the same applies here.
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`9. Unified has over 225 members. The zone relevant to this challenge-
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`the "Transactions" Zone-has 128 member companies.
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`10. Unified has no attorney-client relationship with its members, nor is it
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`an extension of any in-house legal team. There is no overlap on Unified's or any
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`member's board (or management generally, for that matter)-that is, no member's
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`director or member of management sits on Unified's board, and no one on Unified's
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`board or in Unified's management sits on any member's board. Unified is privately
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`and wholly owned by
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`11. As I explained in my deposition, Unified does not consider filing
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`challenges in response to any member being sued, but instead assesses whether
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`HIGHLY CONFIDENTIAL
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`ATTORNEYS' EYES ONLY
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`IPR2018-00067
`Unified EX1043 Page 4
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`IPR2018-00067
`U.S. 8,577,813
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`patents-whether asserted in litigation or otherwise-are related to and threaten a
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`Unified zone based on how well the patent's claimed technology falls within
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`Unified's
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`definition of the zone and are owned by a non-practicing entity, regardless
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`of whether a member has been sued, as Unified did here. See, e.g., Jake! Tr.
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`(EX1037), at 38:2-13, 41:20-42:4, 48:7-50:6, 51:22-54:5, 55:13-22. Unified did not
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`file this challenge based on
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`12. As demonstrated
`by the
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`agreement that was
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`voluntarily produced to Patent Owner during this proceeding, membership fees paid
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`by Unified members are not designated to file any patent challenges, much less any
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`particular challenge, because Unified is not obligated to file challenges and Unified
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`members provide no input, direction, or control (nor are they contractually permitted
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`to do so). See EX2011, at UNIFED-USR-00029-to-00030 (
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`Membership fees may be used for all NPE deterrence activities in a zone, including
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`many non-challenge activities such as data analytics, crowdsourced prior art and the
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`like, at Unified's sole discretion.
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`13. In the Confidential Version of its Patent Owner Response (paper 28 in
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`this proceeding), USR cites to portions of the
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`agreement between
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`HIGHLY CONFIDENTIAL
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`ATTORNEYS' EYES ONLY
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`IPR2018-00067
`Unified EX1043 Page 5
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`Unified Patents and relating to an
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`IPR2018-00067
`U.S. 8,577,813
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`and
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`See Paper 28, at 70 (citing Exhibit 2011 at p. UNIFIED-USR-00026
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`) & p. UNIFIED-USR-00041 (
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`testified in my voluntary deposition in this proceeding when asked by USR's
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`counsel, the
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`was an early concept that Unified had considered
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`implementing, but it was never implemented, it never met, no
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`discussions occurred, and it was subsequently removed from
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`Similarly, the
`agreements. See Jake! Tr. (EX1037), at 91:9-94:6.
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`(see Exhibit 2011 at referenced in the Exhibit A to the agreement
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`Unified-USR-00041) was also never implemented, never met, no
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`discussions occurred, and it, too, was subsequently removed from
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`Unified's membership agreements.
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`14. I declare that all statements made herein of my knowledge are true, and
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`that all statements made on information and belief are believed to be true, and that
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`these statements were made with the knowledge that willful false statements and the
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`like so made are punishable by fine or imprisonment, or both, under Section 1001 of
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`Title 18 of the United States Code.
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`Dated: Nov. 21, 2018
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`By:
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`Kevin Jakel
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`CEO, Unified Patents Inc.
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`HIGHLY CONFIDENTIAL
`ATTORNEYS' EYES ONLY
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`IPR2018-00067
`Unified EX1043 Page 6
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