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`BEFORE THE PA TENT TRIAL AND APPEAL BOARD
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`UNIFIED PATENTS INC.,
`Petitioner,
`
`V.
`
`BRADIUM TECHNOLOGIES LLC,
`Patent Owner.
`
`Case IPR2018-00952
`Patent No. 9,253,239
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`DECLARATION OF MICHAEL SHANAHAN
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`Bradium Exhibit 2037
`Unified Patents Inc. v. Bradium Technologies LLC
`IPR2018-00952
`Page 1 of 6
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`I, Michael Shanahan, declare as follows:
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`I.
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`l am the Genera l Counsel of Bradium Technologies LLC
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`("Brad ium"), the patent owner in this inter partes review. I am also the General
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`Counsel of General Patent Corporation, which is the managing member of
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`Bradium. I have fil ed an appearance in this IPR as back-up counsel. I am an
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`experienced patent litigation and licensing attorney. Prior to joining General
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`Patent Corporation, I was a litigation partner at the law firm of McDermott, Will
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`and Emery.
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`2.
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`I make this declaration in order to provide some information
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`about Bradium 's licensing activities for the patent at issue in this IPR, namely, US
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`Patent No. 9,253,239. Such activities may, as I understand it, be relevant to
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`whether certain entities in addition to petitioner Unified Patents are real parties in
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`interest in this IPR.
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`3.
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`The '239 patent is one of several Bradium patents that in
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`general relate to images sent over a network connection to a small client, such as a
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`mobi le phone, or over a limited bandwidth channel, such as wireless. The
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`technology has particular application to map images, which are large-scale images
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`that typically involve higher levels of data density and size. The ' 239 patent
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`background states: " In common application, the images may be geograph ic,
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`topographi c, and or other highly detailed maps." (Col. 1, II. 39-4 1 ).
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`Bradium Exhibit 2037
`Unified Patents Inc. v. Bradium Technologies LLC
`IPR2018-00952
`Page 2 of 6
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`4.
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`As the General Counsel of both Bradium and GPC, my
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`responsibilities on behalf of Brad ium have included efforts to license the ' 239
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`patent along with other Bradium patents to companies that are involved in
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`providing map images over wireless connections.
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`5.
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`Most prominent of these companies include: Apple, which
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`offers Apple Maps; Google, which offers Google Maps; and Microsoft, which
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`offers Bing Maps. They are obvious candidates for licensing because it is well(cid:173)
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`known to any cell phone user or computer user in the United States that Apple
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`Maps is the default map service on Apple phone and computer products; Google
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`Maps is commonly the default map service for Android (Google) phone products
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`and is also frequently used on other devices as well; and Bing Maps is the default
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`map service for Microsoft W indows and previously was the default map service
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`for Windows phones. I am providing links to some web pages that confirm my
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`own understanding, and that would be accessible to anyone seeking basic
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`information about web map services providers.
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`https://en.wikipedia.org/wiki/Apple Maps.
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`https://thenextweb.com/ insider/20 10/09/ 16/bi g-surprise-microsoft-makes-bi ng(cid:173)
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`maps-default-i n-w i ndows-phone-7-sdk/
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`https://360.here.com/20 15/0 I /29/swap-google-maps-here-andro id/
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`2
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`Bradium Exhibit 2037
`Unified Patents Inc. v. Bradium Technologies LLC
`IPR2018-00952
`Page 3 of 6
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`https ://www .statista.com/statistics/8654 13/ most-popu lar-us-mappi n g-apps-ranked(cid:173)
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`by-aud ience/
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`The last entry, from statista.com, indicates that Google is by far the company
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`whose map products (Google Maps and Waze) collectively are used most
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`frequently, fo llowed in second place by Apple.
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`6.
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`On behalf of Bradium, I have approached all three companies
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`regarding a license to the '239 patent among other Bradium patents.
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`7.
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`In the case of Microsoft, Bradium filed a lawsuit in 2015 after
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`prior efforts to discuss a license proved fruitless. In the course of that suit,
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`Microsoft filed IPR petitions against several Bradium patents, including the '239
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`patent at issue here. The suit was settled in October 20 17, as the Board will be
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`aware because the settlement documents were submitted to the Board in
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`connection w ith Microsoft' s pending IPRs. My understanding is that prior to filing
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`the IPR in this matter, Unified Patents was aware of Bradium' s suit against
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`Microsoft and the prior IPRs filed by Microsoft, because the current IPR on the
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`' 239 patent is almost a duplicate of the prior IPR on that patent fi led by M icrosoft.
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`8.
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`In the case of Apple, Bradium has had several licensing
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`discussions and communications, beginning in May 2014. The discussions have
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`included telephone discussions, in-person meetings, and written communications.
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`I personally have participated in those discussions. In the course of the most recent
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`3
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`Bradium Exhibit 2037
`Unified Patents Inc. v. Bradium Technologies LLC
`IPR2018-00952
`Page 4 of 6
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`discussions, occurring w ith in the last two months, the IPR petition filed herein by
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`Unified Patents was a subj ect of discussion.
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`9.
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`In the case of Google, Bradium has also had several licensing
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`discussions and communications, beginning in May 20 14. The discussions have
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`included telephone discussions, in-person meetings, and written communications.
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`I personally have participated in those discussions.
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`10.
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`Prior to the fi ling of Unified Patents' IPR petition in this matter,
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`I received a telephone call from Mr. Jonathan Stroud and Mr. Roshan
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`Mansinghani, counsel for Unified, in which they indicated that they were
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`reviewi ng Bradium's patents w ith a view towards potentially filing an IPR petition.
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`It was either in that call or in a subsequent call that they asked Bradium to agree to
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`enter into a Unified standard zero dollar license. I informed Mr. Stroud and Mr.
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`Mansinghani that Bradium had recently settled its litigation against Microsoft,
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`including licensing the po1tfo lio to Microsoft fo r an amount greater than zero
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`dollars, and that Bradium would not agree to Unified 's proposal. Unified's
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`representatives then suggested absent such a license, that they would proceed with
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`the IPR against Bradium.
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`I hereby declare that all the statements made in this Declaratio n are of my
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`own knowledge and true; that all statements made on information a nd belief are
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`4
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`Bradium Exhibit 2037
`Unified Patents Inc. v. Bradium Technologies LLC
`IPR2018-00952
`Page 5 of 6
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`believed to be true; and fwiher that these statements were made with the
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`knowledge that willful false statements and the like so made are punishable by fine
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`or imprisonment, or both, under Section 1001 of the Title 18 of the United States
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`Code.
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`I declare under the penalty of perjury that all statements made in this
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`Declaration are true and correct.
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`Executed September 2.l , 2018 in MorJT£l!>O...~
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`5
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`Bradium Exhibit 2037
`Unified Patents Inc. v. Bradium Technologies LLC
`IPR2018-00952
`Page 6 of 6
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