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