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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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` CARUCEL INVESTMENTS, L.P.
`Patent Owner
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`IPR2019-01079
`U.S. Patent 7,979,023
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`DECLARATION OF KEVIN JAKEL
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`I, Kevin Jakel, make the following Declaration pursuant to 28 U.S.C. § 1746:
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`1.
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`I am the Chief Executive Officer and Co-Founder of Unified Patents,
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`Inc. (“Unified”).
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`2.
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`I provide this Declaration in connection with the above-identified inter
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`partes review proceeding. Unless otherwise stated, the facts stated in this
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`Declaration are based on my personal knowledge.
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`3.
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`It is my understanding that the Patent Owner, Carucel Investments,
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`L.P., is currently asserting U.S. Patent No. 7,979,023 (“the ’023 Patent”) in four
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`district court infringement actions. Based on public information, the current
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`Unified Patents Exhibit 1018 - IPR2019-01079
`Unified Patents Inc. v. Carucel Investments L.P.
`Page 1 of 5
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`IPR2019-01079
`U.S. Patent 7,979,023
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`defendants of those actions are as follows: FCA US LLC, Fiat Chrysler Automobiles
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`N.V., General Motors Company, Volkswagen Group of America, Inc. d/b/a Audi of
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`America, Inc., Mercedes-Benz USA, LLC, and Mercedes-Benz US International,
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`Inc.
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`4.
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`Based on public information, the parent corporation of Mercedes-Benz
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`USA LLC and Mercedes-Benz US International, Inc. is Daimler North America
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`Corp., and further, that Daimler AG owns 10% or more of Daimler North America
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`Corp.
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`5.
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`Daimler AG and Daimler North America Corp. are members of
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`Unified. None of the other defendants are members of Unified.
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`6.
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`It is also my understanding that the Patent Owner has previously
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`asserted the ’023 Patent in previous district court infringement actions that have been
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`terminated. Based on public information, the defendants of those actions are as
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`follows: Novatel Wireless, Inc., AT&T Mobility LLC, Cellco Partnership d/b/a
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`Verizon Wireless, Inc., TigerDirect, Inc., Verizon Communications Inc., Aircell
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`Business Aviation Services LLC, American Airlines, Inc., ASG Aerospace, LLC,
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`Banyan Air Services, Inc., Delta Air Lines, Inc., Duncan Aviation, Inc., Gogo Inc.,
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`Gogo Intermediate Holdings LLC, and Gogo LLC. None of these previous
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`defendants are members of Unified.
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`7.
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`The ’023 Patent is relevant to Unified’s Transport and Mobile Zones.
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`2
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`Unified Patents Exhibit 1018 - IPR2019-01079
`Unified Patents Inc. v. Carucel Investments L.P.
`Page 2 of 5
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`IPR2019-01079
`U.S. Patent 7,979,023
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`Unified has challenged patents that in some circumstances were not
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`8.
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`asserted in a parallel district court litigation at the time of Unified’s filing (e.g.,
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`IPR2017-01370 against Kamatani Cloud, LLC and IPR2018-00952 against Bradium
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`Technologies LLC) or were asserted in parallel litigation only against non-members
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`(e.g., IPR2019-01265 against Browse3D LLC and IPR2019-01112 against
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`Inventergy LBS, LLC). Unified has also challenged patents where members were
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`dismissed with prejudice from their parallel district court litigation prior to Unified’s
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`filing (e.g., IPR2019-00477 against Hertl Media, LLC).
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`9.
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`As detailed in the Voluntary Interrogatories, as part of Unified’s
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`technology-specific deterrence, Unified performs many NPE-deterrent activities,
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`including prior art contests, validity and patentability analyses, amicus briefing, and
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`data analytics. All of these activities are controlled by Unified alone, and are not
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`requested or influenced by any Unified member.
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`10. Unified’s prior art contests (known as PATROLL contests) are posted
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`to Unified’s website at https://patroll.unifiedpatents.com. These prior art contests
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`seek relevant prior art for a subject patent that has been identified as a threat to a
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`technology, and Unified pays prize money (up to $10,000) to the searcher with the
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`most relevant prior art to the subject patent. The resulting prior art is posted to
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`Unified’s website, along with a claim chart mapping the prior art to the limitations
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`of the subject patent. The results and claim chart are available for the public (Unified
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`3
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`Unified Patents Exhibit 1018 - IPR2019-01079
`Unified Patents Inc. v. Carucel Investments L.P.
`Page 3 of 5
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`IPR2019-01079
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`members and non-members) to use, whether in their own post-grant challenge or for
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`other uses (e.g., licensing negotiations). As of this declaration, 10 contests are
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`active, 55 contests have completed, and Unified has paid $152,000 in prize money
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`to contest winners.
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`11. Unified’s validity and patentability analyses are likewise available on
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`Unified’s website by accessing the Unified portal (https://portal.unifiedpatents.com)
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`and
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`searching
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`for
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`a
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`patent
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`of
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`interest
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`(e.g.,
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`https://portal.unifiedpatents.com/patents/patent/7979023). These pages contain
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`analyses from Unified’s internally developed tools that measure a patent’s validity
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`(known as APIX), a patent’s value (known as CITX), and a patent’s broadness or
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`narrowness (known as BRIX). These pages and the analytics contained therein are
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`available to the public.
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`12. Unified’s data analytics are likewise available to the public on
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`Unified’s website. For example, Unified publishes an annual report of PTAB
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`petitions (available at https://portal.unifiedpatents.com/ptab/annual-report) that
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`categorizes petitions on various criteria, like industry or patent owner category.
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`Unified also publishes reports of district court litigation activity (available at
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`https://portal.unifiedpatents.com/litigation/annual-report), in part so that the public
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`can gain insight into NPE litigation activity.
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`4
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`Unified Patents Exhibit 1018 - IPR2019-01079
`Unified Patents Inc. v. Carucel Investments L.P.
`Page 4 of 5
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`IPR2019-01079
`U.S. Patent 7,979,023
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`13. Finally, Unified files amicus briefs to advance its goal of protecting
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`technology sectors. For example, Unified filed an amicus brief in Oil States Energy
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`Servs., LLC v. Greene’s Energy Group, LLC, 138 S.Ct. 1365 (2018) arguing in favor
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`of the constitutionality of inter partes review. Unified filed its amicus brief because
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`it was interested in ensuring that inter partes review and other related Patent Office
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`proceedings remained timely and cost-effective tools for any member of the public
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`to protect itself from improperly issued patent claims.
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`14. Unified has over 230 members subscribed to one or more Zones.
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`15.
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`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: September 9, 2019
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` By:
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`Kevin Jakel
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`CEO Unified Patents, Inc.
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`5
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`Unified Patents Exhibit 1018 - IPR2019-01079
`Unified Patents Inc. v. Carucel Investments L.P.
`Page 5 of 5
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