`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________________________
`
`
`UNIFIED PATENTS INC.
`Petitioner
`
`v.
`
` CARUCEL INVESTMENTS, L.P.
`Patent Owner
`
`IPR2019-01079
`U.S. Patent 7,979,023
`
`
`DECLARATION OF KEVIN JAKEL
`
`I, Kevin Jakel, make the following Declaration pursuant to 28 U.S.C. § 1746:
`
`1.
`
`I am the Chief Executive Officer and Co-Founder of Unified Patents,
`
`
`
`
`
`
`
`
`Inc. (“Unified”).
`
`2.
`
`I provide this Declaration in connection with the above-identified inter
`
`partes review proceeding. Unless otherwise stated, the facts stated in this
`
`Declaration are based on my personal knowledge.
`
`3.
`
`It is my understanding that the Patent Owner, Carucel Investments,
`
`L.P., is currently asserting U.S. Patent No. 7,979,023 (“the ’023 Patent”) in four
`
`district court infringement actions. Based on public information, the current
`
`
`
`Unified Patents Exhibit 1018 - IPR2019-01079
`Unified Patents Inc. v. Carucel Investments L.P.
`Page 1 of 5
`
`

`

`IPR2019-01079
`U.S. Patent 7,979,023
`
`defendants of those actions are as follows: FCA US LLC, Fiat Chrysler Automobiles
`
`N.V., General Motors Company, Volkswagen Group of America, Inc. d/b/a Audi of
`
`America, Inc., Mercedes-Benz USA, LLC, and Mercedes-Benz US International,
`
`Inc.
`
`4.
`
`Based on public information, the parent corporation of Mercedes-Benz
`
`USA LLC and Mercedes-Benz US International, Inc. is Daimler North America
`
`Corp., and further, that Daimler AG owns 10% or more of Daimler North America
`
`Corp.
`
`5.
`
`Daimler AG and Daimler North America Corp. are members of
`
`Unified. None of the other defendants are members of Unified.
`
`6.
`
`It is also my understanding that the Patent Owner has previously
`
`asserted the ’023 Patent in previous district court infringement actions that have been
`
`terminated. Based on public information, the defendants of those actions are as
`
`follows: Novatel Wireless, Inc., AT&T Mobility LLC, Cellco Partnership d/b/a
`
`Verizon Wireless, Inc., TigerDirect, Inc., Verizon Communications Inc., Aircell
`
`Business Aviation Services LLC, American Airlines, Inc., ASG Aerospace, LLC,
`
`Banyan Air Services, Inc., Delta Air Lines, Inc., Duncan Aviation, Inc., Gogo Inc.,
`
`Gogo Intermediate Holdings LLC, and Gogo LLC. None of these previous
`
`defendants are members of Unified.
`
`7.
`
`The ’023 Patent is relevant to Unified’s Transport and Mobile Zones.
`
`
`
`2
`
`Unified Patents Exhibit 1018 - IPR2019-01079
`Unified Patents Inc. v. Carucel Investments L.P.
`Page 2 of 5
`
`

`

`IPR2019-01079
`U.S. Patent 7,979,023
`
`Unified has challenged patents that in some circumstances were not
`
`8.
`
`asserted in a parallel district court litigation at the time of Unified’s filing (e.g.,
`
`IPR2017-01370 against Kamatani Cloud, LLC and IPR2018-00952 against Bradium
`
`Technologies LLC) or were asserted in parallel litigation only against non-members
`
`(e.g., IPR2019-01265 against Browse3D LLC and IPR2019-01112 against
`
`Inventergy LBS, LLC). Unified has also challenged patents where members were
`
`dismissed with prejudice from their parallel district court litigation prior to Unified’s
`
`filing (e.g., IPR2019-00477 against Hertl Media, LLC).
`
`9.
`
`As detailed in the Voluntary Interrogatories, as part of Unified’s
`
`technology-specific deterrence, Unified performs many NPE-deterrent activities,
`
`including prior art contests, validity and patentability analyses, amicus briefing, and
`
`data analytics. All of these activities are controlled by Unified alone, and are not
`
`requested or influenced by any Unified member.
`
`10. Unified’s prior art contests (known as PATROLL contests) are posted
`
`to Unified’s website at https://patroll.unifiedpatents.com. These prior art contests
`
`seek relevant prior art for a subject patent that has been identified as a threat to a
`
`technology, and Unified pays prize money (up to $10,000) to the searcher with the
`
`most relevant prior art to the subject patent. The resulting prior art is posted to
`
`Unified’s website, along with a claim chart mapping the prior art to the limitations
`
`of the subject patent. The results and claim chart are available for the public (Unified
`
`
`
`3
`
`Unified Patents Exhibit 1018 - IPR2019-01079
`Unified Patents Inc. v. Carucel Investments L.P.
`Page 3 of 5
`
`

`

`IPR2019-01079
`U.S. Patent 7,979,023
`
`members and non-members) to use, whether in their own post-grant challenge or for
`
`other uses (e.g., licensing negotiations). As of this declaration, 10 contests are
`
`active, 55 contests have completed, and Unified has paid $152,000 in prize money
`
`to contest winners.
`
`11. Unified’s validity and patentability analyses are likewise available on
`
`Unified’s website by accessing the Unified portal (https://portal.unifiedpatents.com)
`
`and
`
`searching
`
`for
`
`a
`
`patent
`
`of
`
`interest
`
`(e.g.,
`
`https://portal.unifiedpatents.com/patents/patent/7979023). These pages contain
`
`analyses from Unified’s internally developed tools that measure a patent’s validity
`
`(known as APIX), a patent’s value (known as CITX), and a patent’s broadness or
`
`narrowness (known as BRIX). These pages and the analytics contained therein are
`
`available to the public.
`
`12. Unified’s data analytics are likewise available to the public on
`
`Unified’s website. For example, Unified publishes an annual report of PTAB
`
`petitions (available at https://portal.unifiedpatents.com/ptab/annual-report) that
`
`categorizes petitions on various criteria, like industry or patent owner category.
`
`Unified also publishes reports of district court litigation activity (available at
`
`https://portal.unifiedpatents.com/litigation/annual-report), in part so that the public
`
`can gain insight into NPE litigation activity.
`
`
`
`4
`
`Unified Patents Exhibit 1018 - IPR2019-01079
`Unified Patents Inc. v. Carucel Investments L.P.
`Page 4 of 5
`
`

`

`IPR2019-01079
`U.S. Patent 7,979,023
`
`13. Finally, Unified files amicus briefs to advance its goal of protecting
`
`technology sectors. For example, Unified filed an amicus brief in Oil States Energy
`
`Servs., LLC v. Greene’s Energy Group, LLC, 138 S.Ct. 1365 (2018) arguing in favor
`
`of the constitutionality of inter partes review. Unified filed its amicus brief because
`
`it was interested in ensuring that inter partes review and other related Patent Office
`
`proceedings remained timely and cost-effective tools for any member of the public
`
`to protect itself from improperly issued patent claims.
`
`14. Unified has over 230 members subscribed to one or more Zones.
`
`15.
`
`I declare that all statements made herein of my knowledge are true, and
`
`that all statements made on information and belief are believed to be true, and 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
`
`Title 18 of the United States Code.
`
`
`
`Dated: September 9, 2019
`
`
`
`
`
`
`
`
`
`
`
`
` By:
`
`
`Kevin Jakel
`
`
`
`CEO Unified Patents, Inc.
`
`
`
`
`
`5
`
`Unified Patents Exhibit 1018 - IPR2019-01079
`Unified Patents Inc. v. Carucel Investments L.P.
`Page 5 of 5
`
`

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