`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`UNIFIED PATENTS, LLC,
`Petitioner,
`
`v.
`
`ELECTRONICS AND TELECOMMUNICATIONS RESEARCH INSTITUTE,
`KWANGWOON UNIVERSITY RESEARCH INSTITUTE FOR INDUSTRY
`COOPERATION, INDUSTRY-ACADEMIA COOPERATION GROUP OF
`SEJONG UNIVERSITY,
`Patent Owners.
`
`
`Case: IPR2021-00368
`U.S. Patent No. 9,736,484
`
`
`DECLARATION OF KEVIN JAKEL
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Unified Patents, LLC v. Elects. & Telecomm. Res. Inst., et al.
`
`Ex. 1040
`
`
`
`
`
`I, Kevin Jakel, hereby declare as follows:
`
`I. INTRODUCTION
`1.
`I am a founder and the current CEO of Unified Patents, LLC
`
`(“Unified”). I am over 21 years and otherwise competent to make this Declaration.
`
`I make this Declaration based on facts and matters within my own knowledge and
`
`on information provided to me by others, and, if called as a witness, I could and
`
`would competently testify to the matters set forth herein.
`
`2.
`
`Unified was founded by intellectual property professionals over
`
`concerns with the increasing risk of non-practicing entities (“NPEs”) asserting
`
`patents of poor quality against strategic technologies and industries. The founders
`
`thus created a first-of-its-kind company whose purpose is to protect technology
`
`sectors, also referred to as zones, by deterring the assertion of invalid or low-quality
`
`patents. Some companies in a technology sector, referred to herein as “Members,”
`
`subscribe to one or more of Unified’s technology-specific NPE zones. Members pay
`
`a yearly subscription fee to a specific NPE technology zone based generally on when
`
`each Member subscribes.
`
`3.
`
`Unified performs many deterrent activities, including data analytics,
`
`analyzing the technology sector and monitoring patent activity (including patent
`
`ownership and sales, demand letters and litigation, and industry companies), prior
`
`art searching, prior art contests, validity and patentability analyses, reissue protests,
`
`
`
`- 1 -
`
`
`
`Unified Patents, LLC v. Elects. & Telecomm. Res. Inst., et al.
`
`Ex. 1040
`
`
`
`
`
`amicus briefing, and post-grant review requests. Unified’s deterrent activities allow
`
`it to identify patents, perform prior art research, analyze invalidity, and to sometimes
`
`file reexaminations or post-grant proceedings against some patents, such as inter
`
`partes reviews (“IPRs”), post grant reviews (“PGRs”), and ex parte reexaminations
`
`(“EPRs”) before the United States Patent and Trademark Office (“USPTO”), or
`
`proceedings overseas, such as European Patent Oppositions (“EPOs”).
`
`4.
`
`Unified exercises sole and absolute discretion over its decision to
`
`contest patents through the USPTO’s post-grant proceedings. Based on its own
`
`analysis, Unified determines which patents are worth pursuing in terms of searching
`
`for prior art or taking action, including filing a PGR, IPR, or EPR. Unified’s
`
`decisions to file a PGR, IPR, or EPR are made independently without the input,
`
`assistance, or approval of any of Unified’s Members. Should Unified decide to
`
`challenge a patent in a post-grant proceeding, Unified controls every aspect of such
`
`a challenge, including controlling which patent and claims to challenge, which prior
`
`art to apply and the grounds raised in the challenge, when to bring any challenge,
`
`and whether to settle or otherwise end any challenge.
`
`5.
`
`Unified does not discuss the preparation of any patentability challenge
`
`with Members or potential Members, including whether Unified will or will not file
`
`a petition or whether a Member desires that Unified file a petition. Unified does not
`
`send to, or solicit or consider from, Members or potential Members any
`
`
`
`- 2 -
`
`
`
`Unified Patents, LLC v. Elects. & Telecomm. Res. Inst., et al.
`
`Ex. 1040
`
`
`
`
`
`communications directing which patent or group of patents are to be considered for
`
`a PGR, IPR, or EPR. Further, Unified does not send to, or solicit or consider from,
`
`any company’s preferences, suggestions, or desires as to the selection of a patent or
`
`group of patents for a PGR, IPR, or EPR. Unified identifies potential patents to
`
`challenge based on publicly available information obtained solely through Unified’s
`
`own independent search of publicly available legal databases and information.
`
`6.
`
`Unified does not communicate with Members about their litigation
`
`strategies in district court, before the USPTO and/or before other forums, including
`
`whether Members may pursue or have pursued their own patent challenges. Unified
`
`does not communicate with Members about any settlement strategies or settlement
`
`negotiations Members may have with patent owners, nor does Unified inform
`
`Members about any settlement strategies or settlement negotiations Unified may
`
`have with patent owners in pursuit of settling Unified’s patent challenge.
`
`7. Members receive no prior notice of Unified’s patent challenges.
`
`Unified does not give Members an opportunity to participate in or an opportunity to
`
`even know that Unified is contemplating filing a PGR, IPR, or EPR before the
`
`petition is filed.
`
`8.
`
`After filing a post-grant proceeding, Unified retains sole and absolute
`
`discretion and control over all strategy decisions (including any decision to continue
`
`or terminate Unified’s participation). Unified is also solely responsible for paying
`
`
`
`- 3 -
`
`
`
`Unified Patents, LLC v. Elects. & Telecomm. Res. Inst., et al.
`
`Ex. 1040
`
`
`
`
`
`for the preparation, filing, and prosecution of any PGR, IPR, or EPR, including any
`
`expenses associated with the proceeding.
`
`9.
`
`Unified’s Members do not pay any fees designated for post-grant
`
`proceedings (e.g., IPRs, PGRs, EPRs), let alone for post-grant proceedings against
`
`specific patents. It is Unified and Unified alone that determines how to spend its
`
`money. Unified independently selects which patents to target based on the perceived
`
`deterrent value to a technology zone and not on behalf of any specific Member(s) to
`
`resolve their litigation. Based on its own analysis, Unified determines which patents
`
`are worth pursuing in terms of filing a post-grant proceeding, such as a PGR or IPR,
`
`or performing some other activity. Unified’s decisions to file a post-grant
`
`proceeding, such as a PGR, IPR, or EPR, are made independently without the input,
`
`assistance, or approval of its Members.
`
`10. Unified has no explicit or implicit agreements with its Members about
`
`Unified performing any particular deterrent strategy, including the instant IPR (see
`
`Sec. II, below).
`
`11. No other entity or individual outside of Unified controls Unified. There
`
`are no board Members of Unified that participate on any boards of directors for any
`
`of Unified’s Members.
`
`12. As
`
`stated
`
`on Unified’s website
`
`for many
`
`years
`
`(https://www.unifiedpatents.com/faq/), Unified acts independent of its Members or
`
`
`
`- 4 -
`
`
`
`Unified Patents, LLC v. Elects. & Telecomm. Res. Inst., et al.
`
`Ex. 1040
`
`
`
`
`
`any other company. Unified is not a law firm and does not have an attorney-client
`
`relationship with Members.
`
`II. THE INSTANT IPR
`13. Unified exercised its sole discretion and control in deciding to file a
`
`petition in the instant IPR, IPR2021-00368, against U.S. Patent 9,736,484 (the
`
`“Patent-at-Issue”), including paying for all fees and expenses. No individuals other
`
`than Unified’s employees, counsel, and consultants acting under the direction of
`
`counsel had any prior knowledge of the filing of the instant IPR. And no Member
`
`had any involvement in the preparation of, payment for, or decision to file this
`
`Petition. And none of Unified’s Members had any prior knowledge of, or
`
`involvement in, the preparation and filing of the petition for the instant IPR. Unified
`
`also had no discussions with any Member regarding whether any Member desired
`
`Unified to challenge the Patent-at-Issue. Further, Unified did not send to, or solicit
`
`or consider from, a Member any directions identifying (a) a patent or group or
`
`patents to be considered for the instant IPR or (b) any Member’s requests,
`
`instructions, preferences, suggestions, or desires regarding the selection of a patent
`
`or group of patents for the instant IPR.
`
`14. Unified shall exercise sole and absolute control and discretion of the
`
`continued prosecution of the instant IPR (including any decision to terminate
`
`Unified’s participation) and shall bear all costs related to the instant IPR.
`
`
`
`- 5 -
`
`
`
`Unified Patents, LLC v. Elects. & Telecomm. Res. Inst., et al.
`
`Ex. 1040
`
`
`
`
`
`III. VERIFICATION
`
`
`I declare that all statements made herein of my knowledge are true, and
`
`15.
`
`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.
`
`
`Date:
`
`
`By:
`
`
`
`
`Kevin Jakel
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`- 6 -
`
`
`
`12/30/2020
`
`Unified Patents, LLC v. Elects. & Telecomm. Res. Inst., et al.
`
`Ex. 1040
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
