Page 1
`
` CONFIDENTIAL - SUBJECT TO PROTECTIVE ORDER
`1 UNITED STATES PATENT AND TRADEMARK OFFICE
`
`2 BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`3 UNITED PATENT, INC., *
`
`4 Petitioner, * CASE NO.:
`
`5 vs. * IPR2019-00482
`
`6 AMERICAN PATENTS, LLC, * U.S. PATENT NO.:
`
`7 Patent Owner. * 7,373,655
`
`8 * * * * * * *
`
`9 CONFIDENTIAL
`
`10 SUBJECT TO PROTECTIVE ORDER
`
`11 DEPOSITION OF:
`
`12 KEVIN JAKEL,
`
`13 was held on Tuesday, October 15, 2019,
`
`14 commencing 9:36 a.m., at Haynes & Boone, 800
`
`15 17th Street, N.W., Washington, D.C., before
`
`16 Mary Grace Castleberry, RPR.
`
`17 * * *
`
`18
` U.S. LEGAL SUPPORT
`19 1818 Market Street, Suite 240
` Philadelphia, PA 19103
`20 Main: 877-479-2484
` Fax: 877-876-9330
`21 Email: SchedulingNE@uslegalsupport.com
`
`ETRI 2004
`Unified v. ETRI
`IPR2021-00827
`
`
`
` CONFIDENTIAL - SUBJECT TO PROTECTIVE ORDER
`1 UNITED STATES PATENT AND TRADEMARK OFFICE
`
`2 BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`3 UNITED PATENT, INC., *
`
`4 Petitioner, * CASE NO.:
`
`5 vs. * IPR2019-00482
`
`6 AMERICAN PATENTS, LLC, * U.S. PATENT NO.:
`
`7 Patent Owner. * 7,373,655
`
`8 * * * * * * *
`
`9 CONFIDENTIAL
`
`10 SUBJECT TO PROTECTIVE ORDER
`
`11 DEPOSITION OF:
`
`12 KEVIN JAKEL,
`
`13 was held on Tuesday, October 15, 2019,
`
`14 commencing 9:36 a.m., at Haynes & Boone, 800
`
`15 17th Street, N.W., Washington, D.C., before
`
`16 Mary Grace Castleberry, RPR.
`
`17 * * *
`
`18
` U.S. LEGAL SUPPORT
`19 1818 Market Street, Suite 240
` Philadelphia, PA 19103
`20 Main: 877-479-2484
` Fax: 877-876-9330
`21 Email: SchedulingNE@uslegalsupport.com
`
`ETRI 2004
`Unified v. ETRI
`IPR2021-00827
`
`
`
`Page 2
`
`1 APPEARANCES:
`
` On behalf of the PETITIONER:
`
`2 3
`
`4 ASHRAF FAWZY, ESQ.
` UNIFIED PATENTS
`5 1875 Connecticut Avenue, N.W.
` Floor 10
`6 Washington, D.C. 20009
` (650) 999-0889
`7 E-mail: Afawzy@unitedpatent.com
`
` On behalf of the PATENT OWNER:
`
`8 9
`
`10 ZACHARIAH HARRINGTON, ESQ.
` ANTONELLI, HARRINGTON & THOMPSON
`11 5306 Yoakum Boulevard
` Suite 450
`12 Houston, Texas 77006
` (713) 581-3000
`13 E-mail: Zac@ahtlawfirm.com
`
`14
`
`15 -oOo-
`
`16
`
`17
`
`18
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`19
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`20
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`21
`
`American Patents LLC - Exhibit 2021
`Unified Patents, Inc. v. American Patents LLC
`IPR2019-00482
`Page 2 of 209
`
`Unified Exhibit 1021
`IPR2019-00482
`Unified Patents Inc. v. American Patents LLC
`
`
`
`Page 3
`
`1 I-N-D-E-X
`
`2 Deposition of Kevin Jakel
`
`3 October 15, 2019
`
` EXAMINATION BY: PAGE:
`
`4 5
`
`6 Mr. Harrington 4
`
`7 Mr. Fawzy 187
`
` EXHIBITS MARKED: PAGE:
`
`8 9
`
`10 1 - Order 5
`
`11 2 - August 23, 2019 email from Bajaj 5
` Raghav to Zac Harrington
`12
` 3 - October 7, 2019 email from Bajaj 5
`13 Raghav to counsel
`
`14 4 - Unified Patents press release 177
` dated September 18, 2019
`15
`
`16
`
`17 (Exhibits included with transcript.)
`
`18
`
`19
`
`20 -oOo-
`
`21
`
`American Patents LLC - Exhibit 2021
`Unified Patents, Inc. v. American Patents LLC
`IPR2019-00482
`Page 3 of 209
`
`Unified Exhibit 1021
`IPR2019-00482
`Unified Patents Inc. v. American Patents LLC
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`
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`Page 4
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`1 P-R-O-C-E-E-D-I-N-G-S
`
`2 WHEREUPON --
`
`3 KEVIN JAKEL,
`
`4 a Witness called for examination by counsel
`
`5 for the Patent Owner, having been first duly
`
`6 sworn, was examined and testified as
`
`7 follows:
`
`8 EXAMINATION
`
`9 BY MR. HARRINGTON:
`
`10 Q. Could you please state your full
`
`11 name for the record?
`
`12 A. Kevin William Jakel.
`
`13 Q. And where do you work?
`
`14 A. I work at Unified Patents.
`
`15 Q. What is your position at Unified
`
`16 Patents?
`
`17 A. I am the CEO.
`
`18 Q. Is there any reason why you can't
`
`19 fully and truthfully testify here today?
`
`20 A. No.
`
`21 Q. You've had your deposition taken
`
`American Patents LLC - Exhibit 2021
`Unified Patents, Inc. v. American Patents LLC
`IPR2019-00482
`Page 4 of 209
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`Unified Exhibit 1021
`IPR2019-00482
`Unified Patents Inc. v. American Patents LLC
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`
`
`Page 5
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`1 before, correct?
`
`2 A. I have.
`
`3 Q. About how many times?
`
`4 A. I am starting to lose count a
`
`5 little bit. Eight to 10, somewhere in that
`
`6 ballpark.
`
`7 Q. So I'm not going to go over the
`
`8 procedure too much, but your attorney may
`
`9 object from time to time. Unless he
`
`10 instructs you not to answer, you should
`
`11 answer my question.
`
`12 Do you understand that?
`
`13 A. I do.
`
`14 Q. I would like to start out with
`
`15 three exhibits. Exhibit 1 will be the order
`
`16 from the Board. Exhibit 2 will be an email
`
`17 from your attorney and Exhibit 3 will be an
`
`18 email with documents attached.
`
`19 (Exhibit Nos. 1 through 3 were
`
`20 marked for identification.)
`
`21 BY MR. HARRINGTON:
`
`American Patents LLC - Exhibit 2021
`Unified Patents, Inc. v. American Patents LLC
`IPR2019-00482
`Page 5 of 209
`
`Unified Exhibit 1021
`IPR2019-00482
`Unified Patents Inc. v. American Patents LLC
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`Q.
`
`A.
`
`Q.
`
`A.
`
`Do you recognize these documents?
`
`Page 6
`
`I recognize the order.
`
`Okay.
`
`I have never seen this email. At
`
`least I don't think I have.
`
`Q.
`
`Okay. Let's go to Exhibit 3,
`
`which is the email with documents.
`
`A.
`
`Q.
`
`A.
`
`Okay.
`
`Do you recognize these documents?
`
`Looks like this is a membership
`
`agreement between Unified and
`
`. What
`
`is labeled as UP0017 looks to be a mass
`
`email that we sent out related to the fact
`
`that we had filed an IPR against American
`
`Patents. And it looks like there's UP0017
`
`again. And there's UP0021. It looks like
`
`another email, a mass email has gone out
`
`saying that American Patents -- their patent
`
`is determined to be likely invalid. That's
`
`probably when institution took place. And
`
`it looks like another version of the same
`
`American Patents LLC - Exhibit 2021
`Unified Patents, Inc. v. American Patents LLC
`IPR2019-00482
`Page 6 of 209
`
`Unified Exhibit 1021
`IPR2019-00482
`Unified Patents Inc. v. American Patents LLC
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`
`
`1 document. And that looks to be everything
`
`Page 7
`
`2 that I see.
`
`3 Q. Okay. How did Unified go about
`
`4 collecting these documents?
`
`5 A. Well -- so the membership
`
`6 agreement we pulled from our server as a
`
`7 copy of this membership agreement. In
`
`8 addition to doing a bunch of discovery
`
`9 review on my part, we had -- these documents
`
`10 were the emails that we had sent out that
`
`11 were specifically related to American
`
`12 Patents and so we produced those documents.
`
`13 Q. Did you do like a search through
`
`14 emails or how did you search for those
`
`15 documents?
`
`16 A. So these documents show up in my
`
`17 email. So when these documents go out, I
`
`18 see these emails as well and so then I
`
`19 believe -- my recollection is I instructed
`
`20 these documents to be pulled from the system
`
`21 that generates these emails.
`
`American Patents LLC - Exhibit 2021
`Unified Patents, Inc. v. American Patents LLC
`IPR2019-00482
`Page 7 of 209
`
`Unified Exhibit 1021
`IPR2019-00482
`Unified Patents Inc. v. American Patents LLC
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`
`
`1 Q. And what system generates those
`
`Page 8
`
`2 emails?
`
`3 A. One is a mass email system that I
`
`4 think comes out of Salesforce and the other
`
`5 is a mass email system that comes out of --
`
`6 I think it's called Mailchimp.
`
`7 Basically give them a bunch of
`
`8 email addresses and write the email blast
`
`9 you want to send and then you hit send and
`
`10 it sends the email to everyone that's -- all
`
`11 the emails that you gave the system.
`
`12 Q. Exhibit 3, the cover email,
`
`13 says -- if you look down to the third
`
`14 paragraph -- says, "No responsive documents
`
`15 were found for category 2"?
`
`16 A. Yes, I see that.
`
`17 Q. How did Unified determine that
`
`18 there were no responsive documents for
`
`19 category 2?
`
`20 MR. FAWZY: Objection to the
`
`21 form.
`
`American Patents LLC - Exhibit 2021
`Unified Patents, Inc. v. American Patents LLC
`IPR2019-00482
`Page 8 of 209
`
`Unified Exhibit 1021
`IPR2019-00482
`Unified Patents Inc. v. American Patents LLC
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`
`
`1 THE WITNESS: So let's make sure
`
`Page 9
`
`2 that we are talking about the right thing.
`
`3 So category 2 is referring to what, given
`
`4 that I've never seen this email before?
`
`5 BY MR. HARRINGTON:
`
`6 Q. So category 2 is, when you go to
`
`7 Exhibit 1, the first full page, and there's
`
`8 a number 2.
`
`9 A. Yes.
`
`10 Q. So do you recognize that category
`
`11 2?
`
`12 A. I do.
`
`13 Q. Do you believe that that category
`
`14 2 that your attorney is referring to in the
`
`15 email is the same category 2 that the court
`
`16 order here is -- well, the PTAB order is
`
`17 referring to?
`
`18 A. I believe that to be accurate,
`
`19 yes.
`
`20 Q. So how did Unified determine that
`
`21 there were no written communications between
`
`American Patents LLC - Exhibit 2021
`Unified Patents, Inc. v. American Patents LLC
`IPR2019-00482
`Page 9 of 209
`
`Unified Exhibit 1021
`IPR2019-00482
`Unified Patents Inc. v. American Patents LLC
`
`
`
`1 Unified and
`
` that identify a patent
`
`Page 10
`
`2 or types of patents to be considered for an
`
`3 IPR petition or express
`
` requests,
`
`4 instructions, preferences, suggestions or
`
`5 desires for selection of a patent or types
`
`6 of patents for filing an IPR review?
`
`7 A. We determined that because I did
`
`8 a personal review of all of the
`
`9 communications between Unified and
`
`10 And in my review of all of the
`
`11 communications between us and
`
` for
`
`12 any custodian that I believed could have
`
`13 even communicated with
`
` I found no
`
`14 communications at all that identified
`
`15 patents or types of patents to be considered
`
`16 for an inter partes review or express -- or
`
`17 I guess express at member's requests,
`
`18 instructions, preferences, suggestions, or
`
`19 desires regarding the selection of patents
`
`20 or types of patents for filing an inter
`
`21 partes review.
`
`American Patents LLC - Exhibit 2021
`Unified Patents, Inc. v. American Patents LLC
`IPR2019-00482
`Page 10 of 209
`
`Unified Exhibit 1021
`IPR2019-00482
`Unified Patents Inc. v. American Patents LLC
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`
`
`1 So I went into every email
`
`Page 11
`
`2 account, every custodian that would have
`
`3 been in a position to communicate with
`
`4
`
`. I limited the search in the email
`
`5 to every email that we would have received
`
`6 from
`
` as well as every email that we
`
`7 would have sent to
`
` by using their
`
`8 email address as the search term.
`
`9 And so I basically was able to
`
`10 look at every single email that would have
`
`11 gone either from us to them or from them to
`
`12 us, and then I reviewed every single one of
`
`13 them and found that there were no
`
`14 communications at all that met category 2.
`
`15 Q. So you said you looked at every
`
`16 custodian. How many custodians were there?
`
`17 A. Off the top of my head, I don't
`
`18 know the exact number. I don't recall the
`
`19 number.
`
`20 Q. Is there sort of a main person at
`
`21 Unified that communicates with
`
`American Patents LLC - Exhibit 2021
`Unified Patents, Inc. v. American Patents LLC
`IPR2019-00482
`Page 11 of 209
`
`Unified Exhibit 1021
`IPR2019-00482
`Unified Patents Inc. v. American Patents LLC
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`
`
`1 A. Mostly -- I mean, myself is one
`
`Page 12
`
`2 of the main persons who communicates with
`
`3 them. Shawn Ambwani does as well for
`
`4 purposes of we're the people who actually go
`
`5 to
`
`. So a lot of the communications
`
`6 are just about scheduling, timing of when
`
`7 we're going to be in
`
` and visit with
`
`8 them when we're there.
`
`9 And then those -- I mean, that
`
`10 was the vast, vast majority of all of the
`
`11 communications was between myself and
`
`12
`
` and Shawn Ambwani and
`
`13 Q. So you went through basically all
`
`14 of the email communications between Unified
`
`15 and
`
`. Is there any other kind of
`
`16 communications between
`
` and Unified?
`
`17 A. I mean, there are phone calls, so
`
`18 scheduling phone calls and things like this.
`
`19 So obviously we do talk on the phone. But
`
`20 other than that, there are none.
`
`21 Q.
`
` and Unified don't fax
`
`American Patents LLC - Exhibit 2021
`Unified Patents, Inc. v. American Patents LLC
`IPR2019-00482
`Page 12 of 209
`
`Unified Exhibit 1021
`IPR2019-00482
`Unified Patents Inc. v. American Patents LLC
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`
`
`1 back and forth between each other or send
`
`Page 13
`
`2 letters, formal letters, anything like that?
`
`3 A. No. I can't remember the last
`
`4 time I used a fax machine.
`
`5 Q. Just gotta check.
`
`6 A. Yeah, no. I getcha.
`
`7 Q. So you said you went through all
`
`8 of the emails. About how many emails were
`
`9 there between
`
` and the custodians at
`
`10 Unified?
`
`11 A. There were, for kind of both
`
`12 Shawn and I, there were like over 100. I
`
`13 would think probably less than 200.
`
`14 Q. So earlier you called the emails
`
`15 in Exhibit 3 mass communications. It looks
`
`16 like for each of these emails, there's a
`
`17 list attached to it with a bunch of email
`
`18 addresses. Is that all of the email
`
`19 addresses that these communications went to?
`
`20 I'm not familiar with the system
`
`21 so I'm just trying to figure out what these
`
`American Patents LLC - Exhibit 2021
`Unified Patents, Inc. v. American Patents LLC
`IPR2019-00482
`Page 13 of 209
`
`Unified Exhibit 1021
`IPR2019-00482
`Unified Patents Inc. v. American Patents LLC
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`
`
`1 emails mean. So, for example, if you go to
`
`Page 14
`
`2 UP0017, there's a little email description,
`
`3 Unified filed an IPR, and then there's a
`
`4 list of emails below that saying date sent,
`
`5 date opened, last opened.
`
`6 A. Yes.
`
`7 Q. Is that all of the people that
`
`8 have received this email that you're aware
`
`9 of?
`
`10 A. So there are, I guess, two types
`
`11 of mass emails that we typically send out.
`
`12 This one appears to be the -- so we send out
`
`13 like a -- every time we do something, we
`
`14 send out an email. This one goes to the
`
`15 list of members, so this is like the member
`
`16 mass email. So this goes to everyone who, I
`
`17 guess, is a member of Unified.
`
`18 We've asked them who do you want
`
`19 to get our, like, mass emails. They said,
`
`20 we would be interested. So sometimes
`
`21 there's more than one person. Sometimes
`
`American Patents LLC - Exhibit 2021
`Unified Patents, Inc. v. American Patents LLC
`IPR2019-00482
`Page 14 of 209
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`Unified Exhibit 1021
`IPR2019-00482
`Unified Patents Inc. v. American Patents LLC
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`
`
`1 there's only one. But this would be kind of
`
`Page 15
`
`2 just be -- this is like a -- we just send
`
`3 this out like after every single thing that
`
`4 happens. Every IPR that's filed, one of
`
`5 these is generated and it's sent out to
`
`6 everyone at Unified.
`
`7 Q. And it's just a list of all the
`
`8 people that are Unified members? Or not --
`
`9 sorry. Strike that.
`
`10 Are there any people on this list
`
`11 that get the email that are not Unified
`
`12 members?
`
`13 A. This particular one is Unified
`
`14 members. I could go through the list to see
`
`15 if every single email address is related to
`
`16 a member or not. I probably would be able
`
`17 to do that off the top of my head. This
`
`18 looks to be the list of members.
`
`19 Q. Okay. Are there any members, as
`
`20 far as you're aware -- and you don't have
`
`21 to -- if you don't know this, you can tell
`
`American Patents LLC - Exhibit 2021
`Unified Patents, Inc. v. American Patents LLC
`IPR2019-00482
`Page 15 of 209
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`Unified Exhibit 1021
`IPR2019-00482
`Unified Patents Inc. v. American Patents LLC
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`
`
`1 me you don't know -- but are there any
`
`Page 16
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`2 members that do not get this email list?
`
`3 For example, is there certain members that
`
`4 say, I don't want your mass email?
`
`5 A. It's possible. I think you can
`
`6 ask to be removed from it and, you know,
`
`7 when people change positions within the
`
`8 company or things like that, I think that
`
`9 there have been changes that have been made
`
`10 to who is kind of responsible for the
`
`11 Unified kind of relationship within the
`
`12 company.
`
`13 So I am certain that this email
`
`14 distribution list has changed over time, but
`
`15 this is like marketing material. We just --
`
`16 we send this out just to tout the fact that
`
`17 we filed -- we send this type of email out
`
`18 to everyone regardless of what zone they're
`
`19 in. It's just like a mass email to
`
`20 everyone.
`
`21 Q. Okay. How many employees does
`
`American Patents LLC - Exhibit 2021
`Unified Patents, Inc. v. American Patents LLC
`IPR2019-00482
`Page 16 of 209
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`Unified Exhibit 1021
`IPR2019-00482
`Unified Patents Inc. v. American Patents LLC
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`
`
`1 Unified currently have?
`
`Page 17
`
`2 A. I believe we have now reached 17,
`
`3 I believe is the total.
`
`4 Q. Can you tell me what your then
`
`5 employees do?
`
`6 A. Sure. So we have a legal
`
`7 department that includes myself, Shawn
`
`8 Ambwani, Jonathan Stroud, Ash, Roshan,
`
`9 Alyssa, Jessica, Joane, David, Michelle and
`
`10 one more, I believe. And they are
`
`11 responsible for overseeing and drafting IPRs
`
`12 and then prosecuting them after the fact.
`
`13 They're responsible for prior art
`
`14 review. They're responsible for reviewing
`
`15 landscape information and a whole bunch of
`
`16 stuff that kind of legal departments do for
`
`17 us. They work on patent equality issues and
`
`18 writing stuff for all kinds of things. So
`
`19 that's kind of the legal department at the
`
`20 company.
`
`21 We have a kind of data division
`
`American Patents LLC - Exhibit 2021
`Unified Patents, Inc. v. American Patents LLC
`IPR2019-00482
`Page 17 of 209
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`Unified Exhibit 1021
`IPR2019-00482
`Unified Patents Inc. v. American Patents LLC
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`
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`1 that is responsible for all the tools you'll
`
`Page 18
`
`2 find on our website, all of the databases
`
`3 that we maintain. They're responsible for,
`
`4 I guess, like kind of all the analytics and
`
`5 the litigation data and all the things that
`
`6 we kind of collect and provide as tools on
`
`7 our website. They also are responsible for
`
`8 kind of the essential patent databases and
`
`9 all the stuff that's kind of related to
`
`10 that.
`
`11 We also do a whole bunch of --
`
`12 kind of, I guess, litigation analytics and
`
`13 produce kind of a -- I think it's a
`
`14 quarterly MPE litigation report that goes
`
`15 out and says everything that's kind of going
`
`16 on in the universe. They kind of handle all
`
`17 of that.
`
`18 And then in addition to that, we
`
`19 have two software developers who are
`
`20 responsible for developing software tools
`
`21 and maintaining our software platform and
`
`American Patents LLC - Exhibit 2021
`Unified Patents, Inc. v. American Patents LLC
`IPR2019-00482
`Page 18 of 209
`
`Unified Exhibit 1021
`IPR2019-00482
`Unified Patents Inc. v. American Patents LLC
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`
`
`1 all the stuff that we do on that front, so
`
`Page 19
`
`2 they're -- but they're basically just
`
`3 software developers.
`
`4 Q. Okay. So the legal department,
`
`5 was there eight people; is that right?
`
`6 A. Somewhere in that ballpark.
`
`7 Eight, nine. I need to look specifically to
`
`8 remember exactly.
`
`9 Q. And then in the software
`
`10 developers, there were two. So there was
`
`11 somewhere between -- taking me a minute to
`
`12 do this -- between six and seven people in
`
`13 the data department; is that correct?
`
`14 A. I don't know. Maybe. I need
`
`15 to -- I'm going to have to like look this
`
`16 up.
`
`17 Q. Okay. Rough numbers are fine.
`
`18 A. Yeah. I mean, we also have like
`
`19 a client development woman as well who like
`
`20 helps organize like membership and also
`
`21 organizes phone calls and marketing calls
`
`American Patents LLC - Exhibit 2021
`Unified Patents, Inc. v. American Patents LLC
`IPR2019-00482
`Page 19 of 209
`
`Unified Exhibit 1021
`IPR2019-00482
`Unified Patents Inc. v. American Patents LLC
`
`
`
`1 and all that kind of stuff.
`
`Page 20
`
`2 She also helps to put together
`
`3 all of our conferences and things throughout
`
`4 the year and all that kind of thing.
`
`5 Q. I don't want to get into any
`
`6 particular detail, but can you tell me what
`
`7 the overall salary expenses are that Unified
`
`8 has today?
`
`9 A. I believe it's like
`
`10
`
`.
`
` is my
`
`11 off-the-top-of-my-head ballpark for expenses
`
`12 on the salary side.
`
`13 Q. Do you know what percentage of
`
`14 that is the legal department?
`
`15 A. Not off the top of my head.
`
`16 Q. Aside from salary, what other
`
`17 expenses does Unified have?
`
`18 A. Rent, travel, you know, all the
`
`19 kind of business development expenses,
`
`20 conference expenses. We do, you know, the
`
`21 prior art searching expenses. We have legal
`
`American Patents LLC - Exhibit 2021
`Unified Patents, Inc. v. American Patents LLC
`IPR2019-00482
`Page 20 of 209
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`Unified Exhibit 1021
`IPR2019-00482
`Unified Patents Inc. v. American Patents LLC
`
`
`
`1 expenses for both our own kind of legal
`
`Page 21
`
`2 stuff as well as obviously filing IPRs. I
`
`3 don't know. I haven't -- that's a decent
`
`4 summary.
`
`5 Q. The legal expenses, and you said
`
`6 for IPRs, is that outside counsel expense
`
`7 you're referring to?
`
`8 A. Yes. And we -- it's not just
`
`9 outside counsel. It's experts in prior art
`
`10 and all the -- everything that kind of goes
`
`11 into the cost of running an IPR.
`
`12 Q. How big is that expense on a
`
`13 yearly basis for Unified?
`
`14 A. I believe for the last year, it
`
`15 was about
`
` in annual expense.
`
`16 Q. Do you know what percentage that
`
`17 is of Unified's expenses?
`
`18 A. Just that outside counsel expense
`
`19 is
`
` of the like
`
`20 accrued revenue for the year.
`
`21 Q.
`
`? When
`
`American Patents LLC - Exhibit 2021
`Unified Patents, Inc. v. American Patents LLC
`IPR2019-00482
`Page 21 of 209
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`Unified Exhibit 1021
`IPR2019-00482
`Unified Patents Inc. v. American Patents LLC
`
`
`
`1 you said just outside expense, you mean
`
`Page 22
`
`2 outside counsel and experts, right? That
`
`3 was the kind of overall bucket you're
`
`4 referring to?
`
`5 A. Yeah. Not including the legal
`
`6 expense internal to the company to run all
`
`7 of this.
`
`8 Q. Yeah. So just for outside
`
`9 counsel and for experts and kind of running
`
`10 the IPRs, that cost is
`
`11
`
`?
`
`12 A. Somewhere in the ballpark.
`
`13 Q. Does outside counsel do any of
`
`14 the work pre-filing an IPR; for example,
`
`15 investigating potential IPRs that Unified
`
`16 may file?
`
`17 A. No.
`
`18 Q. So the decision, kind of the
`
`19 investigation -- well, strike that.
`
`20 The investigation into which IPRs
`
`21 to file, that's all done by Unified
`
`American Patents LLC - Exhibit 2021
`Unified Patents, Inc. v. American Patents LLC
`IPR2019-00482
`Page 22 of 209
`
`Unified Exhibit 1021
`IPR2019-00482
`Unified Patents Inc. v. American Patents LLC
`
`
`
`1 in-house?
`
`Page 23
`
`2 A. Well, it's a little more
`
`3 complicated than that. I mean, I guess when
`
`4 we decide to start looking at a patent and
`
`5 we decide that that patent's going to be
`
`6 handled by a law firm if we file, then we
`
`7 would engage an outside counsel to start the
`
`8 work on it.
`
`9 Sometimes we would have already
`
`10 started looking at prior art. Sometimes we
`
`11 might not have started looking at prior art
`
`12 at all. But, I mean, the decision to
`
`13 ultimately file depends on whether or not we
`
`14 actually have prior art and we like the
`
`15 arguments and, you know, it's a good filing.
`
`16 So it depends on what you mean by
`
`17 preparation. Like the decision to hire a
`
`18 counsel to start working on a patent is
`
`19 handled completely internal to Unified. If
`
`20 we decide that we believe that by filing an
`
`21 IPR, we create a deterrence value for our
`
`American Patents LLC - Exhibit 2021
`Unified Patents, Inc. v. American Patents LLC
`IPR2019-00482
`Page 23 of 209
`
`Unified Exhibit 1021
`IPR2019-00482
`Unified Patents Inc. v. American Patents LLC
`
`
`
`1 zone and we say we're looking at -- we need
`
`Page 24
`
`2 to start working on this, that part is, at a
`
`3 minimum, handled completely internal to
`
`4 Unified.
`
`5 Q. Has Unified ever decided -- made
`
`6 the decision it was going to file an IPR and
`
`7 then had a law firm turn it down and say,
`
`8 no, we can't file that for you?
`
`9 MR. FAWZY: I'm going to object
`
`10 and -- just on the basis of privilege and
`
`11 caution the witness not to reveal any
`
`12 privileged information. So I don't know if
`
`13 you can answer that question without
`
`14 revealing privileged information, but you
`
`15 can try.
`
`16 THE WITNESS: So let me just say
`
`17 that have we ever looked at a patent -- I
`
`18 mean, it's not so much that they are telling
`
`19 us whether or not they can or can't do it,
`
`20 but it is the case that we will look at
`
`21 patents and find that the prior art, despite
`
`American Patents LLC - Exhibit 2021
`Unified Patents, Inc. v. American Patents LLC
`IPR2019-00482
`Page 24 of 209
`
`Unified Exhibit 1021
`IPR2019-00482
`Unified Patents Inc. v. American Patents LLC
`
`
`
`1 our best efforts at searching, would show
`
`Page 25
`
`2 that if we were to file an IPR, we wouldn't
`
`3 be successful, I guess is one way to talk
`
`4 about it.
`
`5 I don't know exactly the scope of
`
`6 what you mean they tell us that they can't
`
`7 do it. But if we were to engage with a firm
`
`8 and both through our own internal legal
`
`9 counsel and reviewing the legal work that a
`
`10 firm did, we as a team would decide that the
`
`11 prior art wouldn't show that that IPR would
`
`12 be successful, if we didn't like the
`
`13 arguments, then we very well would walk away
`
`14 from filing an IPR.
`
`15 BY MR. HARRINGTON:
`
`16 Q. Has that ever actually happened?
`
`17 A. I mean, I don't know if we really
`
`18 think this is privileged or not. I mean, I
`
`19 don't --
`
`20 MR. HARRINGTON: If you guys want
`
`21 to discuss it and think about it --
`
`American Patents LLC - Exhibit 2021
`Unified Patents, Inc. v. American Patents LLC
`IPR2019-00482
`Page 25 of 209
`
`Unified Exhibit 1021
`IPR2019-00482
`Unified Patents Inc. v. American Patents LLC
`
`
`
`1 MR. FAWZY: Yeah. I'm going to
`
`Page 26
`
`2 instruct him not to answer the question --
`
`3 MR. HARRINGTON: Okay.
`
`4 MR. FAWZY: -- on the basis of
`
`5 privilege.
`
`6 BY MR. HARRINGTON:
`
`7 Q. How does Unified determine which
`
`8 law firm it's going to use for a particular
`
`9 IPR?
`
`10 MR. FAWZY: Also, I'm going to
`
`11 instruct -- object on the basis of privilege
`
`12 and instruct you not to answer to the extent
`
`13 it reveals privileged information, but if
`
`14 you can answer generally.
`
`15 BY MR. HARRINGTON:
`
`16 Q. I can ask a more specific
`
`17 question. Does Unified take any outside
`
`18 input into its decision as to what law firms
`
`19 to hire?
`
`20 A. Absolutely not.
`
`21 Q. Has any Unified member ever made
`
`American Patents LLC - Exhibit 2021
`Unified Patents, Inc. v. American Patents LLC
`IPR2019-00482
`Page 26 of 209
`
`Unified Exhibit 1021
`IPR2019-00482
`Unified Patents Inc. v. American Patents LLC
`
`
`
`1 suggestions about what law firms it prefers
`
`Page 27
`
`2 Unified to use for any IPRs?
`
`3 A. No, not in the sense that they
`
`4 are telling us -- one of the things that
`
`5 Unified actually does is -- I don't know if
`
`6 you've looked at our portal, but we actually
`
`7 keep statistics on every single IPR that
`
`8 gets filed and every law firm that handles
`
`9 one.
`
`10 So we have statistics on what law
`
`11 firms have done well and which ones have
`
`12 done bad. This is something we do generate
`
`13 and publish and our members have asked us,
`
`14 like, hey, what do you think about law firms
`
`15 and who's done well and we talk about our
`
`16 statistics and we talk about whatever. But
`
`17 we have not been the recipient of anyone
`
`18 saying, hey, you need to use this particular
`
`19 law firm. I don't think I've ever had that
`
`20 conversation with a member.
`
`21 Q. Is Apple a member?
`
`American Patents LLC - Exhibit 2021
`Unified Patents, Inc. v. American Patents LLC
`IPR2019-00482
`Page 27 of 209
`
`Unified Exhibit 1021
`IPR2019-00482
`Unified Patents Inc. v. American Patents LLC
`
`
`
`1 A. Apple is a member, yes.
`
`Page 28
`
`2 Q. Are you aware that Apple has a
`
`3 preferred vendor list for law firms that
`
`4 it's willing to use?
`
`5 A. I'm not familiar with it. It
`
`6 does not surprise me. I've been in-house
`
`7 counsel at a firm -- sorry, at a company and
`
`8 I have my own preferred list of counsel. It
`
`9 doesn't surprise me that they have it. I
`
`10 have never heard of Apple's preferred vendor
`
`11 list.
`
`12 Q. Has any of the members, of
`
`13 Unified's members, ever shared its preferred
`
`14 vendor list with Unified --
`
`15 A. Not to my knowledge.
`
`16 Q. -- for its law firms?
`
`17 A. Not to my knowledge.
`
`18 MR. FAWZY: I'm going to just
`
`19 take a second. So far we've gone over
`
`20 inferring that includes Unified confidential
`
`21 information. So I'm just going to ask that
`
`American Patents LLC - Exhibit 2021
`Unified Patents, Inc. v. American Patents LLC
`IPR2019-00482
`Page 28 of 209
`
`Unified Exhibit 1021
`IPR2019-00482
`Unified Patents Inc. v. American Patents LLC
`
`
`
`1 we put this transcript on the -- designate
`
`Page 29
`
`2 it as confidential under the protective
`
`3 order in this case.
`
`4 BY MR. HARRINGTON:
`
`5 Q. Where does Unified maintain
`
`6 offices?
`
`7 A. We have an office in California,
`
`8 in San Jose. We have an office in
`
`9 Washington, D.C. and then we have a lot of
`
`10 folks who work from home, so, I mean,
`
`11 they're not necessarily maintaining an
`
`12 official Unified office, but they have a
`
`13 home office or they -- yeah, I think that --
`
`14 everyone who works remotely works from a
`
`15 home office right now.
`
`16 Q. Where does Unified get its
`
`17 revenue?
`
`18 A. So we have subscriptions that we
`
`19 sell to what we call our NPE zones and we
`
`20 also have an SEP zone, a standard essential
`
`21 patent zone. Both of those members would
`
`American Patents LLC - Exhibit 2021
`Unified Patents, Inc. v. American Patents LLC
`IPR2019-00482
`Page 29 of 209
`
`Unified Exhibit 1021
`IPR2019-00482
`Unified Patents Inc. v. American Patents LLC
`
`
`
`1 subscribe to those zones and would pay us to
`
`Page 30
`
`2 subscribe to those zones. That is where
`
`3 revenue comes from from that area.
`
`4 We also have conferences that we
`
`5 host throughout the year. And those
`
`6 conferences we sell kind of sponsorships to
`
`7 law firms and we generate some revenue from
`
`8 those sponsorships. We also do some kind of
`
`9 what we call patent quality drive work where
`
`10 companies pay us to look at and analyze kind
`
`11 of NPE and patent matters, things around
`
`12 like litigation and NPE activity to generate
`
`13 data that can be used.
`
`14 Those would be, I think, off the
`
`15 top of my head, the sources of revenue right
`
`16 now.
`
`17 Q. Can you give me rough percentages
`
`18 for each of those revenue streams?
`
`19 A. The revenue from the conferences
`
`20 is
`
`21
`
` The patent quality drive
`
`American Patents LLC - Exhibit 2021
`Unified Patents, Inc. v. American Patents LLC
`IPR2019-00482
`Page 30 of 209
`
`Unified Exhibit 1021
`IPR2019-00482
`Unified Patents Inc. v. American Patents LLC
`
`
`
`1 stuff I mentioned is
`
`2
`
`3 And then the revenue generated
`
`4 from the NPE zones and the SEP zones is
`
`Page 31
`
`.
`
`5 probably
`
`6
`
`7
`
`8
`
`9 Q. So for
`
` we have an
`
`10 agreement here for
`
`. Is this for the
`
`11
`
` agreement?
`
`12 A.
`
`13
`
`14
`
`15 Q. So
`
` -- there's the SEP and
`
`16 NPE and
`
`17
`
` is that correct?
`
`18 A. Yes. There are some five or six
`
`19 zones or so, I guess, in the NPE zones and
`
`20
`
`.
`
`21 Q. Okay. The SEP zone, so that
`
`American Patents LLC - Exhibit 2021
`Unified Patents, Inc. v. American Patents LLC
`IPR2019-00482
`Page 31 of 209
`
`Unified Exhibit 1021
`IPR2019-00482
`Unified Patents Inc. v. American Patents LLC
`
`
`
`1 would be for stuff like when you have like
`
`Page 32
`
`2 the Velos Media case? Is that like one of
`
`3 the SEP zones?
`
`4 A. We have filed IPRs in the video
`
`5 codec zone and Velos Media is one of the
`
`6 companies that we filed IPRs against.
`
`7 Q. And so that's part of the SEP --
`
`8 A. That's part of SEP.
`
`9 Q. -- part that you talk about?
`
`10 A. Yes.
`
`11 Q. So as part of the SEP business, I
`
`12 guess it sounds like it's kind of a separate
`
`13 business; is that correct?
`
`14 A. I mean, I guess, you know, it's
`
`15 like a separate product, I guess, yeah. We
`
`16 do different things in the SEP zones than we
`
`17 do in the NPE zones. In both of them, we do
`
`18 file IPRs. But there's a lot of data and
`
`19 tools we've developed on standard essential
`
`20 patent licensing to help companies provide
`
`21 kind of FRAND offers if they're approached
`
`American Patents LLC - Exhibit 2021
`Unified Patents, Inc. v. American Patents LLC
`IPR2019-0
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