UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`UNIFIED PATENTS, LLC
`Petitioner
`
`v.
`
`AUTHWALLET LLC
`Patent Owner
`
`IPR2021-01260
`U.S. Patent 9,292,852
`
`DECLARATION OF KEVIN JAKEL
`
`IPR2021-01260
`Unified EX1009 Page 1
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`UNIFIED PATENTS, LLC
`Petitioner
`
`v.
`
`AUTHWALLET LLC
`Patent Owner
`
`IPR2021-01260
`U.S. Patent 9,292,852
`
`DECLARATION OF KEVIN JAKEL
`
`IPR2021-01260
`Unified EX1009 Page 1
`
`
`
`
`
`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,”
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`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
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`art searching, prior art contests, validity and patentability analyses, reissue protests,
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`- 1 -
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`IPR2021-01260
`Unified EX1009 Page 2
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`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
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`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
`
`
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`- 2 -
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`IPR2021-01260
`Unified EX1009 Page 3
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`
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`communications directing which patent or group of patents are to be considered for
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`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
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`- 3 -
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`IPR2021-01260
`Unified EX1009 Page 4
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`for the preparation, filing, and prosecution of any PGR, IPR, or EPR, including any
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`expenses associated with the proceeding.
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`9.
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`Unified’s Members do not pay any fees designated for post-grant
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`proceedings (e.g., IPRs, PGRs, EPRs), let alone for post-grant proceedings against
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`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
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`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.
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`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
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`
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`- 4 -
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`IPR2021-01260
`Unified EX1009 Page 5
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`any other company. Unified is not a law firm and does not have an attorney-client
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`relationship with Members.
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`II. THE INSTANT IPR
`13. Unified exercised its sole discretion and control in deciding to file a
`
`petition in the instant IPR, IPR2021-01260, against U.S. Patent 9,292,852 (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.
`
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`- 5 -
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`IPR2021-01260
`Unified EX1009 Page 6
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`III. VERIFICATION
`
`
`I declare that all statements made herein of my knowledge are true, and
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`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
`
`
`
`
`
`
`
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`- 6 -
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`7/21/2021
`
`IPR2021-01260
`Unified EX1009 Page 7
`
`
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