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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, LLC
`Petitioner
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`v.
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`MEMORYWEB, LLC
`Patent Owner
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`
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`IPR2021-01413
`U.S. Patent 10,621,228
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`
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`DECLARATION OF KEVIN JAKEL
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`UNIFIED PATENTS EXHIBIT 1017
`Page 1 of 7
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`MemoryWeb Ex. 2048
`Apple v. MemoryWeb - IPR 2022-00031
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`APPLE EXHIBIT
`
`1094
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`09-07-2023 JACKEL
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`Petitioner Apple Inc., Ex. 1094, p. 1
`Apple Inc. v. MemoryWeb, LLC, IPR2022-00031
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`I, Kevin Jakel, hereby declare as follows:
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`I.
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`INTRODUCTION
`1.
`I am a founder and the current CEO of Unified Patents, LLC
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`(“Unified”). I am over 21 years and otherwise competent to make this Declaration.
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`I make this Declaration based on facts and matters within my own knowledge and
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`on information provided to me by others, and, if called as a witness, I could and
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`would competently testify to the matters set forth herein.
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`2.
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`Unified was founded by intellectual property professionals over
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`concerns with the increasing risk of non-practicing entities (“NPEs”) asserting
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`patents of poor quality against strategic technologies and industries. The founders
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`thus created a first-of-its-kind company whose purpose is to protect technology
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`sectors, also referred to as zones, by deterring the assertion of invalid or low-quality
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`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
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`a yearly subscription fee to a specific NPE technology zone based generally on when
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`each Member subscribes.
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`3.
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`Unified performs many deterrent activities, including data analytics,
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`analyzing the technology sector and monitoring patent activity (including patent
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`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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`UNIFIED PATENTS EXHIBIT 1017
`Page 2 of 7
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`MemoryWeb Ex. 2048
`Apple v. MemoryWeb - IPR 2022-00031
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`Petitioner Apple Inc., Ex. 1094, p. 2
`Apple Inc. v. MemoryWeb, LLC, IPR2022-00031
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`
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`
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`amicus briefing, and post-grant review requests. Unified’s deterrent activities allow
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`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
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`partes reviews (“IPRs”), post grant reviews (“PGRs”), and ex parte reexaminations
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`(“EPRs”) before the United States Patent and Trademark Office (“USPTO”), or
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`proceedings overseas, such as European Patent Oppositions (“EPOs”).
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`4.
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`Unified exercises sole and absolute discretion over its decision to
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`contest patents through the USPTO’s post-grant proceedings. Based on its own
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`analysis, Unified determines which patents are worth pursuing in terms of searching
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`for prior art or taking action, including filing a PGR, IPR, or EPR. Unified’s
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`decisions to file a PGR, IPR, or EPR are made independently without the input,
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`assistance, or approval of any of Unified’s Members. Should Unified decide to
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`challenge a patent in a post-grant proceeding, Unified controls every aspect of such
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`a challenge, including controlling which patent and claims to challenge, which prior
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`art to apply and the grounds raised in the challenge, when to bring any challenge,
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`and whether to settle or otherwise end any challenge.
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`5.
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`Unified does not discuss the preparation of any patentability challenge
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`with Members or potential Members, including whether Unified will or will not file
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`a petition or whether a Member desires that Unified file a petition. Unified does not
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`send to, or solicit or consider from, Members or potential Members any
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`- 2 -
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`UNIFIED PATENTS EXHIBIT 1017
`Page 3 of 7
`
`MemoryWeb Ex. 2048
`Apple v. MemoryWeb - IPR 2022-00031
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`Petitioner Apple Inc., Ex. 1094, p. 3
`Apple Inc. v. MemoryWeb, LLC, IPR2022-00031
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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,
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`any company’s preferences, suggestions, or desires as to the selection of a patent or
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`group of patents for a PGR, IPR, or EPR. Unified identifies potential patents to
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`challenge based on publicly available information obtained solely through Unified’s
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`own independent search of publicly available legal databases and information.
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`6.
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`Unified does not communicate with Members about their litigation
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`strategies in district court, before the USPTO and/or before other forums, including
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`whether Members may pursue or have pursued their own patent challenges. Unified
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`does not communicate with Members about any settlement strategies or settlement
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`negotiations Members may have with patent owners, nor does Unified inform
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`Members about any settlement strategies or settlement negotiations Unified may
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`have with patent owners in pursuit of settling Unified’s patent challenge.
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`7. Members receive no prior notice of Unified’s patent challenges.
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`Unified does not give Members an opportunity to participate in or an opportunity to
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`even know that Unified is contemplating filing a PGR, IPR, or EPR before the
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`petition is filed.
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`8.
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`After filing a post-grant proceeding, Unified retains sole and absolute
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`discretion and control over all strategy decisions (including any decision to continue
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`or terminate Unified’s participation). Unified is also solely responsible for paying
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`- 3 -
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`UNIFIED PATENTS EXHIBIT 1017
`Page 4 of 7
`
`MemoryWeb Ex. 2048
`Apple v. MemoryWeb - IPR 2022-00031
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`Petitioner Apple Inc., Ex. 1094, p. 4
`Apple Inc. v. MemoryWeb, LLC, IPR2022-00031
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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
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`money. Unified independently selects which patents to target based on the perceived
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`deterrent value to a technology zone and not on behalf of any specific Member(s) to
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`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,
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`or performing some other activity. Unified’s decisions to file a post-grant
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`proceeding, such as a PGR, IPR, or EPR, are made independently without the input,
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`assistance, or approval of its Members.
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`10. Unified has no explicit or implicit agreements with its Members about
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`Unified performing any particular deterrent strategy, including the instant IPR (see
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`Sec. II, below).
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`11. No other entity or individual outside of Unified controls Unified. There
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`are no board members of Unified that participate on any boards of directors for any
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`of Unified’s Members.
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`12. As
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`stated
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`on Unified’s website
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`for many
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`years
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`(https://www.unifiedpatents.com/faq/), Unified acts independent of its Members or
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`- 4 -
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`UNIFIED PATENTS EXHIBIT 1017
`Page 5 of 7
`
`MemoryWeb Ex. 2048
`Apple v. MemoryWeb - IPR 2022-00031
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`Petitioner Apple Inc., Ex. 1094, p. 5
`Apple Inc. v. MemoryWeb, LLC, IPR2022-00031
`
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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
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`petition in the instant IPR, IPR2021-01413, against U.S. Patent 10,621,228 (the
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`“Patent-at-Issue”), including paying for all fees and expenses. No individuals other
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`than Unified’s employees, counsel, and consultants acting under the direction of
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`counsel had any prior knowledge of the filing of the instant IPR. And no Member
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`had any involvement in the preparation of, payment for, or decision to file this
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`Petition. And none of Unified’s Members had any prior knowledge of, or
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`involvement in, the preparation and filing of the petition for the instant IPR. Unified
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`also had no discussions with any Member regarding whether any Member desired
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`Unified to challenge the Patent-at-Issue. Further, Unified did not send to, or solicit
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`or consider from, a Member any directions identifying (a) a patent or group or
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`patents to be considered for the instant IPR or (b) any Member’s requests,
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`instructions, preferences, suggestions, or desires regarding the selection of a patent
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`or group of patents for the instant IPR.
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`14. Unified shall exercise sole and absolute control and discretion of the
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`continued prosecution of the instant IPR (including any decision to terminate
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`Unified’s participation) and shall bear all costs related to the instant IPR.
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`- 5 -
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`UNIFIED PATENTS EXHIBIT 1017
`Page 6 of 7
`
`MemoryWeb Ex. 2048
`Apple v. MemoryWeb - IPR 2022-00031
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`Petitioner Apple Inc., Ex. 1094, p. 6
`Apple Inc. v. MemoryWeb, LLC, IPR2022-00031
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`III. VERIFICATION
`15.
`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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`Date:
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`By:
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`Kevin Jakel
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`- 6 -
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`
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`9/02/2021
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`UNIFIED PATENTS EXHIBIT 1017
`Page 7 of 7
`
`MemoryWeb Ex. 2048
`Apple v. MemoryWeb - IPR 2022-00031
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`Petitioner Apple Inc., Ex. 1094, p. 7
`Apple Inc. v. MemoryWeb, LLC, IPR2022-00031
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