Petitioner’s Voluntary Interrogatory Responses
`IPR2019-00726
`U.S. Patent No. 6,943,710
`
`Filed on behalf of Unified Patents Inc.
`By: Brian W. Oaks, Reg. No. 44,981
`Baker Botts LLP
`98 San Jacinto Blvd., Suite 1500
`Austin, Texas 78701
`Tel: (512) 322-5470
`Email: Brian.Oaks@BakerBotts.com
`
`Jonathan R. Bowser, Reg. No. 54,574
`Roshan S. Mansinghani, Reg. No. 62,429
`Unified Patents Inc.
`1875 Connecticut Ave. NW, Floor 10
`Washington, DC, 20009
`Tel: (202) 701-1015
`Email: jbowser@unifiedpatents.com
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`___________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________________
`
`UNIFIED PATENTS INC.
`Petitioner
`
`v.
`
`GE VIDEO COMPRESSION, LLC
`Patent Owner
`
`Inter Partes Review No. 2019-00726
`Patent 6,943,710
`
`Unified Partens, Ex. 1020
`
`000001
`
`
`IPR2019-00726
`U.S. Patent No. 6,943,710
`
`Filed on behalf of Unified Patents Inc.
`By: Brian W. Oaks, Reg. No. 44,981
`Baker Botts LLP
`98 San Jacinto Blvd., Suite 1500
`Austin, Texas 78701
`Tel: (512) 322-5470
`Email: Brian.Oaks@BakerBotts.com
`
`Jonathan R. Bowser, Reg. No. 54,574
`Roshan S. Mansinghani, Reg. No. 62,429
`Unified Patents Inc.
`1875 Connecticut Ave. NW, Floor 10
`Washington, DC, 20009
`Tel: (202) 701-1015
`Email: jbowser@unifiedpatents.com
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`___________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________________
`
`UNIFIED PATENTS INC.
`Petitioner
`
`v.
`
`GE VIDEO COMPRESSION, LLC
`Patent Owner
`
`Inter Partes Review No. 2019-00726
`Patent 6,943,710
`
`Unified Partens, Ex. 1020
`
`000001
`
`
`
`Petitioner’s Voluntary Interrogatory Responses
`IPR2019-00726
`U.S. Patent No. 6,943,710
`PETITIONER’S VOLUNTARY INTERROGATORY RESPONSES
`
`Petitioner, Unified Patents Inc., provides the following voluntary
`
`interrogatory responses.
`
`DEFINITIONS
`
`A.
`
`B.
`
`C.
`
`PATENT-AT-ISSUE means U.S. Patent No. 6,943,710.
`
`PATENT OWNER means GE VIDEO COMPRESSION, LLC.
`
`COMMUNICATIONS means the transmission or receipt of information of
`
`any kind through any means (e.g., e-mail, text message, voicemail, audio,
`
`computer readable media, or orally).
`
`D. MEMBER means any company that participates or enters into an agreement
`
`for one or more of UNIFIED’s standard-essential patent (SEP) Zones and
`
`MEMBERS means all such companies.
`
`IPR means inter partes review.
`
`THE INSTANT IPR means this proceeding.
`
`PETITION means the petition, including the exhibits thereto, for THE
`
`INSTANT IPR.
`
`UNIFIED means Unified Patents Inc.
`
`USPTO means the United States Patent and Trademark Office.
`
`E.
`
`F.
`
`G.
`
`H.
`
`I.
`
`- 1 -
`
`Unified Partens, Ex. 1020
`
`000002
`
`
`
`Petitioner’s Voluntary Interrogatory Responses
`IPR2019-00726
`U.S. Patent No. 6,943,710
`
`RESPONSES TO VOLUNTARY INTERROGATORIES
`
`VOLUNTARY INTERROGATORY NO. 1:
`
`Identify any COMMUNICATIONS between UNIFIED and any entity other
`
`than its counsel relating to the financing, preparation, editing, prior review, or
`
`approval of the PETITION.
`
`VOLUNTARY RESPONSE NO. 1:
`
`UNIFIED states that no such communications exist.
`
`UNIFIED states that it 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 to protect technology sectors by deterring
`
`the assertion of invalid or low quality patents. UNIFIED has broadened its mission
`
`to protect technology sectors covered by standards and seeks to help speed
`
`adoption of standards based technologies by analyzing and providing data related
`
`to standard-essential patents. Companies in a technology sector subscribe to
`
`UNIFIED’s technology-specific deterrence. 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,
`- 2 -
`
`Unified Partens, Ex. 1020
`
`000003
`
`
`
`Petitioner’s Voluntary Interrogatory Responses
`IPR2019-00726
`U.S. Patent No. 6,943,710
`and industry companies), prior art searching, prior art contests, validity and
`
`patentability analyses, reissue protests, amicus briefing, and post-grant review
`
`requests. UNIFIED’s deterrent activities allow it to identify patents, perform prior
`
`art research, analyze invalidity, and to file reexaminations or IPRs against some
`
`patents.
`
`UNIFIED states that it has 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 an IPR. UNIFIED’s
`
`decisions to file an IPR are made independently without the input, assistance, or
`
`approval of its 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. UNIFIED does not discuss the
`
`preparation of any patentability challenge with MEMBERS, including whether
`
`UNIFIED will or will not file a petition or whether any MEMBER desires that
`
`UNIFIED file a petition. UNIFIED identifies current targets based on publicly
`
`- 3 -
`
`Unified Partens, Ex. 1020
`
`000004
`
`
`
`Petitioner’s Voluntary Interrogatory Responses
`IPR2019-00726
`U.S. Patent No. 6,943,710
`available information obtained solely through UNIFIED’s own independent search
`
`of publicly available legal databases and information.
`
`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.
`
`MEMBERS receive no prior notice of UNIFIED’s patent challenges. 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 for the
`
`preparation, filing, and prosecution of any post-grant proceeding, including any
`
`expenses associated with the proceeding.
`
`In THE INSTANT IPR, UNIFIED exercised its sole discretion and control
`
`in deciding to file this PETITION against the PATENT-AT-ISSUE, including
`
`paying for all fees and expenses. No MEMBER had any involvement in the
`
`- 4 -
`
`Unified Partens, Ex. 1020
`
`000005
`
`
`
`Petitioner’s Voluntary Interrogatory Responses
`IPR2019-00726
`U.S. Patent No. 6,943,710
`preparation of, payment for, or decision to file this PETITION. UNIFIED also had
`
`no discussions with any MEMBER regarding whether any MEMBER desired
`
`UNIFIED to challenge the PATENT-AT-ISSUE. 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.
`
`VOLUNTARY INTERROGATORY NO. 2:
`
`Identify any individuals acting for or on behalf of any entity other than
`
`UNIFIED’s counsel that participated or assisted in any way with the financing,
`
`preparation, editing, prior review, approval, or filing of the PETITION.
`
`VOLUNTARY RESPONSE NO. 2:
`
`UNIFIED states that no such individuals exist. UNIFIED further states that
`
`no individuals other than UNIFIED’s employees and its counsel had any prior
`
`knowledge of the filing of THE INSTANT IPR.
`
`As stated in response to Interrogatory No. 1, in THE INSTANT IPR,
`
`UNIFIED exercised its sole discretion and control in deciding to file the
`
`PETITION against the PATENT-AT-ISSUE, including paying for all fees and
`
`expenses. UNIFIED shall exercise sole and absolute control and discretion of the
`
`continued prosecution of THE INSTANT IPR (including any decision to terminate
`
`- 5 -
`
`Unified Partens, Ex. 1020
`
`000006
`
`
`
`Petitioner’s Voluntary Interrogatory Responses
`IPR2019-00726
`U.S. Patent No. 6,943,710
`UNIFIED’s participation) and shall bear all subsequent costs related to THE
`
`INSTANT IPR.
`
`UNIFIED further states that its MEMBERS do not get to participate in any
`
`way in UNIFIED’s deterrent activities. UNIFIED does not give MEMBERS an
`
`opportunity to participate in or an opportunity to even know that UNIFIED is
`
`contemplating filing an IPR before the IPR is filed. In THE INSTANT IPR, none
`
`of UNIFIED’s MEMBERS had any prior knowledge of, or involvement in, the
`
`preparation and filing of THE PETITION or THE INSTANT IPR.
`
`VOLUNTARY INTERROGATORY NO. 3:
`
`Identify payments by any entity to UNIFIED in connection with (1) THE
`
`PETITION and/or (2) any other IPR and/or patent infringement proceedings in
`
`which PATENT OWNER is a party and the PATENT-AT-ISSUE was asserted.
`
`VOLUNTARY RESPONSE NO. 3:
`
`UNIFIED states that no such payments exist.
`
`UNIFIED states that its MEMBERS pay only a yearly subscription fee to a
`
`specific technology zone based generally on when each MEMBER subscribes.
`
`UNIFIED performs its many deterrent activities, including data analytics, prior art
`
`searching, validity and patentability analyses, and post-grant review requests.
`
`UNIFIED’s MEMBERS do not pay any fees designated for patentability
`
`- 6 -
`
`Unified Partens, Ex. 1020
`
`000007
`
`
`
`Petitioner’s Voluntary Interrogatory Responses
`IPR2019-00726
`U.S. Patent No. 6,943,710
`challenges, let alone for challenges 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 challenge or performing some other activity.
`
`UNIFIED’s decisions to file a challenge are made independently without the input,
`
`assistance, or approval of its MEMBERS.
`
`UNIFIED states that there are no explicit or implicit agreements with its
`
`MEMBERS about UNIFIED performing any particular deterrent strategy,
`
`including THE INSTANT IPR.
`
`VOLUNTARY INTERROGATORY NO. 4:
`
`Identify any Board Members, significant shareholders, and any other entities
`
`or individuals who own or control Unified Patents.
`
`VOLUNTARY RESPONSE NO. 4:
`
`UNIFIED states that Kevin Jakel, Founder and Chief Executive Officer, and
`
`Shawn Ambwani, Chief Operating Officer, Senior Vice-President Legal, own and
`
`control all of UNIFIED. There are no other directors or board members besides
`
`Mr. Jakel and Mr. Ambwani, and there are no other individuals who have an
`
`- 7 -
`
`Unified Partens, Ex. 1020
`
`000008
`
`
`
`Petitioner’s Voluntary Interrogatory Responses
`IPR2019-00726
`U.S. Patent No. 6,943,710
`ownership interest in UNIFIED. Further, neither Mr. Jakel nor Mr. Ambwani
`
`participate on any boards of directors for any of UNIFIED’s MEMBERS.
`
`VOLUNTARY INTERROGATORY NO. 5:
`
`Identify whether UNIFIED has or has ever had an attorney-client
`
`relationship with any of its MEMBERS.
`
`VOLUNTARY RESPONSE NO. 5:
`
`UNIFIED states that no such relationship exists. As stated on UNIFIED’s
`
`website
`
`for at
`
`least multiple years
`
`(https://www.unifiedpatents.com/faq/),
`
`UNIFIED acts independent of its members or any other company. UNIFIED is not
`
`a law firm, and does not have an attorney-client relationship with members.
`
`Unified Patents Inc.
`
`By: /Brian W. Oaks/
`
`Brian W. Oaks, Reg. No. 44,981
`Baker Botts LLP
`98 San Jacinto Blvd., Suite 1500
`Austin, Texas 78701
`Tel: (512) 322-5470
`Email: Brian.Oaks@BakerBotts.com
`
`- 8 -
`
`Unified Partens, Ex. 1020
`
`000009
`
`
`
`Petitioner’s Voluntary Interrogatory Responses
`IPR2019-00726
`U.S. Patent No. 6,943,710
`
`VERIFICATION
`
`I, Kevin Jakel, state that I am CEO of Unified Patents Inc., and that I am
`authorized to make this verification for and on its behalf. I certify that I have read
`the foregoing Interrogatory responses, and that the responses are true and accurate
`to the best of my own knowledge, information, and belief. Further, I make this
`verification 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 and that such willful false statements may jeopardize the
`results of these proceedings.
`
`I declare under penalty of perjury that the foregoing is true and correct.
`
`By:
`Kevin Jakel
`
`- 9 -
`
`Unified Partens, Ex. 1020
`
`000010
`
`
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