MemoryWeb decision reaffirms Unified as sole RPI

On Friday, December 8, 2023, the Patent Trial and Appeal Board issued another final written decision holding that Unified Patents was the sole real party-in-interest (RPI). Samsung Electronics Co. Ltd. v. MemoryWeb, LLC, IPR2022-00222, Exhibit 2121 (public version, filed December 22, 2023). The decision is consistent with past decisions over the last decade holding that Unified acts independently, without influence from its members in its challenges against non-practicing entities.

Reversing a now-vacated ruling in an earlier case, the Board observed that Unified’s business was “designed to comply with RPI rules and to maintain its independence from its membership” and that its business model is “focused on deterrence rather than settlement of cases involving NPEs.” Ex. 2121, 45. The Board confirmed that Unified’s arms’-length relationship with its members—who do not communicate or coordinate about its filings or give any input to Unified regarding its decision to file petitions—supported that “no relationship between Petitioner and Unified that would give rise to the implication that Petitioner is a RPI in the Unified proceeding.” Id., 51. Further, they held that a member pays undesignated subscription fees did not show that the member directly funded Unified’s filing activities. Id., 52.

This decision, which considered a wealth of evidence, including membership agreements, press releases, reports, and written and deposition testimony, confirms that unlike RPX in AIT, Unified acts independently of its members to serve its ongoing mission of deterring assertions of broad, invalid patents.

Click HERE to read the decision.

Unified Succeeds in RPI Decisions

For the past decade, across more than 300 proceedings, Unified Patents has won every real party-in-interest (RPI) challenge—whether at institution, on final written decision, or before the Federal Circuit.  

Unified’s status as the sole RPI was challenged in its first filed IPR, where the Board held that Unified was the sole RPI. Unified Patents Inc. v. Clouding IP, LLC, IPR2013-00586, Paper 9 (Mar. 21, 2014) (members were not found to be RPIs, where there was no evidence of funding or control of the particular IPR; challenged claims were later cancelled in a Final Written Decision issued April 26, 2015). Unified overcame every such challenge in the proceeding years. Today, RPI designations are rarely challenged and largely settled law.

Read more about Unified’s RPI decisions on our website HERE.

Fat Statz patent held invalid

On April 4, 2022, the Patent Trial and Appeal Board (PTAB) issued the public version of a final written decision in Unified Patents, LLC v. Fat Statz, LLC holding all of the challenged claims of U.S. Patent 9,757,066 unpatentable and denying the patent owner’s motion to amend. The ’066 patent is generally directed to a behavior management system that allows users to track and compare fitness and health-related data. The ‘066 patent was asserted against Samsung in early 2020.

While the patent owner attempted to thwart the IPR by raising an RPI issue, the Board held that the patent owner’s evidence was insufficient to put the issue into dispute. The Board further noted that the patent owner does not allege that any time bar or estoppel applies in this case and declined to reach the issue, relying on the precedential decision in SharkNinja Operating LLC v. iRobot Corp., IPR2020-00734, Paper 11 (Oct. 6, 2020).

View district court litigations by Fat Statz. To read the petition and view the case record, see Unified’s Portal. Unified was represented by in-house counsel, Jung Hahm, Michelle Aspen and Roshan Mansinghani, in this proceeding.

Uniloc abandons own Federal Circuit appeal

On August 16, 2021, Uniloc filed a motion to dismiss its appeal and the Federal Circuit dismissed the appeal a day later. Unified had won on all issues at the PTAB in IPR2019-00453, resulting in all five claims of Uniloc’s U.S. Patent 7,020,252 being found unpatentable. Uniloc raised RPI in the case, but the Board agreed that Unified was not an RPI.

This appeal was handled by Debra McComas, Angela Oliver, Raghav Bajaj, David McCombs, and Jon Bowser from Haynes and Boone, and by in-house counsel Jessica L.A. Marks and Roshan Mansinghani.

To review the case record, view IPR2019-00453 on Unified’s Portal.

Fat Statz patent determined to be likely invalid

On April 16, 2021, the Patent Trial and Appeal Board (PTAB) instituted trial on all grounds challenging certain claims of U.S. Patent 9,757,066, owned by Fat Statz, LLC, an NPE. The ’066 patent is generally directed to a behavior management system that allows users to track and compare fitness and health-related data. The ‘066 patent was asserted against Samsung in early 2020.

While the patent owner attempted to thwart institution by raising an RPI issue at the preliminary stage, the Board noted that the patent owner does not allege that any time bar or estoppel applies in this case and declined to reach the issue, relying on the precedential decision in SharkNinja Operating LLC v. iRobot Corp., IPR2020-00734, Paper 11 (Oct. 6, 2020).

View district court litigations by Fat Statz. To read the petition and view the case record, see Unified’s Portal. Unified is represented by in-house counsel, Jung Hahm, Michelle Aspen and Roshan Mansinghani, in this proceeding.