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Unified News, Views, & Blogs
On February 22, 2022, Unified Patents filed an opposition in the EPO against EP 3340630. The EP ‘630 patent is owned by the Electronics and Telecommunications Research Institute (ETRI). The patent is part of a large family with related patents designated as essential to the H.265 and AV1 standards by Access Advance and SISVEL, respectively.
Read the entire filing below. Unified is represented by HGF Law and by in-house counsel, Roshan Mansinghani and Jessica L.A. Marks.
In new court filings targeting hundreds of bad actors, Unified Brands ("the Anti-Counterfeiter") is working with Roku®, one of the world's largest media streaming providers and most recognized brands, to stop the sales of counterfeit remotes via online marketplaces like Wish®, and others. Sales of counterfeit goods is a huge and growing problem for American businesses. As stores have migrated from physical locations to e-commerce sites—a move accelerated by the pandemic—online sales of counterfeit goods has become a multi-trillion dollar problem for American businesses.
It is estimated that more than 3% of all world commerce and up to 15-20% of all sales of small consumer goods are lost to online counterfeiting on e-commerce platforms, nearly all of it to foreign counterfeiters, resulting in fewer jobs, less revenue, and in some cases even major heath and safety issues for U.S. companies. It costs recognized brands billions and undermines consumer trust, and is a big enough problem that Congress has for years been debating legislation to address the scourge of online counterfeiting. Enforcement is difficult, as site take-downs result in a game of whack-a-mole, with new online storefronts forming every day and parties migrating regularly to newer harder-to-trace sales.
But there are ways to fight back. Unified Brands offers a proven solution that costs nothing to a premium brand owner and works to deter future counterfeiting, in short, by following the money. Instead of filing takedowns and chasing online storefronts reactively—which rarely leads to any sustained decrease in counterfeiting—Unified proactively works with brands and counsel to freeze counterfeiter's bank accounts and then shares in the brand’s proceeds, recovering nothing unless the brand does. This allows Unified to offer its services for no upfront fees. Combined with Unified’s proven deterrence effects, data shows regular enforcement can lead to a sustained decrease in online counterfeiting against the brand on ecommerce platforms.
As a leader in the streaming space and as a top seller of consumer electronics, Roku has seen counterfeiting, particularly of its remotes, which have led to confusion, quality, and support issues among its consumers.
In short, working with Unified Brands on regular enforcement activity ensures that counterfeiters now know selling fake remotes will lead to substantial monetary losses, not just losing a listing.
Public court filings can be found here
For more on Unified Brands, watch the clip below:
On January 4, 2022, the China National Intellectual Property Administration declared all challenged claims of CN101491099, owned by Interdigital, invalid. CN101491099 has been designated as essential in the SISVEL’s VP9 and AV1 pools.
Unified was represented by JZMC Patent and Trademark Law Office, and the case was managed by in-house counsel, Jessica L.A. Marks and Ashraf Fawzy.
Interdigital CN'099 invalid by Jennifer M Gallagher on Scribd
On February 24, 2022, Unified filed a petition for inter partes review (IPR) against U.S. Patent 7,079,752, owned by NPE and IP Edge entity, Diatek Licensing LLC. The ‘752 patent is generally directed to providing playback control functions (e.g., fast-forward, rewind, etc.) for digital video streaming devices. The patent is relevant to the MPEG standard and has been asserted against several streaming companies such as AccuWeather, Fox Broadcasting Company, Home Box Office (HBO), MLB Advanced Media, Redbox, and Roku.
View district court litigations by Diatek Licensing. To read this petition and view the case record, see Unified’s Portal. Unified is represented by Cono Carrano, Ryan Stronczer, and Sohrab Hajarian of Akin Gump, and by in-house counsel, Jessica L.A. Marks and Jordan Rossen.
Unified’s PATROLL, the only Crowd Sourced Prior Art platform, currently has 65 active contests with over $130,000 in cash prize payouts. In addition, 22 contests are in the final review process and winners will be announced soon. With 1,454 total submissions, PATROLL has seen tremendous success in deterring low quality patents.
The increase in submissions has led to more successful contest winners. Since 2020, 50 submissions have been announced as the winner, versus only 16 in 2018 and 2019 combined. In that same time frame, nearly $100,000 in prizes have been awarded versus only $37,000 in 2018 and 2019.
| Awarded | Winners |
|---|---|
| $130,975 | 66 |
Beginning in 2020, Unified partnered with several third-party prior art research firms - Amplified, APEX STANDARDS, Techson IP, Traindex, IPscreener, Ambercite, and InQuartik. These partnerships led to more submissions being made by outside prior art researchers and scientists. With more submissions, more money was awarded and we continued the fight against the low-quality patents.
As seen below, the Average Submissions Per Contest Per Year increased by nearly 12% from 9.3 submissions in 2020 to now 10.5 in 2022.
Unified received a record-high of 425 total submissions for 2021.
With 22 contests being finalized and 65 in progress, the total payout for 2022 is expected to be nearly $200,000 with over 500 submissions projected. To view all active contests, please visit PATROLL.
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