Untitled case

This case, IPR2022-01376, involves Unified Patents as the petitioner challenging the validity of U.S. Patent No. 9,996,717, owned by Dynamic Data Solutions. Unified Patents is a member-based organization focused on deterring frivolous patent litigation by Non-Practicing Entities (NPEs) and improving patent quality, often by filing inter partes reviews (IPRs) against patents asserted by NPEs. While the specific accused product or service in this IPR is not detailed, Unified Patents' actions are generally aimed at patents that have been asserted against its members in various technology zones, such as cloud storage, content delivery, or electronic payments. The patent at issue, U.S. Patent No. 9,996,717, is titled "DYNAMIC DATA MANAGEMENT," and its abstract describes methods and systems for improving access control, administrative monitoring, reliability, and flexibility of data transmission and remote application sharing, utilizing a datagram schema for dynamic datagram switching and mobile intelligent data carriers for authentication and encryption. The patent owner, Dynamic Data Solutions, is an IT services and consulting company that offers solutions for business growth and data management.

The procedural posture of this case is an Inter Partes Review (IPR) before the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO). A Final Written Decision has been issued. The PTAB is an administrative body that reviews the patentability of claims in an issued patent based on prior art. This venue is significant because IPRs offer a faster and often less expensive alternative to district court litigation for challenging patent validity. The PTAB's decisions can be appealed to the U.S. Court of Appeals for the Federal Circuit.

This case is notable in the context of NPE assertion patterns and IPR linkage. Unified Patents' strategy involves proactively challenging patents owned by NPEs, often referred to as "patent trolls," to reduce the overall volume of patent litigation. The issuance of a Final Written Decision signifies a conclusive ruling by the PTAB on the patentability of the challenged claims. Unified Patents often publishes reports on patent dispute trends, including IPR petitions and institution rates against NPEs, highlighting their role in the broader intellectual property landscape.

IPR2022-01376, initiated by Unified Patents and concerning U.S. Patent No. 9,996,717, has reached a Final Written Decision at the Patent Trial and Appeal Board (PTAB).

Key Legal Developments and Outcome:

• IPR Petition Filing and Institution: Unified Patents filed a petition for Inter Partes Review (IPR) challenging the patentability of U.S. Patent No. 9,996,717. The PTAB subsequently instituted review.
• Real Party in Interest (RPI) Determination and Director Review: The PTAB initially found that Apple and Samsung were the real parties in interest (RPIs) in Unified Patents' IPR challenge, concluding that Unified Patents brought the challenge to benefit these entities, who also had their own separate IPR petitions against the same patent. The Board ordered Unified Patents to update its Mandatory Notices to identify Apple and Samsung as RPIs. Unified Patents sought Director Review of this RPI determination, which was granted. The Director of the USPTO vacated the Board's RPI determination, stating that, under SharkNinja, the Board should not have resolved the RPI issue because neither a time bar nor estoppel applied in the IPR2022-01376 proceeding. The Director's decision implied that the RPI issue could be addressed in Apple's and Samsung's separate proceedings, as a Final Written Decision in Unified Patents' IPR could lead to estoppel if Apple or Samsung were indeed RPIs.
• Final Written Decision: The PTAB issued a Final Written Decision in IPR2022-01376. However, the available information does not specify the precise findings of the Final Written Decision for IPR2022-01376 regarding the patentability of claims of U.S. Patent No. 9,996,717. In other IPRs where Unified Patents is the petitioner, Final Written Decisions have resulted in findings of unpatentability. A Final Written Decision by the PTAB triggers statutory estoppel, preventing the petitioner (and its RPIs or those in privity) from challenging the same claims on grounds raised or that reasonably could have been raised in the IPR, both before the USPTO and in civil actions.
• Absence of District Court Litigation Details: There is no specific information available regarding parallel district court patent infringement litigation directly involving U.S. Patent No. 9,996,717. Unified Patents typically initiates IPRs to challenge patents asserted by Non-Practicing Entities (NPEs) against its members, aiming to mitigate patent infringement threats. If there were co-pending litigation, the PTAB's decision to institute or deny an IPR could be influenced by factors related to parallel district court litigation, though the USPTO's policies on discretionary denials have been in flux.
• Potential for Appeal: A Final Written Decision from the PTAB is subject to appeal to the U.S. Court of Appeals for the Federal Circuit. Such appeals are common, and the Federal Circuit reviews the PTAB's legal determinations de novo and its factual findings for substantial evidence. For instance, in other cases, the Federal Circuit has affirmed PTAB findings of unpatentability or vacated and remanded decisions based on legal errors in the PTAB's analysis.

In summary, the key development is the issuance of a Final Written Decision in IPR2022-01376, which was preceded by a significant ruling from the USPTO Director vacating the PTAB's RPI determination. While the specific outcome of the Final Written Decision on the patentability of U.S. Patent No. 9,996,717 claims is not detailed in the available information, such a decision generally has preclusive effects, especially if the claims were found unpatentable.

To identify the counsel of record for Unified Patents in IPR2022-01376, a review of public records, such as the PTAB docket, is necessary. While direct counsel information for this specific case was not immediately available in the initial search, Unified Patents frequently utilizes both its in-house legal team and external counsel for Inter Partes Review (IPR) proceedings.

Based on general practices and information from other IPR cases involving Unified Patents, the following attorneys are often involved in their PTAB challenges:

In-House Counsel (Unified Patents, LLC)

• Jordan Rossen
  • Role: Senior Patent Counsel
  • Firm: Unified Patents, LLC, Chevy Chase, MD
  • Relevant Experience: Prepares and litigates post-grant proceedings before the PTAB for Unified Patents. Prior to joining Unified, he practiced in intellectual property litigation at Ropes & Gray and Paul Hastings, representing clients before the PTAB, International Trade Commission, district courts, and Federal Circuit in a wide range of technologies including computer hardware and software, medical devices, and pharmaceuticals.
• David Seastrunk
  • Role: Senior Patent Counsel
  • Firm: Unified Patents, LLC
  • Relevant Experience: Prepares and litigates post-grant proceedings before the PTAB for Unified Patents. Previously, he practiced at Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, where he was involved in all phases of post-grant proceedings, district court cases, and ITC investigations, as well as patent prosecution and client counseling.
• Michelle Callaghan
  • Role: Senior Patent Counsel
  • Firm: Unified Patents, LLC
  • Relevant Experience: Prepares and litigates post-grant proceedings before the PTAB for Unified Patents. Before joining Unified, she practiced at Erise IP, defending clients against patent demands in district courts, challenging patents before the PTAB, and preparing opinions on patent validity and infringement across various technologies, including communication networks, video coding, and mobile devices.
• Roshan Mansinghani
  • Role: Legal Head-NPE / Senior Patent Counsel
  • Firm: Unified Patents, LLC, Chevy Chase, MD
  • Relevant Experience: Frequently acts as in-house counsel for Unified Patents in PTAB matters.
• Jonathan R. Stroud
  • Role: Chief IP Counsel
  • Firm: Unified Patents, LLC, Chevy Chase, MD
  • Relevant Experience: Oversees IP strategy for Unified Patents and has participated in discussions regarding improving patent quality and PTAB proceedings.

External Counsel

Unified Patents also commonly engages external law firms for their IPR petitions. For example, in other IPR proceedings, attorneys from Rothwell, Figg, Ernst & Manbeck, P.C. have represented Unified Patents.

• Michael H. Jones
  • Role: Lead Counsel (for specific IPRs, e.g., for U.S. Patent No. 7,748,005)
  • Firm: Rothwell, Figg, Ernst & Manbeck, P.C., Washington, DC
  • Relevant Experience: Specializes in patent litigation and IPRs.
• Mark T. Rawls
  • Role: Counsel (for specific IPRs, e.g., for U.S. Patent No. 7,748,005)
  • Firm: Rothwell, Figg, Ernst & Manbeck, P.C., Washington, DC
  • Relevant Experience: Practices in intellectual property law, including patent litigation.

To confirm the exact counsel for IPR2022-01376 (concerning patent 9996717), accessing the official PTAB docket for this specific case would provide definitive information. Without direct docket access for IPR2022-01376 in the provided search results, these individuals represent the typical legal team for Unified Patents in their PTAB challenges.

The defendant in an Inter Partes Review (IPR) is the patent owner. To identify the counsel of record for the patent owner in IPR2022-01376, it is necessary to identify the patent owner of U.S. Patent No. 9,996,717 and then consult the PTAB docket for the case.

Based on general information regarding IPR proceedings, the "Patent Owners/Respondents" section of the USPTO's Patent Trial and Appeal Case Tracking System (P-TACTS) notes that a patent owner or respondent, after registering as a P-TACTS user, can request to join a proceeding and that P-TACTS will prompt for information about themselves and their counsel, and a power of attorney if necessary.

Without direct access to the PTAB docket for IPR2022-01376 at this time, the specific counsel for the patent owner of U.S. Patent No. 9,996,717 cannot be definitively identified. However, to proceed with identifying the counsel, the following steps would typically be taken:

1. Identify the Patent Owner: Search the USPTO's assignment database or other patent databases for U.S. Patent No. 9,996,717 to determine its current assignee or owner.
2. Access PTAB Docket: Utilize the PTAB Case Tracking System (P-TACTS) with the IPR case number (IPR2022-01376) to access the official docket and review filings, specifically looking for appearances by counsel for the patent owner.

Once this information is available, the names, roles, firms, and relevant experience of the attorneys representing the patent owner can be detailed.