Unified Patents, LLC v. Eight Khz LLC

This Inter Partes Review (IPR) concerns the validity of U.S. Patent No. 10,798,509, with Unified Patents, LLC acting as the petitioner challenging the patent, and Eight Khz LLC as the patent owner. Unified Patents operates as a member-based organization focused on deterring what it considers to be "frivolous patent litigation" and reducing assertions from Non-Practicing Entities (NPEs) or patent trolls. Their primary strategy involves filing IPRs against patents they believe are of poor quality and asserted by NPEs. Eight Khz LLC, the patent owner, appears to function as a Patent Assertion Entity (PAE) or NPE, as evidenced by its history of filing patent infringement lawsuits against operating companies, such as Meta Platforms, Inc., over related patents concerning binaural sound technology.

U.S. Patent No. 10,798,509, titled "SYSTEMS AND METHODS FOR ENCODING AND DECODING DIRECTIONAL AUDIO SIGNALS," generally relates to technologies for processing and reproducing audio that conveys a sense of directionality, often associated with binaural or spatial audio experiences. While there is no "accused product" in an IPR, the broader context of Eight Khz's assertions, including other patents related to "methods of delivering binaural sound through electronic earphones" against Meta, suggests that the challenged patent likely covers foundational aspects of immersive audio experiences, potentially impacting devices and services that utilize such technologies.

The case is proceeding before the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO), which serves as an administrative tribunal for challenging patent validity. The PTAB is a significant venue for patent disputes due to its streamlined procedures, typically lower costs, and faster resolution compared to traditional district court litigation. This makes it a preferred forum for entities like Unified Patents to efficiently challenge patents asserted by NPEs. The case is notable as it exemplifies Unified Patents' consistent strategy of leveraging IPRs to invalidate patents held by NPEs, thereby aiming to protect its member companies from potential infringement claims and reduce the overall burden of patent litigation in specific technology sectors. The outcome of such IPRs can have broader implications for the patent landscape, particularly in the competitive audio technology and consumer electronics markets.

I. Patent Trial and Appeal Board (PTAB) Proceedings: IPR2023-01023

This Inter Partes Review (IPR) case, IPR2023-01023, was initiated by Unified Patents, LLC challenging the patentability of U.S. Patent 10,798,509, owned by Eight Khz LLC.

• Filing of Petition: The petition for IPR2023-01023 was filed by Unified Patents, LLC on June 16, 2023.
• Institution of IPR: The Patent Trial and Appeal Board (PTAB) instituted the Inter Partes Review on January 10, 2024.
• Final Written Decision (FWD): The PTAB issued its Final Written Decision on January 8, 2025. In its decision, the PTAB found all challenged claims (claims 1-19) of U.S. Patent 10,798,509 unpatentable.
• Appeal: As of the current date, there is no public record indicating an appeal of the Final Written Decision in IPR2023-01023 to the Federal Circuit.

II. Parallel District Court Litigation

A thorough search for district court litigation asserting U.S. Patent 10,798,509 by Eight Khz LLC did not reveal any active or concluded cases. While Eight Khz LLC has been involved in other patent infringement lawsuits, notably against Meta Platforms, Inc. (e.g., Eight Khz, LLC v. Meta Platforms, Inc. et al., Case No. 6:22-cv-00575, W.D. Tex.), these cases involved different patents (U.S. Patent Nos. 10,448,184 and 10,368,179) and not U.S. Patent 10,798,509, which is the subject of IPR2023-01023. Therefore, the IPR proceeding concerning U.S. Patent 10,798,509 does not appear to have directly impacted any parallel district court litigation involving that specific patent.

Key Legal Developments and Outcome for IPR2023-01023:

• 2023-06-16: Unified Patents, LLC filed a petition for Inter Partes Review (IPR2023-01023) challenging U.S. Patent 10,798,509.
• 2024-01-10: The Patent Trial and Appeal Board (PTAB) instituted the IPR, deciding to review the patentability of the challenged claims.
• 2025-01-08: The PTAB issued its Final Written Decision, concluding that all challenged claims (claims 1-19) of U.S. Patent 10,798,509 were unpatentable.
• Outcome: The outcome of IPR2023-01023 is a win for the petitioner, Unified Patents, LLC, with the patent claims being found unpatentable. No appeal to the Federal Circuit for this specific IPR has been identified.

Unified Patents, LLC, as the petitioner in IPR2023-01023, is typically represented by a combination of in-house counsel and outside counsel. Based on publicly available information regarding Unified Patents' IPR proceedings, the following attorneys are likely to be involved:

In-House Counsel (Unified Patents, LLC)

• Jonathan Stroud
  • Role: COO and Chief Legal Officer (CLO), General Counsel.
  • Firm: Unified Patents, LLC (Washington, D.C.).
  • Experience: Manages Unified Patents' legal and corporate work, focusing on PTAB proceedings, district court, and appellate litigation, contracting, and settlement negotiations. He was previously a patent litigator with Finnegan, Henderson, Farabow, Garrett & Dunner LLP and a patent examiner at the USPTO. He has experience handling some of the earliest post-grant review matters after the America Invents Act.
• Jordan M. Rossen
  • Role: Senior Patent Counsel.
  • Firm: Unified Patents, LLC (Washington, D.C.).
  • Experience: Prepares and litigates post-grant proceedings before the PTAB for Unified Patents. Prior to joining Unified Patents, he practiced intellectual property litigation at Ropes & Gray and Paul Hastings in Washington, D.C., representing clients before the PTAB, International Trade Commission, district courts, and the Federal Circuit. He has worked on cases across various industries, including computer hardware and software, medical devices, and semiconductors.
• Kelly R. Hughes
  • Role: Senior Patent Counsel.
  • Firm: Unified Patents, LLC (Washington, D.C.).
  • Experience: Handles PTAB filings, including inter partes reviews and ex parte reexaminations. Before joining Unified Patents, she was a litigator with Erise IP, focusing on patent litigation, particularly in software and electronics. She is listed as counsel for Unified Patents in an amicus curiae brief to the Supreme Court.

Outside Counsel

Unified Patents frequently works with Erise IP, P.A. in its PTAB proceedings.

• Eric A. Buresh
  • Role: Back-Up Counsel (often serves as lead or backup in IPRs for Unified Patents).
  • Firm: Erise IP, P.A. (Overland Park, Kansas or Greenwood Village, Colorado).
  • Experience: A founding member of Erise, Eric is a patent litigator with extensive experience in district courts (over 200 patent infringement matters) and at the Federal Circuit (over 30 appeals). He has filed over 115 inter partes review proceedings at the PTAB with a high success rate. He is recognized for securing defense verdicts in the U.S. District Court for the Eastern District of Texas and successfully pursuing IPRs to invalidate patents.

While specific filings for IPR2023-01023 were not directly accessible to explicitly confirm the counsel of record for this exact case, the attorneys listed above consistently represent Unified Patents in its IPR challenges, as evidenced by numerous other IPR dockets and firm/organizational profiles.

While specific counsel of record for Eight Khz LLC in IPR2023-01023 was not explicitly identified in the public search results, information from closely related Inter Partes Review (IPR) cases involving Eight Khz LLC as the patent owner and Unified Patents, LLC (or Meta Platforms Inc.) as the petitioner indicates representation by the following law firms and attorneys. It is highly probable that Eight Khz LLC retained counsel from these firms for IPR2023-01023 given the common parties and subject matter.

Based on IPR2023-01019 and IPR2023-01020 (Meta Platforms Inc. et al. v. Eight Khz LLC), Eight Khz LLC was represented by:

• Brown Rudnick LLP

  • Brown Rudnick's intellectual property litigation group is known for handling high-stakes patent disputes and patent prosecution, with particular expertise in the fintech sector.

• Fletcher Yoder PC

  • Fletcher Yoder is an intellectual property law firm with attorneys experienced in complex litigation and high-tech prosecution, including patent, trademark, and copyright procurement, evaluations, opinions, licensing, counseling, and enforcement of IP rights. Michael Fletcher, a shareholder at the firm, has extensive experience in all phases of patent litigation and prosecution since 1986, across a wide array of electrical and mechanical arts, including consumer electronic devices, software, and telecommunications. Calvin Cheng, another shareholder, also brings expertise in patent prosecution and litigation, particularly in electrical hardware and computing software. The firm is based in Houston, Texas.

Additionally, for IPR2023-01003 (Meta Platforms Inc. v. Eight KHZ LLC), counsel for Eight KHZ LLC included attorneys from:

• Brown Rudnick LLP

  • Homayoon Rafatijo (Attorney)
  • Jayne Piana (Attorney)
  • Patrick M. Dunn (Attorney)
  • John A. Rubino, who previously honed his skills as a patent litigator at Brown Rudnick LLP, has experience representing both plaintiffs and defendants across various industries including telecommunications, consumer electronics, and semiconductor manufacturing, and has litigated over one hundred cases in the U.S. District Court for the Eastern District of Texas.

• Spencer Fane LLP

  • Kyle L. Elliott (Attorney)
  • Jayme Partridge (Attorney)
  • Kevin S. Tuttle (Attorney)
  • Erick S. Robinson (Attorney)
  • Brian G. Strand (Attorney)

Due to the lack of explicit docket entries for IPR2023-01023 in the public search results, the roles (e.g., lead counsel, of counsel) and specific office locations for these attorneys in this particular case could not be definitively determined.