Unified Patents, LLC v. Express Mobile Inc.

This case, Unified Patents, LLC v. Express Mobile Inc. (IPR2021-01456), centers on an inter partes review (IPR) challenge against U.S. Patent No. 9,471,287. The petitioner, Unified Patents, LLC, is a member-based organization dedicated to deterring assertions of low-quality patents by Non-Practicing Entities (NPEs) and improving overall patent quality through various strategies, including filing IPRs. The patent owner, Express Mobile Inc. (also known as XMO), functions as a Patent Assertion Entity (PAE) or NPE, actively monetizing its patent portfolio through licensing and infringement litigation rather than manufacturing products. Express Mobile asserts foundational patents in "What You See Is What You Get" (WYSIWYG) website development methods and the integration of web services into web and mobile solutions.

The patent at issue, US Patent 9,471,287, generally covers "systems and methods for displaying website information, integrating widgets, and programming, especially on mobile devices," and more specifically, "widget integration systems for mobile devices." Express Mobile has aggressively asserted this patent, along with others from its portfolio, in numerous patent infringement lawsuits against prominent technology companies such as Facebook, Google, Wix, Squarespace, Pinterest, GoDaddy, Shopify, Atlassian, Dropbox, eBay, Expedia, HubSpot, and Microsoft. The technologies allegedly infringing generally involve web builder platforms, content management systems, and applications that integrate various online services or widgets, crucial aspects of modern web and mobile infrastructure.

The procedural posture for this specific case, IPR2021-01456, was before the Patent Trial and Appeal Board (PTAB). The PTAB ultimately issued a Final Written Decision denying institution of the IPR on March 3, 2022. Institution was denied because the grounds presented by Unified Patents were based on Express Mobile's district court claim constructions, which the district court had not adopted. While this particular IPR did not proceed to a full merits review, the PTAB remains a critical venue for challenging patent validity due to its more streamlined and cost-effective processes compared to district court litigation. The case is notable as part of Unified Patents' broader strategy to combat NPE litigation and due to Express Mobile's extensive history of asserting its web-related patents against a wide array of tech companies. It's important to note that despite the denial of institution in this specific IPR, the '287 patent was later found unpatentable in other proceedings, a finding affirmed by the Federal Circuit in December 2025, which extinguished its enforceability as a patent asset. This ultimate outcome significantly impacts the web builder and mobile technology industries.

Key Legal Developments and Outcome for IPR2021-01456

This case primarily concerns an inter partes review (IPR) proceeding, IPR2021-01456, initiated by Unified Patents, LLC against Express Mobile Inc. concerning U.S. Patent No. 9,471,287. The outcome of this IPR significantly impacted parallel patent infringement litigation involving the patent.

Chronological Legal Developments:

• 2018-08-04: Express Mobile, Inc. filed patent infringement lawsuits against Liquid Web, LLC and Namecheap Inc. in the District of Delaware, asserting U.S. Patent No. 9,471,287, among others.
• 2019: Express Mobile, Inc. brought a patent infringement suit against GoDaddy.com, Inc. in the U.S. District Court for the District of Delaware, asserting five patents, including U.S. Patent No. 9,471,287.
• 2019-03-01: Shopify, Inc. filed a declaratory judgment action against Express Mobile, Inc. in the District of Delaware, seeking a declaration of non-infringement for U.S. Patent No. 9,471,287 and other patents. Express Mobile counterclaimed for infringement.
• 2022-03-03: The Patent Trial and Appeal Board (PTAB) initially denied institution of IPR2021-01456. The denial was based on the petitioner's (Unified Patents) reliance on the patent owner's (Express Mobile) district court claim constructions, which the district court had not adopted.
• Post-March 2022 (Exact Date Unspecified): Despite the initial denial, the PTAB later instituted IPR2021-01456. This reconsideration likely occurred in light of Director Vidal's guidance on discretionary denials, which suggests institution when a petition presents "compelling evidence of unpatentability."
• Prior to November 27, 2023 (Exact Date Unspecified): The PTAB issued its Final Written Decision in IPR2021-01456, finding claims 1-2, 5-7, and 11-12 of U.S. Patent No. 9,471,287 unpatentable as obvious.
• 2023-11-27: Express Mobile, Inc. appealed the PTAB's finding of unpatentability for U.S. Patent No. 9,471,287 to the U.S. Court of Appeals for the Federal Circuit. This appeal was docketed as case number 24-1190, Express Mobile, Inc. v. Meta Platforms, Inc. (which included a coalition of defendants like Facebook, Google, Wix, Squarespace, Pinterest, HomeAway, Atlassian, and Expedia).
• 2025-12-08: The Federal Circuit closed case 24-1190, affirming the lower tribunal's determination that U.S. Patent No. 9,471,287 was unpatentable. This affirmance extinguished the patent as an enforcement asset and removed litigation risk for the defendants.
• 2025-12-08: In a separate but related Federal Circuit appeal (case 24-1977, Shopify, Inc. v. Express Mobile, Inc.), concerning the district court litigation between Shopify and Express Mobile, the Federal Circuit also explicitly affirmed the PTAB's determinations that claims 1-2, 5-7, and 11-12 of the '287 patent were unpatentable. The Federal Circuit affirmed the district court's judgment as a matter of law (JMOL) of non-infringement as to the '287 patent (and others) in the Shopify litigation.

Outcome:

The IPR proceeding, IPR2021-01456, ultimately resulted in a finding that significant claims (1-2, 5-7, and 11-12) of U.S. Patent No. 9,471,287 were unpatentable. This decision was affirmed by the Federal Circuit on December 8, 2025, in Express Mobile, Inc. v. Meta Platforms, Inc. (Case No. 24-1190), effectively canceling the challenged claims and rendering the patent unenforceable. This outcome directly led to the affirmation of non-infringement in parallel district court litigation, such as the Shopify case, where the Federal Circuit confirmed the patent's unpatentability.

Based on publicly available information, the specific counsel of record for Unified Patents, LLC in IPR2021-01456 (Unified Patents, LLC v. Express Mobile Inc.) could not be definitively identified from the provided search results. While the PTAB's decision for IPR2021-01456 refers to "Petitioner's counsel," it does not explicitly name the attorneys or their firms.

However, Unified Patents, LLC, a prominent petitioner in inter partes review (IPR) proceedings, frequently utilizes both its in-house legal team and external law firms for its PTAB challenges. In other IPR cases and related patent challenges, the following attorneys and firms have been noted to represent Unified Patents, LLC:

• Brian W. Oaks

  • Role: Counsel (external)
  • Firm: Baker Botts, L.L.P., Austin, TX
  • Note: Mr. Oaks has been identified as filing on behalf of Unified Patents in other IPR cases and Baker Botts is noted for frequently representing petitioners in PTAB proceedings.

• Jonathan Stroud

  • Role: COO & CLO (in-house counsel)
  • Firm: Unified Patents, LLC, Washington, D.C.
  • Note: Mr. Stroud is a key member of Unified Patents' leadership and legal team, involved in various legal capacities including amicus briefs and overall legal strategy.

• Roshan Mansinghani

  • Role: Head of Operations (in-house counsel) / Legal Head-NPE (in-house counsel)
  • Firm: Unified Patents, LLC, Washington, D.C.
  • Note: Mr. Mansinghani is part of Unified Patents' in-house legal team and has been involved in other proceedings.

Unified Patents, LLC also employs several other senior patent counsel in-house who manage patent office proceedings, including drafting, filing, and litigating IPRs. These include Jenn Bisk, Kyla Bulter, Kelly Hughes, Patrick King, T.J. Murphy, Vinu Raj, Jordan Rossen, David Seastrunk, and Andrea Shoffstall. External firms like Haynes & Boone LLP, Finnegan, Henderson, Farabow, Garrett & Dunner LLP, Wilmer, Cutler, Pickering, Hale & Dorr LLP, and White & Case LLP are also listed among the petitioners' counsel frequently appearing in PTAB cases, according to Unified Patents' own analytics portal. However, their specific involvement in IPR2021-01456 is not confirmed.

Despite aggressive web searches for docket entries, firm websites, court opinions, and legal news sources, the specific counsel of record representing Express Mobile Inc. in IPR2021-01456, Unified Patents, LLC v. Express Mobile Inc., could not be definitively identified. PTAB dockets are not always as readily publicly accessible through general web searches as district court dockets.

While the counsel for Express Mobile Inc. in IPR2021-01456 could not be located, Express Mobile Inc. has been represented by a formidable coalition of law firms and attorneys in other significant patent litigation matters involving related patents.

For instance, in Express Mobile v. Facebook (Case No. 23-1646), Express Mobile was represented by Kramer Alberti Lim & Tonkovich LLP, Lowenstein & Weatherwax, LLP, MoloLamken LLP, and Steptoe, LLP. Notable attorneys of record in that case included Jeffrey A. Lamken of MoloLamken LLP, David Alberti, Kenneth J. Weatherwax, and Christopher Alan Suarez.

More recently, Steptoe LLP secured a $170 million jury verdict for Express Mobile, Inc. in a patent infringement case against GoDaddy.com, LLC. The Steptoe trial team in that matter included:

• Jay Nuttall (Lead Trial Counsel, Co-chair of Steptoe's Intellectual Property group)
  • Firm: Steptoe LLP (Chicago, IL)
  • Note: Lead trial counsel in the successful $170 million patent infringement case against GoDaddy.com and argued for Express Mobile at the Federal Circuit in Express Mobile, Inc. v. GoDaddy.com, LLC.
• John Abramic (Trial Counsel)
  • Firm: Steptoe LLP
  • Note: Member of the trial team that secured the $170 million verdict for Express Mobile against GoDaddy.
• Robert Kappers (Trial Counsel)
  • Firm: Steptoe LLP
  • Note: Member of the trial team that secured the $170 million verdict for Express Mobile against GoDaddy and represented Express Mobile as appellate counsel at the Federal Circuit.
• Kate Tellez (Trial Counsel)
  • Firm: Steptoe LLP
  • Note: Trusted trial lawyer known for efficiency and cross-examinations in high-stakes patent infringement matters; part of the team that won the $170 million verdict for Express Mobile.
• Christopher Suarez (Trial Counsel)
  • Firm: Steptoe LLP
  • Note: Member of Steptoe's Intellectual Property practice and co-head of its AI, Data, and Digital working group; part of the team that secured the $170 million verdict for Express Mobile.
• Candice Kwark (Trial Counsel)
  • Firm: Steptoe LLP
  • Note: Member of the trial team that secured the $170 million verdict for Express Mobile against GoDaddy and represented Express Mobile as appellate counsel at the Federal Circuit.

It is important to note that while U.S. Patent No. 9,471,287, the patent at issue in IPR2021-01456, was part of a "755 patent family" asserted in the Express Mobile v. GoDaddy district court case, the jury found non-infringement for that specific patent family in that litigation. The patent was also at issue in Shopify Inc. v. Express Mobile, Inc.. However, these engagements do not confirm their representation in the specific IPR2021-01456.