Unified Patents LLC v. Monticello Enterprises LLC

This case involves an ex parte reexamination proceeding initiated by Unified Patents LLC against US Patent 11468497, owned by Monticello Enterprises LLC, before the Central Reexamination Unit (CRU) of the United States Patent and Trademark Office (USPTO). Unified Patents LLC is a prominent member-based organization dedicated to deterring the assertion of low-quality patents by Non-Practicing Entities (NPEs) or Patent Assertion Entities (PAEs) through various post-grant challenges. Conversely, Monticello Enterprises LLC is identified as a Patent Assertion Entity (PAE) that asserts intellectual property rights primarily in browser-based and mobile payment technologies. The patent at issue, US Patent 11468497, describes a system and method for facilitating payments, specifically by establishing a wireless link between a mobile device and a merchant device to transmit user payment data based on user inputs.

The procedural posture places this dispute within the USPTO's Central Reexamination Unit. Unified Patents filed an ex parte reexamination request on May 3, 2024, challenging the validity of the '497 patent. On June 14, 2024, the CRU granted the request, determining that substantial new questions of patentability existed for the challenged claims. This venue is significant because ex parte reexamination offers a strategic and cost-effective alternative for challenging patent validity compared to district court litigation or inter partes review (IPR). It allows a third party to submit prior art to the USPTO for re-evaluation of a granted patent, with the proceeding primarily involving only the patent owner and the USPTO examiner after the initial request. Such proceedings can lead to claims being canceled or narrowed, potentially impacting ongoing or future infringement litigation by reducing damages exposure or prompting case stays.

This case is notable for several reasons, particularly regarding current patent assertion trends and challenge strategies. Monticello Enterprises LLC has a history of asserting its payment technology patents against major operating companies, including Starbucks, Petco, and Macy's, characterizing it as an active NPE in the electronic payments sector. Unified Patents' challenge aligns with its mission to proactively invalidate patents asserted by NPEs, thereby aiming to reduce frivolous litigation and nuisance settlements in critical technology zones. The use of ex parte reexamination by Unified Patents reflects a growing trend, especially since 2025, where challengers increasingly opt for this pathway due to changes in USPTO policy that have made IPRs more difficult to institute, offering a cost-effective and sometimes anonymous option to contest patent validity. Indeed, a subsequent development revealed that on November 7, 2024, the CRU issued a final rejection of all challenged claims of US Patent 11468497, underscoring the effectiveness of Unified Patents' strategy in this instance.

Unified Patents LLC initiated an ex parte reexamination proceeding against Monticello Enterprises LLC concerning US Patent 11468497, leading to the invalidation of the challenged claims. This process occurred within the Central Reexamination Unit (CRU) of the USPTO, rather than through a traditional patent infringement litigation in a district court. Consequently, many typical litigation stages such as discovery, claim construction (Markman), trial events, or post-trial motions did not occur.

The key legal developments and outcome are as follows:

• Reexamination Request Filed (2024-04-26): Unified Patents LLC filed an ex parte reexamination request against US Patent 11468497. The patent, owned by Monticello Enterprises LLC, relates to transmitting user payment data to a merchant device and had been asserted against companies like Starbucks, Petco, and Macy's in district court litigations.
• Reexamination Granted (2024-06-14): The Central Reexamination Unit (CRU) of the USPTO granted the request, determining that substantial new questions of patentability had been raised regarding the challenged claims of US Patent 11468497.
• Final Rejection of Claims (2024-11-07): The CRU subsequently issued a final rejection of all challenged claims of US Patent 11468497.
• Outcome: Claims Found Invalid (2024-11-07): As a result of the final rejection, the payment patent owned by Monticello Enterprises was found invalid.

There were no parallel PTAB IPR/PGR proceedings specifically found for US Patent 11468497 during this period.

Unified Patents LLC was represented by its in-house counsel in the ex parte reexamination of US Patent 11468497.

The following attorneys served as counsel for Unified Patents LLC:

• Kelly Hughes

  • Role: In-house counsel
  • Firm: Unified Patents LLC
  • Location: Not specified, but Unified Patents is headquartered in San Jose, California.
  • Relevant Experience: Kelly Hughes frequently represents Unified Patents in ex parte reexamination proceedings.

• Jessica L.A. Marks

  • Role: In-house counsel
  • Firm: Unified Patents LLC
  • Location: Not specified, but Unified Patents is headquartered in San Jose, California.
  • Relevant Experience: Jessica L.A. Marks is regularly involved in Unified Patents' reexamination and PTAB challenges.

I'll research Monticello Enterprises' counsel of record in this reexamination, plus its litigation counsel history for context.

Bottom line up front: there is no "defendant" to identify

Before naming anyone, a framing correction is needed, because it materially affects who the "counsel of record" are.

Case No. 90019491 is not a patent infringement action — it is an ex parte reexamination before the USPTO's Central Reexamination Unit. In that forum there are no plaintiffs or defendants, only a third-party requester (Unified Patents LLC) and a patent owner (Monticello Enterprises LLC). The metadata's "Defendant(s): Monticello Enterprises LLC" label is a generic field mapping, not a procedural reality. Accordingly:

• There is no answer, no Rule 12 motion, no Markman, and no defendant's counsel of record in the conventional sense.
• The party whose representation matters on the "defense" side of this caption is Monticello as patent owner, and the relevant counsel are those who signed its papers in Reexam Control No. 90/019,491 — or, if Monticello did not actively participate, the prosecution counsel of record on the '497 patent.

I was unable to retrieve the signature block or power-of-attorney papers from the 90/019,491 file in the searches available (the Unified Patents portal link at portal.unifiedpatents.com/exparte/90019491 gates the request documents, and no CRU paper for this control number surfaced with an attorney signature). What follows distinguishes verified from unverified.

Monticello Enterprises LLC — identified counsel

Status of reexam-specific representation (unverified): I found no public source naming a registered practitioner who signed Monticello's response or waived/declined participation in 90/019,491. Nor did I find any PTAB counsel of record for Monticello on the '497 patent. Given that the CRU entered a final rejection on November 7, 2024 — a final action that normally follows at least one patent-owner response or amendment — some practitioner of record likely exists, but I will not guess at a name. The authoritative sources are the Patent Center document viewer for Control No. 90/019,491 (look for the Notice of Acceptance of Power of Attorney, any § 1.530 response, and the "Correspondence Address" block), and the face of the eventual reexamination certificate.

Defense-side counsel in the underlying litigations (often confused with Monticello's team)

Because the '497 patent was asserted against retailers, several firms appear in the same docket cluster — but they represent the accused infringers, not Monticello. Worth listing so they are not misattributed:

• The Webb Law Firm
• Baker & Hostetler LLP — e.g., Derek M. Freitas (Cincinnati) appears in connection with the Petco action, No. 6:23-cv-00761
• The Dacus Firm
• Ballard Spahr LLP

(Source: Expert Institute case summary for Nos. 6:23-cv-00753, -00761, -00763, W.D. Tex., Judge Xavier Rodriguez; Law360 attorney page for Derek M. Freitas.)

Discrepancies to flag

1. Filing date. The case metadata here says the request was filed 2024-05-03. Unified Patents' own announcement states the request was filed April 26, 2024, and that the CRU granted it "six weeks later" on June 14, 2024. The previously generated section used 2024-04-26. I'd treat April 26, 2024 as the operative filing date and the metadata's May 3 date as either a docketing/entry date or an error — worth confirming against the reexam file wrapper.
2. "All challenged claims" rejected. Unified's November 20, 2024 post says the CRU "entered a final rejection of all challenged claims." A PTOL-466 form that surfaced in my search showing claims confirmed alongside rejections belongs to an unrelated proceeding (Control No. 90/012,430, Patent 8,031,064) and should not be imported into this case.
3. "Defendant" framing / later appeals. Search results indicate Federal Circuit appeals captioned Monticello Enterprises LLC v. Starbucks Corp. (No. 26-1717) and v. Macy's, Inc. (No. 26-1694), from W.D. Tex. 6:23-cv-00763, with filing dates in April 2026. These come from third-party aggregator sites of varying reliability; I flag them as unconfirmed and note they are appeals from the infringement actions, not from the reexamination.

Caveats and recommended verification

• The reexam-related attorney identifications above are inferences from the parallel district court representation, not documents from the CRU file. Monticello may well have used different (e.g., prosecution-only) counsel in the reexam, and it may have elected not to respond at all.
• The UniCourt plaintiff-attorney listing is aggregated data and may be stale or reflect only initial filings.
• To convert any of this into a verified counsel-of-record finding: pull (a) the Patent Center "Address & Attorney" tab for Reexam Control No. 90/019,491, (b) every paper in that file wrapper signed under 37 C.F.R. § 1.33(b), and (c) the issued ex parte reexamination certificate for Patent 11,468,497, which typically recites the prosecution/reexam correspondence address.