Unified Patents v. Damaka Inc

Unified Patents initiated an inter partes review (IPR) against Damaka Inc. concerning U.S. Patent No. 11,576,046 before the Patent Trial and Appeal Board (PTAB). Unified Patents is a member-based organization dedicated to deterring what it considers "frivolous patent litigation" and reducing assertions by Non-Practicing Entities (NPEs) in various technology sectors by challenging the validity of such patents. Damaka Inc., the patent owner, describes itself as a technology leader and innovator in mobile unified communication and collaboration (UCC) solutions, offering products like Collaboration SDKs. Damaka has an extensive patent portfolio with over 100 patents and has actively asserted its patents in district court, including filing infringement lawsuits against major operating companies like Cisco Systems and The Cigna Group, alleging infringement by products such as Cisco's Web and Mobile A/V Applications and Cigna's MDLIVE application. The challenged patent, U.S. Patent No. 11,576,046, generally describes an improved system and method for enhancing functionality in software applications, specifically through a "superblock application" accessing functions from an integrated "function block" via an API without context switching.

This case is before the Patent Trial and Appeal Board (PTAB) as IPR2026-00209. The PTAB is an administrative body within the U.S. Patent and Trademark Office (USPTO) that offers an alternative to district court litigation for challenging patent validity, primarily based on prior art. While the IPR was filed by Unified Patents, the underlying context includes Damaka's patent enforcement activities in federal courts, where Damaka has accused various communication and audio/video software applications and SDKs of infringement. On May 6, 2026, the PTAB, under the Director of the USPTO, John A. Squires, issued a decision denying institution of the IPR. This means the Board found that Unified Patents did not demonstrate a reasonable likelihood that at least one challenged claim of the '046 patent was unpatentable, thus declining to initiate a full review of the patent.

The case is notable for several reasons. It exemplifies Unified Patents' strategy of proactively challenging patents, particularly those asserted by entities perceived as NPEs, to mitigate patent litigation risk for its members. Damaka's extensive patenting and its track record of filing infringement suits against prominent tech companies suggest a robust patent assertion strategy, which likely prompted the IPR filing. The denial of institution by the PTAB is a significant development, as IPRs are often considered a potent tool for challengers due to a lower burden of proof compared to district courts. This outcome indicates that the PTAB was not convinced by Unified Patents' arguments and prior art submissions for the '046 patent, allowing Damaka to maintain the patent's validity against this particular challenge.

The IPR (IPR2026-00209) filed by Unified Patents against Damaka Inc. for U.S. Patent No. 11,576,046 was denied institution by the Patent Trial and Appeal Board (PTAB) on May 6, 2026.

In parallel, Damaka Inc. has been actively involved in patent infringement litigation in the Eastern District of Texas, asserting U.S. Patent No. 11,576,046 and other related patents against various companies. These district court cases likely influenced the PTAB's decision to deny institution of the IPR.

Here's a chronological overview of key legal developments in related litigation:

• 2025-05-29 & 2025-05-30: Patent Infringement Complaints Filed: Damaka Inc. filed separate patent infringement lawsuits in the Eastern District of Texas against Cisco Systems, Inc. (Case No. 2:25-cv-00593) and The Cigna Group (Case No. 2:25-cv-00594).

  • In the complaint against Cisco, Damaka asserted six patents, including U.S. Patent No. 11,576,046, alleging infringement by Cisco Web and Mobile A/V Applications and Cisco's A/V SDKs.
  • Against The Cigna Group, five of those six patents, including U.S. Patent No. 11,576,046, were asserted, with the accused product being the MDLIVE application.

• 2025-10-20: Director Review of IPR Institution Decisions Implemented: USPTO Director John Squires assumed responsibility for issuing institution decisions for AIA trials, indicating that summary notices would be provided for routine outcomes.

• 2025-10-27: Markman Hearing Set in Damaka v. Cisco: A Markman (claim construction) hearing was scheduled for October 27, 2025, in the Damaka v. Cisco Systems Inc. case (2:25-cv-00593) before Magistrate Judge Roy S. Payne.

• 2025-12-05: Docket Control Order and Discovery Orders in Damaka v. Cisco: Magistrate Judge Roy S. Payne signed a Docket Control Order, a Protective Order, and a Discovery Order in the Damaka v. Cisco Systems Inc. case, indicating active progression of the litigation.

• 2026-01-13: Unified Patents Files IPRs against Damaka: Unified Patents filed IPR2026-00209 challenging U.S. Patent No. 11,576,046, along with other IPRs (e.g., IPR2026-00206, IPR2026-00207, IPR2026-00208, IPR2026-00210, IPR2026-00211) against other Damaka patents, some of which were also asserted against Cisco.

• 2026-05-06: IPR2026-00209 Denied Institution: The PTAB, through a Notice of Decisions on Institution issued by Under Secretary of Commerce for Intellectual Property and Director of the USPTO, John A. Squires, denied institution of IPR2026-00209. This denial was based on a review of discretionary and non-merits considerations. The decision noted that Damaka had no U.S. manufacturing operations and that its only product was computer code, relying on outsourced work from India, which could have been a factor in the discretionary denial, particularly if the PTAB considered the public interest in domestic manufacturing. Additionally, Unified Patents argued that the examiner's prosecution errors, including allowing the patent to issue without a single prior art rejection, weighed in favor of institution.

• Ongoing District Court Litigation: As of December 5, 2025, the Damaka v. Cisco case has a pretrial conference set for March 22, 2027, and a jury selection set for April 19, 2027. The denial of institution in the IPR means that Damaka can continue to assert U.S. Patent No. 11,576,046 in the ongoing district court litigation without the immediate threat of its claims being invalidated by the PTAB. This highlights the impact of discretionary denials at the PTAB, especially in cases where parallel district court litigation is underway, as the PTAB often considers the proximity of the court's trial date to its own projected deadline for a final written decision (known as the Fintiv factors).

Unified Patents, as a non-practicing entity deterrence organization, often utilizes a combination of in-house counsel and external law firms for its inter partes review (IPR) proceedings. While the provided search results do not explicitly name the specific counsel of record for IPR2026-00209, based on Unified Patents' common practices and named in-house legal team, the following attorneys are likely to have been involved in the preparation and filing of the IPR petition:

• Roshan Mansinghani

  • Role: In-house counsel.
  • Firm: Unified Patents Inc., Washington, D.C.
  • Relevant experience: Mansinghani is listed as part of the Unified Patents team and has previously appeared as in-house counsel for Unified Patents in IPR petitions, indicating significant experience in post-grant patent challenges.

• Jonathan Stroud

  • Role: In-house counsel.
  • Firm: Unified Patents Inc., Washington, D.C.
  • Relevant experience: Stroud is also a member of the Unified Patents team and has been listed as in-house counsel on previous IPR petitions filed by Unified Patents, demonstrating experience in challenging patent validity before the PTAB.

It is important to note that the IPR (IPR2026-00209) against Damaka Inc. for patent 11576046 was not instituted, with an "Institution Denied" decision issued on May 6, 2026. This means the case did not proceed beyond the petition stage, and thus, extensive litigation counsel may not have formally appeared or been active beyond the initial filing. Unified Patents frequently manages patent office proceedings internally, including drafting and filing IPR petitions. While Unified Patents also works with outside counsel on various matters, no specific outside counsel firm has been identified in the search results as representing Unified Patents for this particular IPR.

In IPR2026-00209, the counsel of record representing defendant Damaka Inc. is:

• Name: Jacob Ostling
  • Role: Lead Counsel
  • Firm: Fabricant Rubino Lambrianakos LLP
  • Office Location: New York
  • Relevant Patent Litigation Experience: Mr. Ostling has extensive experience in patent infringement actions in district courts, including the Eastern and Western Districts of Texas, New Jersey, Delaware, and California, as well as in the ITC. He has represented both patent owners and petitioners in over 90 inter partes reviews (IPRs) and ex parte reexaminations before the PTAB and USPTO. His experience spans various technologies such as smartphones, mobile payments, acoustic signal processing, semiconductors, cellular networks, secure computing, electronic displays, and lighting. He is noted for leading discovery, taking and defending depositions, and arguing Markman hearings.