Unified Patents v. Voith Patent GmbH

Unified Patents has initiated an Inter Partes Review (IPR) against Voith Patent GmbH before the Patent Trial and Appeal Board (PTAB), challenging the validity of US Patent 9982388. Unified Patents is a member-based organization dedicated to deterring assertions of "poor quality patents" by Non-Practicing Entities (NPEs) in various technology sectors by filing IPRs. Voith Patent GmbH, conversely, is an operating company and part of the larger German technology group Voith GmbH, which specializes in mechanical engineering across markets such as energy, paper, raw materials, and transport & automotive. Voith Patent GmbH manages the patent portfolio for the Voith Group and has a history of actively enforcing its patent rights through infringement lawsuits.

The sole patent at issue is US Patent 9982388, titled "Shoe press roll for a paper machine." This patent generally describes a shoe press roll for paper manufacturing equipment, featuring a press roll shell with an outer jacket surrounding a shoe and an inner jacket arranged radially inward, together forming a channel for a heat transfer medium. While the traditional notion of an "accused product" doesn't directly apply in an IPR, Unified Patents' challenge aims to invalidate this patent, preventing its future assertion in the paper machine technology sector.

The case is currently pending before the PTAB, an administrative body within the U.S. Patent and Trademark Office. The PTAB provides a specialized forum for challenging patent validity, offering a faster and often more cost-effective alternative to district court litigation. Cases at the PTAB are decided by panels of three technically trained Administrative Patent Judges. The PTAB applies a lower evidentiary standard (preponderance of the evidence) for invalidity than district courts (clear and convincing evidence) and does not presume the patent to be valid. The fact that the IPR has been "instituted" means the PTAB has determined there is a reasonable likelihood that Unified Patents will prevail in demonstrating at least one challenged claim of US Patent 9982388 is unpatentable. This case is notable as it highlights Unified Patents' strategy of challenging patents that could pose a threat to its members within specific technology zones, even when the patent owner is an operating company with an active enforcement history like Voith. The outcome could have implications for patent owners in the industrial and papermaking machinery sectors.

The Inter Partes Review (IPR) case IPR2025-01367, filed by Unified Patents against Voith Patent GmbH, challenges U.S. Patent No. 9,982,388. The case is currently in the "Trial Instituted" phase before the Patent Trial and Appeal Board (PTAB).

Here's a chronological summary of the key legal developments:

Filing & Initial Pleadings:

• 2025-07-30: Unified Patents filed its Petition for Inter Partes Review (IPR) against U.S. Patent No. 9,982,388.
• 2025-10-14: Voith Patent GmbH, the Patent Owner, filed a Patent Owner Discretionary Denial Request (PO DD Request). This brief argued for the denial of institution based on discretionary factors, a procedure that precedes the PTAB's review of the merits of the petition.
• 2025-11-12: Unified Patents, the Petitioner, filed its Opposition to the Discretionary Denial Brief (PE DD Opposition), responding to the Patent Owner's arguments for discretionary denial.

Pre-Trial Motions of Substance:

• 2025-12-11: The Director issued a Discretionary Denial Decision (Director DD Decision). Under the PTAB's bifurcated process for IPRs, this decision determines whether to deny the petition outright on discretionary grounds or to refer it for a full merit-based review. Given the subsequent institution of trial, the Director's decision in this instance likely referred the petition for a merits review.
• 2026-01-27: The PTAB issued its Institution Decision, granting institution of the IPR trial. This signifies that Unified Patents demonstrated a reasonable likelihood of prevailing on at least one challenged claim of U.S. Patent No. 9,982,388.

Claim Construction:

• As an IPR proceeding, there has not been a separate "Markman" hearing. Claim construction in IPRs is addressed by the PTAB as part of its analysis during the institution decision and will be further developed during the trial phase leading to a Final Written Decision.

Discovery Milestones:

• No specific significant discovery milestones have been publicly reported for this IPR. Discovery in IPR proceedings is generally more limited than in district court litigation.

Trial Events, Verdict, and Post-Trial Motions:

• The IPR is currently in the "Trial Instituted" phase. As of the current date, no trial events have occurred, and therefore no verdict or post-trial motions have been filed.

Settlement, Dismissal, Judgment, or Appeal:

• The case remains active and is currently in the "Pending - Instituted" posture. No settlement, dismissal, final judgment, or appeal has occurred.

Parallel PTAB IPR/PGR Proceedings and Their Effect:

• No other parallel IPR or PGR proceedings specifically challenging U.S. Patent No. 9,982,388 have been identified in the available information. Similarly, no parallel district court patent infringement litigation asserting U.S. Patent No. 9,982,388 has been found.

Unified Patents, the petitioner in IPR2025-01367, typically utilizes a combination of in-house legal expertise and external counsel for its inter partes review (IPR) proceedings. While a specific Power of Attorney or petition filing directly identifying counsel for IPR2025-01367 was not immediately available through direct web searches, patterns from other Unified Patents IPRs suggest the likely counsel.

Based on filings in other IPRs (e.g., IPR2021-01260), the following individuals and firms are strong candidates for representing Unified Patents, LLC:

• Jonathan Stroud

  • Role: Chief Legal Officer (formerly General Counsel, Chief IP Counsel)
  • Firm: Unified Patents, LLC (Washington, D.C. office)
  • Experience Note: Oversees Unified Patents' legal and corporate operations, including patent reviews, appeals, licensing, and district court work. He has significant experience as a patent attorney at Finnegan, Henderson, Farabow, Garrett & Dunner LLP and as a patent examiner at the USPTO. He also teaches post-grant patent office proceedings as an Adjunct Professor of Law at American University Washington College of Law.

• Roshan Mansinghani

  • Role: Head of Operations (formerly Legal Head-NPE)
  • Firm: Unified Patents, LLC (Dallas, TX office)
  • Experience Note: Leads Unified Patents' efforts to deter the assertion of low-quality patents by non-practicing entities, overseeing numerous USPTO invalidation proceedings annually. He previously practiced patent litigation at Baker Botts L.L.P.

• Jordan M. Rossen

  • Role: Senior Patent Counsel
  • Firm: Unified Patents, LLC (Washington, D.C. office)
  • Experience Note: An experienced intellectual property litigator who has represented clients before the Patent Trial and Appeal Board (PTAB), International Trade Commission (ITC), district courts, and the Federal Circuit across various technology fields.

• Michelle Aspen

  • Role: Senior Patent Counsel
  • Firm: Unified Patents, LLC (presumably Washington, D.C., though she also has a Shook, Hardy & Bacon affiliation in Denver, possibly prior to Unified)
  • Experience Note: An intellectual property litigator with a high success rate in post-allowance proceedings before the USPTO in various technology areas, including telecommunications and software. She has also argued at the Federal Circuit.

Unified Patents also frequently engages outside counsel from firms specializing in PTAB litigation. Based on previous filings, Erise IP, P.A. has represented Unified Patents in IPRs. Therefore, the following attorneys from Erise IP, P.A. could be involved:

• Jason R. Mudd

  • Role: Lead Counsel (External)
  • Firm: Erise IP, P.A. (Overland Park, Kansas or Greenwood Village, Colorado office)
  • Experience Note: Regularly represents petitioners in IPR proceedings. (Specific experience beyond this is not detailed in the provided search results).

• Eric A. Buresh

  • Role: Back-Up Counsel (External)
  • Firm: Erise IP, P.A. (Overland Park, Kansas office)
  • Experience Note: Regularly represents petitioners in IPR proceedings. (Specific experience beyond this is not detailed in the provided search results).

• Kelly R. Hughes

  • Role: Back-Up Counsel (External)
  • Firm: Erise IP, P.A. (Overland Park, Kansas office)
  • Experience Note: Regularly represents petitioners in IPR proceedings. (Specific experience beyond this is not detailed in the provided search results).

It is important to note that the exact counsel for IPR2025-01367 would be confirmed by reviewing the official filings, such as the Petition for Inter Partes Review or a Power of Attorney specific to that case. The information provided above is based on the general practices and identified counsel for Unified Patents in other, similar IPR proceedings.

It appears there is a discrepancy between the provided case metadata and the initial web search results. The prompt states that the plaintiff for IPR2025-01367 is Unified Patents, while web search results indicate that IPR2025-01367 involves Albany International Corp. as the petitioner against Voith Patent GmbH. As per the operating rules, the case metadata provided in the prompt is considered authoritative. Therefore, I will proceed with the understanding that Unified Patents is the plaintiff in IPR2025-01367.

However, the current search results do not specifically identify the counsel of record for Voith Patent GmbH in IPR2025-01367 where Unified Patents is the petitioner. The information found regarding counsel for Voith Patent GmbH (Brian W. Oaks, Charles Larsen, and Ashley T. Brzezinski of McDermott Will & Schulte LLP, and later Scott T. Weingaertner, John Paul Padro, and Theodoros Konstantakopoulos) pertains to a different IPR case, IPR2025-01116, where Albany International Corp. is the petitioner.

Given that filings for IPR2025-01367 with Unified Patents as the petitioner are not yet available or identified in the search results, the counsel of record representing Voith Patent GmbH in this specific case cannot be definitively identified at this time. Filings may be sealed, or the Notice of Appearance for this particular IPR may not be publicly accessible through the conducted searches.

To accurately identify the counsel, a direct review of the official PTAB docket for IPR2025-01367, with the correct party names as per the prompt, would be required.Counsel of Record for Voith Patent GmbH in IPR2025-01367

As of the current date, the counsel of record representing Voith Patent GmbH in IPR2025-01367, where Unified Patents is the petitioner, cannot be definitively identified through public web searches.

While search results did identify counsel for Voith Patent GmbH in a different Inter Partes Review, IPR2025-01116 (Albany International Corp. v. Voith Patent GmbH), this information does not apply to the specific case IPR2025-01367 involving Unified Patents. The initial web search results for IPR2025-01367 consistently name Albany International Corp. as the petitioner, contradicting the provided case metadata that specifies Unified Patents as the plaintiff. Adhering to the prompt's instruction to treat the provided metadata as authoritative, the specific counsel for Voith Patent GmbH in an IPR initiated by Unified Patents for IPR2025-01367 is not publicly available in the search results.

It is possible that the relevant filings, such as a Notice of Appearance, are not yet publicly accessible or are sealed.