In Rare Final Written Decision for Anti Troll Group Lack of Expert Declaration Dooms Patent

Written by Mark E. Davis and Ben J. Everton

Petitioner Unified Patents, LLC filed an IPR petition challenging 29 claims of US Pat. No. 8,640,183 owned by Convergent Media Solutions, LLC.  Unified’s numerous inter partes review (“IPR”) petitions rarely reach a final written decision, but here the Board issued such a decision and invalidated all of the remaining challenged claims.  Unified Patents, LLC. v. Convergent Media Solutions, LLC, IPR2016-00047, Paper 23 (P.T.A.B. March 29, 2017).

Unified is a California-based company founded in 2013.  Unified markets itself as an “anti–troll.”  In return for yearly subscriptions from companies conducting business in specific technology areas or “zones,” Unified provides a deterrence service against non-practicing entities (NPEs) operating in these zones.  Currently, Unified claims to protect seven zones, including content delivery, cloud storage, electronic payment, internet of things, e-retail, automotive, and mobile.  Unified provides additional services such as analytics and monitoring of patent transactions involving NPEs.    Notably, one of Unified’s stated goals is to “never pay money to settle cases with NPEs.”

To date, Unified has filed 64 IPR petitions, many of which are still pending or settled before a final decision.  Unified typically challenges software and electrical patents, which have an aggregate institution rate of 71% (1931/2724).  Unified’s institution rate is much lower at 49% (19/39).  Even more notable is the fact that only 8.5% (4/47) of Unified’s completed, no longer pending, IPRs have reached a final written decision. This is much lower than the aggregate rate of 34% (1474/4345) for all patent IPRs.

The patent owner, Convergent, is a media and technology innovation company based in Texas.  Convergent has asserted its patents against multiple companies, including AT&T Inc., Hulu, Inc., Netflix, Inc., and Roku, Inc.

Convergent’s main response to Unified’s obviousness challenge in the IPR was that the prior art references presented in the petition lacked a “second user interface” claim limitation.  The Board rejected these arguments, stating that Convergent did not submit any expert testimony to explain how one of ordinary skill in the art would have understood the references at issue.  According to the Board, Convergent’s arguments were “little more than attorney argument and [of] marginal probative value.”  Moreover, the Board was unpersuaded because Convergent alleged deficiencies in each individual reference and did not address the asserted combination.

This decision illustrates the importance of providing expert testimony, not only to support reasons to combine prior art references, but also to explain how one of ordinary skill in the art would have understood the disclosure of the prior art and whether it discloses the claim limitations.