9-2 Unified's Amicus Brief

Case: 21-190 Document: 9-2 Page: 1 Filed: 09/28/2021
No. 2021-190
Miscellaneous Docket
UNITED STATES COURT OF APPEALS

FOR THE FEDERAL CIRCUIT
In re: NETFLIX, INC.,

Petitioner
On Petition for a Writ of Mandamus to the

United States District Court for the
Eastern District of Texas
No. 2:21-cv-00080-JRG-RSP
United States District Judge Rodney Gilstrap
BRIEF OF UNIFIED PATENTS, LLC

AS AMICUS CURIAE IN SUPPORT OF
NETFLIX, INC.’s PETITION FOR MANDAMUS
Jonathan Stroud William G. Jenks

Unified Patents, LLC Principal Counsel
P.O. Box 53345 JENKS IP LAW PLLC
Washington, DC 20009 1629 K Street, NW
(202) 805-8931 Suite 300
Washington, DC 20006
(202) 412-7964
Counsel for Amicus Curiae
September 28, 2021

FORM 9. Certificate of Interest Form 9 (p. 1)

July 2020
UNITED STATES COURT OF APPEALS

FOR THE FEDERAL CIRCUIT
CERTIFICATE OF INTEREST
Case Number 2021-190

Short Case Caption In re: Netflix, Inc.
Filing Party/Entity Unified Patents, LLC
Instructions: Complete each section of the form. In answering items 2 and 3, be

specific as to which represented entities the answers apply; lack of specificity may
result in non-compliance. Please enter only one item per box; attach
additional pages as needed and check the relevant box. Counsel must
immediately file an amended Certificate of Interest if information changes. Fed.
Cir. R. 47.4(b).
I certify the following information and any attached sheets are accurate and
complete to the best of my knowledge.
09/28/2021
Date: _________________ Signature: /s/ William G. Jenks
Name: William G. Jenks


July 2020
1. Represented 2. Real Party in 3. Parent Corporations

Entities. Interest. and Stockholders.
Fed. Cir. R. 47.4(a)(1). Fed. Cir. R. 47.4(a)(2). Fed. Cir. R. 47.4(a)(3).
Provide the full names of Provide the full names of Provide the full names of
all entities represented all real parties in interest all parent corporations
by undersigned counsel in for the entities. Do not for the entities and all
this case. list the real parties if publicly held companies
they are the same as the that own 10% or more
entities. stock in the entities.
✔ None/Not Applicable
☐ ☐ None/Not Applicable
Unified Patents, LLC Parents:
UP HOLDCO INC.
Unified Patents Holdings, LLC
Unified Patents Acquisition, LLC
Unified Patents Management, LLC
No such public companies
Additional pages attached


July 2020
4. Legal Representatives. List all law firms, partners, and associates that (a)
appeared for the entities in the originating court or agency or (b) are expected to
appear in this court for the entities. Do not include those who have already
entered an appearance in this court. Fed. Cir. R. 47.4(a)(4).
✔
None/Not Applicable Additional pages attached
5. Related Cases. Provide the case titles and numbers of any case known to be
pending in this court or any other court or agency that will directly affect or be
directly affected by this court’s decision in the pending appeal. Do not include the
originating case number(s) for this case. Fed. Cir. R. 47.4(a)(5). See also Fed. Cir.
R. 47.5(b).
None/Not Applicable Additional pages attached
Netflix, Inc. v. CA, Inc., Case No. 3:21-cv-03649
(N.D. Cal.)
6. Organizational Victims and Bankruptcy Cases. Provide any information

required under Fed. R. App. P. 26.1(b) (organizational victims in criminal cases)
and 26.1(c) (bankruptcy case debtors and trustees). Fed. Cir. R. 47.4(a)(6).
✔ None/Not Applicable Additional pages attached
Table of Contents
INTERESTS OF AMICUS CURIAE ......................................................................... 1
ARGUMENT .............................................................................................................3
I. This Court Should Grant the Writ to Supervise the Eastern District .............. 3
II. The Eastern District Courts are Seemingly in a Hurry Except When
Deciding Venue Motions ................................................................................. 4
A. Venue Motions Are a Top Priority in the Fifth Circuit......................... 5
B. Venue Motions Are Not a Top Priority in the Eastern District ............ 7
III. The Court Should Grant the Petition to Protect Access to Inter Partes
Review .............................................................................................................9
A. The PTAB Regularly Declines Meritorious Petitions Based on
the Fintiv Factors ...................................................................................9
B. Courts That Pocket Venue and Stay Motions Can Cause the
PTAB to Deny Meritorious Petitions ..................................................13
CONCLUSION ........................................................................................................17
ii
Table of Authorities
Cases
Apple Inc. v. Fintiv, Inc., IPR 2020-00019, Paper 11 (PTAB Mar. 20, 2020)
(precedential, designated May 5, 2020) (“Fintiv I”) ................... 10, 11, 12, 14, 16
Apple Inc. v. Fintiv, Inc., IPR 2020-00019, Paper 15 (PTAB May 13, 2020)
(informative, designated Jul. 13, 2020) (“Fintiv II”) ..........................................15
Gulfstream Aerospace Corp. v. Mayacamas Corp., 485 U.S. 271 (1988) ................4
In re Bose Corp., 848 F. App’x 426 (Fed. Cir. 2021) ...............................................8

In re EMC Corp., 501 F. App’x 973 (Fed. Cir. 2013) ...........................................5, 7
In re Freelancer Ltd., 850 F. App’x 791 (Fed. Cir. 2021) ........................................7
In re Genentech, Inc., 566 F.3d 1338 (Fed. Cir. 2009) ...........................................15

In re Google Inc., No. 2015-138,
2015 WL 5294800 (Fed. Cir. Jul. 16, 2015) ............................................... 6, 7, 16
In re Horseshoe Ent., 337 F.3d 429 (5th Cir. 2003) ..................................................5
In re Hulu, LLC, No. 2021-142, 2021 WL 3278194 (Fed. Cir. Aug. 2, 2021) .........8
In re Juniper Networks, Inc., No. 2021-160,
2021 WL 4343309 (Fed. Cir. Sept. 24, 2021) .................................................5, 15
In re Morgan Stanley, 417 F. App’x 947 (Fed. Cir. 2011) ........................................5
In re Samsung Elecs. Co., Ltd., 2 F.4th 1371 (Fed. Cir. 2021) .................................8
In re SK hynix Inc., 835 F. App’x 600 (Fed. Cir. 2021) ............................................7
In re TracFone Wireless, Inc., 848 F. App’x 899 (Fed. Cir. 2021) .....................7, 16
In re TracFone Wireless, Inc., 852 F. App’x 537 (Fed. Cir. 2021) ...........................8
In re TS Tech USA Corp., 551 F.3d 1315 (Fed. Cir. 2008) .......................................5
In re Volkswagen of Am., Inc., 545 F.3d 304 (5th Cir. 2008) (en banc)....................4
iii
n re Nintendo Co., Ltd., 544 F. App’x 934 (Fed. Cir. 2013) .................................6, 7
NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8 (PTAB Sept.
12, 2018) (precedential, designated May 7, 2019) ........................... 10, 11, 12, 14
Sand Revolution II, LLC v. Continental Intermodal – Trucking LLC,
IPR 2019-01393, Paper 24 (PTAB June 16, 2020) (informative, designated Jul.
13, 2020) ..............................................................................................................15
Unified Patents, LLC. v. Uniloc USA, Inc. et al., IPR2018-00199 (PTAB May 31,
2019).......................................................................................................................1
United States v. Sanchez-Gomez, 138 S. Ct. 1532 (2018) .........................................4
Statutes
28 U.S.C. § 1404(a) ...................................................................................................5

35 U.S.C. § 314(a) .................................................................................. 9, 11, 12, 13
Other Authorities
H. Rep. No. 112–98, Part I, at 48 (2011) ...................................................................9
Jonathan Stroud, Linda Thayer & Jeffrey Totten, Stay Awhile: The Evolving Law
of District Court Stays in Light of Inter Partes Review, Post-Grant Review, and
Covered Business Method Post-Grant Review, 11 Buff. Intell. Prop. L.J. 226
(2015) .....................................................................................................................2
Jonathan Stroud, NFC Technology LLC v. HTC America, Inc.: Judge Bryson’s
Sitting-By-Designation Guide to Securing Stays in Light of Inter Partes Reviews,
65 American Univ. L. Rev. 1075 (2016) ...............................................................2
Jonathan Stroud, Staying Litigation for Covered Business Method Post-Grant

Reviews, 17 Colum. Sci. & Tech. L. Rev. 120 (2015)...........................................2
Jonathan Stroud, The Law of District Court Stays for USPTO Proceedings,
Landslide, September/October 2021 ......................................................................2
Pauline Pelletier, Deborah Sterling & Anna Phillips, How West Texas Patent Trial
Speed Affects PTAB Denials, IP Law360 (Feb. 16, 2021)...................................16
Scott Graham, How a Former Law Clerk Earned $700K This Year as a Court-
Appointed Technical Advisor, The Recorder (Aug. 26, 2021) ..............................6
iv
Unified Patents, 2021 Patent Dispute Report: First Half in Review (Jul. 1, 2021)
available at https://www.unifiedpatents.com/insights/q2-2021-patent-dispute-
report (“Unified’s 2021 Patent Report”) ..................................................... 2, 3, 13
Unified Patents, PTAB Uses Discretion, Fintiv to Deny Petitions 38% in 2021 to
Date (Sept. 22, 2021) available at
https://www.unifiedpatents.com/insights/2021/9/22/an-early-look-at-the-ptabs-
use-of-fintiv-and-discretion-discretionary-denials-through-september-2021
(“Unified’s 2021 PTAB Discretion Report”) ......................................................11
Rules
37 C.F.R. § 42.4(a).....................................................................................................9
Fed. R. App. P. 29 ......................................................................................................1
v
INTERESTS OF AMICUS CURIAE 1
Unified Patents, LLC is a membership organization dedicated to deterring
abusive non-practicing entities, or NPEs, from extracting nuisance settlements
from operating companies based on patents that are likely invalid. Unified’s
3,000-plus members are Fortune 500 companies, start-ups, automakers, industry
groups, cable companies, banks, credit card companies, technology companies,
open source software developers, manufacturers, and others dedicated to reducing
the drain on the U.S. economy of now-routine baseless litigations asserting
infringement of patents of dubious validity. Unified also engages in public policy
work, data services, consulting, and an array of independent services.
Unified files post-issuance petitions challenging NPE patents it believes are
unpatentable or invalid. Thus, Unified is a deterrence entity that seeks to
discourage the assertion of poor-quality patents. Unified acts and litigates
independently from its members. See, e.g., Unified Patents, LLC. v. Uniloc USA,
Inc. et al., IPR2018-00199 Paper No. 33, 10 (PTABMay 31, 2019) (collecting
1
Petitioner and Respondents have consented to the filing of this brief. See Motion
for Leave (accompanying); Fed. R. App. P. 29 (a)(2). No party’s counsel authored
this brief in whole or in part; neither party nor party counsel contributed money
intended to fund preparing or submitting the brief; no person—other than the
amicus curiae, their members, or their counsel—contributed money intended to
fund preparing or submitting the brief. See Fed. R. App. P. 29 (a)(4)(E).
PTAB decisions). In 2020, Unified was the fourth most frequent petitioner before
the PTAB, and it was by far the leading third-party filer.
Unified studies the ever-evolving business models, financial backings, and
practices of NPEs. Unified monitors ownership data, litigation financing,
secondary-market patent sales, demand letters, post-grant procedures, and patent
litigation to track NPE activity. See, e.g., Unified Patents, 2021 Patent Dispute
Report: First Half in Review (Jul. 1, 2021), available at
https://www.unifiedpatents.com/insights/q2-2021-patent-dispute-report (“Unified’s
2021 Patent Dispute Report”).
In addition, Unified’s counsel has long made a particular study of district
court stays pending PTAB proceedings. See, e.g., Jonathan Stroud, The Law of
District Court Stays for USPTO Proceedings, Landslide, September/October 2021;
Jonathan Stroud, NFC Technology LLC v. HTC America, Inc.: Judge Bryson’s
Sitting-By-Designation Guide to Securing Stays in Light of Inter Partes Reviews,
65 American Univ. L. Rev. 1075 (2016); Jonathan Stroud, Staying Litigation for
Covered Business Method Post-Grant Reviews, 17 Colum. Sci. & Tech. L. Rev.
120 (2015) (cited in 29 A.L.R. Fed.3d Art. 9 (2018)); Jonathan Stroud, Linda
Thayer & Jeffrey Totten, Stay Awhile: The Evolving Law of District Court Stays in
Light of Inter Partes Review, Post-Grant Review, and Covered Business Method
Post-Grant Review, 11 Buff. Intell. Prop. L.J. 226 (2015) (same).
2
ARGUMENT
I. This Court Should Grant the Writ to Supervise the Eastern District
The Eastern District of Texas is the third most popular court for bringing
patent suits. See Unified’s 2021 Patent Dispute Report, Figure 4 (reproduced
below). It is also a favorite district of non-practicing entities. Of the district courts
that saw significant patent filings, the Eastern District had the highest percentage
of cases brought by non-practicing entities. See id.
As a result, the stay and venue standards of the Eastern District are of
extraordinary importance.
3
In the Fifth Circuit, writs of mandamus “are supervisory in nature and are
particularly appropriate when the issues also have an importance beyond the
immediate case.” In re Volkswagen of Am., Inc., 545 F.3d 304, 319 (5th Cir. 2008)
(en banc) (citing United States v. Bertoli, 994 F.2d 1002, 1014 (3d Cir.1993)); see
also United States v. Sanchez-Gomez, 138 S. Ct. 1532, 1540 (2018) (“Supervisory
mandamus refers to the authority of the Courts of Appeals to exercise ‘supervisory
control of the District Courts’ through their ‘discretionary power to issue writs of
mandamus.’”) (quoting La Buy v. Howes Leather Co., 352 U.S. 249, 259–260
(1957)). The lower court here requires supervision.
Mandamus, to be sure, is “an extraordinary remedy, to be reserved for
extraordinary situations.” Gulfstream Aerospace Corp. v. Mayacamas Corp., 485
U.S. 271, 289 (1988). But one traditional use of the writ is to compel an inferior
court to exercise its authority when it has a duty to do so. Id. This is what
Petitioner seeks here, a writ instructing the court below to stay merits proceedings
until its venue motion is resolved.
II. The Eastern District Courts are Seemingly in a Hurry Except When
Deciding Venue Motions
The Eastern District of Texas places patent cases on a “rocket docket,” using
an expedited case schedule to rush cases along but often failing to timely address
venue motions. See Petition at 11-13. Given that its docket is dominated by non-
practicing entities, there seems to be no rationale for doing so. Companies that
4
assert patents but do not manufacture or sell products that practice the patents
rarely need accelerated resolution of their claims. See In re Juniper Networks, Inc.,
No. 2021-160, 2021 WL 4343309, at *7 (Fed. Cir. Sept. 24, 2021) (citing In re
Morgan Stanley, 417 F. App’x 947, 950 (Fed. Cir. 2011)).
A. Venue Motions Are a Top Priority in the Fifth Circuit
In transfer decisions from Texas courts, this court applies Fifth Circuit law.
See In re TS Tech USA Corp., 551 F.3d 1315, 1319 (Fed. Cir. 2008). The Fifth
Circuit considers venue motions to be a “top priority.” In re Horseshoe Ent., 337
F.3d 429, 433 (5th Cir. 2003). This is particularly true here, where Petitioner—
like the petitioner in Horseshoe—“filed its motion to transfer timely and before it
filed its answer.” Id. This court has repeatedly admonished district courts in the
Fifth Circuit to take up these motions early in litigation. See, e.g., In re EMC
Corp., 501 F. App’x 973, 975 (Fed. Cir. 2013) (“This case is a prime example of
the importance of addressing motions to transfer at the outset of litigation.”).
The change of venue statute allows a district court to transfer any civil action
to another viable district “[f]or the convenience of the parties and witnesses, in the
interest of justice.” 28 U.S.C. § 1404(a). “In the context of transfer of venue
motions, lengthy delays have the ability to frustrate 28 U.S.C. § 1404(a)’s intent to
prevent the waste of time, energy, and money and to protect litigants, witnesses
and the public against unnecessary inconvenience and expense.” In re Google Inc.,
5
No. 2015-138, 2015 WL 5294800, at *1 (Fed. Cir. Jul. 16, 2015) (internal marks
omitted) (citing Van Dusen v. Barrack, 376 U.S. 612, 616 (1964); Cont'l Grain Co.
v. The Barge FBL–585, 364 U.S. 19, 26, 27 (1960)).
This court has “therefore stressed ‘the importance of addressing motions to
transfer at the outset of litigation.’” Google, at *1 (quoting EMC, 501 F. App’x
at 975). And it has explained, “the principle that a trial court
must first address whether it is a proper and convenient venue before addressing
any substantive portion of the case.” In re Nintendo Co., Ltd., 544 F. App’x 934,
941 (Fed. Cir. 2013).
This reasoning is even more apt when the motion in question seeks dismissal
for improper venue and requests transfer in the alternative. The “waste of time,
energy, and money” is even greater should the court ultimately dismiss the case.
Further, the Eastern District regularly hires technical advisors at the parties’
expense and has done so here, exacerbating the potential harm caused by delay.
See Scott Graham, How a Former Law Clerk Earned $700K This Year as a Court-
Appointed Technical Advisor, The Recorder (Aug. 26, 2021) (discussing the
Eastern District’s having “a group of about four technical advisors they call on
regularly to assist with claim construction”); Appx331 (sua sponte appointing a
technical advisor at the parties’ expense).
6
B. Venue Motions Are Not a Top Priority in the Eastern District
As Petitioner has explained—and the cases above show—the lower court
does not treat venue motions as a top priority. See Petition at 11-13. Nor is this an
isolated lapse. See id. The courts of Texas—particularly the Eastern District and
the Waco Division of the Western District—have become the epicenter of delay
and error. They often fail to timely address venue motions, and they frequently
abuse their discretion when deciding venue motions. See Petition at 11-13. It is no
coincidence that EMC, Google, and Nintendo all originated in the Eastern District.
In recent years the Western District—or at least its Waco Division—has
joined the Eastern in delaying venue motions. See, e.g., In re SK hynix Inc., 835 F.
App’x 600, 600-601 (Fed. Cir. 2021) (“We agree with SK hynix that the [Western
District] court’s handling of the transfer motion up until this point in the case has
amounted to egregious delay and blatant disregard for precedent.”); In re
TracFone Wireless, Inc., 848 F. App’x 899, 901 (Fed. Cir. 2021) (“We order the
[Western District] court to stay all proceedings until such time that it issues a
ruling on the motion to transfer that provides a basis for its decision that is capable
of meaningful appellate review.”)
Sometimes this court withholds mandamus but only after expressing its
confidence that the lower court will act. See, e.g., In re Freelancer Ltd., 850 F.
App’x 791, 792 (Fed. Cir. 2021) (“We expect, however, that the [Western District]
7
court will soon address the pending motion to dismiss or alternatively grant a
stay.”); In re Bose Corp., 848 F. App’x 426, 427 (Fed. Cir. 2021) (“We expect the
[Western District] court will promptly decide the pending motion to dismiss or
transfer.”).
When the Western District acts on a venue motion, it often abuses its
discretion to the point where this court must correct it through mandamus. See,
e.g., In re Samsung Elecs. Co., Ltd., 2 F.4th 1371, 1381 (Fed. Cir. 2021) (“The
[Western District’s] March 1, 2021 orders denying transfer are vacated, and the
district court is directed to grant Samsung’s and LG’s motions to the extent that the
cases are transferred … under 28 U.S.C. § 1404(a).”); In re Hulu, LLC, No. 2021-
142, 2021 WL 3278194, at *5 (Fed. Cir. Aug. 2, 2021) (Mandamus to the Western
District because “we readily conclude that the district court clearly abused its
discretion in denying Hulu’s transfer motion.”); In re TracFone Wireless, Inc., 852
F. App’x 537, 540 (Fed. Cir. 2021) (“The March 11, 2021 order is vacated, and the
[Western District] court is directed to grant TracFone’s motion to the extent that
the case is transferred … under § 1404(a).”)
The disconnect between rushing headlong toward trial while sidelining or
denying meritorious venue motions cries out for stronger medicine from this court.
Petitioner here requests relief commensurate with the problem: An order staying
merits proceedings until 28 days after the court rules on the pending venue motion.
8
Petition at 31. The stay ensures that Petitioner’s venue motion is a top priority.
That it can be resolved and, if necessary, considered by this court on mandamus
before the parties and the court below expend additional resources. It also helps
ensure that the PTAB will consider the related petitions pending before it with a
more accurate view of which court will try the case and when.
III. The Court Should Grant the Petition to Protect Access to Inter Partes
Review
Ten years ago, Congress enacted the America Invents Act to provide an
expert, inexpensive alternative forum for deciding the patentability of claims.
See H. Rep. No. 112–98, Part I, at 48 (2011) (post-grant review proceedings are
designed to be “quick and cost effective alternatives to litigation”). When district
courts rush the merits while ignoring venue motions, they help shield plaintiff’s
patents from the agency’s expert scrutiny and prevent defendants from enjoying
the cost benefits of inter partes review.
A. The PTAB Regularly Declines Meritorious Petitions Based on the

Fintiv Factors
The PTO Director may institute an inter partes review where “there is a
reasonable likelihood that the petitioner would prevail with respect to at least 1 of
the claims challenged in the petition.” 35 U.S.C. § 314(a). But Section 314(a)
grants the Director the discretion to reject a petition that meets that statutory merits
standard. See Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016).
9
The Director has delegated that authority to the Board. See 37 C.F.R.
§ 42.4(a) (stating that the “Board institutes the trial on behalf of the Director”).
The Board often invokes agency discretion under Section 314(a) to deny
petitions that meet the statutory standard for institution when there is a co-pending
district court proceeding. See NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018-
00752, Paper 8 (PTAB Sept. 12, 2018) (precedential, designated May 7, 2019);
Apple Inc. v. Fintiv, Inc., IPR 2020-00019, Paper 11 at 5 (PTAB Mar. 20, 2020)
(precedential, designated May 5, 2020) (“Fintiv I”).
When invoking Section 314(a) discretion—in cases involving parallel
district court proceedings—the Board balances the so-called “Fintiv factors.”
Fintiv I at 5-6; see also NHK Spring, Paper 8 at 19-20. These Fintiv factors—
which compare the status, predicted progress, and trial date of the district court
case with the agency’s projected date for final written decision—have become the
dominant basis for procedural denials.
Since NHK and Fintiv, the Board’s discretionary denials have exploded,
despite an overall decline in the number of petitions filed. See Unified Patents,
PTAB Uses Discretion, Fintiv to Deny Petitions 38% in 2021 to Date (Sept. 22,
2021) available at https://www.unifiedpatents.com/insights/2021/9/22/an-early-
look-at-the-ptabs-use-of-fintiv-and-discretion-discretionary-denials-through-
10
september-2021 (“Unified’s 2021 PTAB Discretion Report”). 2 This is shown in
Unified’s 2021 PTAB Discretion Report, Fig. 1 (reproduced below).
In 2020 the PTAB denied nearly 19% of all institution petitions on procedural
grounds; this year, over 16% petitions have been denied under the Board’s
discretion. Id. As a result, almost 40% of all denials have been non-substantive.
Id.
The NHK Spring/Fintiv analysis has become the dominant basis for
procedural denials. Id., Figs. 2, 6. Nearly three-quarters of all procedural denials
are based on Section 314(a). See id., Fig. 2 (reproduced below).
2
Unified’s 2021 data is current through September 8, 2021. Id.
11
Parsing further, NHK Spring/Fintiv “continues to be the dominant
framework of 314(a) denials.” Unified’s 2021 PTAB Discretion Report. In 2021
thus far, NHK Spring/Fintiv denials account for 77 of the 105 (73%) Section 314
denials, over 50% of procedural denials, and over 20% of all denials—procedural
and merits-based. See id., Fig. 6 (reproduced below).
12
Unified projects that for full-year 2021, the number of Section 314(a)
denials will hold steady while the percentage of NHK Spring/Fintiv denials grows
by nearly 40%. See Unified’s 2021 Patent Dispute Report, Figs. 21-22.
B. Courts That Pocket Venue and Stay Motions Can Cause the
PTAB to Deny Meritorious Petitions
The enormous rise in discretionary denials—driven by increased denials
under the Fintiv factors—has severe consequences for defendants inappropriately
before Texas’s Eastern and Western District courts. Diligent defendants, like
Petitioner, often seek inter partes review within a few months of being sued. At
the same time, if they are before an inappropriate court, they may file a venue
motion to dismiss or transfer. But a delay in deciding such motions—combined
13
with aggressive scheduling of nearly every other aspect of litigation—encourages
the PTAB to deny otherwise meritorious petitions by invoking agency discretion.
Under NHK Spring and Fintiv, the Board may invoke discretion not to
institute a meritorious petition based on the following factors:
1. whether the court granted a stay or evidence exists that one

may be granted if a proceeding is instituted;
2. proximity of the court’s trial date to the Board’s projected

statutory deadline for a final written decision;
3. investment in the parallel proceeding by the court and the

parties;
4. overlap between issues raised in the petition and in the

parallel proceeding;
5. whether the petitioner and the defendant in the parallel

proceeding are the same party; and
6. other circumstances that impact the Board’s exercise of

discretion, including the merits.
Fintiv, Paper 11 at 5-6; see also NHK Spring, Paper 8 at 19-20.
Fintiv factors two and three can be shifted against review when a district
court delays action on a venue motion or incorrectly decides a venue motion, even
if the Federal Circuit ultimately overturns that decision on mandamus.
The second Fintiv factor—proximity of trial date to the Board’s one-year-
from-institution deadline—is particularly notorious. The court below has set an
aggressive trial date, as is common in the Eastern and Western Districts. This
court has long recognized that the court’s prospective trial date “appears to be the
14
most speculative” factor in the transfer analysis. See In re Genentech, Inc., 566
F.3d 1338, 1347 (Fed. Cir. 2009) (mandamus to the Eastern District). More
recently, this court explained that “it is improper to assess the court congestion
factor based on the fact that the Western District of Texas has employed an
aggressive scheduling order.” Juniper Networks at *6 (collecting cases).
The PTAB takes the opposite approach. The PTAB will “generally take
courts’ trial schedules at face value absent some strong evidence to the contrary.”
See Apple Inc. v. Fintiv, Inc., IPR 2020-00019, Paper 15 at 13 (PTAB May 13,
2020) (informative, designated Jul. 13, 2020) (“Fintiv II”). And what constitutes
“strong evidence” is not reassuring. See Sand Revolution II, LLC v. Continental
Intermodal – Trucking LLC, IPR 2019-01393, Paper 24 at 8-9 (PTAB June 16,
2020) (informative, designated Jul. 13, 2020). In Sand Revolution, the PTAB
initially denied institution by relying in part on an early trial date. See id., Paper 12
at 15-16, 18. But the PTAB reconsidered on rehearing after the parties jointly
moved to extend trial-court deadlines, and the trial date was pushed from April 27,
2020, to July 20, 2020, to November 9, 2020, then to “February 8, 2021 (or as
available)” in light of Covid. See id., Paper 24 at 8-9. Thus, an early trial date
typically weighs heavily against an IPR petitioner, regardless of its speculative
nature, unless the court actually moves that date before the time for requesting
rehearing expires.
15
Similarly, Fintiv factor three—investment in the parallel proceeding by the
court and the parties—can artificially weigh against defendants while awaiting a
decision on their venue motions. The court below has declined to suspend or stay
upcoming discovery, claim construction, and trial dates, and each day the
investment by the court and the parties increases. See Petition at 1, 7. The district
court should not consider the work invested by the parties when deciding venue
motions. See TracFone Wireless, 848 F. App’x at 901 (“[W]e remind the lower
court that any familiarity that it has gained with the underlying litigation due to the
progress of the case since the filing of the complaint is irrelevant.”) (citing Google,
2015 WL 5294800 at *2). But the PTAB again takes the opposite approach. It
considers “the amount and type of work already completed in the parallel litigation
by the court and the parties at the time of the institution decision.” Fintiv I at 9
(emphasis added). Thus, the longer a court delays action on a proper venue
motion, the more substantive work is completed, and the more likely the PTAB is
to decline institution for non-merits reasons.
This concern goes beyond mere speculation. The applicability of the Fintiv
factors has been studied with respect to the Western District of Texas. See Pauline
Pelletier, Deborah Sterling & Anna Phillips, How West Texas Patent Trial Speed
Affects PTAB Denials, IP Law360 (Feb. 16, 2021). Pelletier, Sterling, & Phillips
found that—in 2020—the Board declined to institute 15 of 39 petitions (38%) after
16
it addressed the Fintiv factors in the context of the Western District’s aggressive
schedule in parallel cases. See id.
Where, as here, there is a significant delay between the filing of a venue
motion and the district court’s decision on venue—during which the case barrels
along—prejudice begins to accrue in the PTAB against even the diligent
defendant.
CONCLUSION
The court should issue the requested writ. The availability of PTAB
proceedings as an alternative to litigation in a significant fraction of all U.S.
patents cases is at stake.
Respectfully Submitted,
/s/William Jenks
Jonathan Stroud
Unified Patents, LLC William G. Jenks
P.O. Box 53345 Principal Counsel
Washington, DC 20009 JENKS IP LAW PLLC
(202) 805-8931 1629 K Street, NW
Suite 300
Washington, DC 20006
(202) 412-7964
Counsel for Amicus Curiae
17
CERTIFICATE OF COMPLIANCE WITH TYPE-VOLUME

LIMITATION, TYPEFACE REQUIREMENTS,
AND TYPE STYLE REQUIREMENTS
1. This brief complies with the type-volume limitation of Fed. Cir.
R. 21(e). It contains 3185 words, excluding the parts of the brief exempted by Fed.
R. App. P. 32(f) and Fed. Cir. R. 32(b)(2).
2. This brief complies with the typeface requirements of Fed. R.
App. P. 32(a)(5) and the type style requirements of Fed. R. App. P. 32(a)(6) because
it has been prepared in a proportionally spaced typeface using Microsoft Word 2016
in Times New Roman 14-point font.
/s/ William G. Jenks

William G. Jenks
CERTIFICATE OF SERVICE
I hereby certify that, on Sept. 28, 2021, I caused to be electronically filed the
foregoing MOTION FOR LEAVE and accompanying BRIEF AMICUS CURIAE
IN SUPPORT OF PETITIONER using the court’s CM/ECF filing system. I certify
that all counsel of record in the case are registered CM/ECF users, and that service
will be accomplished by the appellate CM/ECF system. See Fed. R. App. P. 25(d);
Fed. Cir. R. 25(e).
In addition, I certify that counsel for Respondent, not yet of record, were
served by email on Sept. 28, 2021 as follows:
Adrienne Elizabeth Dominguez [email protected]
Austin Chun Teng [email protected]
James Michael Heinlen [email protected]
Jennifer Leigh Truelove [email protected]
Justin S. Cohen [email protected]
Richard Lawrence Wynne, Jr [email protected]
Robert K. Jain [email protected]
Samuel Franklin Baxter [email protected]
Bruce S Sostek [email protected]

A copy of the foregoing was also provided to the district court judge via
UPS at the following address:
Hon. Rodney Gilstrap

United States District Court for the Eastern District of Texas
Sam B. Hall, Jr. Federal Building and United States Courthouse
100 East Houston Street
Marshall, Texas 75670
/s/ William G. Jenks

William G. Jenks

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Case: 21-190 Document: 9-2 Page: 1 Filed: 09/28/2021

UNITED STATES COURT OF APPEALS

In re: NETFLIX, INC.,

On Petition for a Writ of Mandamus to the

BRIEF OF UNIFIED PATENTS, LLC

Jonathan Stroud William G. Jenks

Counsel for Amicus Curiae

September 28, 2021

FORM 9. Certificate of Interest Form 9 (p. 1)

UNITED STATES COURT OF APPEALS

Case Number 2021-190

Instructions: Complete each section of the form. In answering items 2 and 3, be

Name: William G. Jenks

FORM 9. Certificate of Interest Form 9 (p. 2)

1. Represented 2. Real Party in 3. Parent Corporations

Unified Patents, LLC Parents:

Unified Patents Holdings, LLC

Unified Patents Acquisition, LLC

Unified Patents Management, LLC

No such public companies

Additional pages attached

FORM 9. Certificate of Interest Form 9 (p. 3)

6. Organizational Victims and Bankruptcy Cases. Provide any information

INTERESTS OF AMICUS CURIAE ......................................................................... 1

A. Venue Motions Are a Top Priority in the Fifth Circuit......................... 5

In re Bose Corp., 848 F. App’x 426 (Fed. Cir. 2021) ...............................................8

In re Freelancer Ltd., 850 F. App’x 791 (Fed. Cir. 2021) ........................................7

In re Genentech, Inc., 566 F.3d 1338 (Fed. Cir. 2009) ...........................................15

In re Morgan Stanley, 417 F. App’x 947 (Fed. Cir. 2011) ........................................5

28 U.S.C. § 1404(a) ...................................................................................................5

Jonathan Stroud, Staying Litigation for Covered Business Method Post-Grant

Fed. R. App. P. 29 ......................................................................................................1

INTERESTS OF AMICUS CURIAE 1

Unified Patents, LLC is a membership organization dedicated to deterring

abusive non-practicing entities, or NPEs, from extracting nuisance settlements

3,000-plus members are Fortune 500 companies, start-ups, automakers, industry

groups, cable companies, banks, credit card companies, technology companies,

open source software developers, manufacturers, and others dedicated to reducing

the drain on the U.S. economy of now-routine baseless litigations asserting

infringement of patents of dubious validity. Unified also engages in public policy

work, data services, consulting, and an array of independent services.

Unified files post-issuance petitions challenging NPE patents it believes are

unpatentable or invalid. Thus, Unified is a deterrence entity that seeks to

discourage the assertion of poor-quality patents. Unified acts and litigates

the PTAB, and it was by far the leading third-party filer.

Unified studies the ever-evolving business models, financial backings, and

practices of NPEs. Unified monitors ownership data, litigation financing,

secondary-market patent sales, demand letters, post-grant procedures, and patent

Report: First Half in Review (Jul. 1, 2021), available at

2021 Patent Dispute Report”).

In addition, Unified’s counsel has long made a particular study of district

District Court Stays for USPTO Proceedings, Landslide, September/October 2021;

Sitting-By-Designation Guide to Securing Stays in Light of Inter Partes Reviews,

Post-Grant Review, 11 Buff. Intell. Prop. L.J. 226 (2015) (same).

below). It is also a favorite district of non-practicing entities. Of the district courts

of cases brought by non-practicing entities. See id.

mandamus refers to the authority of the Courts of Appeals to exercise ‘supervisory

(1957)). The lower court here requires supervision.

Mandamus, to be sure, is “an extraordinary remedy, to be reserved for

extraordinary situations.” Gulfstream Aerospace Corp. v. Mayacamas Corp., 485

until its venue motion is resolved.

Morgan Stanley, 417 F. App’x 947, 950 (Fed. Cir. 2011)).

A. Venue Motions Are a Top Priority in the Fifth Circuit

Circuit considers venue motions to be a “top priority.” In re Horseshoe Ent., 337