Patent Owner’s Preliminary Response
`IPR2020-01266 (Pat. 10,257,319)
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________________
` CODE200, UAB; TESO LT, UAB; METACLUSTER LT, UAB; AND
`OXYSALES, UAB,
`Petitioners
`v.
`LUMINATI NETWORKS LTD.,
`Patent Owner
`_________________________
`
`Case IPR2020-01266
`Patent 10,257,319
`_________________________
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`
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`CORRECTED PATENT OWNER’S PRELIMINARY RESPONSE
`UNDER 37 CFR §42.107
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`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`Patent Owner’s Preliminary Response
`IPR2020-01266 (Pat. 10,257,319)
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`TABLE OF CONTENTS
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`I.
`INTRODUCTION ........................................................................................... 1
`II. THE PETITION SHOULD BE DENIED BECAUSE THE PARALLEL
`DISTRICT COURT LITIGATION, WHICH ASSERTS THE SAME
`PRIOR ART AS THIS PETITION, BEGINS JURY SELECTION ON
`MAY 3, 2021, OVER SEVEN MONTHS BEFORE A FINAL
`DETERMINATION WOULD BE EXPECTED IN THIS IPR ................. 4
`A. FACTOR 1. ............................................................................................... 5
`B. FACTOR 2 ................................................................................................ 6
`C. FACTOR 3 ................................................................................................ 8
`D. FACTOR 4 .............................................................................................. 10
`E. FACTOR 5 .............................................................................................. 12
`F. FACTOR 6 ................................................................................................. 13
`III. OVERVIEW - THE ‘319 PATENT DISCLOSES AND CLAIMS
`METHODS USING A NOVEL NETWORK ARCHITECTURE THAT
`IS NOT DISCLOSED IN ANY OF THE PRIOR ART ADVANCED BY
`PETITIONERS ............................................................................................. 14
`A. THE CHALLENGED CLAIMS ............................................................. 17
`B. PRIORITY DATE ................................................................................... 17
`IV. PERSON OF ORDINARY SKILL IN THE ART ..................................... 18
`V. CLAIM CONSTRUCTION ......................................................................... 18
`VI. THE ART CITED IN THE ALLEGED GROUNDS ................................ 25
`A. CROWDS ................................................................................................ 25
`B. BORDER ................................................................................................. 28
`C. MORPHMIX ........................................................................................... 31
`VII. THE FAILED GROUNDS OF ALLEGED INVALIDITY ...................... 34
`A. GROUND 1: FAILURE OF CROWDS TO ANTICIPATE CLAIM 1 . 35
`B. GROUND 2: FAILURE OF CROWDS + RFC 2616 + GENERAL
`KNOWLEDGE TO RENDER OBVIOUS CLAIM 1 ............................ 37
`C. GROUND 3: FAILURE OF BORDER TO ANTICIPATE CLAIM 1 .. 38
`D. GROUND 4: FAILURE OF CROWDS + RFC 2616 + GENERAL
`KNOWLEDGE TO RENDER OBVIOUS CLAIM 1 ............................ 41
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`E. GROUND 5 FAILURE OF MORPHMIX TO ANTICIPATE CLAIM 1
` 42
`F. GROUND 6 FAILURE OF MORPHMIX + RFC 2616 + GENERAL
`KNOWLEDGE TO RENDER OBVIOUS CLAIM 1 ............................ 45
`VIII. CONCLUSION ............................................................................................. 46
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`TABLE OF AUTHORITIES
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`AGENCY DECISIONS
`
`Apple Inc. v. Fintiv Inc.,
`IPR2020-00019, Paper 11 (PTAB March 20, 2020)
`(precedential, designated May 5, 2020) ..................................................................... 1
`
`Google LLC f/k/a Google Inc. v. Personalized Media Communications, LLC,
`IPR2020-00719, Paper 16 (PTAB August 31, 2020) ................................................ 8
`
`
`CASES
`
`KSR Int’l Co. v. Teleflex, Inc.
`550 U.S. 398, 127 S. Ct. 1727, 167 L. Ed. 2d 705 (2007) .......................... 38, 42, 45
`
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`RULES AND RULEMAKING
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`PTAB Office Trial Practice Guide, July 2019 Update ....................................... 1, 25
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`2001
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`2002
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`2003
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`2004
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`2005
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`2006
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`2007
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`2008
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`2009
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`2010
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`EXHIBIT LIST
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`Oxylabs’ Motion To Stay Pending Inter Partes Reviews
`(public-redacted) in Luminati v. Teso Lt UAB et al., E.D.
`Texas, Case No. 2: 19-cv—00395-JRG ECF No. 131
`
`Joint Claim Construction and Prehearing Statement support
`in Luminati v. Teso Lt UAB et al., E.D. Texas, Case No.
`2: 19-cv-00395-JRG ECF No. 105-1
`
`Plaintist Markman opening brief in Luminati v. Teso Lt
`UAB et al., E.D. Texas, Case No. 2: 19-cv-00395-JRG No.
`1 26
`
`Defendants’ Markman response brief in Luminati v. Teso Lt
`UAB et al., E.D. Texas, Case No. 2: 19-cv-00395-JRG ECF
`No. 138
`
`Plaintiff‘ s Markman reply brief in the Luminati v. Teso Lt
`UAB et al., E.D. Texas, Case No. 2: 19-cv-00395-JRG ECF
`No. 145
`
`Intentionally left blank
`
`Oxysales’ Answer (public—redacted) in Luminati v. Teso Lt
`UAB et al., E.D. Texas, Case No. 2:19—cv-00395-JRG, ECF.
`No. 95
`
`October 18, 2018 response during’3 1 9 prosecution history
`LUM— at LUM—00149l33-34
`
`Dr. Thomas Rhyne Markman Declaration in Luminati v.
`Teso Lt UAB et al., ED. Texas, Case No. 2:19-cv-00395-
`
`JRG, ECF No. 126—5
`
`Sur-reply on Motion to Dismiss in Luminati v. Teso Lt UAB
`et al., E.D- Texas, Case No. 2: l9-cv—00395-JRG ECF No. 47
`
`2011
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`Order on Motion to Dismiss in Luminati v. Teso Lt UAB et
`
`al., E.D. Texas, Case No. 2: 19—cv-00395-JRG ECF No. 85
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`2012
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`Declaration of Dr. Thomas Rhyne
`
`2013
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`Amended Rule 7.1 disclosure statement from Luminati v.
`
`Teso Lt UAB et al., E.D. Texas, Case No. 2: 19-cv-00395—
`JRG ECF No. 55
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`2014
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`2015
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`Exhibit 2014 is a true and correct copy of Code200’s Rule
`7.1 Disclosure Statement in Luminati v. Code200 et al., E.D.
`Texas, Case No. 2:19-cv-00396-JRG ECF No. 28.
`Declaration of Thomas M. Dunham
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`Patent Owner’s Preliminary Response
`IPR2020-01266 (Pat. 10,257,319)
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`INTRODUCTION
`Patent Owner Luminati Networks, Ltd. (“Patent Owner”) hereby submits this
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`
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`I.
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`Patent Owner Preliminary Response (“POPR”) in response to the Petition (Paper 5)
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`filed by Code200, UAB; Teso LT, UAB; Metacluster Lt, UAB; and Oxysales, UAB
`
`(“Petitioners”) requesting inter partes review of claims 1, 2, 12, 14-15, 17-19, 21-
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`22 and 24-29 of U.S. Patent No. 10,257,319 (“the ‘319 Patent”).
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`Patent Owner respectfully requests that the Patent Trial and Appeal Board
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`(“Board”) exercise its discretion and deny institution for two separate reasons.1
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`First, the Petition should be dismissed based upon the Fintiv factors governing
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`parallel district court proceedings.2 Specifically, the parallel district court litigation,
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`which asserts exactly the same prior art as the Petition (Paper 14, paragraphs 1-2),
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`begins jury selection on May 3, 2021, over seven months before a final
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`determination would be expected in this IPR. Additionally, the claim construction
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`1 In this POPR, Patent Owner is only addressing select issues demonstrating that
`review should not be instituted. In so doing, Patent Owner is not acquiescing to
`other issues raised by Petitioners and reserves the right to address all issues and to
`challenge all points raised by Petitioners in any future response if proceedings are
`instituted. See PTAB Office Trial Practice Guide, July 2019 Update, p. 18-21
`(Docket No. PTO-P-2019-0025, Federal Register 33925-33926).
`
` 2
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` Apple Inc. v. Fintiv Inc., IPR2020-00019, Paper 11 (PTAB March 20, 2020)
`(precedential, designated May 5, 2020)
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`hearing in the district court litigation is set for November 17, 2020.3 Thus, the Court
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`will have invested significant resources and will likely have issued its claim
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`construction ruling before an institution decision would even issue in this
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`proceeding. For at least these reasons, the Fintiv factors overwhelmingly support the
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`Board’s discretion to deny institution.
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`Second, the Challenged Claims of the ‘319 Patent are strongly novel and non-
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`obvious when compared to the prior art relied on by Petitioners. As explained below,
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`Petitioners’ Grounds all depend upon a common premise – that the “plain and
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`ordinary meanings” of the claim terms “second server,” “first client device,” and
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`“first server” are such that each of these distinctly-claimed devices would be met by
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`a “general purpose computer” such that a “server” and a “client” are broad enough
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`to encompass one another. (Paper 5 at 14). Indeed, in discussing the Grounds,
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`Petitioners equate these claim terms to ignore the express limitations recited in the
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`claims.
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`Claim 1 (the only independent claim), recites a method for use with a specific
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`architecture arranged as depicted below:
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` Second Server < - > First Client Device < - > First Server
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`3 Briefing on claim construction was completed on October 20, 2020. Copies of the
`opening, responsive and reply claim construction briefs are being submitted
`herewith as Exhibits 2003, 2004, and 2005 to this POPR.
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`Petitioners concede this point, expressly including a graphic in the Petition showing
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`this precise arrangement:
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` (Paper 5 at 9-10).
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`Yet the three primary references relied upon by Petitioners operate using
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`significantly different architectures (depicted below), each thereby failing to achieve
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`the advantages realized by the method of the ‘319 claims:
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`Crowds: User computer4 < - > User computer < - > Web Server
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`Border: Client Device < - > Downstream Server < - > Upstream Server < - >
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`Web Server
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`4 As explained in Crowds, each participating user computer is called a jondo: “A
`user is represented in a crowd by a process on her computer called a jondo …” Ex.
`1011 at 8 (emphasis added).
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`Morphmix: Peer < - > Peer < - > Server
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`As explained below, because the primary references relied upon by Petitioners
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`operate using different architectures than the method of Challenged Claim 1, they
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`each fail to anticipate Claim 1. Further, the alleged combinations set forth in
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`Grounds 2, 4 and 6 fail to render obvious Claim 1 for at least the same reasons.
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`II. THE PETITION SHOULD BE DENIED BECAUSE THE PARALLEL
`DISTRICT COURT LITIGATION, WHICH ASSERTS THE SAME
`PRIOR ART AS THIS PETITION, BEGINS JURY SELECTION ON
`MAY 3, 2021, OVER SEVEN MONTHS BEFORE A FINAL
`DETERMINATION WOULD BE EXPECTED IN THIS IPR
`Petitioners voluntarily raised the parallel Eastern District of Texas
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`proceedings (Case No. 2:19-cv-00395-JRG) (“the 395 District Court case”) (Paper
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`5 at page 6, Section III) as an issue, and argue that the Fintiv factors do not compel
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`a decision to deny institution. The Fintiv factors, however, substantially favor a
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`decision to deny institution because the 395 District Court case involves exactly the
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`same prior art and all but four dependent claims of the ‘319 Patent challenged here
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`are also asserted in the litigation. Paper 14, paragraphs 1-2. The Board should also
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`consider the Petitioners’ two follow-on Petitions, filed after the present Petition,
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`challenging the remaining two patents asserted in 395 District Court case (USP
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`10,484,510 challenged by Petitioners on August 28, 2020 in IPR2020-01358, and
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`USP 10,469,614 challenged by Petitioners on September 4, 2020 in IPR2020-
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`01506). If IPRs were instituted, final determinations in those cases would not issue
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`until approximately one month and two months, respectively, after a final
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`determination is expected in this IPR, placing those determinations more than nine
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`months after trial will have occurred.
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`Also, while Petitioners argue that petitioner Code200’s status as not having
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`been sued for infringement of the ‘319 Patent bodes in favor of institution, the close
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`corporate relationship between Code200 and the remaining Petitioners has not been
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`fully disclosed to the Board. When that close relationship is considered (they a
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`parent and multiple sister subsidiaries, all with direct or indirect common or
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`overlapping owners - Ex. 2007), it renders Petitioners’ arguments unpersuasive, if
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`not misleading.
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`A. FACTOR 1.
`Fintiv factor 1 is “whether the court granted a stay or evidence exists that one
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`may be granted if a proceeding is instituted.”
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`The 395 District Court case has not granted a stay pending IPR petition.
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`Patent Owner submits that it will not seek such a stay. On October 1, 2020,
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`Petitioners filed a sealed opposed motion to stay the 395 District Court case pending
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`the inter partes reviews in which they concede as a general rule that such stays are
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`not granted. See Ex. 2001 public/redacted version (“Oxylabs is aware that this Court
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`typically does not grant a stay pending IPRs not yet instituted.”) Further, Petitioners
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`have also mischaracterized the briefing in the prior litigation proceeding. Patent
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`Owner filed the complaint for the 395 District Court case on December 6, 2019.
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`Patent Owner then filed a motion to consolidate in the then pending case of Luminati
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`Networks Ltd. v. UAB Tesonet et. al., Case No. 2:18-cv-299 (“Tesonet Case”), ECF
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`305 at 5, seeking a new trial date to be held as early as July 2020 to accelerate the
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`date by which Patent Owner’s ‘319 Patent infringement claims would be tried.
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`Petitioners Teso and Metacluster opposed that motion by arguing that a trial date for
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`this action in 2021 was more realistic (Tesonet Case, ECF 317 at 5).
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`Given that the Court has not granted a stay and would not likely grant a stay
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`given the lateness of the Petition, this factor favors denial of institution.
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`B. FACTOR 2
`Fintiv factor 2 is the “proximity of the court’s trial date to the Board’s
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`projected statutory deadline for a final written decision.”
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`The date for jury selection in the 395 District Court case is May 3, 2021. (Ex.
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`1004 at 1). In contrast, the date for the Board’s projected final written decision is:
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`(i) Patent Owner’s POPR deadline of October 24, 2020, (ii) plus an estimated two-
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`to-three months for the Board to enter an institution decision, (iii) plus 12 months
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`for a final determination, or December 24, 2021 or later. This is over seven months
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`after the district court’s jury selection date of May 3, 2021, making this factor
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`strongly favor denial of institution.
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`The Board should also consider final determination dates for the Petitions
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`filed by Petitioners with respect to the other two patents asserted in the 395 District
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`Court action, namely the ‘510 patent and the ‘614 patent. IPR2020-01358
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`challenging the ‘510 patent was filed on August 28, 2020, and has a POPR deadline
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`of November, 20, 2020. Adding two-to-three months for an estimated institution
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`decision and a year for a final determination, the final written decision is expected
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`on January 20, 2022 or later. This is over eight months after jury selection in the
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`395 District Court case.
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`IPR2020-01506 challenging the ‘614 patent was filed on September 5, 2020,
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`and has a POPR deadline of December 9, 2020. Adding two-to-three months for an
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`estimated institution decision and a year for a final determination, the final written
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`decision would be expected on February 9, 2022 or later. This is over nine months
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`after jury selection in the 395 District Court case.
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`As discussed above in Factor 1, Petitioners’ discussion about extensions
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`requested by Patent Owner in prior district court cases mischaracterize the positions
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`taken by Petitioner and Patent Owner in that proceeding. Moreover, Petitioners’ one
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`sentence reference to a potential COVID -19 trial delay (Paper 5 at 10) is also sheer
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`speculation at this point, more than six months before jury selection is scheduled.
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`The PTAB also declined to speculate on this point in another recent decision:
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`“Petitioner further argues that the trial date may change because the
`COVID-19 pandemic has “significantly disrupted docket schedules
`including in Texas, which may cause delay of the trial that is still months
`away.” (Citation omitted)
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`We understand Petitioner’s position, but we decline to speculate
`whether that date will change due to COVID-19 disruptions…”
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`
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`Google LLC f/k/a Google Inc. v. Personalized Media Communications, LLC PTAB-
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`IPR2020-00719, Decision Denying Institution of Inter Partes Review, Paper 16 at
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`11, August 31, 2020.
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`Taking the timing of these two additional petitions into account, this factor
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`strongly favors denial of institution.
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`C. FACTOR 3
`Fintiv factor 3 is “investment in the parallel proceeding by the court and the
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`parties.”
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`The case is not at a very early stage, as Petitioners allege. Quite to the
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`contrary. As of the time that Patent Owner’s POPR was filed in this case, the parties’
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`district court Markman briefing was already completed (briefing was completed on
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`October 20, 2020 – (Ex. 1004 at ECF 145)). Two months later, on or about
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`December 24, 2020, when an institution decision would likely be expected, the
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`Markman hearing will have been conducted over a month earlier on November 17,
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`2020 (the Markman haring was moved to November 17 from November 10, 2020
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`by a text entry in on the docket on October 7, 2020), and a Markman decision may
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`be entered before December 24, 2020. The parties will certainly have invested
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`heavily in the district court case by briefing the Markman issues and preparing for
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`and attending the Markman hearing. The Court will as well, having reviewed the
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`Markman briefing and prepared for and held the Markman hearing, and will
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`undoubtedly be well on its way towards issuing a Markman decision if not having
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`already done so.
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`Patent Owner has been a party in two other infringement actions before Judge
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`Gilstrap in the Eastern District of Texas over the last two years. In one case, the
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`Markman order issued 10 calendar days after the Markman hearing.5 In the other
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`case, the Markman order issued 20 calendar days after the Markman hearing.6 Both
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`5 Luminati v. Bi Science, ED Texas case no. 2-18 cv 00483, Markman hearing on
`November 26, 2019 (ECF. No. 126); Claim Construction Memorandum Opinion
`and Order issued December 6, 2019. (ECF. No. 130).
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` Luminati v. UAB Tesonet, ED Texas case no. 2-18 cv 00299, Markman hearing
`on July 31, 2019 (ECF. No. 102); Claim Construction Memorandum Opinion and
`Order issued August 20-21, 2019 (on docket August 20, entered August 21) (ECF.
`No. 121).
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`of these times would have the Markman Order in this case issuing before the
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`estimated institution date of December 24, 2020.
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`Moreover, in the IPR challenging the ‘510 patent which is also asserted in the
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`395 District Court case, an institution date would be expected approximately a
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`month later (January 20, 2021). In the IPR challenging the ‘614 patent, which is
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`also in the 395 District Court case, the institution decision would be expected even
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`later (February 9, 2021) (see calculations several paragraphs above). Certainly, the
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`Markman decision, which will address claim construction issues in all three of the
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`‘319, ‘510 and ‘614 asserted patents, will likely have issued long before February 9,
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`2021 given this court’s promptness at issuing Markman orders.
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`Taking the timing of this and the other two petitions into account, this factor
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`strongly favors denial of institution.
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`D. FACTOR 4
`Fintiv factor 4 is “overlap between issues raised in the petition and in the
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`parallel proceeding.”
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`The overlap between the issues raised in the petition and in the parallel
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`proceeding is substantial. Petitioner challenges the claims based on three primary
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`references, namely Crowds, Morphmix, and Border, and one Internet Request for
`
`Comments, namely RFC 2616. Petitioner identified all four of those pieces of prior
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`art as items 1-4 of its Invalidity Contentions served on Luminati on August 31, 2020
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`in the 395 District Court case. (Paper 14, paragraphs 1-2). In fact, Petitioners do
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`not even contest that the exact same prior art is asserted in the 395 District Court
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`case as in this Petition.
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`Petitioners’ arguments are thus limited to stating that while Luminati asserts
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`claims 1-2, 14-15, 17-18, 21-22, and 24-27 in the Lawsuit, the Petition also
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`challenges dependent claims 12, 19, 28, and 29, which are not at issue in the Lawsuit.
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`Paper 5 at 8. This is not a significant difference, however. Only claim 1 of the ‘319
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`Patent is independent. The Petition therefore does not challenge any other
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`independent claim not asserted in the district court, because there are none.
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`Moreover, resolution of the patentability of independent claim 1 in the district court
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`is also likely to have an impact on dependent claims 12, 19 and especially claims 28
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`and 29, which recite, respectively:
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`28. A non-transitory computer readable medium containing computer
`instructions that, when executed by a computer processor, cause the
`processor to perform the method according to claim 1.
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`29. A client device comprising a non-transitory computer readable medium
`containing computer instructions that, when executed by a computer
`processor, cause the processor to perform the method according to claim
`1.
`(Emphasis added).
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`Because of the substantial overlap between the invalidity challenges in the
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`395 District Court case and the Grounds asserted in the Petition, Factor 4 strongly
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`favors denial of institution.
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`E. FACTOR 5
`The fifth Fintiv factor is “whether the petitioner and the defendant in the
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`parallel proceeding are the same party.” Three of the four petitioners, namely, Teso
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`LT, Metacluster LT and Oxysales, are the defendants in the parallel 395 District
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`Court case. This strongly favors a decision not to institute. The fourth petitioner,
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`Code200, has not been sued by Luminati for infringement of the ‘319 patent.
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`However, the Petition’s suggestion that Code200 should therefore somehow be
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`treated differently from the other Petitioners (Paper 5 at 9) is misleading in that it
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`fails to acknowledge the close corporate relationship between Code200 and the other
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`defendants/petitioners. Specifically, Coretech LT is the parent company of the sister
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`Petitioners (Teso LT, Code200, Metacluster and Oxysales). They were formed when
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`Lithuanian company Tesonet changed its name to Teso LT and reorganized in 2018.
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`See Exhibits 2013 and 2014. (Ex. 2007 – “Oxylabs further admits that, in 2018,
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`Tesonet underwent a corporate restructuring and, as a result of that restructuring, (i)
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`Tesonet’s name was changed to Teso LT, UAB and (ii) Metacluster, Oxysales,
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`code200, UAB (“Code200”), and coretech lt, UAB (“Coretech”) were created.
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`Oxylabs admits that Teso, Metacluster, Oxysales, Code200 and Coretech share,
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`directly or indirectly, common or overlapping owners.”) All of the petitioners,
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`including Code200, are therefore under common direct or indirect ownership and
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`control. Id. That may explain why Code200 inserted itself into the present IPR
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`petition without having been sued for infringement of the ‘319 patent – it is under
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`the control of the petitioners’ common owner, and thus presumably did so for the
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`benefit of its parent Coretech Lt and sister subsidiaries Teso LT, Metacluster and
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`Oxysales who were sued for infringement of the ‘319 patent. Exhibits 2013 and
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`2014. With that relationship in mind, the fact that Code200 has not been sued for
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`infringement of the ‘319 patent does not bode in favor of institution, as the Petition
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`alleges. To the contrary, it cuts against institution, inasmuch as Code200 is related
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`to the other petitioners and all of them are under the control of their common parent
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`company. That relationship, undisclosed by petitioners, is a substantial factual
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`omission, and strongly favors denial of institution.
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`F. FACTOR 6
`Fintiv factor 6 is: “other circumstances that impact the Board’s exercise of its
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`discretion, including the merits.”
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`Petitioners argue that the merits are substantially in their favor, but this is not
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`the case, as shown in the sections that follow. First, Petitioners’ reading of the claims
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`is unreasonable – an issue that will be resolved by the 395 District Court.
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`Additionally, the asserted prior art is weak and does not render the ‘319 patent
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`unpatentable. Indeed, institution should be denied not only because of parallel
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`litigation but also on the merits.
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`III. OVERVIEW - THE ‘319 PATENT DISCLOSES AND CLAIMS
`METHODS USING A NOVEL NETWORK ARCHITECTURE THAT
`IS NOT DISCLOSED IN ANY OF THE PRIOR ART ADVANCED BY
`PETITIONERS
`The ‘319 Patent describes a novel “system designed for increasing network
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`communication speed for users …” Ex. 1001 at Abstract. To achieve the advantages
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`described in the specification, the ‘319 Patent claims methods utilizing a novel
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`“second server – first client device - web server” architecture, whereby a “first client
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`device” serves as a proxy between the “second server” and “web server.” As stated
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`to the Patent Office during prosecution, “[i]t is respectfully submitted that the
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`conventional arrangement involves fetching data by a client device from a server
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`device, while the claims disclose a server receiving information from another server
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`via a client device, which is unique and solves a specific problem such as anonymity
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`when fetching information.” Ex. 2008 at pages 4-5.
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`A problem in the art was the fact that certain websites with public information
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`nevertheless create technological roadblocks to obtaining that information from
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`certain requesting devices. For example, it is a routine practice of companies to
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`obstruct their competitors from accessing the company’s otherwise publicly
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`available pricing information. To overcome these artificial hinderances, the proxy
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`service of the claims sends requests through one or more of a large group of proxy
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`“client devices,” such as individual cell phone devices. As the proxy devices belong
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`to real people who otherwise send such requests to target web servers as customers,
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`the target will allow the queries and not artificially block them.
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`This problem was specifically mentioned in Plaintiff’s Opening Markman
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`brief in the ‘395 District Court case: “Using this novel service permits a user to
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`access content from a server that might otherwise block the request or return a fake
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`response. For example, a retailer can use this service to request pricing data from a
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`competitor by appearing to that competitor as a potential customer.” Ex. 2003 at 1.
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`The ‘319 Patent explains that previous “proxy servers” fail to provide a
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`“comprehensive solution for Internet surfing,” in part because they “would need to
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`be deployed at every point around the world where the Internet is being consumed.”
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`Id. at 2:24-27; see also 2:8-23. Instead, to create a new type of consumer-based
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`network that never existed before, the ‘319 Patent employs “client devices” that
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`operate as proxies. Id. at 3:13-55.
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`Claim 1, the only claim expressly addressed in this POPR, recites a method
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`for use over the unique “second server – first client device – web server” architecture
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`recited in the claim:
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`1. A method for use with a first client device, for use with a first server that
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`comprises a web server that is a Hypertext Transfer Protocol (HTTP) server
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`that responds to HTTP requests, the first server stores a first content identified
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`by a first content identifier, and for use with a second server, the method by
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`the first client device comprising:
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`receiving, from the second server, the first content identifier;
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`sending, to the first server over the Internet, a Hypertext Transfer Protocol
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`(HTTP) request that comprises the first content identifier;
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`receiving, the first content from the first server over the Internet in response
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`to the sending of the first content identifier; and
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`sending, the first content by the first client device to the second server, in
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`response to the receiving of the first content identifier.
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`It is clear from Claim 1 that the method, which is performed “by the first
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`client device” comprises:
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`- “receiving, from the second server, …”
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`- “sending, to the first server over the Internet, …”
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`- “receiving, the first content from the first server …”; and
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`- “sending, the first content by the first client device to the second
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`server, …”
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`The unique arrangement of the devices recited in the claim, together with the
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`specific steps that are recited, serve to differentiate the ‘319 Challenged Claims from
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`prior art systems and to achieve the advantages of the inventions.
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`A. THE CHALLENGED CLAIMS
`The ‘319 Patent contains 29 claims, with only Claim 1 being independent.
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`The Petition challenges claims 1-2, 12, 14-15, 17-18, 19, 21-22, and 24-29 of the
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`‘319 Patent. In the 395 District Court case, Patent Owner is asserting claims 1-2,
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`14-15, 17-18, 21-22, and 24-27. Thus, there is complete overlap regarding the
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`independent claim. Further, only dependent claims 12, 19, and 28-29 are at issue in
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`the Petition but not in the 395 District Court case.
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`B. PRIORITY DATE
`The ‘319 Patent claims priority back through earlier continuation and
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`divisional applications to provisional application number 61/249,624 filed October
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`8, 2009. Petitioners have not contested (for purposes of the Petition) this priority
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`date. (Paper 5 at 12).
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`IV. PERSON OF ORDINARY SKILL IN THE ART
`Patent Owner submits that a person of ordinary skill in the art (“POSA”) in
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`the field of the ‘319 Patent (such as Dr. Thomas Rhyne whose declaration is
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`concurrently submitted) would be an individual who, as of October 8, 2009, the
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`filing date of the provisional application, had a Master’s Degree or higher in the field
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`of Electrical Engineering, Computer Engineering, or Computer Science or as of that
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`time had a Bachelor’s Degree in the same fields and two or more years of experience
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`in Internet Communications.
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`Petitioner’s proposed qualifications of a POSA are not materially different
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`(Paper 5 at 12-13), at least in terms of affecting a decision as to whether to institute
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`inter partes review of the Challenged Claims.
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`V. CLAIM CONSTRUCTION
`The Petition states that “[t]he claim terms at issue in the Challenged Claims
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`require no express claim construction, as the plain and ordinary meanings apply.”
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`(Paper 5 at 13). Patent Owner disagrees, as the meaning of a number of claim terms
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`are in dispute in the 395 District Court claim construction proceedings, as addr