Patent Owner’s Preliminary Response
`IPR2020-01506 (Pat. 10,469,614)
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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 IPR2020-01506
`Patent 10,469,614
`_________________________
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`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
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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 10,
`2021, OVER NINE MONTHS BEFORE A FINAL DETERMINATION
`WOULD BE EXPECTED IN THIS IPR .......................................................... 4
`A. FACTOR 1. ............................................................................................... 5
`B. FACTOR 2 ................................................................................................ 7
`C. FACTOR 3 ................................................................................................ 9
`D. FACTOR 4 .............................................................................................. 10
`E. FACTOR 5 .............................................................................................. 11
`F. FACTOR 6 .............................................................................................. 13
`III. OVERVIEW - THE ‘614 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 ............................................................. 18
`B. PRIORITY DATE ................................................................................... 18
`IV. PERSON OF ORDINARY SKILL IN THE ART ......................................... 18
`V. CLAIM CONSTRUCTION ............................................................................ 19
`VI. THE ART CITED IN THE ALLEGED GROUNDS ..................................... 21
`A. MITHYANTHA ...................................................................................... 21
`B. MORPHMIX ........................................................................................... 24
`VII. THE FAILED GROUNDS OF ALLEGED INVALIDITY ........................... 27
`A. GROUND 1: FAILURE OF MITHYANTHA TO ANTICIPATE
`CLAIM 1 ................................................................................................. 28
`B. GROUND 2: FAILURE OF MITHYANTHA + RFC 2616 +
`GENERAL KNOWLEDGE TO RENDER OBVIOUS CLAIM 1 ........ 31
`C. GROUND 3: FAILURE OF MORPHMIX TO ANTICIPATE CLAIM 1
` 32
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`D. GROUND 4: FAILURE OF MORPHMIX + RFC 2616 + GENERAL
`KNOWLEDGE TO RENDER OBVIOUS CLAIM 1 ............................ 36
`VIII. CONCLUSION ............................................................................................... 37
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`TABLE OF AUTHORITIES
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`AGENCY DECISIONS
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`Apple Inc. v. Fintiv Inc.,
`IPR2020-00019, Paper 11 (PTAB March 20, 2020)
`(precedential, designated May 5, 2020) ........................................................... passim
`
`Google LLC f/k/a Google Inc. v. Personalized Media Communications, LLC,
`PTAB-IPR2020-00719, Paper 16 (PTAB August 31, 2020) ..................................... 8
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`CASES
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`KSR Int’l Co. v. Teleflex, Inc.
`550 U.S. 398, 127 S. Ct. 1727, 167 L. Ed. 2d 705 (2007) ................................ 31, 36
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`RULES AND RULEMAKING
`PTAB Office Trial Practice Guide, July 2019 Update ....................................... 1, 25
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`2013
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`2014
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`2015
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`2016
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`2017
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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
`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.
`Order Denying Motion to Stay pending Inter Partes Review;
`Luminati v. Teso Lt UAB et al., E.D. Texas, Case No. 2:19-
`cv-00395-JRG, ECF 157
`Claim Construction Opinion and Order issued December 7,
`2020; Luminati v. Teso Lt UAB et al., E.D. Texas, Case No.
`2:19-cv-00395-JRG, ECF 191
`Declaration of Thomas M. Dunham
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`v
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`Patent Owner’s Preliminary Response
`IPR2020-01506 (Pat. 10,469,614)
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`INTRODUCTION
`Patent Owner Luminati Networks, Ltd. (“Patent Owner”) hereby submits this
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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
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`(“Petitioners”) requesting inter partes review of claims 1, 2, 4-13, 15-20, 22-23, 25-
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`26 and 28-29 (see Exhibit 1007, Petitioner’s list of challenged claims) of U.S. Patent
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`No. 10,469,614 (“the ‘614 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 (See Ex. 2006, Stipulation
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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).
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` 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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`from IPR2020-01266, Paper No. 14 at ¶¶ 5-6), begins jury selection on May 10,3
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`2021, over nine months before a final determination would be expected in this IPR.
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`Additionally, the district court just issued its 24-page Claim Construction Opinion
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`and Order on December 7, 2020 (e-mailed to the parties via ECF 191 on December
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`8, 2020).4 Thus, the Court has already invested significant resources issuing its 24-
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`page claim construction ruling months before an institution decision would even
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`issue in this proceeding. For at least these reasons, the Fintiv factors
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`overwhelmingly support the Board’s discretion to deny institution.
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`Second, the Challenged Claims of the ‘614 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 all of the claim terms (such as “first server” and “client
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`device”) are such that each of these distinctly-claimed devices would be met by
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`“general purpose computers” such that a “server” and a “client” are determined by
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`3 On November 5, 2020, the Court issued a docket entry resetting the jury selection
`date from May 3 to May 10, 2021. Ex. 2008.
`4 The Claim Construction Opinion and Order was issued by United States Magistrate
`Judge Hon. Roy S. Payne. Pursuant to E.D. Texas Local Rule CV-72 and 28 U.S.C.
`636 (b)(1)(C), the deadline for filing objections to the Magistrate’s claim
`construction order is 14-days after being served with a copy. 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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`reference “only to the role being performed by the program for that particular
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`connection.” (Paper 5 at 10-11). However, the role of a “client device” is
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`distinguished from the server and is a device that makes requests of the server.
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`Indeed, in discussing the Grounds, Petitioners equate these claim terms to ignore the
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`express limitations recited in the 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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` First Server < - > Client Device < - > Web Server
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`Petitioners concede this point, expressly stating that “the ‘client device’ –
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`after it is confirmed as available based on its utilization of resources – acts as an
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`intermediary to retrieve from a web server content requested by a ‘first server’…”
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`(Paper 5 at 8).
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`Yet the two 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 ‘614 claims:
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`Mithyantha: Client < - > Appliance < - > Server
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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 and 4 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 10, 2021, OVER NINE 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 5, 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 two dependent claims of the ‘614 Patent challenged here
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`are also asserted in the litigation. Paper 5 at 7. The district court and parties have
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`also expended substantial resources advancing the litigation, with the Court’s Claim
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`Construction Opinion and Order just issuing on December 7, 2020. Ex. 2016.
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`Additionally, while Petitioners argue that petitioner Code200’s status as not
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`having been sued for infringement of the ‘614 Patent bodes in favor of institution
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`(Paper 5, pages 5 and 7-8), the close corporate relationship between Code200 and
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`the remaining Petitioners has not been fully disclosed to the Board. When that close
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`relationship is considered (they are parent and multiple sister subsidiaries, all with
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`direct or indirect common or overlapping owners - Ex. 2007), it renders Petitioners’
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`arguments unpersuasive, if 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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`On October 1, 2020, Petitioners (excluding Code200, which is not a party to
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`the 395 District Court case) filed a sealed opposed motion to stay the 395 District
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`Court case pending the inter partes reviews in which they concede as a general rule
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`that such stays are not granted. See Ex. 2001 public/redacted version (“Oxylabs is
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`aware that this Court typically does not grant a stay pending IPRs not yet instituted.”)
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`The Court recently denied Petitioner’s motion as premature. See Order signed
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`October 29, 2020, filed October 30, 2020, ECF 157 (Ex. 2015). The Court held that
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`“a stay of these proceedings in advance of the PTAB’s decision on whether or not
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`to institute inter partes review of any of the Asserted Patents should be denied.”
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`The Court further ordered that the Defendants could refile the motion but only
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`after the Board’s institution decision on the last of the patents to be acted upon by
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`the Board:
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`“Accordingly, the Motion is DENIED WITHOUT PREJUDICE to
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`refiling of the same, which shall be permitted within fourteen (14) days
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`following the PTAB’s institution decision regarding the last of the
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`patents-in-suit to be acted upon by the PTAB.”
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`Id. at 3.
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`In summary, the Court: (i) denied a stay before an institution decision by the
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`Board; (ii) denied Defendants’ ability to seek a stay until after an institution decision
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`issues as to all of the district court patents involved under Board review; and (iii) has
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`not indicated one way or the other whether a stay is likely to be granted at that time.
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`Further, Petitioners have also mischaracterized the briefing in the prior
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`litigation proceeding. Patent Owner filed the complaint for the 395 District Court
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`case on December 6, 2019. Patent Owner then filed a motion to consolidate in the
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`then pending case of Luminati Networks Ltd. v. UAB Tesonet et. al., Case No. 2:18-
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`cv-299 (“Tesonet Case”), ECF 305 at 5, seeking a new trial date to be held as early
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`as July 2020 to accelerate the date by which Patent Owner’s ‘614 Patent
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`infringement claims would be tried. Petitioners Teso and Metacluster opposed that
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`motion by arguing that a trial date for this action in 2021 was more realistic (Tesonet
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`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 (and, further, the additional lateness that would be
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`associated with another round of briefing in the 395 District Court Case on any
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`renewed motion to stay), 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 10, 2021. See
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`November 5, 2020 docket entry, Exhibit 2008.
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`In contrast, the date for the Board’s projected final written decision is: (i)
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`Patent Owner’s POPR filing date of December 9, 2020; (ii) plus two-to-three months
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`for an estimated institution decision; (iii) plus a year more for a final determination,
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`the final written decision would be expected on February 9, 2022 or later. This is
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`approximately nine months after jury selection in the 395 District Court case.5
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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 mischaracterizes the positions
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`taken by Petitioner and Patent Owner. Moreover, Petitioners’ one-sentence
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`5 The Board should also consider the co-pending IPRs addressing the other patents
`asserted in the 395 District Court case. While those petitions (IPR2020-01266
`involving USP 10,257,319 and IPR2020-01358 involving USP 10,484,510) were
`filed before this Petition, the overlapping issues (prior art, Markman Order and the
`common trial and trial date) makes consideration of the institution decision on all
`three IPRs relevant to one another, including the fact that a final determination in
`this IPR would not be expected until approximately nine months after jury selection
`in the 395 District Court case.
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`reference to a potential COVID-19 trial delay (Paper 5 at 6) is also sheer speculation
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`at this point, more than five months before jury selection is scheduled. The PTAB
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`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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`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. That decision came among a series of Board decisions6
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`denying institution because, in part, the final determination date would have been 10
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`months after the district court trial would have taken place.
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`In a November 20, 2020 Order issued in the Infernal Technology, LLC v.
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`Sony Interactive case, E.D. Texas Chief Judge Gilstrap continued jury trials
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`scheduled from December 2020 to February 2021, and sua sponte issued the Order
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`in cases where motions for continuance had not been filed. The Order does not
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`6 Board decisions denying institution on the same day involving related IPRs
`between the same parties occurred in IPR2020-00720, IPR2020-00722, IPR2020-
`00723 and IPR2020-00724.
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`impact the present parallel district court case which has a trial date scheduled
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`outside of that time frame - May 10, 2021. See Exhibit 2008.
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`The at least nine-month delay from the time jury selection begins in the 395
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`District Court before an institution decision is due in this IPR strongly favors denial
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`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 parallel district court case is not at an early stage, as Petitioners allege.
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`Quite to the contrary. As of the time that Patent Owner’s POPR was filed in this
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`case on December 9, 2020, the Court’s 24-page Claim Construction Opinion and
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`Order had just issued on December 7, 2020 (e-mailed to the parties via ECF on
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`December 8, 2020). Ex. 2016. According to the Court’s docket entry, the Markman
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`hearing lasted 3 hours and 20 minutes, and involved both Court personnel and a
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`court-appointed technical advisor. Thereafter, on December 7, 2020, the Court
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`issued its Markman Order. Thus, the parties and the Court have already invested
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`heavily in the district court case by briefing the Markman issues, preparing for and
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`attending the Markman hearing, and issuing a 24-page Markman ruling months
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`before an institution decision would be expected in this proceeding.
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`Moreover, as Petitioners acknowledge (Paper 5 at 7), expert discovery in the
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`395 District Court case will close on January 21, 2021, which is approximately one
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`and a half months after the POPR in this case is due (on December 9, 2020) and one
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`and a half months before the three-months-after-POPR date for an institution
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`decision to issue (March 9, 2021).7
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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 ‘614 Patent claims based on two
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`primary references, namely U.S. Patent No. 8,972,602 to Mithyantha (Ex. 1011) and
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`Morphmix (Ex. 1012), and one secondary reference Internet Request for Comments,
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`namely RFC 2616. See Paper 5, for example at pages 11-12. Petitioner identified
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`all three of those pieces of prior art in its Invalidity Contentions served on Luminati
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`in the 395 District Court case. (See Ex. 2006, Stipulation from IPR2020-01266,
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`7 Fact discovery is set to close on December 14, 2020. The parties anticipate
`extending the date by one day to accommodate a witness deposition.
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`Paper No. 14 at ¶¶ 5-6). In fact, Petitioners do not even contest that the exact same
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`prior art is asserted in the 395 District Court 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, 4-7, 9-12, 15-20, 22-23, 25-26, 28-291 in the 395 District Court case, the
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`Petition also challenges dependent claims 8 and 13, which are not at issue in the
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`Lawsuit. Paper 5 at 7. This is not a significant difference, however. Only claim 1
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`of the ‘614 Patent is independent. The Petition therefore does not challenge any
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`other independent claim not asserted in the district court, because there are none.
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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 ‘614 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 pages 5 and 7-8) is
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`misleading in that it fails to acknowledge the close corporate relationship between
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`Code200 and the other defendants/petitioners. Specifically, Coretech LT is the
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`parent company of the sister Petitioners (Teso LT, Code200, Metacluster and
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`Oxysales). They were formed when Lithuanian company Tesonet changed its name
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`to Teso LT and reorganized in 2018. See Exhibits 2013 and 2014. (Ex. 2007 –
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`“Oxylabs further admits that, in 2018, Tesonet underwent a corporate restructuring
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`and, as a result of that restructuring, (i) Tesonet’s name was changed to Teso LT,
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`UAB and (ii) Metacluster, Oxysales, code200, UAB (“Code200”), and coretech lt,
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`UAB (“Coretech”) were created. Oxylabs admits that Teso, Metacluster, Oxysales,
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`Code200 and Coretech share, directly or indirectly, common or overlapping
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`owners.”) All of the petitioners, including Code200, are therefore under common
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`direct or indirect ownership and control. Id. That may explain why Code200
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`inserted itself into the present IPR petition without having been sued for
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`infringement of the ‘614 Patent – it is under the control of the petitioners’ common
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`owner, and thus presumably did so for the benefit of its parent Coretech Lt and sister
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`subsidiaries Teso LT, Metacluster and Oxysales who were sued for infringement of
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`the ‘614 Patent. Exhibits 2013 and 2014. With that relationship in mind, the fact
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`that Code200 has not been sued for infringement of the ‘614 Patent does not bode in
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`favor of institution, as the Petition alleges. To the contrary, it cuts against institution,
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`inasmuch as Code200 is related to the other petitioners and all of them are under the
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`control of their common parent company. That relationship, undisclosed and
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`certainly not fully explained by Petitioners, is a substantial factual omission, and
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`strongly favors denial of institution.8
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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 case.
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`Additionally, the asserted prior art is weak and does not render the ‘614 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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`8 If additional briefing is requested/permitted before an institution decision is made,
`the Petitioners should be required to affirmatively identify their current and past
`corporate relationship to one another, including Code200, and including ownership
`or control of one another. This should have been disclosed in the Petition, especially
`when Petitioners argued that Code200 should be treated differently than the other
`Petitioners simply because it is not a defendant in the 395 District Court case.
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`III. OVERVIEW - THE ‘614 PATENT DISCLOSES AND CLAIMS
`METHODS USING A NOVEL NETWORK ARCHITECTURE THAT
`IS NOT DISCLOSED IN ANY OF THE PRIOR ART ADVANCED BY
`PETITIONERS
`The ‘614 Patent describes a novel system using “tunnel devices serving as
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`intermediate devices” to fetch content from a web server. Ex. 1001 at Abstract. To
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`achieve the advantages described in the specification, the ‘614 Patent claims
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`methods utilizing a novel “first server – client device - web server” architecture,
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`whereby a “client device” serves as a proxy between the “first server” and a “web
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`server.”
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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 access
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`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 ‘614 Patent explains that the novel methods disclosed relate to a “method
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`for improving communication over the Internet by using intermediate nodes, and in
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`particular, using devices that may doubly function as an end-user and as an
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`intermediate node.” Ex. 2003 at 1:19-23. To create a new type of consumer-based
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`network that never existed before, the ‘614 Patent employs “client devices” that
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`operate as proxies. Id. at 83:15-25.
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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 “first server – client device – web server” architecture recited
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`in the claim:
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`1.
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`A method for use with a resource associated with a criterion in a
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`client device that communicates with a first server over the Internet, the client
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`device is identified in the Internet using a first identifier and is associated with
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`first and second state according to a utilization of the resource, the method
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`comprising:
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`initiating, by the client device, communication with the first server over
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`the Internet in response to connecting to the Internet, the communication
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`comprises sending, by the client device, the first identifier to the first server
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`over the Internet;
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`when connected
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`to
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`the Internet, periodically or continuously
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`determining whether the resource utilization satisfies the criterion;
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`responsive to the determining that the utilization of the resource
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`satisfies the criterion, shifting to the first state or staying in the first state;
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`responsive to the determining that the utilization of the resource does
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`not satisfy the criterion, shifting to the second state or staying in the second
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`state;
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`responsive to being in the first state, receiving, by the client device, a
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`request from the first server; and
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`performing a task, by the client device, in response to the receiving of
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`the request from the first server,
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`wherein the method is further configured for fetching over the Internet
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`a first content identified by a first content identifier from a web server that is
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`distinct from the first server, and the task comprising:
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`receiving, by the client device, the first content identifier from the first
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`server;
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`sending, by the client device, the first content identifier to the web
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`server;
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`receiving, by the client device, the first content from the web server in
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`response to the sending of the first content identifier; and
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`sending, by the client device, the received first content to the first
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`server.
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`It is clear from Claim 1 that the method, which is performed “by the client
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`device,” comprises inter alia:
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`- “receiving, by the client device, the first content identifier from the
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`first server”
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`- “sending, by the client device, the first content identifier to the web
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`server”
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`- “receiving, by the client device, the first content from the web server
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`…”; and
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`- “sending, by the client device, the received first content to the first
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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 ‘614 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 ‘614 Patent contains 29 claims, with only claim 1 being independent. The
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`Petition challenges claims 1-2, 4-13, 15-20, 22-23, 25-26 and 28-29 of the ‘614
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`Patent. In the 395 District Court case, Patent Owner is asserting claims 1-2, 4-7, 9-
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`12, 15-20, 22-23, 25-26 and 28-29. Thus, there is complete overlap regarding the
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`independent claim. Further, only dependent claims 8 and 13 are at issue in the
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`Petition but not in the 395 District Court case.
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`B. PRIORITY DATE
`The ‘614 Patent claims priority back through a chain of continuation
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`applications and one divisional application to provisional application number
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`61/870,815 filed August 28, 2013. Petitioners have not contested (for purposes of
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`the Petition) this priority date. (Paper 5 at 9).
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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 ‘614 Patent (such as Dr. Thomas Rhyne whose declaration is
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`concurrently submitted as Exhibit 2012) would be an individual who, as of August
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`28, 2013, the filing date of the provisional application, had a Master’s Degree or
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`higher in the field of Electrical Engineering, Computer Engineering, or Computer
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`Science or as of that time had a Bachelor’s Degree in the same fields and two or
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`more years of experience 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), at least in terms of affecting a decision as to whether to institute inter
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`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 pla