Trials@uspto.gov
`571-272-7822
`
`Paper 12
`Entered: April 20, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`TESO LT, UAB; CODE200, UAB; METACLUSTER LT, UAB;
`AND OXYSALES, UAB,
`Petitioner,
`v.
`LUMINATI NETWORKS LTD.,
`Patent Owner.
`
`IPR2021-00122
`Patent 10,484,511 B2
`
`
`
`Before THOMAS L. GIANNETTI, SHEILA F. McSHANE, and
`RUSSELL E. CASS, Administrative Patent Judges.
`
`McSHANE, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 12
`Entered: April 20, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`TESO LT, UAB; CODE200, UAB; METACLUSTER LT, UAB;
`AND OXYSALES, UAB,
`Petitioner,
`v.
`LUMINATI NETWORKS LTD.,
`Patent Owner.
`
`IPR2021-00122
`Patent 10,484,511 B2
`
`
`
`Before THOMAS L. GIANNETTI, SHEILA F. McSHANE, and
`RUSSELL E. CASS, Administrative Patent Judges.
`
`McSHANE, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`
`IPR2021-00122
`Patent 10,484,511 B2
`
`
`
`
`INTRODUCTION
`I.
`Background and Summary
`A.
`Teso LT, UAB; Code200, UAB; Metacluster LT, UAB; and Oxysales,
`UAB (“Teso” or “Petitioner”)1 filed a Petition requesting inter partes review
`of claims 1–5, 9, 14, 17, 20–22, 25, and 27–30 of U.S. Patent No.
`10,484,511 B2 (Ex. 1001, “the ’511 patent”), along with the supporting
`Declaration of Michael Freedman, Ph.D. Paper 5 (“Pet.”); Ex. 1010.
`Luminati Networks Ltd. (“Luminati” or “Patent Owner”) filed a Preliminary
`Response to the Petition, along with the Declaration of V. Thomas Rhyne,
`Ph.D. Paper 10 (“Prelim. Resp.”); Ex. 2006.
`We have authority under 35 U.S.C. § 314(a), which provides that an
`inter partes review may not be instituted “unless . . . the information
`presented in the petition . . . shows that there is a reasonable likelihood that
`the petitioner would prevail with respect to at least 1 of the claims
`challenged in the petition.”
`For the reasons that follow, we exercise our discretion under 35
`U.S.C. § 314(a) to deny institution of inter partes review.
`Related Matters
`B.
`The parties identify the related litigations, Luminati Networks Ltd. v.
`Code200, UAB, 2:19-cv-00396-JRG (E.D. Tex.) (“the 396 district court
`case”), Luminati Networks, Ltd. v. NetNut, Ltd., 2:20-cv-00188-JRG (E.D.
`Tex.), and Luminati Networks Ltd. v. Tefincom S.A. D/B/A NordVPN, 2:19-
`cv-00414-JRG (E.D. Tex.). Pet. 2; Paper 7, 3.
`
`
`1 Petitioner additionally identifies coretech lt, UAB as a real party-in-
`interest. Pet. 1.
`
`2
`
`
`
`IPR2021-00122
`Patent 10,484,511 B2
`
`
`The parties note another petition was filed in IPR2020-01266 (now
`denied) directed to U.S. Patent No. 10,257,319, which claims the benefit of
`the same provisional application and is a continuation of the same
`application as the ’511 patent. Pet. 1–2; Paper 7, 2. The parties note that
`another petition was filed in IPR2020-01358 (now denied) that asserted
`challenges to U.S. Patent No. 10,484,510, which claims the benefit of the
`same provisional application and is a continuation of the same application as
`the ’511 patent. Pet. 1–2; Paper 7, 3.
`The ’511 Patent
`C.
`The ’511 patent is titled “System Providing Faster and More Efficient
`Data Communication” and issued on November 19, 2019, from an
`application filed on February 17, 2019. Ex. 1001, codes (22), (45), (54).
`The application for the ’511 patent is a continuation of several applications,
`and other related applications include a divisional application and a
`provisional application. See id. at code (60).
`The ’511 patent is directed to a system and method for increasing
`network communication speed for users, while lowering network congestion
`for content owners and internet service providers (ISPs). Ex. 1001, code
`(57). The system employs network elements including an acceleration
`server, clients, agents, and peers, where communication requests generated
`by applications are intercepted by the client on the same machine. Id. The
`IP address of the server in the communication request is transmitted to the
`acceleration server, which provides a list of agents to use for this IP address.
`Id.
`
`The communication request is sent to the agents. Ex. 1001, code (57).
`One or more of the agents respond with a list of peers that have previously
`
`3
`
`
`
`IPR2021-00122
`Patent 10,484,511 B2
`
`seen some or all of the content which is the response to this request (after
`checking whether this data is still valid). Id. The client then downloads the
`data from these peers in parts and in parallel, thereby speeding up the Web
`transfer, releasing congestion from the Web by fetching the information
`from multiple sources, and relieving traffic from Web servers by offloading
`the data transfers from them to nearby peers. Id.
`Challenged claim 1 is the only independent claim. Claim 1 of the
`’511 patent is reproduced below.
`1. A method for fetching, by a first client device, a first content
`identified by a first content identifier and stored in a web server, for
`use with a first server that stores a group of IP addresses, the method
`by the first server comprising:
`
`receiving, from the first client device, the first content
`identifier;
`
`selecting, in response to the receiving of the first content
`identifier from the first client device, an IP address from the
`group;
`
`sending, in response to the selecting, the first content identifier
`to the web server using the selected IP address;
`
`receiving, in response to the sending, the first content from the
`web server; and
`
`sending the received first content to the first client device,
`wherein the first content comprises a web-page, an audio, or a
`video content, and wherein the first content identifier comprises
`a Uniform Resource Locator (URL).
`Ex. 1001, 19:16–33.
`
`4
`
`
`
`IPR2021-00122
`Patent 10,484,511 B2
`
`
`35 U.S.C. §
`102(b)2
`
`Reference(s)/Basis
`Crowds3
`
`103(a)
`
`102(b)
`
`103(a)
`
`103(a)
`
`Crowds, RFC 26164
`
`Cohen5
`
`Cohen, RFC 2616
`
`Asserted Grounds of Unpatentability
`D.
`Petitioner challenges the patentability of claims of the ’511 patent on
`the following grounds:
`Claim(s) Challenged
`1–5, 9, 14, 17,
`20–22, 25, 27–30
`1–5, 9, 14, 17,
`20–22, 25, 27–30
`1, 14, 17, 20–22,
`25, 27–30
`1, 14, 17, 20–22,
`25, 27–30
`1, 14, 17, 20–22,
`25, 27–30
`Pet. 5.
`
`Kocherlakota6, RFC 2616
`
`II. DISCRETIONARY DENIAL UNDER § 314(a)
`A. Overview
`
`Patent Owner requests that we exercise our discretion under 35 U.S.C.
`
`§ 314(a) to deny the Petition under Apple Inc. v. Fintiv, Inc., IPR2020-
`00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”). Prelim.
`Resp. 1–2, 5–15.
`
`2 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 287–88 (2011), amended 35 U.S.C. § 103, effective March 16,
`2013. Because the ’511 patent claims priority to a provisional application
`that was filed before this date, with Petitioner not contesting that priority, the
`pre-AIA versions of §§ 102, 103 apply. See Ex. 1001, code (60); Pet. 10.
`3 Michael K. Reiter, Crowds: Anonymity for Web Transactions, ACM
`Transactions on Information and System Security, Vol. 1, No. 1, November
`1998, at 66–92 (Ex. 1012).
`4 Hypertext Transfer Protocol—HTTP/1.1, Network Working Group, RFC
`2616, The Internet Society, 1999 (Ex. 1011).
`5 U.S. Patent No. 6,389,462 B1, issued May 14, 2002 (Ex. 1014).
`6 U.S. Patent No. 6,785,705 B1, issued August 31, 2004 (Ex. 1015).
`
`5
`
`
`
`IPR2021-00122
`Patent 10,484,511 B2
`
`In assessing whether to exercise such discretion, the Board weighs the
`
`following factors:
`1. whether the court granted a stay or evidence exists that one
`may be granted if a proceeding is instituted;
`2. proximity of the court’s trial date to the Board's projected
`statutory deadline for a final written decision;
`3. investment in the parallel proceeding by the court and the
`parties;
`4. overlap between issues raised in the petition and in the
`parallel proceeding;
`5. whether the petitioner and the defendant in the parallel
`proceeding are the same party; and
`6. other circumstances that impact the Board’s exercise of
`discretion, including the merits.
`Fintiv at 6. Recognizing that “there is some overlap among these factors”
`and that “[s]ome facts may be relevant to more than one factor,” the Board
`“takes a holistic view of whether efficiency and integrity of the system are
`best served by denying or instituting review.” Id.
`
`As identified above, the 396 district court case, which involves the
`’511 patent, is pending in the Eastern District of Texas. See Pet. 2; Paper 7,
`2; Prelim. Resp. 1–2. A Docket Control Order entered in that case set
`February 22, 2021, as the deadline for completing fact discovery, March 29,
`2021, as the deadline for completing expert discovery, and July 12, 2021, for
`jury selection for a trial. Ex. 1005, 1, 3. The District Court has conducted a
`claim construction hearing on January 29, 2021, and, on February 8, 2021,
`issued a Claim Construction Opinion and Order. See Prelim. Resp. 6; Ex.
`2002.
`
`
`We address each Fintiv factor below.
`
`6
`
`
`
`IPR2021-00122
`Patent 10,484,511 B2
`
`
`B. Factor 1 – Stay of Related Litigation Proceeding
`No party has requested a stay in this case. Pet. 6; Prelim Resp. 7.
`
`Petitioner argues that because the Board has previously “decline[d] to infer”
`how a district court would decide a stay motion, this factor is neutral. Pet. 6
`(alteration in original).
`
`Patent Owner refers to Petitioner’s filing of a motion to stay in
`Luminati Networks Ltd. v. Teso LT, UAB, No. 2:19-cv-395 (E.D. Texas),
`which concerns related patents, as instructive. Prelim. Resp. 7. Patent
`Owner argues that in that case, Petitioner conceded that, as a general rule,
`“such stays are not granted.” Id. (emphasis omitted). Patent Owner also
`asserts that in that case: (1) the stay motion was denied before an institution
`decision by the Board; (2) Petitioner could not again seek a stay “until after
`an institution decision issues as to all of the district court patents involved
`under Board review;” and (3) the District Court did not indicate one way or
`the other as to whether a stay would likely be granted at that time. Id. at 7–
`8. Patent Owner argues that in light of that ruling, the District Court would
`be unlikely to grant a stay pending institution in the 396 district court case.
`Id. at 8.
`
`We are not persuaded by Patent Owner’s argument because it relies
`on guesswork concerning future District Court actions. We, therefore,
`decline to speculate on the likelihood of how the District Court may rule on
`a future motion to stay. Accordingly, we find that this factor is neutral.
`
`C. Factor 2 — Proximity of Court’s Trial Date
`
`Patent Owner argues that the Petition should be denied because jury
`selection in the 396 district court case is scheduled approximately ten
`
`7
`
`
`
`IPR2021-00122
`Patent 10,484,511 B2
`
`months before a final determination would issue in this case, if it were
`instituted. Prelim. Resp. 8.
`
`Petitioner alleges that Patent Owner has previously sought to delay
`trials as the set trial date approaches. Pet. 6 (referring to Luminati Networks
`Ltd. v. UAB Tesonet, No. 2:18-cv-00299-JRG (E.D. Tex.)). Petitioner also
`notes that there are seven other cases (six patent cases and one copyright
`case) currently set for jury selection before the Judge Gilstrap on the same
`date as the scheduled jury selection in the 396 district court case. Id. at 7
`(citing Ex. 1038). Petitioner argues that these jury selections cannot occur at
`the same time, and it is likely that the current trial date will be pushed back.
`Id. Petitioner argues that in light of Patent Owner’s history, the busy District
`Court docket, and the potential for COVID-related delays, Factor 2 is
`neutral. Id.
`
`Patent Owner argues that Petitioner’s reference to a potential COVID-
`19 trial delay is speculative, as is Petitioner’s suggestion that the jury
`selection date will be moved because of other pending cases. Prelim. Resp.
`11. Patent Owner also asserts that whether Patent Owner settled a prior
`lawsuit at the pretrial conference is irrelevant here, because that settled case
`does not mean that this case will settle, given the different facts and parties
`at issue. Id. at 9.
`
`As Patent Owner asserts, the related jury trial in the 396 district court
`case is currently scheduled to occur approximately ten months before a final
`determination would issue in this case. Although realistically there may be
`some delay in the trial date, due to crowded docket conditions or other
`factors, presuming that there would be extensive delay would be conjecture
`
`8
`
`
`
`IPR2021-00122
`Patent 10,484,511 B2
`
`at this time. Accordingly, given the ten month difference in dates, this factor
`favors discretionary denial of inter partes review.
`
`D. Factor 3 — Investment in the Parallel Proceeding
`
`Petitioner notes that this Petition was filed less than four months after
`the asserted claims were disclosed in the 396 district court case and nearly
`six months before co-petitioner’s statutory deadline for filing an inter partes
`review.7 Pet. 7. However, there has been substantial investment by the
`parties and the District Court in the litigation. It is undisputed that at this
`time claim construction briefing is completed in the 396 district court case, a
`Markman hearing has been conducted, and a claim construction order issued
`which includes interpretation of claim terms associated with the ’511 patent.
`See Ex. 2002. Under the Docket Control Order, fact discovery in the case
`was completed on February 22, 2021, and expert discovery was completed
`on March 29, 2021. See Ex. 1005, 1, 3. The parties have not advised us of
`any changes to those dates as scheduled.
`
`Accordingly, in view of the substantial progress and investment in the
`396 district court case, we agree with Patent Owner that this factor favors
`denial of institution of inter partes review. See Prelim. Resp. 12.
`E. Factor 4 — Overlap With Issues Raised in Parallel Proceeding
`
`
`Petitioner asserts that because claims 1, 14, 17, 20–22, 25, and 27–30
`of the ’511 patent are asserted in the 396 district court case, but the Petition
`also challenges claims 2–5, this factor weighs in favor of institution. Pet. 8.
`
`Patent Owner argues that the overlap of the issues raised in Petition
`and the 396 district court case are substantial. Prelim. Resp. 12. More
`
`
`7 As noted below, Teso LT, the first-named petitioner, is not a defendant in
`the 396 district court case.
`
`9
`
`
`
`IPR2021-00122
`Patent 10,484,511 B2
`
`specifically, Patent Owner contends that the Crowds, Cohen, Kocherlakota,
`and RFC 2616 prior art references asserted in the challenges in this
`proceeding are all identified in the invalidity contentions in the 396 district
`court case. Id. at 12–13 (citing Paper 9). Patent Owner further asserts that
`only claim 1 of the ’511 patent is independent, and the additional claims
`challenged in the Petition are all dependent claims. Id. at 13. Thus, Patent
`Owner argues that there is no independent claim challenged here that is not
`also asserted in the District Court case, and that the additional dependent
`claims challenged here do not represent a significant difference. Id.
`
`We note that it is stipulated that the parties to the Petition, excluding
`Teso LT which is not a defendant in the 396 district court case, are asserting
`the same references—Crowds, Cohen, Kocherlakota, and RFC 2616—for
`their challenges here and in the district court case. Paper 9 ¶ 2.
`
`In light of the common prior art asserted here and in the 396 district
`court case, as well as the common challenge to the sole independent claim of
`the ’511 patent, we agree with the Patent Owner that the overlap in issues
`between the two proceedings is substantial. Accordingly, we determine that
`this factor favors denial of institution of inter partes review.
`
`F. Factor 5 — Commonality of Parties in Parallel Proceedings
`
`Petitioner asserts that Teso LT is a named petitioner here, but is not a
`defendant in the 396 district court case, although it has been sued for
`infringement in cases asserting other related patents. Pet. 8. Patent Owner
`argues that three of the four named petitioners are also defendants in the 396
`district court case. Prelim. Resp. 13–14. Patent Owner also asserts that
`there is a close corporate relationship between Teso LT and the other named
`
`10
`
`
`
`IPR2021-00122
`Patent 10,484,511 B2
`
`petitioners because they admittedly are sister companies. Id. at 14 (citing
`Paper 5, 5).
`
`Given the commonality of most of the petitioners in this proceeding
`and 396 district court case, and the close relationship of all the petitioners,
`we find that this factor favors denial of institution.
`G. Factor 6 — Other Circumstances
`
`
`Petitioner contends that the challenged patent is “extraordinarily
`weak,” and policy favors instituting review under these circumstances. Pet.
`8. Patent Owner disagrees, arguing that Petitioner’s reading of the claims is
`unreasonable and the asserted prior art is weak. Prelim. Resp. 15. Patent
`Owner also asserts that NetNut Ltd. filed an ex parte reexamination request
`against the ’511 patent, which was granted. Id. As such, Patent Owner
`argues that the Patent Office is already considering validity issues of the
`’511 patent. Id.
`
`We have reviewed Petitioner’s unpatentability arguments and Patent
`Owner’s preliminary responses, and based on the limited record before us,
`we do not find that the merits outweigh the other Fintiv factors favoring
`denial of institution.
`
`H. Conclusion
`
`The majority of the Fintiv factors, and particularly factor 2, the
`proximity of the trial date in the 396 district court case, factor 3, the
`substantial investment at the time of the institution decision, and factor 4, the
`overlap of issues, favor the denial of institution. Thus, based on our holistic
`assessment of the Fintiv factors, we exercise our discretion under 35 U.S.C.
`§ 314(a) to deny inter partes review.
`
`11
`
`
`
`IPR2021-00122
`Patent 10,484,511 B2
`
`
`III. ORDER
`
`Accordingly, it is:
`ORDERED that the Petition is denied as to all grounds and all
`challenged claims of the ’511 patent.
`
`12
`
`
`
`IPR2021-00122
`Patent 10,484,511 B2
`
`For PETITIONER:
`
`Craig Tolliver
`George Scott
`CHARHON, CALLAHAN, ROBSON & GARZA, PLLC
`ctolliver@ccrglaw.com
`jscott@ccrglaw.com
`
`For PATENT OWNER:
`Thomas Dunham
`Don Livornese
`RUYAKCHERIAN LLP
`tomd@dunham.cc
`donl@ruyakcherian.com
`
`13
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
