throbber
Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 11
`Entered: August 12, 2021
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`NETNUT LTD.,
`Petitioner,
`v.
`BRIGHT DATA LTD,
`(f/k/a LUMINATI NETWORKS, LTD.),
`Patent Owner.
`
`IPR2021-00458
`Patent 9,241,044 B2
`
`
`
`Before THOMAS L. GIANNETTI, SHEILA F. McSHANE, and
`RUSSELL E. CASS, Administrative Patent Judges.
`
`GIANNETTI, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`NetNut Ltd. v. Bright Data Ltd.
`IPR2021-01492, EX. 1105
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`IPR2021-00458
`Patent 9,241,044 B2
`
`
`INTRODUCTION
`I.
`NetNut Ltd. (“Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting
`an inter partes review of claims 81, 82, 87–100, and 108 (the “challenged
`claims”) of U.S. Patent No. 9,241,044 B2 (Ex. 1001, “the ’044 patent”).
`Patent Owner, Bright Data, Inc. (formerly known as Luminati Networks
`Ltd.,)1, filed a Preliminary Response (Paper 8, “Prelim. Resp.”). With
`authorization of the panel. Petitioner filed a Reply (Paper 9, “Pet. Supp.
`Reply”) and Patent Owner a Sur-reply (Paper 10. “PO Supp. Sur-Reply”),
`addressing a specific argument raised by Patent Owner in the Preliminary
`Response. See Section III, infra.
`The Board has authority to determine whether to institute an inter
`partes review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C.
`§ 314(a), we may not authorize an inter partes review unless the information
`in the petition and the preliminary response “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 stated below, we determine that Petitioner has
`established a reasonable likelihood that it would prevail with respect to at
`least one challenged claim. We therefore institute inter partes review as to
`all of the challenged claims of the ’044 patent and all of the asserted grounds
`of unpatentability in the Petition.
`
`
`1 Patent Owner advised the Board of the name change in an Updated
`Mandatory Notice. Paper 7. The Board considers this as a request to reform
`the caption, and accordingly grants the request. Going forward, the caption
`and further filings in this matter will reflect the name change.
`
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`
`II. BACKGROUND
`A. Related Matters
`The parties identify no pending district court proceedings involving
`the ’044 patent. Pet. 1–3, Paper 4, 2. Patent Owner identifies three district
`court cases involving the ’044 patent and a related patent (U.S. Patent No.
`9,742,866 (“the ’866 patent”): Luminati Networks Ltd. v. UAB Tesonet, No.
`2:18-cv-299 (E.D. Texas) (closed); Luminati Networks Ltd. v. BI Science
`Inc., No. 2:18-cv-483 (E.D. Texas) (final judgment recently entered,
`entering appeal stage)2; and Luminati Networks Ltd. v. IP Ninja Ltd., No.
`2:19-cv-196 (E.D. Texas) (closed). Paper 4, 2. Patent Owner identifies
`several additional cases (now dismissed) involving the ’044 patent. Prelim.
`Resp. 2. The parties also identify numerous district court actions involving
`patents related to the ’044 patent, including an action between Patent Owner
`and Petitioner involving patents other that the ’044 patent and ’866 patent.
`Pet. 2–4, Paper 4, 3.
`The ’044 patent was previously before the Board in IPR2020-00166
`(terminated). Pet. 3; Prelim. Resp. 5. In addition, Patent Owner identifies
`other PTO proceedings involving patents related to the ’044 patent,
`including IPR2021-00465, involving the ’866 patent, in which, as here, the
`petitioner is NetNut Ltd. Paper 4, 2.
`
`
`22 Patent Owner advises us that the appeal in this case has been suspended
`pending resolution by the district court of a dispute over the settlement
`agreement. Prelim. Resp. 2, 9–10.
`
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`
`B. Real Parties-in-Interest
`Petitioner identifies NetNut Ltd. as the real party-in-interest. Pet. 1.
`Patent Owner identifies Bright Data Ltd. as the real party-in-interest. Paper
`7, 1. At this stage, neither party challenges those identifications.
`C. The ’044 Patent (Ex. 1001)
`The ’044 patent is titled “System and Method for Improving Internet
`Communication by Using Intermediate Nodes.” Ex. 1001, (54). According
`to the Abstract, “[a]method for fetching a content from a web server to a
`client device is disclosed, using tunnel devices serving as intermediate
`devices.” Id. at (57). This is illustrated in Figure 5, following:
`
`
`Figure 5 depicts, schematically, client devices, tunnel devices, and servers
`connected to the Internet. Ex. 1001, 76:32–33. Figure 5 shows system 30
`including client devices #1 and #2 (31a and 31b, respectively), that may
`access data servers 22a and 22b using one or more tunnel devices 33a, 33b,
`
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`33c, under the management and control of acceleration server 32. Id. at
`81:32–41.
`
`The client devices access the acceleration server to receive a list of
`available tunnel devices. Id. at (57). The requested content is partitioned
`into slices, and the client devices send a request for the slices to the available
`tunnel devices. Id. The tunnel devices in turn fetch the slices from the data
`server and send the slices to the client devices, where the content is
`reconstructed from the received slices. Id.
`
`The patent further discloses that the functionality of any device
`described in the patent may be implemented using multiple physical devices.
`Ex. 1001, 93:50–51. One example is shown in Figure 13, following:
`
`
`Figure 13 depicts schematically client devices, tunnel devices, and servers
`connected to the Internet, where the client device is implemented using a
`proxy server. Ex. 1001, 77:4–6. As shown in Figure 13, the functionality of
`
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`client device 133 may be split between computer 132 and proxy server 131.
`Id. at 93:55–57.
`
`D. Illustrative Claim
`The ’044 patent has 108 claims. Claims 81, 82, 87–100, and 108 are
`challenged in the Petition. Pet. 1. Of the challenged claims, claims 81 and
`108 are the independent claims. Claim 81 is illustrative of the subject matter
`and is reproduced below:
`81. A method for fetching over the Internet a first
`content, identified by a first content identifier, by a first device,
`identified in the Internet by a first identifier, from a second
`server identified in the Internet by a third identifier via a second
`device identified in the Internet by a second identifier, using a
`first server, the method comprising the steps of:
`(a) sending the first identifier to the first server;
`(b) sending a first request to the first server;
`(c) receiving the second identifier from the first server;
`(d) sending a second request to the second device using
`the second identifier, the second request includes the first
`content identifier and the third identifier; and
`(e) receiving the first content from the second device.
`Ex. 1001, 173:19–31. Each of the challenged dependent claims depends,
`directly or indirectly, from claim 81.
`E. Prior Art References and Other Evidence
`Petitioner relies on the following references:
`1. Fielding, et al., RFC 2616, Hypertext Transfer
`Protocol -- HTTP/1.1, Internet Engineering Task Force,
`Network Working Group (June 1999) (Ex. 1007, “RFC 2616”);
`
`
`
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`
`2. Leech et al., RFC 1928, Socks Protocol, Version 5,
`Internet Engineering Task Force, Network Working Group
`(Mar. 1996) (Ex. 1009, “RFC 1928”);
`3. Wessels, Squid: The Definitive Guide, O’Reilly
`Media, 1st Ed. (Jan. 1, 2004) (Ex. 1012, “Squid”);
`4. Luotonen, Web Proxy Servers, Prentice Hall, 1st Ed.
`(Dec. 30, 1997) (Ex. 1014, “Web Proxy Servers”);
`5. Shribman et al., U.S. Patent Pub. No. 2011/0087733
`(Apr. 14, 2011) (Ex. 1017, “Shribman”);
`6. European Patent Pub. EP 2 597 869 A1 by Sharp
`Kabushiki Kaisha (May 29, 2013) (Ex. 1018, “Sharp KK”); and
`7. Prince et al. U.S. Patent Pub. No. 2013/0080575 (Mar.
`28, 2013) (Ex. 1021, “Prince”);
`8. Printout of VIP72 YouTube web page at
`https://www.youtube.com/watch?v=L0Hct2kSnn4 (retrieved
`Nov. 21, 2019) (Ex. 1027), and scene images extracted from
`VIP72.com/nvpnnet, MPEG-14 video recording (published
`Sept. 11, 2011) (Ex. 1028) (collectively, “VIP72.com”).
`In addition, Petitioner relies on a Declaration of Keith D. Teruya. Ex.
`
`1003 (“Teruya Decl.”). Patent Owner submitted a Declaration of Dr. V.
`Thomas Rhyne with the Preliminary Response. Ex. 2001 (“Rhyne Decl.”).
`E. The Asserted Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability. Pet. 20.
`
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`
`Claim(s) Challenged
`
`81, 87, 89, 92–100, 108
`
`82
`
`88
`
`90, 91
`
`81, 82, 108
`
`81, 82, 108
`
`81, 82
`
`Basis
`35 U.S.C. §
`1033
`
`Reference(s)
`
`Shribman
`
`103
`
`103
`
`103
`
`103
`
`103
`
`103
`
`Shribman, RFC 2616
`Shribman, RFC 2616,
`Squid
`Shribman, RFC 2616,
`Web Proxy Servers
`VIP72.com, RFC 2616,
`RFC 1928
`Sharp KK, RFC 2616
`
`Prince, RFC 2616
`
`III. DISCRETIONARY DENIAL
`Patent Owner contends that the Board should exercise its discretion
`under 35 U.S.C. § 314(a) to deny the Petition because “Petitioner . . . is
`ostensibly using its IPR petitions directed to US Patent Nos. 9,241,044 and
`9,742,866 . . . as PTAB tools to pressure Bright Data to settle its ongoing
`Eastern District of Texas litigation with [Petitioner] involving . . . different
`patents.” Prelim. Resp. 3. Patent Owner relies on the Board’s precedential
`opinion in General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha,
`IPR2016-01357, Paper 19 (PTAB Sept. 6, 2017). Id. at 10. As Petitioner
`acknowledges, the Petition here presents “substantially the same grounds as
`the petition filed by an unrelated party, BI Science, Ltd., in IPR2020-
`00166.” Pet. 8. Patent Owner contends that the factors set forth in General
`
`
`3 Because the application from which the ’044 patent issued was filed after
`March 16, 2013, citations to 35 U.S.C. § 103 are to the post-AIA version.
`Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29.
`
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`Plastic should apply, as well as “additional factors,” to compel denial of the
`Petition. Prelim. Resp. 10–20; PO Supp. Sur-reply 1–5.
`
`As Petitioner points out, the facts in General Plastic are not like those
`presented by this case. Pet. Supp. Reply 1–2. In General Plastic, a
`petitioner filed a first set of petitions for inter partes review that were denied
`on the merits. Nine months later, the same petitioner filed a second round of
`petitions, directed to the same claims of the same patents as the first set of
`petitions, but citing new prior art. General Plastic, Paper 19 at 7–8. It was
`against this factual background that the Board set out a list of seven factors
`to consider when asked to exercise its discretion to deny review of follow-on
`petitions. Id. at 7–10. Those factors are the following:
`1. whether the same petitioner previously filed a petition
`directed to the same claims of the same patent;
`2. whether at the time of filing of the first petition the petitioner
`knew of the prior art asserted in the second petition or should
`have known of it;
`3. whether at the time of filing of the second petition the
`petitioner already received the patent owner’s preliminary
`response to the first petition or received the Board’s decision on
`whether to institute review in the first petition;
`4. the length of time that elapsed between the time the petitioner
`learned of the prior art asserted in the second petition and the
`filing of the second petition;
`5. whether the petitioner provides adequate explanation for the
`time elapsed between the filings of multiple petitions directed
`to the same claims of the same patent;
`6. the finite resources of the Board; and
`7. the requirement under 35 U.S.C. § 316(a)(11) to issue a final
`determination not later than 1 year after the date on which the
`Director notices institution of review.
`
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`General Plastic, Paper 19 at 16. In setting forth these factors, the Board
`made it clear that “[t]here is no per se rule precluding the filing of follow-on
`petitions after the Board’s denial of one or more first-filed petitions on the
`same patent.” Id. at 15.
`The first of the General Plastic considerations is “whether the same
`petitioner previously filed a petition directed to the same claims of the same
`patent.” Id. at 9. Here, as both parties recognize, the prior petitions
`challenging the ’044 and ’866 patents were not filed by Petitioner, but by an
`unrelated third party, BI Science, Ltd. Pet. 8; Prelim. Resp. 12.
`Furthermore, the earlier petitions were not denied on the merits, as in
`General Plastic, but were terminated due to a settlement before the
`preliminary responses were filed. Pet. Supp. Reply 4.
`
`Patent Owner contends that “the General Plastic factors also apply to
`circumstances where the same party does not file multiple petitions – in
`other words, when a second party files a second petition directed to the
`claims of the same patent that is the subject of the first petition.” Prelim.
`Resp. 12. Thus, Patent Owner contends that the first General Plastic factor
`here “is neutral.” Id. We do not agree.
`Patent Owner supports its argument by citing a non-precedential panel
`decision in United Fire Protection Corp. v. Engineered Corrosion Solutions
`LLC, IPR2018-00991, Paper 10 (PTAB Nov. 15, 2019). The panel in that
`case concluded that “the General Plastic factors provide a useful framework
`for analyzing the facts and circumstances present in this case, in which a
`different petitioner filed a petition challenging a patent that had been
`challenged already by previous petitions.” United Fire Protection, Paper 10
`at 11. According to Patent Owner, “Petitioner’s argument that General
`
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`Plastic does not apply when there is a different second petitioner was
`explicitly rejected by the Board” in United Fire Protection. Prelim. Resp.
`11.
`
`Patent Owner’s reliance on United Fire Protection as support for its
`request for discretionary denial in this case is misplaced. United Fire
`Protection is a non-precedential panel decision that does not bind
`subsequent panels, and is, in any case, distinguishable on its facts. For
`example, in United Fire Protection, the patent owner’s preliminary response
`and the Board’s decision on institution had been available for nearly two
`years before the second petition was filed. United Fire Protection, Paper 10
`at 13. Here, the BI System proceedings were terminated before a
`preliminary response was filed.
`Moreover, a later decision, not cited by either party, provides the
`Board’s precedential guidance on the question of when a later petition by
`another party should be considered under General Plastic. See Valve Corp.
`v. Elec. Scripting Prods., IPR2019-00062, Paper 11 (PTAB Apr. 2, 2019)
`(designated precedential May 7, 2019). In Valve Corp., the Board applied
`the General Plastic factors in denying institution of an inter partes review,
`where the first and subsequent petitions were filed by different parties.
`Paper 11 at 1. In analyzing the first General Plastic factor, the Board
`remarked: “[O]ur application of the General Plastic factors is not limited
`solely to instances when multiple petitions are filed by the same petitioner.”
`Id. at 2. However, as the Board went on to explain: “Rather, when different
`petitioners challenge the same patent, we consider any relationship between
`those petitioners when weighing the General Plastic factors.” Id. (emphasis
`added). In concluding that the first factor weighed against institution, the
`
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`Board noted “there is a significant relationship between [petitioners] Valve
`and HTC with respect to Patent Owner’s assertion of the ’934 patent.” Id. at
`10. Among other things, the Board remarked that “Valve and HTC were co-
`defendants in the District Court litigation and were accused of infringing the
`’934 patent based on HTC’s VIVE devices that incorporate technology
`licensed from Valve.” Id.
`Patent Owner has alleged no such significant relationship between
`Petitioner and BI Science. The best argument Patent Owner has been able to
`present is that Petitioner is using the same counsel and expert as BI Science,
`and presents the same arguments against patentability in its Petition. Prelim.
`Resp. 6. We see nothing untoward in this, which may simply be a matter of
`saving costs by hiring counsel and experts already knowledgeable in the
`subject matter. See Pet. Supp. Reply 3. Nor do we find the allegations of an
`ulterior motive on the part of Petitioner in filing its petitions convincing.
`Prelim Resp. 7–9.
`We are not convinced that the other General Plastic factors, to the
`extent that they are applicable, outweigh the strong showing in favor of
`Petitioner on factor 1. Factor 2 asks “whether at the time of filing of the first
`petition the petitioner knew of the prior art asserted in the second petition or
`should have known of it.” The Petitioner here was not involved in the prior
`proceeding challenging the ’044 patent. Thus, whether Petitioner knew of or
`should have known of the asserted references at the time of the prior petition
`is of little probative value.
`The other General Plastic questions concerning timing of the second
`petition under factors 3, 4, and 5 do not favor Patent Owner’s position.
`Factor 3 asks “whether at the time of filing of the second petition the
`
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`petitioner already received the patent owner’s preliminary response to the
`first petition or received the Board’s decision on whether to institute review
`in the first petition.” As General Plastic explains, “factor 3 is directed to
`Petitioner’s potential benefit from receiving and having the opportunity to
`study Patent Owner’s Preliminary Response, as well as our institution
`decisions on the first filed petitions, prior to its filing of follow-on petitions.”
`General Plastic, Paper 19 at 17. Here, as already noted, the previous
`proceedings with BI Science were terminated before a preliminary response
`was filed or the Board had rendered a decision on institution. Thus, no
`roadmap of Patent Owner’s position or the Board’s reasoning was available
`to Petitioner as a result. Cf. PO Supp. Sur-reply 4.
`Similarly, the timing of the second petition in relation to the filing of
`the first petition (factor 4), and when petitioner learned of the prior art
`(factor 5) are more pertinent to the situation where the second petition is
`filed by a party using prior art allegedly newly discovered after receiving the
`Board’s unfavorable decision, as was the case in General Plastic, or after a
`preliminary response was filed in the first case. General Plastic, Paper 19 at
`10.4 That is not the situation before us here. Thus, we determine that
`Factors 4 and 5 do not weigh in favor of exercising our discretion to deny
`institution.
`Patent Owner contends factors 6 and 7 favor denial of institution.
`Prelim. Resp. 16–17. According to Patent Owner, “this is not a case in
`which the Board should utilize its finite resources.” Id. at 16. Patent Owner
`
`
`4 The petitioner’s search for new prior art in General Plastic did not
`commence until after the Board had issued final written decisions denying
`the first round of petitions. General Plastic, Paper 19 at 10.
`
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`reasons that “[Petitioner] has not been accused of or sued for infringement of
`the ‘044 or ‘866 patents by Bright Data so it has no direct interest in the
`patentability of the ‘044 and ‘866 patents.” Id. We do not agree. There is
`no requirement that a petitioner demonstrate a “direct interest” in order to
`file a petition. Nor is there any risk that this panel will be able to meet the
`one-year deadline under 35 U.S.C. § 316(a)(1). We are persuaded that these
`factors favor institution.
`Finally, we decline Patent Owner’s invitation to adopt additional
`Factors 8 and 9. Prelim. Resp. 18–19. These new factors address
`Petitioner’s selection of counsel and its motivation in filing the Petition. As
`discussed supra, we do not find these arguments convincing.
`We therefore conclude that, after considering Petitioner’s and Patent
`Owner’s arguments, the General Plastic factors weigh against exercising our
`discretion to deny review.
`
`IV. ANALYSIS OF THE CHALLENGED CLAIMS
`A. Obviousness
`A claim is unpatentable as obvious under 35 U.S.C. § 103 “if the
`differences between the claimed invention and the prior art are such that the
`claimed invention as a whole would have been obvious before the effective
`filing date of the claimed invention to a person having ordinary skill in the
`art to which the claimed invention pertains.” 35 U.S.C. § 103 (2011). The
`question of obviousness is resolved on the basis of underlying factual
`determinations, including: (1) the scope and content of the prior art; (2) any
`differences between the claimed subject matter and the prior art; (3) the level
`of skill in the art; and (4) so-called “secondary considerations,” including
`commercial success, long-felt but unsolved needs, failure of others, and
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`unexpected results. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`At this stage, neither party has presented any evidence on the fourth Graham
`factor.
`
`B. Level of Ordinary Skill in the Art
`According to Petitioner, “[a] person of ordinary skill in the art . . . in
`
`the technical field of the ’044 patent would have had a working familiarity
`with widely-used Internet utility software and the principal published RFC
`(Request for Comment) publications of the Internet Engineering Task Force,
`as well as leading International Standards Organization (ISO) standards for
`the encoding and transmission of Internet content such as streaming video.”
`Pet. 15. Further, Petitioner asserts:
`The qualifications of such a person would include (1) at
`least a bachelor’s degree or equivalent in a field such as
`Electrical Engineering, Computer Engineering, or
`Computer Science, or an equivalent field that includes
`network engineering as a topic of study, plus at least one
`years of practical academic or industry technical
`experience in the computer network field, such as
`serving as an engineer for an Internet service provider
`performing network design, development, or
`
`configuration tasks, or as a software developer for
`
`network communications software or related utility
`
`software, and with working familiarity with the principal
`
`Internet RFCs and ISO standards, or (2) at least three
`
`years’ fulltime technical experience as stated (or an
`
`equivalent combination of academic study and work
`
`experience).
`
`Id. (citing Teruya Decl. ¶¶ 25–27).
`
`
`
`
`
`
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`At this stage, Patent Owner does not dispute Petitioner’s formulation
`
`of a person of ordinary skill in the art.5
`
`We regard Petitioner’s definition as consistent with the ’044 patent
`and the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355
`(Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill).
`Therefore, for the purpose of this decision, we adopt Petitioner’s
`formulation.
`
`C. Claim Construction
`In an inter partes review, claims of a patent shall be construed
`
`using the same claim construction standard that would be used to construe
`the claims in a civil action under 35 U.S.C. § 282(b), including construing
`the claims in accordance with the ordinary and customary meaning of such
`claims as understood by one of ordinary skill in the art and the prosecution
`history pertaining to the patent. 37 C.F.R. § 42.100(b); see also Phillips v.
`AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005). Under that standard,
`and absent any special definitions, we give claim terms their ordinary and
`customary meaning, as would be understood by one of ordinary skill in the
`art at the time of the invention. See In re Translogic Tech., Inc., 504 F.3d
`1249, 1257 (Fed. Cir. 2007). Any special definitions for claim terms must
`be set forth with reasonable clarity, deliberateness, and precision. See In re
`Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`
`
`5 We note that Patent Owner’s expert, Dr. Rhyne, provides a similar
`definition of the person of ordinary skill. Rhyne Decl. ¶ 23. The
`Preliminary Response does not refer to this definition or ask us to adopt it
`for this decision.
`
`16
`
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`IPR2021-00458
`Patent 9,241,044 B2
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`We construe claim terms only as relevant to the parties’ contentions
`
`and only to the extent necessary to resolve the issues in dispute. See Vivid
`Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
`
`Petitioner asks us to construe several terms. Pet. 16–20. Petitioner
`points out that previously, two claim construction orders regarding the ’044
`patent have been issued in connection with district court litigations. See Ex.
`1023 (“Teso Order”); Ex. 1033 (“BI Science Order”). Petitioner relies on
`those orders to support its proposed constructions. At this stage, Patent
`Owner does not state a position on claim construction.
`
`1. Preambles
`
`For the purposes of its analysis, Petitioner asks us to assume that the
`preambles of claims 81 and 108, which are identical, are limiting, and that
`the subsequent method steps of those claims are performed, respectively, by
`the recited first and second devices. Pet. 16–17, 40. This is consistent with
`the construction of the preambles by Magistrate Judge Roy E. Payne in the
`Teso and BI Science Orders. Ex. 1023, 10–15 (claim 81), 56–58 (claim
`108); Ex. 1033, 12–16. For the reasons given in those Orders, at this stage,
`we adopt Petitioner’s construction and treat the preambles as limiting.
`Further, for this decision, we treat claim 81 as directed to activities of the
`recited “first device” and claim 108 as directed to activities of the claimed
`“second device.” Pet. 16–16, 40.6
`
`
`6 Judge Payne also concluded that claim 108 was indefinite under 35 U.S.C.
`§ 112 because the body of the claim does not refer to the “second device”
`recited in the preamble. Ex. 1023, 59; Ex. 1033, 19–20. We do not address
`that issue, as it is beyond the scope of this proceeding. “The Board cannot
`invalidate a patent as indefinite in an inter partes review proceeding.” Intel
`
`17
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`
`2. the second request includes the first content identifier and the third
`identifier
`Petitioner contends “that the plain and ordinary meaning of this
`language is that “the second request must include both (a) ‘the first content
`identifier,’ and (b) ‘the third identifier.’” Pet. 17. In advancing this
`construction, Petitioner relies on the construction of the various components
`of the phrase in the Teso and BI Science Orders. Id. at 17–20. Specifically,
`Petitioner refers to the construction of “third identifier” as distinct from the
`first and second identifiers. Id. at 17. Based on the constructions “first
`identifier” and “second identifier,” Petitioner urges that the “third identifier”
`can include a domain name. Id. Petitioner submits also that consistent with
`the Teso Order, “content” may mean “digital data.” Id. at 18. And
`Petitioner argues that “first content identifier” “should be construed only to
`require an identifier sufficient to support the recited data retrieval.” Id. at
`18.
`
`For the reasons given by Petitioner and those stated in the Teso and BI
`Science Orders, we adopt these constructions for the purpose of this
`decision.
`3. device/client device/tunnel device
`Neither party has asked us to construe these terms. However, the
`terms “device” and “client device” are used throughout the parties’
`submissions and were construed in the Teso Order. Ex. 1023, 15, 51. For
`the purposes of this decision, we adopt those constructions for the reasons
`
`
`Corp. v. Alacritech, Inc., 817 F. App’x 1014, 1019 (Fed. Cir. 2020) (citing
`35 U.S.C, § 311 (b)).
`
`18
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`IPR2021-00458
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`given there. Thus, we construe “device,” as recited in the claims, as “a
`physical device.” Id. at 15.
`The term “client device” does not appear in the claims. However,
`Patent Owner often refers to “client device” in its description of the ’044
`patent. See, e.g., Prelim. Resp. 25 (“[T[he disclosed methods use two types
`of ‘devices’ (i.e., a ‘client device’ and a ‘tunnel device’) to allow the first
`device to obtain content from a web server via the second device.”
`
`Magistrate Judge Payne’s decision describes the various roles a device
`may assume, including “a client (using tunnels), a tunnel, a client (using
`agents or peers), an agent, or a peer device.” Ex. 1023, 50 (quoting ’866
`patent, 125:33–42). Thus, consistent with his decision, we construe “client
`device” as “a device that is operating in the role of a client by requesting
`services, functionalities, or resources from other devices.” Id. at 48–50.
`Although the term “tunnel device” does not appear in the claims, both
`partier use the term in referring to the recited “second device.” See, e.g.,
`Pet. 13 (“Client device 31a seeks to access content that resides on data
`server 22a, through an intermediary device, called a ‘tunnel’ device.”);
`Prelim. Resp. 22 (“The ’044 patent describes a novel network architecture
`using two devices and one server (namely, ‘client device,’ ‘tunnel device,’
`and ‘acceleration server’) . . . .”).
`The parties agree that the term “tunnel device” “is not a term of art.”
`Pet. 13 n.3 (citing Teruya Decl. ¶ 29); Prelim. Resp. 27. The ’044 patent
`states: “A client device may also serve as a tunnel device, serving as an
`intermediate device to other client devices. Similarly, a tunnel device may
`also serve as a client device for fetching content from a data server.” Ex.
`1001, (57). The patent also states: “A tunnel device may receive from a
`
`19
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`client device a request for content from a data server. Upon receiving such a
`request, the tunnel device fetches the requested content from the data server
`and sends the retrieved content to the client device.” Ex. 1001, 65:32–36.
`For the purposes of this decision, therefore, we construe “tunnel device” as a
`device operating to receive requests from client devices for content from a
`data server, that fetches the requested content from the data server, and that
`sends the retrieved content to the client device.
`4. server/proxy server
`Neither party has asked us

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