Trials@uspto.gov
`571-272-7822
`
`Paper 11
`Entered: August 12, 2021
`
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`
`
`
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`NETNUT LTD.,
`Petitioner,
`v.
`BRIGHT DATA LTD.,1
`(f/k/a LUMINATI NETWORKS, LTD.)
`Patent Owner.
`
`IPR2021-00465
`Patent 9,742,866 B2
`
`
`
`Before THOMAS L. GIANNETTI, SHEILA F. McSHANE, and
`RUSSELL E. CASS, Administrative Patent Judges.
`
`McSHANE, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`1 Patent Owner filed updated disclosures on May 19, 2021 indicating that it
`changed its name from Luminati Networks, Ltd. to Bright Data Ltd. See
`Paper No. 7, 1.
`
`
`
`NetNut Ltd. v. Bright Data Ltd.
`IPR2021-01492, EX. 1106
`Page 1 of 36
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`IPR2021-00465
`Patent 9,742,866 B2
`
`INTRODUCTION
`I.
`A. Background and Summary
`NetNut Ltd. (“NetNut” or “Petitioner”) filed a Petition requesting
`inter partes review of claims 15–20, 23, 24, 27, and 28 of U.S. Patent No.
`9,742,866 B2 (Ex. 1001, “the ’866 patent”), along with the supporting
`Declaration of Keith J. Teruya. Paper 2 (“Pet.”); Ex. 1003. Bright Data Ltd.
`(“Bright Data” or “Patent Owner”) filed a Preliminary Response to the
`Petition, along with the supporting Declaration of Dr. V. Thomas Rhyne.
`Paper 8 (“Prelim. Resp.”); Ex. 2001. With the Board’s allowance, Petitioner
`also filed a Pre-Institution Reply (Paper 9, “Pet. Pre-Inst. Reply”), with
`Patent Owner filing a Pre-Institution Sur-Reply (Paper 10, “PO Pre-Inst.
`Sur-Reply”), which further address discretionary denial under 35 U.S.C.
`§ 314(a).
`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 determine that Petitioner has
`demonstrated that there is a reasonable likelihood that it would prevail in
`showing the unpatentability of at least one of the challenged claims. For the
`reasons set forth below, and pursuant to 35 U.S.C. § 314, we institute inter
`partes review of claims 15–20, 23, 24, 27, and 28 of the ’866 patent.
`B. Related Matters
`The parties identify several district court litigations concerning the
`’866 patent that are terminated or are entering the appeal stage. Pet. 3–4;
`
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`Patent 9,742,866 B2
`Paper 4, 2–3. The parties also identify a district court case, Luminati
`Networks Ltd. v. NetNut Ltd., No. 2:20-cv-00188 (E.D. Tex.), involving
`patents other than the ’866 patent. Pet. 3; Paper 4, 3.
`C. The ’866 Patent
`The ’866 patent is titled “System And Method For Improving Internet
`Communication By Using Intermediate Nodes” and issued on August 22,
`2017, from an application filed on November 3, 2015. Ex. 1001, codes (22),
`(45), (54). The patent is subject to a terminal disclaimer. Id. at code (*).
`The application for the ’866 patent claims priority to U.S. Provisional
`Application No. 61/870,815, filed August 28, 2013. Id. at code (60).
`The ’866 patent is directed to a method for fetching content from a
`web server to a client device using tunnel devices serving as intermediate
`devices. Ex. 1001, code (57). The client device accesses an acceleration
`server to receive a list of available tunnel devices. Id. Requested content
`may be partitioned into slices, with the client device sending a request for
`the slices to the available tunnel devices. Id. The tunnel devices may, in
`turn, fetch slices from the data server and send the slices to the client device,
`where the content is reconstructed from the received slices. Id.
`A client device may also serve as a tunnel device, which serves as an
`intermediate device to other client devices. Ex. 1001, code (57). The
`selection of tunnel devices to be used by a client device may be made in the
`acceleration server, in the client device, or in both. Id. Partitions into slices
`may be overlapping or non-overlapping, and the same slice, or the whole
`content, may be fetched via multiple tunnel devices. Id.
`Claim 15 is the only independent challenged. This claim of the ’866
`patent is reproduced below.
`
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`15. A method for fetching a content over the Internet from a
`first server identified in the Internet by a second identifier via a group
`of multiple devices, each identified in the Internet by an associated
`group device identifier, the method comprising the step of partitioning
`the content into a plurality of content slices, each content slice
`containing at least part of the content, and identified using a content
`slice identifier, and for each of the content slices, comprising the steps
`of:
`
`(a) selecting a device from the group;
`(b) sending over the Internet a first request to the selected
`device using the group device identifier of the selected device, the
`first request including the content slice identifier and the second
`identifier;
`(c) in response to receiving the sent first request by the selected
`device, receiving over the Internet the content slice from the selected
`device; and
`wherein the method further comprising the step of constructing
`the content from the received plurality of content slices,
`and wherein each of the devices in the group is a client device.
`Ex. 1001, 173:41–174:14.
`D. Asserted Grounds of Unpatentability
`Petitioner challenges the patentability of claims of the ’866 patent on
`the following grounds:
`Claim(s)
`15–17, 23, 24
`18
`
`References/Basis
`Sharp KK3
`Sharp KK, MPEG DASH4
`
`35 U.S.C. §
`102(a)2
`103
`
`
`2 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 287–88 (2011), which amended 35 U.S.C. §§ 102 and 103, was
`effective on March 16, 2013 and applies here.
`3 EP 2 597 869 A1, published on May 29, 2013 (Ex. 1018, “Sharp KK”).
`4 Information technology–Dynamic adaptive streaming over HTTP
`(DASH)–Part 1: Media Presentation Description and Segment Formats,
`ISO/IEC JTC 1/SC 29, January 5, 2012 (Ex. 1027, “MPEG DASH”).
`
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`
`Claim(s)
`19, 20, 27, 28
`15, 17, 18
`15, 17, 18
`
`Pet. 10.
`
`35 U.S.C. §
`103
`103
`103
`
`References/Basis
`Sharp KK, Shribman5
`Luotonen6, RFC 26167
`Luotonen, RFC 2616, RFC
`30408
`
`II. DISCRETIONARY DENIAL
`Patent Owner requests that the Board exercise its discretion pursuant
`to 35 U.S.C. § 314(a) and deny institution. Prelim. Resp. 4–20; PO Pre-Inst.
`Sur-Reply 1–5. Patent Owner urges that institution should be denied based
`on the factors identified in General Plastic, as well as the consideration of
`additional factors. Prelim. Resp. 4–20; PO Pre-Inst. Sur-Reply 1–5; Gen.
`Plastic Indus. Co. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19
`(PTAB Sept. 6, 2017) (precedential as to § II.B.4.i, pages 15–19) (“General
`Plastic”).
`As background, General Plastic identifies factors to be considered by
`the Board in evaluating whether to exercise discretion, under § 314(a), to
`deny a petition that challenges a patent that was previously challenged
`before the Board, which are:
`1. whether the same petitioner previously filed a petition directed to
`the same claims of the same patent;
`
`
`5 U.S. Patent Application No. 2011/0087733 A1, filed July 14, 2010,
`published April 14, 2011 (Ex. 1017, “Shribman”).
`6 Ari Luotonen, WEB PROXY SERVERS, Prentice Hall Web Infrastructure
`Series, 1998 (Ex. 1014, “Luotonen”).
`7 Hypertext Transfer Protocol–HTTP/1.1, Network Working Group, RFC
`2616, The Internet Society, 1999 (Ex. 1007, “RPC 2616”).
`8 Internet Web Replication and Caching Taxonomy, Network Working
`Group, RFC 2616, The Internet Society, 2001 (Ex. 1020, “RPC 3040”).
`
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`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.
`Gen. Plastic, Paper 19 at 15–16; see also Consolidated Trial Practice Guide,
`56–58.9
`Petitioner argues that General Plastic should not be considered in this
`proceeding. Pet. 11. Petitioner points out that there has only been one other
`inter partes proceeding filed, IPR2020-00167, that is related to the ’866
`patent, and BI Science, Ltd. was the Petitioner. Id. Petitioner asserts that it
`was not a party in the prior inter partes review and it has no real-party-in-
`interest or privity relationship with BI Science. Id.
`Patent Owner argues that General Plastic applies here because the
`Board decision in United Fire Protection Corp. v. Engineered Corrosion
`Solutions used the General Plastic factors in a situation with a different
`second petitioner. Prelim. Resp. 11–12 (citing United Fire Protection Corp.
`
`
`9 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`
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`v. Engineered Corrosion Solutions, LLC, IPR2018-00991, Paper 10 (PTAB
`November 15, 2018) (Decision Denying Institution) (“United Fire”)).
`Patent Owner applies the General Plastic factors and contends that factors
`2–6 weigh against institution, and factors 1 and 7 are neutral. Id. at 12–17.
`Patent Owner asserts that although a lawsuit has not been filed against
`Petitioner on the ’866 patent, Petitioner had been sued for infringement of
`other patents owned by Patent Owner. Id. at 4. As such, Patent Owner
`argues that Petitioner does not appear to have any interest in the patentability
`of the ’866 patent other than using this inter partes review proceeding “as a
`tool for settlement of the district court litigation involving only the ‘511 and
`‘968 patents.” Id. at 4–5, 19. Related to this issue, Patent Owner argues that
`other factors weigh against instituting review: 1) Petitioner gained an
`advantage as a result of retaining the same lawyers and expert that had
`prepared first petitions on behalf of another Petitioner, BI Science; and 2)
`Petitioner is using the Board as a tool to settle the district court litigation
`concerning patents other than the ’866 patent. Id. at 17–19.
`General Plastic, a precedential decision, applied to an instance where
`a party filed initial petitions asserting certain art, preliminary responses were
`filed, and the Board denied institution on the earlier petitions. Gen. Plastic
`at 6, 10. The same party then filed follow-on petitions challenging the same
`patents and used the information provided in the previous filings as a
`roadmap for the later petitions. Id. at 17–18. Here, Petitioner NetNut has
`not previously filed any petitions challenging the ’866 patent. The Board’s
`precedential decisions using General Plastic factors recognize a discrete
`circumstance that is not limited to instances where multiple petitions are
`filed by the same petitioner. In Valve Corp. v. Elec. Scripting Prods., Inc.,
`
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`the Board found that there was a significant relationship between a petitioner
`and a previous petitioner because they had been co-defendants in a district
`court litigation, both were sued on the same products, and there was a
`license agreement between the parties related to the technology of the
`product. Valve Corp. v. Elec. Scripting Prods., Inc., Case IPR2019-00062,
`-00063, -00084 (PTAB Apr. 2, 2019) (Paper 11, 9–10) (precedential). Due
`to the significant relationship between the prior petitioner and the petitioner
`at issue, Valve applied the General Plastic factors. Id. at 9–10. General
`Plastic and Valve do not apply to the circumstances here—Patent Owner
`does not allege that there is any relationship between NetNut and the
`previous petitioner, BI Science. See generally Prelim. Resp.; PO Pre-Inst.
`Sur-Reply.
`We do not agree with Patent Owner that United Fire applies to the
`circumstances of this case. Unified Fire acknowledges that General Plastic
`is typically applied to analyze situations in which the same party files
`multiple petitions challenging the same patent, but employs the General
`Plastics factors as a “useful framework.” Unified Fire at 11. Unified Fire
`does not serve as binding precedent in this case and, moreover, it is
`distinguishable from the circumstances of this case. As Petitioner argues,
`the circumstances of Unified Fire, as well as General Plastic, are
`substantially different from those here. Pet. Pre-Inst. Reply 1. In Unified
`Fire and General Plastic, there were prior patent owner preliminary
`responses and non-institution decisions issued that were available to serve as
`a strategic roadmap for the later challenges. Those responses and decisions
`are not available here because the prior case with BI Science was terminated
`due to a settlement before a patent owner preliminary response was filed.
`
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`Pet. Pre-Inst. Reply 1; Unified Fire at 13–15. Instead, Petitioner asserts the
`same prior art here as that presented in the BI Science proceeding, but
`neither the Patent Owner nor the Board had addressed the merits of the prior
`challenge. Pet. Pre-Inst. Reply 1. Under these circumstances, we decline to
`extend General Plastic and Valve to the situation here: where a follow-on
`petition is filed by a petitioner who is not the same as previous petitioners
`and does not have any relationship, much less a significant relationship, with
`previous petitioners.
`Application of the General Plastic factors would also not persuade us
`to exercise discretionary denial in this proceeding. Because Petitioner was
`not a petitioner in previous proceedings, factor 1 weighs against the exercise
`of discretionary discretion. Likewise under factor 2, whether Petitioner
`knew of or should have known of the asserted references at the time of the
`prior petition, is of little probative value. As discussed above, settlement
`occurred before a patent owner preliminary response was filed or a Board
`decision issued in the prior proceedings, so factor 3 weighs against the
`exercise of discretionary denial.
`
`Patent Owner argues that factors 4 and 5 favor discretionary denial of
`institution because Petitioner has not disclosed when it became aware of the
`previously-asserted prior art or provide an explanation for the time elapsed
`between the filings of the respective petitions. Prelim. Resp. 15–16; PO Pre-
`Inst. Sur-Reply 1–4. Patent Owner also asserts that Petitioner does not
`explain the delay between filing its petition and the previous BI Science
`petition, and “[i]f Petitioner was truly interested in protecting the public
`interest, Petitioner could have filed the instant IPRs sooner.” PO Pre-Inst.
`Sur-Reply 1–2.
`
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`General Plastic is directed to shifts in the prior art asserted and
`strategic road mapping for follow-on petitioners, and factors 4 and 5 concern
`whether a petitioner could have raised the new challenges of the later
`petition at an earlier time. Gen. Plastic at 17–18. But here, as Petitioner
`points out, the Petition relies on the same prior art as that asserted in the BI
`Science petition—so we determine that factors 4 and 5 do not favor
`discretionary denial under the instant circumstances. See Pet. Pre-Inst.
`Reply 2 n.2. Additionally, Petitioner is not subject to the one-year time bar
`to file a petition under 35 U.S.C. § 315(b) because it was not a party in an
`infringement action associated with the ’866 patent, and we are not aware of
`any other petition filing deadlines that apply. Further, and contrary to Patent
`Owner’s assertion that Petitioner should have earlier filed its Petition under
`these circumstances, we are not aware that there is an affirmative duty for a
`party to file a petition.
`Under factors 6 and 7, we do not discern that the institution of this
`proceeding would tax unduly the resources of the Board or that we could not
`meet the requirement of 35 U.S.C. § 316(a)(11) to issue a final
`determination within one year after institution, so those factors do not
`provide support for discretionary denial.
`Patent Owner argues that in the General Plastic analysis we should
`also consider as additional factors that Petitioner gained an advantage as a
`result of retaining the same lawyers and expert as BI Science from the earlier
`petition and, additionally, that Petitioner is attempting to use this proceeding
`as a way to settle the district court litigation concerning patents other than
`the ’866 patent. Prelim. Resp. 17–19.
`
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`General Plastic permits other factors be considered in evaluating
`discretionary denial. Gen. Plastic at 16 (noting that the listed factors are
`non-exhaustive). However, we do not find that hiring the same lawyers and
`expert as a previous petitioner should be a factor that should be considered
`to favor discretionary denial. Petitioner points out that its counsel was
`knowledgeable about the patent and the prior art, which may be an incentive
`for these lawyers being retained. Pet. Pre-Inst. Reply 3. In any event, a
`party is free to choose their own legal representation and expert, and,
`accordingly, we decline to consider a party’s choice of a law firm and expert
`as a factor that favors discretionary denial. Moreover, we do not find that
`strategies alleged to be in play among different proceedings should be a
`negative factor considered against Petitioner under these circumstances. As
`Petitioner asserts, 37 C.F.R. § 42.101 allows Petitioner to file a petition, and
`there is no requirement that a party has to state their motivations and legal
`strategy associated with the petition filing; to so require could potentially
`introduce additional burden and possibly invade attorney-client privilege.
`Id. at 4.
`Accordingly, considering all the General Plastic factors, we decline to
`exercise our discretion to deny institution.
`III. ANALYSIS
`A. Level of Ordinary Skill in the Art
`Petitioner asserts that a person of ordinary skill in the art the time of
`the invention would have had “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.” Pet. 19. Petitioner further contends that one of skill would have
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`also had “at least one years [sic.] of practical academic or industry technical
`experience in the computer network field,” and presents examples of
`experience types meeting those qualifications. Id. at 19–20 (citing Ex. 1003
`¶¶ 25–27).
`Patent Owner’s expert, Dr. Rhyne, testifies that a person of skill
`would have had “a Master’s Degree or higher in the field of Electrical
`Engineering, Computer Engineering, or Computer Science or as of that time
`had a Bachelor’s Degree in the same fields and two or more years of
`experience in Internet-related data communications.” Ex. 2001 ¶ 23.
`In determining the level of ordinary skill in the art, various factors
`may be considered, including the “type of problems encountered in the art;
`prior art solutions to those problems; rapidity with which innovations are
`made; sophistication of the technology; and educational level of active
`workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
`(citation omitted). The level of ordinary skill in the art is also reflected by
`the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed.
`Cir. 2001).
`Although the qualifications proposed by the parties are similar,
`considering the subject matter of the ’866 patent, the background technical
`field, and the prior art, we adopt Petitioner’s proposed qualifications for the
`purposes of this Decision. Accordingly, the acceptable qualifications for
`one of ordinary skill in the art would be possession of 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
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`engineering as a topic of study. Further, additional education may substitute
`for lesser work experience and vice-versa.10
`
`B. Claim Construction
`For petitions filed after November 13, 2018, the Board interprets
`claim terms in accordance with the standard used in federal district court in a
`civil action involving the validity or infringement of a patent. 37 C.F.R.
`§ 42.100(b) (2020). Under the principles set forth by the Federal Circuit, the
`“words of a claim ‘are generally given their ordinary and customary
`meaning,’” as would be understood by a person of ordinary skill in the art in
`question at the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303,
`1312 (Fed. Cir. 2005) (en banc) (quoting Vitronics Corp. v. Conceptronic,
`Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). “In determining the meaning of
`the disputed claim limitation, we look principally to the intrinsic evidence of
`record, examining the claim language itself, the written description, and the
`prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic
`Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips,
`415 F.3d at 1312–17).
`Petitioner presents arguments for several claim terms, relying, for the
`most part, on claim construction rulings on ’866 patent terms issued in
`Luminati Networks Ltd. v. UAB Tesonet, No. 2:18-CV-299 (E.D. Tex.) (Ex.
`1023) and Luminati Networks Ltd. v. BI Science Inc., No. 2:18-CV-453
`(E.D. Tex.) (Ex. 1033). Pet. 20–29. Dr. Rhyne, Patent Owner’s expert,
`
`
`10 The parties are encouraged to address the impact, if any, of differences in
`the level of qualifications on the obviousness analysis in any subsequent
`briefing.
`
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`testifies that the claim constructions in these court orders are those he
`considered in forming his opinions. Ex. 2001 ¶ 22.
`Although the parties do not dispute the construction of any claim
`terms at this juncture, we include a discussion of the phrase “wherein each
`of the devices in the group is a client device” here because its interpretation
`is relevant to some disputed issues discussed below. Petitioner refers to
`District Court’s discussion (Pet. 27–28) which states that “[t]he specification
`explains that being a ‘client’ is a ‘role’ assumed by a device” (Ex. 1023, 50).
`The District Court refers to the ’866 specification, which states:
`Any network element in the system may be a
`dedicated device that assumes only a single role,
`and thus being only a client (using tunnels), a
`tunnel, a client (using agents/peers), an agent, or a
`peer device. Alternatively or in addition, a network
`element may be capable of assuming two or more
`roles, either at different times or simultaneously,
`from the list of roles including a client (using
`tunnels), a tunnel, a client (using agents/peers), an
`agent, or a peer device. Alternatively or in addition,
`a device may be capable of assuming all of the
`above roles.
`Ex. 1001, 125:33–42 (emphasis added).
`Referring to Figure 5b of the ’866 patent, which shows interactions
`between “Acceleration Server,” “Client Device,” “Tunnel Device,” and
`“Data Server,” the District Court declined to limit the term “client device” to
`a “tunnel, agent, or peer devices serving as intermediate devices to fetch
`content in the method.” Ex. 1023, 51. Instead, the District Court construed
`the term “client device” in accordance with its function, that is, “a device
`that is operating in the role of a client by requesting services, functionalities,
`or resources from other devices.” Based on the record developed in the
`
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`District Court, we adopt this construction for the purposes of this Decision.
`Additionally, in accordance with the disclosure of the ’866 patent, we note
`that a network element, such as a client device, may be capable of assuming
`two or more roles, either at different times or simultaneously. See Ex. 1001,
`125:33–42.
`
`C. Alleged Anticipation of Claims 15–17, 23, and 24 by Sharp KK
`Petitioner contends that claims 15–17, 23, and 24 would have been
`anticipated by Sharp KK. Pet. 37–45. To support its contentions, Petitioner
`provides explanations as to how Sharp KK discloses each claim limitation.
`Id. Petitioner also relies upon the Teruya Declaration (Ex. 1003) to support
`its positions.
`
`We begin our discussion with a brief summary of Sharp KK and then
`address the evidence and arguments presented.
`
`
`1. Sharp KK (Ex. 1018)
`Sharp KK describes a content distribution service in which a server
`distributes content to the client in response to a request from a client for
`playing the content. Ex. 1018 ¶ 1. Figure 20 is reproduced below, and
`illustrates the schematic configuration of a content distribution center
`described in Embodiment 3 (id. ¶ 16):
`
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`Figure 20, above, is a schematic showing the configuration of a content
`distributing system. Ex. 1018 ¶ 16. As illustrated in Figure 20, content
`distributing system 1b includes server 2, proxies 3b and 3c, and clients 4e
`and 4e. Id. ¶ 18. The content distributing system also includes content
`storage section 5 connected to server 2, and cache storage sections 6b and 6c
`connected to respective proxies 3b and 3c. Id. ¶ 220. As illustrated in
`Figure 1, server 2, proxies 3b and 3c, respectively, and clients 4e and 4f are
`connected to client storage sections 8e and 8f. Id. In the system, relaying
`device specifying section 16 of server 2 specifies a plurality of relaying
`devices which may possess content that is created. Id. ¶ 225.
`
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`Sharp KK describes several embodiments for different processes that
`may be utilized in the invention for content distribution, identified as
`Embodiments 1–5. Ex. 1018 ¶¶ 17–480.
`
`
`2. Analysis
`A claim is unpatentable under 35 U.S.C. § 102 if a prior art reference
`discloses each and every limitation of the claimed invention, either explicitly
`or inherently. Glaxo Inc. v. Novopharm Ltd., 52 F.3d 1043, 1047 (Fed. Cir.
`1995); see MEHL/Biophile Int’l Corp. v. Milgraum, 192 F.3d 1362, 1365
`(Fed. Cir. 1999) (“To anticipate, a claim a prior art reference must disclose
`every limitation of the claimed invention . . .;” any limitation not explicitly
`taught must be inherently taught and would be so understood by a person
`experienced in the field); In re Baxter Travenol Labs., 952 F.2d 388, 390
`(Fed. Cir. 1991) (the dispositive question is “whether one skilled in the art
`would reasonably understand or infer” that a reference teaches or discloses
`all of the limitations of the claimed invention).
`
`
`
`a. Claim 15
`The Petition asserts that Sharp KK discloses all the limitations of
`claim 15. Pet. 37–45.
`For the preamble of claim 1511, Petitioner contends that Sharp KK
`discloses a method of fetching content from a “first server” which is mapped
`to server 2 as shown in Figure 20. Pet. 37. More specifically, Petitioner
`asserts that server 2 is identified in the Internet by a domain name
`
`
`11 The District Court in the BI Science litigation found that the preamble of
`claim 15 was limiting because it provides antecedent basis for several terms
`and defines attributes of those terms. Ex. 1033, 35–36; Ex. 1023, 15. At
`this juncture, we agree with the District Court on this issue.
`
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`“example.com,” which is the claimed “second identifier.” Id. (citing Ex.
`1018 ¶ 220). Petitioner argues that Sharp KK discloses that client 4e uses
`multiple proxies 3a–3c, which are identified by Petitioner as the claimed
`“group of multiple devices,” to download content from server 2. Id.
`Petitioner contends that client 4e requests content from server 2 (“GET
`/content1/0 HTTP/1.1”), and server 2 responds with a list of proxies, which
`are identified by the domain name, from which client 4e can obtain content.
`Id. at 37–38 (citing Ex. 1018 ¶¶ 290, 293, 294–297, 566, Fig. 27; Ex. 1003
`¶¶ 66–68).
`Petitioner additionally asserts that Sharp KK discloses partitioning, or
`fracturing, the content into content slices which have predetermined units,
`such as a group of pictures, and numerals are assigned to the fragments. Pet.
`38 (citing Ex. 1018 ¶¶ 240, 245, 247, Fig. 21; Ex. 1003 ¶ 69).
`Petitioner asserts that limitation 15(a) is disclosed in Sharp KK. Pet.
`38–40. Petitioner argues that the client provides a content identifier for
`desired content to server 2, and server 2 responds with a list of proxies, or
`clients acting as proxies. Id. at 39 (citing Ex. 1018 ¶¶ 229, 290–293, Fig.
`27). Then, Petitioner contends, Sharp KK discloses that client 4 selects a
`proxy and the proxy may be used for each of the content slices, or the proxy
`may be changed in the retrieval process. Id. (citing Ex. 1018 ¶¶ 229, 232–
`235, 283; Ex. 1003 ¶ 72). Petitioner asserts that, although the claim does not
`require repeated proxy selection for each chunk, Sharp KK also discloses
`repeated proxy selections. Id. at 39–40 (citing Ex. 1018, Fig. 23; Ex. 1003,
`¶ 72).
`Petitioner argues that limitation 15(b) is disclosed in Sharp KK by
`client 4e transmitting an instruction to acquire content from a selected device
`
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`(proxy 3) using the group device identifier address, and the transmission
`includes a media segment number (“the content slice identifier”) and the
`domain name of server 2 (the “second identifier”). Pet. 40–41 (citing Ex.
`1018 ¶¶ 229, 232, 259, 270, 272, 281, 291, 302; Fig. 27; Ex. 1003 ¶ 73).
`For limitation 15(c), Petitioner contends that in response to the first
`request from the selected proxy, the proxy transmits the requested media
`segment to client 4. Pet. 41 (citing Ex. 1018 ¶ 281, Figs. 21, 24, 27
`(message “f”); Ex. 1003 ¶ 74).
`For the first “wherein” limitation (“comprising the step of
`constructing the content from the received plurality of content slices”),
`Petitioner asserts that Sharp KK discloses that the content playing device 4
`plays content received in the form of segments and the media being played is
`construct