UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_________________________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________________
`
` NETNUT LTD.,
`
`Petitioner
`
`v.
`
`BRIGHT DATA LTD.,
`
`Patent Owner
`
`_________________________
`
`Case IPR2021-01492
`
`Patent No. 10,257,319
`
`_________________________
`
`
`
`
`
`PATENT OWNER’S SUR-REPLY TO PETITIONER’S REPLY TO
`PATENT OWNER’S PRELIMINARY RESPONSE UNDER
`AUTHORIZATION FROM THE BOARD1
`
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`1 Authorized via email on January 7, 2022.
`
`
`
`i
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`
`
`_________________________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________________
`
` NETNUT LTD.,
`
`Petitioner
`
`v.
`
`BRIGHT DATA LTD.,
`
`Patent Owner
`
`_________________________
`
`Case IPR2021-01492
`
`Patent No. 10,257,319
`
`_________________________
`
`
`
`
`
`PATENT OWNER’S SUR-REPLY TO PETITIONER’S REPLY TO
`PATENT OWNER’S PRELIMINARY RESPONSE UNDER
`AUTHORIZATION FROM THE BOARD1
`
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`1 Authorized via email on January 7, 2022.
`
`
`
`i
`
`
`
`IPR2021-01492 of Patent No. 10,257,319
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`PATENT OWNER’S LIST OF ADDITIONAL EXHIBITS
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`Exhibit
`Number
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`2011
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`2012
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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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`
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`Description
`
`Order, Uniloc USA, Inc. v. Ringcentral, Inc., No. 2-17-cv-354, Dkt.
`100 (E.D. Tex. Feb. 12, 2018)
`
`Motion, Uniloc USA, Inc. v. Ringcentral, Inc., No. 2-17-cv-354,
`Dkt. 97 (E.D. Tex. Feb. 8, 2018)
`
`Order, Uniloc USA, Inc. v. Ringcentral, Inc., No. 2-17-cv-354, Dkt.
`99 (E.D. Tex. Feb. 9, 2018)
`
`Joint Motion, Bright Data Ltd. v. NetNut Ltd., No. 2:21-cv-225,
`Dkt. 79 (E.D. Tex. Dec. 22, 2021)
`
`Motion, Bright Data Ltd. v. NetNut Ltd., No. 2:21-cv-225, Dkt. 80
`(E.D. Tex. Dec. 23, 2021)
`
`Letter, dated Dec. 30, 2021, from Bright Data Ltd. to NetNut Ltd.
`regarding the scheduling of depositions in the case of Bright Data
`Ltd. v. NetNut Ltd., No. 2:21-cv-225 (E.D. Tex.)
`
`Declaration of Mr. Thomas M. Dunham
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`
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`ii
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`IPR2021-01492 of Patent No. 10,257,319
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`Patent Owner respectfully submits this Sur-Reply in response to Petitioner’s
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`Reply (Paper 10) relating to the discretionary factors in Apple Inc. v. Fintiv, Inc.,
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`IPR2020-0019, Paper 11 (PTAB March 20, 2020)(precedential)(“Fintiv”).
`
` Regarding Fintiv factor 1, Patent Owner has explained that it is unlikely that
`
`the judge will issue a stay, even if review is instituted, given that the NetNut
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`Litigation will “clearly [be] at an advanced stage” as of the 3/27/2022 deadline for
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`an institution decision. (See Patent Owner Preliminary Response (“POPR”)(Paper
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`9)
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`at
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`19-20).
`
` Petitioner’s cited Uniloc case (Dkt. 100, dated 2/12/2018, EX. 2011) is
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`inapplicable because (a) that Court had already granted an unopposed motion to stay
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`(Dkt. 97, EX. 2012) filed by the plaintiff (see Dkt. 99, dated 2/9/2018, EX. 2013);
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`and (b) the Board instituted review of every asserted claim of all asserted patents
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`and as of the institution decision, the claims had not yet been construed by that Court.
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`Uniloc USA, Inc. v. Ringcentral, Inc., No. 2-17-cv-354 (E.D. Tex.). Unlike Uniloc,
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`the Board will not resolve every asserted claim of all asserted patents in the NetNut
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`Litigation (see, e.g., POPR at 29; see also EX. 2002 at 22) and the Court has already,
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`previously construed claim terms from the asserted ‘319 and ‘510 Patents (see, e.g.,
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`POPR at 14). Accordingly,
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`this
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`factor weighs
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`in
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`favor of denial.
`
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`2 There is a total of five asserted patents in the NetNut Litigation.
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`
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`1
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`IPR2021-01492 of Patent No. 10,257,319
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` Regarding Fintiv factor 2, the NetNut Litigation has trial scheduled approx.
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`6.5 months before the 3/27/2023 deadline for a final written decision (see POPR at
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`21-22) and the Board has previously declined to speculate whether there may be
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`further
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`delays
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`in
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`the
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`district
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`court
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`(see
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`POPR
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`at
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`23).
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` Petitioner’s implication regarding extensions (see Reply at 2) is misleading.
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`First, the parties submitted a Joint Motion (Dkt. 79, EX. 2014) for a 1-month
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`extension to continue additional mediation with the same Judge Gandhi, rather than
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`the new Judge Folsom. That mediation occurred on 1/25/2022. Second, Patent
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`Owner submitted a Motion (Dkt. 80, EX. 2015) for a 3-week extension to amend
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`infringement contentions based on source code review given that (a) the expert could
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`not begin his review until 1/5/2022 given the holidays and his work schedule and (b)
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`this left insufficient time to amend infringement contentions by 1/13/2022 for the
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`five asserted patents. The Court granted-in-part the Motion and extended the
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`deadline to 1/26/2022. (EX. 1103). Neither of these requested extensions suggests
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`Patent Owner intends to delay the 9/12/2022 trial date in the NetNut Litigation.
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`Accordingly,
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`this
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`factor
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`weighs
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`in
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`favor
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`of
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`denial.
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` Regarding Fintiv factor 3, Patent Owner has explained that the parties will
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`have invested significant resources in the NetNut Litigation by the 3/27/2022
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`deadline for an institution decision (see POPR at 22 (citing section III.A.1 at 19-
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`20)). This
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`is consistent with
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`the Fintiv analysis. (See Fintiv at 9-10).
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`
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`2
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`IPR2021-01492 of Patent No. 10,257,319
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`Also, Petitioner’s statement that “[n]o depositions have been taken or noticed” (see
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`Reply at 2) is misleading. On 12/30/2021, Patent Owner sent a letter to Petitioner
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`regarding the scheduling of depositions February 14-25, 2022 for seven of
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`Petitioner’s employees. (EX. 2016). Petitioner sent a response on 1/11/2022 and
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`there has been subsequent email correspondence regarding availability of witnesses.
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` Moreover, “[t]his investment factor is related to the trial date factor”. (Fintiv
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`at 10). Patent Owner anticipated Petitioner’s argument regarding the possibility of a
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`delayed trial date (see Reply at 2) and has explained that the parties will have
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`invested even more resources by the 3/27/2023 deadline for a final written decision
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`(see POPR at 23-24). There are many asterisked deadlines in the Docket Control
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`Order (EX. 2003) unlikely to change, even if the trial date is ultimately changed.
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` Furthermore, Petitioner argues alleged diligence (see Reply at 3) based on the
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`timing of the Petition relative to the statutory deadline. However, Petitioner attempts
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`to minimize the timing of the Petition relative to the investment/progress in the
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`NetNut Litigation. Also, Petitioner fails to explain its alleged diligence in view of
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`its other litigation activity. Petitioner merely states that those “events… concern
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`other patents, parties, and types of proceedings.” (Reply at 3). However, Petitioner
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`has not explained (a) when it became aware of the ‘319 and ‘510 Patents and/or (b)
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`when it became aware of the Crowds, Border, and Morphmix references, in order to
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`justify why Petitioner could not have filed the Petitions before September 2021.
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`3
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`IPR2021-01492 of Patent No. 10,257,319
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` Patent Owner has shown that Petitioner (a) was aware of unasserted patents in
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`Patent Owner’s portfolio3 and (b) was aware of at least the Crowds and MorphMix
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`references4, long before September 2021. (See POPR at 24-28). Because the
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`Petitions could have been filed before significant investment/progress in the NetNut
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`Litigation,
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`this factor weighs
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`in favor of denial. (See Fintiv at 11).
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` Regarding Fintiv factor 4, given that there is only one independent claim in
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`each of the ‘319 and ‘510 Patents, there is a high risk of inefficiency if institution is
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`granted. (See POPR at 29-30). Patent Owner respectfully submits that it would be
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`“inefficient to proceed because the district court may resolve validity of enough
`
`overlapping claims to resolve key issues in the petition.” (Fintiv at 13). Also,
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`Petitioner did not address the absence of any prior art stipulation in its Reply.
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` Regarding Fintiv factor 5, Petitioner did not address the duplicative
`
`costs/efforts in view of the other district court proceedings involving the ‘319 and
`
`‘510 Patents in its Reply. (See POPR at 30-33; see also Fintiv at 14).
`
`
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`Regarding Fintiv factor 6, Patent Owner disagrees that the other proceedings
`
`
`3 Petitioner filed petitions in IPR2021-00458 and IPR2021-00465 against Patent
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`Nos. 9,241,044 and 9,741,866 in January 2021. (See also POPR at 24-26).
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`4 Petitioner cited Crowds and MorphMix in its invalidity contentions served
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`November 2020. (See also POPR at 26-28).
`
`
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`4
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`IPR2021-01492 of Patent No. 10,257,319
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`involving the ‘319 and ‘510 Patents (see POPR, section II, at 10-17) have “no
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`relevance” (Reply at 4) to the Board’s exercise of discretion. As explained in the
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`POPR, there is a high risk of duplicative efforts at the USPTO and in district court.
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` Petitioner did not address the lack of merit in the substantially similar
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`Code200/Teso Petitions5 or the issues of hindsight bias in its Reply. Instead,
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`Petitioner repeats unsuccessful arguments about the solely-role-based distinction of
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`“client device” vs. “second server.” Patent Owner maintains its claim construction
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`arguments (see POPR at 37-38) are consistent with the Court’s orders. (See also
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`POPR, section IV.D, at 48-52). Moreover, Petitioner’s reference to IPR2021-00458
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`and -00465, involving different patent specifications and claims, is misleading. (See
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`Reply at 5). The Court explicitly stated that, in the context of the ‘319 and ‘510
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`Patents, a “component can be configured to operate in different roles –so long as it
`
`does not “simultaneously serve as more than one of: the client device, the first
`
`server/second server, and the web server.”” (EX. 1020 at 10 (emphasis added)).
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` On balance, as discussed in the POPR and this Sur-Reply, Patent Owner
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`respectfully submits that there is a high risk of duplicative costs/efforts and
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`therefore, granting institution would be an inefficient use of the Board’s resources.
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`5 The merits did not outweigh the other Fintiv factors when trial was approx. 7
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`months before the deadline for a final written decision. (See POPR at 15-16).
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`5
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`Date: January 28, 2022
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`IPR2021-01492 of Patent No. 10,257,319
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`Respectfully submitted,
`
`
`
`
`
`By: /s/ Thomas M. Dunham
`Thomas M. Dunham
`Reg. No. 39,965
`
`RuyakCherian LLP
`1901 L Street NW, Suite 700
`Washington, D.C. 20036
`(202) 838-1567
`
`ATTORNEY FOR PATENT OWNER,
`BRIGHT DATA LTD.
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`6
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`IPR2021-01492 of Patent No. 10,257,319
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`CERTIFICATE OF COMPLIANCE WITH TYPE-VOLUME LIMITS
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`
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`This Paper consists of no more than 5 pages, excluding certificate of service,
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`this certificate, or table of exhibits. The Paper complies with the type-volume
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`limitation of 5 pages as authorized by the Board via email on January 7, 2022.
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`Date: January 28, 2022
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`Respectfully submitted,
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`By: /s/ Thomas M. Dunham
`
`Thomas M. Dunham
`Reg. No. 39,965
`
`RuyakCherian LLP
`1901 L Street NW, Suite 700
`Washington, D.C. 20036
`(202) 838-1567
`
`ATTORNEY FOR PATENT OWNER,
`BRIGHT DATA LTD.
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`7
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`IPR2021-01492 of Patent No. 10,257,319
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), the undersigned hereby certifies this Paper
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`and all exhibits thereto were served on the undersigned date via email, as authorized
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`by Petitioner, at the following email addresses:
`
`ron.abramson@listonabramson.com
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`ari.jaffess@listonabramson.com
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`michael.lewis@listonabramson.com
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`Date: January 28, 2022
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`Respectfully submitted,
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`By: /s/ Thomas M. Dunham
`
`Thomas M. Dunham
`Reg. No. 39,965
`
`RuyakCherian LLP
`
`1901 L Street NW, Suite 700
`
`Washington, D.C. 20036
`
`(202) 838-1567
`
`ATTORNEY FOR PATENT OWNER,
`BRIGHT DATA LTD.
`
`8
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`
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