`Trials@uspto.gov
`Entered: September 15, 2022
`Tel: 571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`MAJOR DATA UAB,
`Petitioner,
`v.
`BRIGHT DATA LTD.,
`Patent Owner.
`
`IPR2022-00916
`Patent 10,484,510 B2
`
`Before THOMAS L. GIANNETTI, KEVIN C. TROCK, and
`SHEILA F. McSHANE, Administrative Patent Judges.
`
`TROCK, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`Exhibit 1122
`Code 200, UAB, et al. v. Bright Data
`IPR2021-01492
`Page 1 of 36
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`I. INTRODUCTION
`Major Data UAB (“Petitioner”) filed a Petition (Paper 1, “Pet.”)
`requesting inter partes review of claims 1, 2, 6–11, 13, and 15–24 (the
`“challenged claims”) of U.S. Patent No. 10,484,510 B2 (Ex. 1001, “the ’510
`patent”). Bright Data Ltd. (“Patent Owner”) filed a Preliminary Response
`(Paper 12, “Prelim. Resp.”). With authorization, Petitioner filed a
`Preliminary Reply (Paper 16, “Pet. Prelim. Reply”), and Patent Owner filed
`a Preliminary Sur-reply (Paper 17, “PO Prelim. Sur-reply”).
`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 claim. We therefore institute inter partes review as to all of the
`challenged claims of the ’510 patent and all of the asserted grounds of
`unpatentability in the Petition.
`
`II. BACKGROUND
`
`A. Related Matters
`The parties identify several district court proceedings involving the
`’510 patent and a related patent (U.S. Patent No. 10,257,319 (“the ’319
`patent”)), including Bright Data Ltd. v. NetNut Ltd., No. 2:21-cv-225 (E.D.
`Tex.); Luminati Networks Ltd. v. Teso LT, UAB, et al., No. 2:19-cv-395
`(E.D. Tex.); Luminati Networks Ltd. v. BI Science (2009) Ltd., No. 2:19-cv-
`
`2
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`Code 200, UAB, et al. v. Bright Data
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`397 (E.D. Tex.); and Luminati Networks Ltd. v. Tefincom S.A., No. 2:19-cv-
`414 (E.D. Tex.). Pet. 3; Paper 6, 2–3.
`According to the parties, the ’510 patent was previously before the
`Board in IPR2020-01358, IPR2021-01493, IPR2022-00138, and IPR2022-
`00862. See Pet. 4–6; Paper 6, 1–2. Petitioner also identifies a number of
`other Board proceedings and district court actions involving patents related
`to the ’510 patent. See Pet. 3–6.
`Patent Owner identifies ex parte reexaminations for the ’319 and ’510
`patents, respectively, Control No. 90/014,875 and Control No. 90/014,876.
`Paper 6, 2.
`B. Real Parties-in-Interest
`Petitioner identifies Major Data UAB as the real party-in-interest.
`Pet. 2. Patent Owner expresses concern, however, that “Major Data was
`formed as a ‘back-up’ option to continue these IPRs,” and represents that
`Patent Owner “has not sued Major Data for infringement of any patents and
`Patent Owner is not aware of any services offered by Major Data.” Prelim.
`Resp. 3.
`In its Preliminary Reply, however, Petitioner points out that shortly
`before Patent Owner filed the Preliminary Response, Petitioner had advised
`Patent Owner and “confirmed, inter alia, that it is not affiliated with any of
`the Code200 parties and did not discuss the preparation or filing of IPRs
`with anyone apart from privileged communications with its own attorneys.”
`Pet. Prelim. Reply 3. Petitioner avers that “it did not file its IPRs at any
`another party’s behest.” Id.
`In its Preliminary Sur-reply, Patent Owner does not directly challenge
`Petitioner’s representations, but instead “reserves all rights including, e.g.,
`
`3
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`vacatur and sanctions, if any contradictions to Petitioner’s representations
`should arise.” PO Prelim. Sur-reply 4.
`Based on the current record, we determine that Petitioner has
`established compliance with the statutory requirement under 35 U.S.C.
`§ 312(a)(2) to identify all real parties in interest.
`C. The ’510 Patent
`The ’510 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 patent is subject to a terminal disclaimer. Id. at code (*). The
`application for the ’866 patent claims priority to several applications,
`including U.S. Provisional Application No. 61/249,624, filed October 8,
`2009. Id. at code (60).
`The ’510 patent is directed to addressing the “need for a new method
`of data transfer that is fast for the consumer, cheap for the content distributor
`and does not require infrastructure investment for ISPs.” Ex. 1001, 1:57–59.
`The ‘’510 patent states that other “attempts at making the Internet faster for
`the consumer and cheaper for the broadcaster,” such as proxy servers and
`peer-to-peer file sharing, have various shortcomings. Id. at 1:61–3:6. The
`’510 patent provides a system and method “for faster and more efficient data
`communication within a communication network,” such as in the network
`illustrated in Figure 3, reproduced below. Id. at 3:16–18, 4:5–7.
`
`4
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`Figure 3 is a schematic diagram depicting communication network 100
`including a number of communication devices. Ex. 1001, 4:56–48. Client
`102 is capable of communicating with peers 112, 114, and 116, as well as
`with one or more agents 122. Id. at 4:58–60. Web server 152 may be “a
`typical HTTP server, such as those being used to deliver content on any of
`the many such servers on the Internet.” Id. at 4:65–5:2. Acceleration server
`162 includes an acceleration server storage device 164 with an acceleration
`server database, which “stores Internet Protocol (IP) addresses of
`communication devices within the communication network 100 having
`acceleration software stored therein.” Id. at 5:14–17.
`In operation, a client may request a resource on the network, for
`example, through the use of an Internet browser. Ex. 1001, 12:62–13:3. If
`server 152 is the target of the request, the client sends the IP address of
`server 152 to acceleration server 162. Id. at 13:8–15. Acceleration server
`162 then prepares a list of agents that can handle the request, which includes
`
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`communication devices “that are currently online, and whose IP address is
`numerically close to the IP of the destination Web server 152.” Id. at
`13:19–29. The client then sends the original request to the agents in the list
`to find out which “is best suited to be the one agent that will assist with this
`request.” Id. at 13:31–36. The connection established between the agent
`and client may be a Transmission Control Protocol [TCP] connection. Id. at
`17:61–64.
`Each agent responds to the client with information as to “whether the
`agent has seen a previous request for this resource that has been fulfilled,”
`and “which can help the client to download the request information from
`peers in the network.” Ex. 1001, 13:51–57. The client selects an agent
`based on a number of factors, and the selected agent determines whether
`data stored in its memory or the memory of the peers “still mirrors the
`information that would have been received from the server itself for this
`request.” Id. at 13:62–14:1, 14:35–38. If the selected agent does not have
`the necessary information to service a request, it may “load the information
`directly from the server in order to be able to provide an answer to the
`requesting client.” Id. at 14:62–67.
`
`D. Illustrative Claim
`The ’510 patent has 24 claims. Claim 1, the only independent claim
`in the ’510 patent, is illustrative of the claimed subject matter and is
`reproduced below, with bracketed designations added to the limitations for
`reference purposes.
`1. [pre] A method for use with a web server that responds to
`Hypertext Transfer Protocol (HTTP) requests and stores a first content
`identified by a first content identifier, the method by a first client
`device comprising:
`
`6
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`[a] establishing a Transmission Control Protocol (TCP)
`connection with a second server;
`[b] sending, to the web server over an Internet, the first content
`identifier;
`[c] receiving, the first content from the web server over the
`Internet in response to the sending of the first content identifier;
`and
`[d] sending the received first content, to the second server over
`the established TCP connection, in response to the receiving of
`the first content identifier.
`Ex. 1001, 19:18–31.
`
`7
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`Crowds, RFC 26164
`
`Border5
`
`Border, RFC 2616
`
`MorphMix6
`
`MorphMix, RFC 2616
`
`Reference(s)
`Crowds3
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`E. Asserted Grounds of Unpatentability
`Petitioner challenges the patentability of claims of the ’510 patent on
`the following grounds:
`Claims Challenged
`1, 6, 7, 132, 15, 16,
`18–24
`1, 2, 6–11, 13, 15, 16,
`18–24
`1, 6, 10, 15–20, 23,
`24
`1, 6, 8–11, 13, 15–20,
`22–24
`1, 6–8, 13, 15, 16,
`18–24
`1, 2, 6–11, 13, 15, 16,
`18–24
`Pet. 11.
`
`1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 287–88 (2011), amended 35 U.S.C. §§ 102 and 103, effective
`March 16, 2013. Because the ’510 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 and 103 apply. See Ex. 1001, code
`(60); Pet. 17.
`2 The Petition includes assertions for claim 13 under the Crowds anticipation
`ground. Pet. 33. Accordingly, we include this claim in the summary table,
`even though it was not included in the Petition’s summary table. See Pet.
`11.
`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. 1006, “Crowds”).
`4 Hypertext Transfer Protocol—HTTP/1.1, Network Working Group, RFC
`2616, The Internet Society, 1999 (Ex. 1013, “RFC 2616”).
`5 U. S. Patent No. 6,795,848, issued September 21, 2004 (Ex. 1012,
`“Border”).
`
`35 U.S.C. §1
`102(b)
`
`103(a)
`
`102(b)
`
`103(a)
`
`102(b)
`
`103(a)
`
`8
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`III. DISCRETIONARY DENIAL
`Patent Owner contends the Board should deny the Petition pursuant to
`35 U.S.C. § 314(a) because “the Fintiv factors overwhelmingly favor denial
`of institution.” Prelim. Resp. 8. Patent Owner provides arguments
`regarding the factors set forth in Fintiv. Id. at 8–19. Patent Owner also
`argues that we should exercise our discretion under § 314(a) to deny
`institution because “there is a significant risk of the Board redoing the work
`of another tribunal.” Id. at 7.
`The Board’s precedential decision in Apple Inc. v. Fintiv Inc.,
`IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”),
`identifies a non-exclusive list of factors parties may consider addressing
`where there is a related, parallel district court action to determine whether
`such action provides any basis for discretionary denial. Fintiv, Paper 11 at
`5–16. Those factors include:
`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.
`
`6 Marc Rennhard, MorphMix—A Peer-to-Peer-based System for
`Anonymous Internet Access (2004) (Ph.D. dissertation, Swiss Federal
`Institute of Technology) (Ex. 1008, “MorphMix”).
`
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`Id. at 5–6.
`On June 21, 2022, the Director of the United States Patent and
`Trademark Office issued an Interim Procedure for Discretionary Denials in
`AIA Post-Grant Proceedings with Parallel District Court Litigation
`(“Memorandum”)7 to clarify “the [Board’s] current application of Fintiv to
`discretionary institutions when there is parallel litigation” and to “confirm[]
`that the precedential import of Fintiv is limited to the facts of that case.”
`Memorandum 2. In particular, the Memorandum states that the Board
`will not deny institution of an IPR or PGR under Fintiv (i)
`when a petition presents compelling evidence of
`unpatentability; (ii) when a request for denial under Fintiv is
`based on a parallel ITC proceeding; or (iii) where a petitioner
`stipulates not to pursue in a parallel district court proceeding
`the same grounds as in the petition or any grounds that could
`have reasonably been raised in the petition.
`Id. at 9.
`Petitioner argues in its Preliminary Reply that there are reasons why
`the Board should decline to exercise its discretion under § 314(a). Petitioner
`first argues that “discretionary denials are inappropriate under Fintiv when
`parallel litigation would not result in a ‘binding’ decision that would
`‘conclusively resolve an assertion of patent invalidity.’” Pet. Prelim. Reply
`4 (citing Memorandum 6). Petitioner points out that Patent Owner “has not
`sued Major Data and is not aware of any infringement by Major Data. As a
`non-party to the parallel district court litigation, any judgment upholding the
`patents-in-suit as valid would not be binding on Major Data.” Id. at 5 (citing
`
`
`7 Available at:
`https://www.uspto.gov/sites/default/files/documents/interim_proc_discretion
`ary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf
`
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`Stevenson v. Sears, Roebuck & Co., 713 F.2d 705, 710–11 (Fed. Cir. 1983)
`(prior holding of patent validity not binding on subsequent accused infringer
`because it is “grossly inequitable to bind a party to a judgment of validity
`rendered in an action against some other party”). Petitioner argues that
`“[t]he parallel Texas litigation is therefore not conclusive as to Major Data
`and thus cannot be the basis of a discretionary denial.” Pet. Prelim. Reply 5.
`Second, Petitioner argues that the Memorandum “establishes a bright-
`line rule that ‘the PTAB will not discretionarily deny institution of an IPR or
`PGR in view of parallel district court litigation where a petitioner stipulates
`not to pursue in a parallel district court proceeding the same grounds as in
`the petition or any grounds that could have reasonably been raised in the
`petition.’” Id. (citing Memorandum 7). Petitioner provides just such a
`stipulation, stating that it “hereby does stipulate, ‘not to pursue in a parallel
`district court proceeding the same grounds as in the petition or any grounds
`that could have reasonably been raised’ against the claims included in the
`petition.” Pet. Prelim. Reply 6 (quoting Memorandum 7).
`Patent Owner argues, however, that “Petitioner’s stipulation is
`meaningless at least because the [Texas] Litigation has already proceeded
`through trial and reached a jury verdict,” and “Petitioner is not a defendant
`in the Tefincom Litigation.” PO Prelim. Sur-reply 6. Patent Owner
`concludes that “Petitioner’s stipulation provides no mitigating effects” and
`“cannot affect the Board’s Fintiv analysis in this IPR.” Id.
`
`Neither party addresses, however, another directive of the
`Memorandum, which states that “the PTAB will not rely on the Fintiv
`factors to discretionarily deny institution in view of parallel district court
`litigation where a petition presents compelling evidence of unpatentability.”
`
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`Memorandum 2. The Memorandum explains that “where the PTAB
`determines that the information presented at the institution stage presents a
`compelling unpatentability challenge, that determination alone demonstrates
`that the PTAB should not discretionarily deny institution under Fintiv.”
`Memorandum, 4–5 (emphasis added). The Memorandum further explains
`that “[c]ompelling, meritorious challenges are those in which the evidence,
`if unrebutted in trial, would plainly lead to a conclusion that one or more
`claims are unpatentable by a preponderance of the evidence.” Memorandum
`4.
`
`On the current record, we determine that Petitioner’s invalidity
`grounds, if unrebutted at trial, would plainly lead to a conclusion that the
`challenged claims are unpatentable by a preponderance of the evidence. See
`infra Sections IV.D–I. Instituting inter partes review under these
`circumstances “strikes a balance among the competing concerns of avoiding
`potentially conflicting outcomes, avoiding overburdening patent owners, and
`strengthening the patent system by eliminating patents that are not robust
`and reliable.” Memorandum 5.
`Accordingly, based upon our consideration of the evidence and
`arguments presented in the Petition, and pursuant to the directive in the
`Memorandum concerning compelling, meritorious challenges, we decline to
`exercise our discretion under § 314(a) to deny institution of inter partes
`review as Patent Owner requests.
`
`IV. ANALYSIS
`A. Applicable Legal Standards
`The Federal Circuit addressed the legal standard for anticipation in
`Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331 (Fed. Cir. 2016):
`
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`Under 35 U.S.C. § 102(b), a prior art reference will anticipate if
`it “disclose[s] each and every element of the claimed invention
`. . . arranged or combined in the same way as in the claim.”
`815 F.3d at 1341 (citation omitted) (footnote omitted). The Federal Circuit
`went on to explain:
`However, a reference can anticipate a claim even if it ‘d[oes]
`not expressly spell out’ all the limitations arranged or combined
`as in the claim, if a person of skill in the art, reading the
`reference, would at ‘once envisage’ the claimed arrangement or
`combination.
`Id. (quoting Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376,
`1381 (Fed. Cir. 2015)).
`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
`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 “would
`have at least a bachelor’s degree in Computer Science or related field (or
`
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`equivalent experience), and two or more years’ experience working with and
`programming networked computer systems as of the Priority Date.” Pet. 16.
`Petitioner further asserts that a person of ordinary skill would be familiar
`with “the underlying principles of Web, Internet, or network
`communication, data transfer, and content sharing across networks,
`including the HTTP and TCP/IP protocols.” Id. (citing Ex. 1005 ¶¶ 25–27).
`
`Patent Owner submits that a person of ordinary skill in the art 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 Communications.” Prelim. Resp. 29–30 (citing Ex. 2025 ¶ 18).
`Patent Owner acknowledges that the parties’ respective proposed
`qualifications “are not materially different, at least in terms of affecting an
`institution decision in this IPR.” Id. at 30.
`For the purposes of this Decision, we adopt the assessment offered by
`Petitioner as it is consistent with the ’510 patent and the prior art before us.
`See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).
`C. Claim Construction
`For this inter partes review, the Board applies the same claim
`construction standard as that applied in federal courts. See 37 C.F.R
`§ 42.100(b) (2019). Under this standard, claim terms “are generally given
`their ordinary and customary meaning” as 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, 1312–13 (Fed. Cir. 2005) (en banc) (citations
`omitted). “In determining the meaning of the disputed claim limitation, we
`look principally to the intrinsic evidence of record, examining the claim
`
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`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).
`Extrinsic evidence is “less significant than the intrinsic record in
`determining ‘the legally operative meaning of claim language.’” Phillips,
`415 F.3d at 1317 (citation omitted).
`Only those terms that are in controversy need be construed, and only
`to the extent necessary to resolve the controversy. See Nidec Motor Corp. v.
`Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017);
`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
`1999).
`Petitioner contends that the district court’s constructions in Luminati
`Networks Ltd. v. Teso LT, UAB, et al., No. 2:19-cv-395 (E.D. Tex.) should
`apply in this case. Pet. 16. In particular, Petitioner points to two claim
`construction orders in that case—an original order (Ex. 1017) and a
`supplemental order (Ex. 1020)—in which the court construed the preamble
`of claim 1 to be limiting, and construed all other terms to have their plain
`and ordinary meanings, except for “client device” and “second server.” Pet.
`16–17. The district court construed “client device” as “communication
`device that is operating in the role of a client.” Ex. 1017, 12. The District
`Court construed “second server” as “server that is not the client device” (id.
`at 14), and later agreed with the defendants’ clarification as to the scope of
`this construction that a “second server” is “a device that is operating in the
`
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`role of a server and that is not the requesting client device or the first web
`server” (Ex. 1020, 8, 11).
`Petitioner refers to the district court’s supplemental order which
`indicates that “a component can be configured to operate in different roles.”
`Pet. 18 (citing Ex. 1020, 10). Petitioner refers to Figure 3 of the ’510 patent
`and asserts, consistent with the district court’s interpretation of the claim
`terms, that “client 102” can be considered a “second server” in accordance
`with the ’510 specification disclosure, “agent 122” can be considered a
`“client device,” and “web server 152” is the “first server.” Id. at 20.
`Petitioner disputes Patent Owner’s argument that a “client device” is
`limited to consumer computers because it would import a limitation into the
`term. Pet. 21. Further, Petitioner asserts that the district court has declined
`to include this limitation, as did the Board. Id.; see also id. at 18 (referring
`to IPR2021-00458, Paper 11, 19; IPR2021-00465, Paper 11, 14–15).
`Petitioner additionally adds, in accordance with the ’510 patent, that a
`“‘client device’ is an entity that receives the content from the intermediate
`agent device” but the same device acts as a “client” for one content retrieval,
`and as one of the intermediate “agent” nodes, as well as in the role of a
`server. Id. at 21–22 (citing Ex. 1001, 9:27–36). Petitioner asserts that the
`interchangeable nature of the devices is consistent with the District Court’s
`supplemental order. Id.
`Petitioner also argues, as to the term “second server,” “[t]he only
`devices in the ’510 patent that ever receive requested content are the
`‘communication devices,’ i.e., the clients, peers, and agents” and “[a]ll such
`recipient devices also have roles as clients.” Pet. 21. Petitioner asserts that
`if a “second server” were construed to require special hardware, there would
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`be no embodiment disclosed in the ’510 patent specification within that
`scope. Id.
`Patent Owner now proposes constructions for the claim terms “client
`device” and “second server” that are different than those determined by the
`district court. See Prelim. Resp. 30–31. We discuss Patent Owner’s
`proposed constructions below.
`1.
`Client Device
`Patent Owner states that “[t]he Board preliminarily construed the term
`‘client device’ as a ‘communication device that is operating in the role of a
`client,’” citing the Board’s decisions granting institution of inter partes
`review in IPR2021-01492 (Ex. 2004) and IPR2021-01493 (Ex. 2005).
`Prelim. Resp. 30–31. Patent Owner proposes, however, that “the correct
`construction for ‘client device’ is ‘consumer computer’ or alternatively, a
`‘consumer communication device.’” Prelim. Resp. 30 (citing Ex. 2025
`¶ 36).
`
`Patent Owner’s proposed construction of the claim term “client
`device” as a “consumer computer” was previously considered, and rejected,
`by the district court. See, e.g., Ex. 1017, 10–12. In the Preliminary
`Response, Patent Owner takes issue with the evidence and the reasoning
`used by the district court to reject Patent Owner’s previously proposed
`construction. See, e.g., Prelim. Resp. 34–36. We have considered Patent
`Owner’s evidence and arguments in the Preliminary Response that the
`district court’s construction of the claim term “client device” as a
`“communication device that is operating in the role of a client” is incorrect.
`See Prelim. Resp. 31–49. For purposes of this decision, however, we concur
`with the district court’s reasoning and agree with its construction of the
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`claim term “client device” as a “communication device that is operating in
`the role of a client.” This construction is consistent with, and supported by,
`the intrinsic evidence of the specification.
`2.
`Second Server
`Patent Owner states that “[t]he Board preliminarily construed the term
`‘second server’ as ‘server that is not the client device,’ with the clarification
`that ‘second server’ is a ‘device that is operating in the role of a server and
`that is not the client device.’” Prelim. Resp. 30–31 (citing Ex. 2004, 19;
`Ex. 2005, 22). Patent Owner proposes, however, that “the correct
`construction for ‘second server’ is a ‘server that is not is a client device.’”
`Prelim. Resp. 31 (citing Ex. 2025 ¶ 71).
`Patent Owner’s proposed construction of the claim term “second
`server” as a “server that is not is a client device” was previously considered
`by the district court, but the court clarified the scope as a “device that is
`operating in the role of a server and that is not the client device.” See
`Ex. 1017, 13–14; Ex. 1020, 7–11. In its Preliminary Response, Patent
`Owner argues that “the second server is separate and distinct from ‘the first
`client device’ of the claims, consistent with the Court’s constructions, and
`more particularly, that a server is structurally different from any client
`device disclosed in the specification or recited in the patent claims.” Prelim.
`Resp. 56 (citing Ex. 2025 ¶ 70).
`We have considered Patent Owner’s evidence and arguments in the
`Preliminary Response but, for purposes of this decision, we concur with the
`district court’s reasoning and agree with its clarified construction of the
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`claim term “second server” as a “device that is operating in the role of a
`server and that is not the client device.(cid:839)
`D. Prior Art References
`1.
`Crowds (Ex. 1006)
`Crowds is an article that “introduce[s] a new approach for increasing
`the privacy of web transactions.” Ex. 1006, 2. In this approach, a user joins
`a “crowd” of other users, wherein the user’s request to a web server is
`passed to a random member of the crowd, and possibly forwarded to one or
`more other members, prior to being submitted to the end server. Id. In this
`way, “[w]hen the request is eventually submitted, it is submitted by a
`random member, thus preventing the end server from identifying its true
`initiator.” Id. In Crowds, “[a] user is represented by a process on her
`computer called a jondo (pronounced ‘John Doe’ and meant to convey the
`image of a faceless participant).” Id. at 8. “When the jondo is started, it
`contacts a server called the blender to request admittance to the crowd.” Id.
`Exemplary paths for web requests from crowd users are shown in Figure 2
`(id. at 9), reproduced below:
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`In Figure 2 of Crowds, when a jondo receives a user request from a
`browser, it “initiates the establishment of a random path of jondos that
`carries its users’ transactions to and from their intended web servers.” Id. at
`8. For example, the paths in Figure 2 among the jondos labeled 1 to 6 are as
`(cid:73)(cid:82)(cid:79)(cid:79)(cid:82)(cid:90)(cid:86)(cid:29)(cid:3)(cid:3)(cid:179)(cid:20)(cid:3)(cid:314)(cid:3)(cid:24)(cid:3)(cid:314)(cid:3)(cid:86)(cid:72)(cid:85)(cid:89)(cid:72)(cid:85)(cid:30)(cid:3)(cid:21)(cid:3)(cid:314)(cid:3)(cid:25)(cid:3)(cid:314)(cid:3)(cid:21)(cid:3)(cid:314)(cid:3)(cid:86)(cid:72)(cid:85)(cid:89)(cid:72)(cid:85)(cid:30)(cid:3)(cid:22)(cid:3)(cid:314)(cid:3)(cid:20)(cid:3)(cid:314)(cid:3)(cid:25)(cid:3)(cid:314)(cid:3)(cid:86)(cid:72)(cid:85)(cid:89)(cid:72)(cid:85)(cid:30)(cid:3)(cid:23)(cid:3)
`(cid:314)(cid:3)(cid:23)(cid:3)(cid:314)(cid:3)(cid:86)(cid:72)(cid:85)(cid:89)(cid:72)(cid:85)(cid:30)(cid:3)(cid:24)(cid:3)(cid:314)(cid:3)(cid:23)(cid:3)(cid:314)(cid:3)(cid:25)(cid:3)(cid:314)(cid:3)(cid:86)(cid:72)(cid:85)(cid:89)(cid:72)(cid:85)(cid:30)(cid:3)(cid:68)(cid:81)(cid:71)(cid:3)(cid:25)(cid:3)(cid:314)(cid:3)(cid:22)(cid:3)(cid:314)(cid:3)(cid:86)(cid:72)(cid:85)(cid:89)(cid:72)(cid:85)(cid:17)(cid:180)(cid:3)(cid:3)Id. “[S]erver
`replies traverse the same path as the re