`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CODE200, UAB; TESO LT, UAB; METACLUSTER LT, UAB;
`OXYSALES, UAB; AND CORETECH LT, UAB;
`Petitioners,
`
`v.
`
`BRIGHT DATA LTD.,
`Patent Owner.
`____________
`
`Case IPR2021-01492
`Patent No. 10,257,319
`____________
`
`
`PETITIONERS’ REPLY TO PATENT OWNER’S OPPOSITION
`
`
`
`
`
`
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`

`

`IPR2021-01492 of Patent No. 10,257,319
`
`TABLE OF CONTENTS
`
`
`
`I.
`
`II.
`
`THE BOARD SHOULD REJECT PO’S PROPOSED CONSTRUCTIONS
`FOR “CLIENT DEVICE” AND “SECOND SERVER” ................................ 1
`A. PO’s Proposed Constructions for “Client Device” are Inappropriate ........ 1
`1.
`PO’s proposed “client device” characteristics are highly
`subjective and indefinite ............................................................. 2
`PO’s “client device” characteristics are not in the specification 4
`2.
`B. PO’s Proposed Constructions for “Second Server” are Inappropriate ....... 6
`1.
`PO’s proposed “server” characteristics are highly subjective
`and indefinite ............................................................................... 7
`PO’s proposed “server” construction is unsupported by the
`specification ................................................................................ 8
`C. PO’s Constructions Require Comparisons Between Unidentified Devices
`at Unidentified Points in Time .................................................................10
`D. Williams Cannot Consistently Apply His Own Constructions ................11
`THE BOARD SHOULD APPLY THE DISTRICT COURT’S ROLE-
`BASED CONSTRUCTIONS ........................................................................12
`A. The District Court Has Consistently Applied Role-Based Constructions
` 12
`B. The District Court’s Constructions are Consistent with the Intrinsic
`Evidence ...................................................................................................13
`C. PO’s Prosecution History Arguments are Unavailing .............................15
`III. CROWDS, MORPHMIX, AND BORDER INVALIDATE CLAIM 1........17
`A. The Prior Art Anticipates Claim 1 Under the Proper Role-Based
`Constructions ............................................................................................17
`1.
`PO’s sole argument would render claim 1 nonsensical and
`impossible to practice ...............................................................17
`Crowds anticipates claim 1 .......................................................19
`Border and MorphMix each anticipate claim 1 ........................20
`
`2.
`
`2.
`3.
`
`
`
`i
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`

`

`IPR2021-01492 of Patent No. 10,257,319
`
`B. Claim 1 Is Obvious Under PO’s Proposed Constructions .......................20
`C. PO’s Arguments Regarding the Dependent Claims Lack Merit ..............22
`1.
`Claim 18 is invalid ....................................................................22
`2.
`Claim 19 is invalid ....................................................................23
`3.
`Claim 24 is invalid ....................................................................23
`D. “Teaching Away” Is Not Relevant ...........................................................23
`E. PO’s Alleged Secondary Considerations of Non-Obviousness Lack
`Nexus ........................................................................................................24
`IV. PO’S CRITICISM OF MR. TERUYA LACKS MERIT ..............................26
`V.
`CONCLUSION ..............................................................................................27
`
`
`
`
`
`
`
`
`
`
`ii
`
`

`

`IPR2021-01492 of Patent No. 10,257,319
`
`TABLE OF AUTHORITIES
`
`Celeritas Techs., Ltd. v. Rockwell Int’l Corp.,
`150 F.3d 1354 (Fed. Cir. 1998) .............................................................................. 24
`
`Datamize, LLC v. Plumtree Software, Inc.,
`417 F.3d 1342 (Fed. Cir. 2005) ................................................................................ 2
`
`Halliburton Energy Servs., Inc. v. M-I, LLC,
`514 F.3d 1244 (Fed. Cir. 2008) ................................................................................ 2
`
`Kyocera Senco Indus. Tools, Inc. v. ITC,
`22 F.4th 1369, 1379 (Fed. Cir. 2022) ................................................................... 5
`
`MeadWestVaco Corp. v. Rexam Beauty & Closures, Inc.,
`731 F.3d 1258 (Fed. Cir. 2013) .............................................................................. 23
`
`Nellcor Puritan Bennett, Inc. v. Masimo Corp.,
`402 F.3d 1364 (Fed. Cir. 2005) .............................................................................. 18
`
`SightSound Techs., LLC v. Apple Inc.,
`809 F.3d 1307 (Fed. Cir. 2015) .............................................................................. 16
`
`Ventana Medical Systems v. Biogenex Labs.,
`473 F.3d 1173 (Fed. Cir. 2006) .............................................................................. 16
`
`OTHER AUTHORITIES
`
`83 Fed. Reg. 51344, 51348 ......................................................................................... 13
`
`
`
`
`
`
`
`
`
`
`
`iii
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`

`

`IPR2021-01492 of Patent No. 10,257,319
`
`LISTING OF EXHIBITS
`
`
`
`Description
`
`Ex. No.
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`
`1015
`
`1016
`
`United States Patent No. 10,257,319 to Shribman et al.
`
`File History for United States Patent No. 10,257,319
`
`Petitioners’ Chart of Challenged Claims
`
`Luminati’s Opposition to Defendants’ Motion to Dismiss,
`Luminati Networks Ltd. v. Teso LT, UAB et al., 2:19-cv-00395-
`JRG (E.D. Tex.)
`
`Declaration of Keith J. Teruya with curriculum vitae
`
`Michael Reiter & Aviel Rubin, Crowds: Anonymity for Web
`Transactions, ACM Transactions on Information and System
`Security, Vol. 1, No. 1, Nov. 1998, at 66-92
`
`Declaration of Scott Delman (regarding Crowds)
`
`Marc Rennhard, MorphMix – A Peer-to-Peer-based System for
`Anonymous Internet Access (2004) (Doctoral Thesis)
`
`Declaration of Marc Rennhard (regarding MorphMix)
`
`Declaration of Bernhard Plattner (regarding MorphMix)
`
`Declaration of Andreas Berz (regarding MorphMix)
`
`United States Patent No. 6,795,848 to Border et al.
`
`Fielding, R. et al., “Hypertext Transfer Protocol – HTTP/1.1”,
`RFC 2616, June 1999
`
`Socolofsky, T. and C. Kale, “TCP/IP Tutorial”, RFC 1180,
`January 1991
`
`Postel, J., “Internet Protocol”, STD 5, RFC 791, September 1981
`
`Braden, R., Ed., “Requirements for Internet Hosts -
`Communication Layers”, STD 3, RFC 1122, October 1989
`
`1017
`
`Claim Construction Opinion and Order, Luminati Networks Ltd.
`
`
`
`iv
`
`

`

`IPR2021-01492 of Patent No. 10,257,319
`
`1018
`
`1019
`
`1020
`
`1021
`
`v. Teso LT, UAB et al., 2:19-cv-00395-JRG (E.D. Tex.)
`
`W3C, Glossary of Terms for Device Independence (Jan. 2005)
`available at https://www.w3.org/TR/di-gloss/#ref-wca-terms
`
`U.S. Pat. Pub. No. 2009/0037977
`
`Supplemental Claim Construction Opinion and Order, Luminati
`Networks Ltd. v. Teso LT, UAB et al., 2:19-cv-00395-JRG (E.D.
`Tex.)
`
`Transcript or Pretrial Conference, Luminati Networks Ltd. v. Teso
`LT, UAB et al., 2:19-cv-00395-JRG (E.D. Tex.)
`
`1022-1100
`1101
`
`[RESERVED]
`EDTX-2-19-cv-00395 Docket Sheet
`
`1102
`
`1103
`
`1104
`
`1105
`
`1106
`
`1107
`
`1108
`
`1109
`
`1110
`
`1111
`
`1112
`
`1113
`
`EDTX-2-21-cv-00225 Docket Sheet
`
`EDTX-2-21-cv-00225 DI 86
`
`2021-12-17 NetNut's Invalidity Contentions
`
`IPR2021-00458 Inst. Decision
`
`IPR2021-00465 Inst. Decision
`
`Photograph of IBM Computer (Williams Deposition Exhibit)
`
`MacBook Pro (16-inch, 2023) Technical Specifications (Williams
`Deposition Exhibit)
`
`iPhone 14 Pro Max Technical Specifications (Williams Deposition
`Exhibit)
`
`Mac mini Server (Late 2012) Technical Specifications (Williams
`Deposition Exhibit)
`
`Deposition Transcript of Dr. Tim A. Williams, dated February 23,
`2023
`
`Claim Construction Memorandum Opinion and Order, Luminati
`Networks Ltd. v. Code200, UAB, et al., Case No. 2:19-cv-00396-
`JRG, D.I. 97 (E.D. Tex. Feb. 8, 2021)
`
`Order, Bright Data Ltd. v. Teso LT et al., Case No. 2:19-cv-00395-
`JRG, D.I. 493 (E.D. Tex. Sep. 21, 2021)
`
`
`
`v
`
`

`

`1114
`
`1115
`
`1116
`
`1117
`
`1118
`
`1119
`
`1120
`
`1121
`
`1122
`
`1123
`
`1124
`
`IPR2021-01492 of Patent No. 10,257,319
`
`ORDER - Overruling Plaintiff’s Objections and Defendant’s
`Objections, and Adopting Magistrate Judge Payne’s Order and
`Supplemental Order, Luminati Networks Ltd. v. Code200, UAB, et
`al., Case No. 2:19-cv-00396-JRG, D.I. 251 (E.D. Tex. Sept. 16,
`2021)
`
`Claim Construction Order, Bright Data Ltd. v. NetNut Ltd., EDTX
`2:21-cv-225, Claim Construction Order
`
`Order on Pretrial Motions and Motions in limine, Bright Data Ltd.
`v. Teso LT et al., Case No. 2:19-cv-00395-JRG, D.I. 476 (E.D.
`Tex. Sept. 9, 2021)
`
`DECISION Granting Institution of Inter Partes Review, The Data
`Company Technologies Inc. v. Bright Data Ltd., IPR2022-00138,
`Paper 12 (PTAB May 11, 2022)
`
`DECISION Granting Institution of Inter Partes Review, NetNut
`Ltd. v. Bright Data Ltd., IPR2021-01493, Paper 11 (PTAB Mar.
`11, 2022)
`
`DECISION Granting Institution of Inter Partes Review, NetNut
`Ltd. v. Bright Data Ltd., IPR2021-01492, Paper 12 (PTAB Mar.
`21, 2022)
`
`DECISION Rehearing on Director Remand Granting Institution of
`Inter Partes Review, Code200, UAB et al v. Bright Data Ltd.,
`IPR2022-00862, Paper 19 (PTAB Oct. 19, 2022)
`
`DECISION Granting Institution of Inter Partes Review, The Data
`Company Techs. Inc. v. Bright Data Ltd., IPR2022-00135, Paper
`12 (PTAB June 1, 2022)
`
`DECISION Granting Institution of Inter Partes Review, Major
`Data UAB v. Bright Data Ltd., IPR2022-00916, Paper 18 (PTAB
`Sept. 15, 2022)
`
`DECISION Granting Institution of Inter Partes Review, Major
`Data UAB v. Bright Data Ltd., IPR2022-00915, Paper 18 (PTAB
`Sept. 15, 2022)
`
`DECISION Rehearing on Director Remand Granting Institution of
`Inter Partes Review, Code200, UAB et al v. Bright Data Ltd.,
`IPR2022-00103, Paper 7 (PTAB June 1, 2022)
`
`
`
`vi
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`

`

`IPR2021-01492 of Patent No. 10,257,319
`
`1125
`
`1126
`
`1127
`
`1128
`
`1129
`
`DECISION Rehearing on Director Remand Granting Institution of
`Inter Partes Review, Code200, UAB et al v. Bright Data Ltd.,
`IPR2022-00353, Paper 8 (PTAB July 1, 2022)
`
`Luminati’s Opening Claim Construction Brief, Luminati Networks
`Ltd. v. Teso LT, et al, 2:19-cv-00395-JRG (September 29, 2020)
`
`Non-Final Office Action mailed March 23, 2022, Reexamination
`No. 90/014,876
`
`Final Office Action mailed June 21, 2022, Reexamination Nos.
`90/014,827 & 90/014,624
`
`U.S. Patent Application Publication No. US 2003/0009518
`(“Harrow”)
`
`
`
`
`
`vii
`
`
`
`
`
`

`

`IPR2021-01492 of Patent No. 10,257,319
`
`ABBREVIATIONS
`
`
`
`District Court U.S. District Court, Eastern District of Texas
`
`ID
`
`Institution Decision (Paper 25)
`
`Petition
`
`Paper 2
`
`PO
`
`POR
`
`Patent Owner
`
`PO Response (Paper 31)
`
`’319 patent
`
`U.S. 10,257,319
`
`’510 patent
`
`U.S. 10,484,510
`
`
`
`viii
`
`

`

`IPR2021-01492 of Patent No. 10,257,319
`
`PO asks the Board to abandon the claim constructions adopted and reaffirmed by
`
`the District Court. Instead, PO seeks to define “client device” and “second server” by
`
`applying checklists of physical characteristics—entirely absent from the patent
`
`specification—that are so vague and subjective that PO’s expert could offer no standards
`
`to govern their application. Alternatively, PO seeks to apply a new “at all times”
`
`restriction to the District Court’s role-based claim constructions even though such a
`
`restriction expressly conflicts with the claim language and, as PO’s expert admitted,
`
`would render the claims incapable of being practiced.
`
`I.
`
`PROPOSED
`PO’S
`REJECT
`SHOULD
`BOARD
`THE
`CONSTRUCTIONS FOR “CLIENT DEVICE” AND “SECOND
`SERVER”
`
`A.
`
`PO’s Proposed Constructions
`Inappropriate
`
`for “Client Device” are
`
`PO and Dr. Williams provide eight characteristics that Williams “developed in
`
`discussion with attorneys” (EX-1111, 22:10-13) to define “client device”:
`
` “Consumer computer”;
`
` “Typically portable and easily moved”;
`
` “Not a dedicated network element”;
`
` “Uses single or relatively few connections”;
`
` “Resource limited (e.g., bandwidth and storage), unlike a server”;
`
` “Regularly switched off and taken offline”;
`
` “Capable of processing only a limited number of requests at any given
`
` 1
`
`
`
`

`

`IPR2021-01492 of Patent No. 10,257,319
`
`time”; and
`
` “Lesser fault tolerance, lesser reliability, and lesser scalability, prioritizing
`
`value to client device users over system costs.”
`
`POR, 25-27; EX-2065 ¶¶ 118, 122-23; EX-1111, 53:24-54:8.
`
`1.
`
`PO’s proposed “client device” characteristics are highly
`subjective and indefinite
`
`PO’s “client device” characteristics are replete with terms of subjective degree
`
`(e.g., “easily moved,” “relatively few,” “resource limited”) that expressly require
`
`comparisons with other (unidentified) equipment and invite shifting determinations as to
`
`whether they are practiced. Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342,
`
`1350 (Fed. Cir. 2005) (claim scope “cannot depend solely on the unrestrained, subjective
`
`opinion of a particular individual purportedly practicing the invention”); Halliburton
`
`Energy Servs., Inc. v. M-I, LLC, 514 F.3d 1244, 1255 (Fed. Cir. 2008).
`
`“Consumer computer”: According to PO, “consumer computer” requires a
`
`“client device” to be owned and operated by a “consumer.” EX-1111, 54:4-8, 187:6-11;
`
`EX-2065 ¶ 119. So if claim 1 were practiced by a “client device,” the claim would no
`
`longer be practiced if the same device were owned and operated by a non-“consumer.”
`
`Williams testified that a “consumer” is “not a commercial enterprise,” but could not
`
`qualify himself as a “consumer” because he sometimes “operate[s] as a business.” EX-
`
`1111, 15:20-16:6.
`
`PO’s “consumer computer” restriction is unworkable. In a hypothetical where a
`
` 2
`
`
`
`

`

`IPR2021-01492 of Patent No. 10,257,319
`
`bank issued cell phones for employee use during the business day, Williams opined that
`
`the phones would be consumer computers if the bank allowed the employee to add
`
`software causing the phone to perform the claimed method steps. EX-1111, 195:5-18.
`
`But if the bank installed the software, the “phone was not operating as a consumer
`
`computer and is not a first client device.” Id., 195:19-196:1, 191:23-194:23.1
`
`“Typically portable and easily moved”: Many factors typically influence
`
`whether something is “easily moved,” but Williams testified “it doesn’t matter” who
`
`would be moving a device to determine whether it is “easily moved.” EX-1111, 17:3-6.
`
`Yet Williams opined a 60-pound desktop computer is “easily moved” because he could
`
`move it “probably one handed.” Id. 40:4-9. Williams did not know how far a device
`
`would need to be “easily” moved, and he had no weight limit. Id., 24:2-14, 40:4-20.
`
`Williams testified that a heavier object may be portable to a six-year-old consumer
`
`because the child could “ask their adult supervisor to move the device.” Id., 26:2-10.
`
`Therefore, whether something is “easily moved” may turn on whether a person can
`
`recruit others to help, further evidencing the vagueness of PO’s proposal.
`
`“Uses single or relatively few connections”: Williams provides no numerical
`
`limit, opining that a client device has “relatively few” connections compared to a
`
`
`1 Though the patent says no such thing, Williams testified the “legal” terms of an
`“arrangement” whereby a person acquired a potential “consumer computer” might
`“influence a POSA’s decision” as to consumer ownership and operation. EX-
`1111, 188:8-21.
`
` 3
`
`
`
`

`

`“server.” Id., 27:22-28:19. He has no particular “server” to use for comparison. Id.,
`
`IPR2021-01492 of Patent No. 10,257,319
`
`38:23-39:3.
`
`“Resource limited” (bandwidth and storage): Williams provides no number
`
`for bandwidth limitation “since that number changes over time and with technology
`
`development.” Id., 31:8-23. He has no number or metric to determine whether a device
`
`is limited in storage. Id., 34:11-19.
`
`“Regularly switched off and taken offline”: Williams testified that one must
`
`consider a device’s “availability time.” Id., 46:21-47:17. He testified that a server is
`
`available 99.9 or 99.99 percent of the time and, if a device was available 99.8 percent of
`
`the time, that “could” be a characteristic of a client device. Id., 45:10-46:20. Williams
`
`never explains how “availability” is measured.
`
`“Lesser fault tolerance, lesser reliability, and lesser scalability”: Williams
`
`provides no metrics to measure these highly subjective factors. Id., 50:1-51:20.
`
`2.
`
`PO’s “client device” characteristics are not
`specification
`
`in
`
`the
`
`The purported “client device” characteristics discussed above are absent from the
`
`specification. PO’s expert attempts to provide specification support only for “consumer
`
`computer,” citing to the ’319 patent (2:44-46) as stating: “In the network 50, files are
`
`stored on computers of consumers, referred to herein as client devices.” EX-2065 ¶ 112;
`
`POR, 23. There are three major problems with this.
`
`First, the statement does not define client devices as “consumer computers.” The
`
` 4
`
`
`
`

`

`IPR2021-01492 of Patent No. 10,257,319
`
`structurally similar statement “some people ride on motorcycles, referred to herein as
`
`vehicles” does not purport to define vehicles as motorcycles. One cannot “reverse” the
`
`statement as Williams does. While “client devices” may include computers of
`
`consumers storing files, the statement does not limit them to such computers.
`
`Second, the statement refers to prior art “peer-to-peer file transfer network 50,” not
`
`the alleged invention. EX-1001, 2:40-44. Figure 2 depicts a “prior art example.”2 Id.,
`
`4:1-2. Further, PO’s expert left out “60” after “client devices”: “. . . referred to herein as
`
`client devices 60.” Id., 2:44-46.
`
`Client devices 60 are referenced in relation to prior art Figure 2, and never again.
`
`And Williams testified the claimed “client device” is not a prior art client device. EX-
`
`1111, 116:22-117:10. Nor does the specification ever again mention “consumers”
`
`beyond this brief discussion of peer-to-peer prior art.3
`
`Third, as discussed below, the specification describes elements of the claimed
`
`system in terms of their roles, not their physical attributes or ownership, thus
`
`contradicting PO’s constructions.
`
`
`2 All emphases herein have been added, unless noted.
`
`3 Kyocera Senco Indus. Tools, Inc. v. ITC, 22 F.4th 1369, 1379 (Fed. Cir. 2022),
`cited by PO, is not on point. In Kyocera, (i) the patentee’s statement was not
`expressly describing the prior art, (ii) there was a substantive description of the
`“bottom position” supported by a figure, and (iii) the passage referenced the
`bottom position as “the driven position.” Id. All three—absent here—are more
`indicative that the patentee was defining “the” driven position.
`
` 5
`
`
`
`

`

`IPR2021-01492 of Patent No. 10,257,319
`
`B.
`
`PO’s Proposed Constructions
`Inappropriate
`
`for “Second Server” are
`
`PO cites to Williams’ declaration as support for the purported characteristics that
`
`define a server:
`
` “Not a consumer computer”;
`
` “Commercial network element, rather than a consumer device”;
`
` “Not portable or moved about by a consumer”;
`
` “Dedicated network element”;
`
` “Capable of a large number of connections, unlike a typical client device”;
`
` “Remain online with greater availability and maximum up time to receive
`
`requests almost all of the time”;
`
` “Efficiently process multiple requests from multiple client devices at the
`
`same time”;
`
` “Generate various logs associated with the client devices and traffic from/to
`
`the client devices”;
`
` “Primarily interface and respond to the client devices, oftentimes without a
`
`Graphical User Interface”;
`
` “Have greater fault tolerance and higher reliability with lower failure rates”;
`
`and
`
` “Provide scalability for increasing resources to serve increasing client
`
` 6
`
`
`
`

`

`IPR2021-01492 of Patent No. 10,257,319
`
`demands.”
`
`POR, 29-30; EX-2065 ¶¶ 132-33.
`
`1.
`
`PO’s proposed “server”
`subjective and indefinite
`
`characteristics are highly
`
`PO and Williams again provide no metrics to determine compliance with PO’s
`
`subjective characteristics:
`
`“Not a consumer computer”: According to Williams, “a consumer would not
`
`own a server per the claims and specifications of the patents in suit.”4 EX-1111, 79:8-12.
`
`Therefore, a device’s status as a “server” would change depending on who is deemed to
`
`legally own the device at any given time, which is inappropriate for claim construction
`
`purposes.
`
`“Not portable or moved about by a consumer”: Williams provides no weight
`
`limit, nor could he state how far a device needs to be “moved about.” Id., 89:18-90:7.
`
`But Williams considers the bulky computer below to be “portable”:
`
`
`4 Nothing in the claims or specification prohibits a “consumer” from owning a
`server.
`
` 7
`
`
`
`

`

`IPR2021-01492 of Patent No. 10,257,319
`
`
`
`Id., 69:8-12.
`
`Combining this with Williams’ testimony that portability depends on
`
`whether a “weak” person could recruit volunteers to move a device (see Section
`
`I.A), there is no consistent way to assess portability.
`
`“[L]arge number of connections”: Williams testified that, today, a
`
`“typical[]” server handles “hundreds” of connections, yet he had no “quantification
`
`in mind” as to how many connections a server would have had in 2015. EX-1111,
`
`90:8-91:21. In 2018, there would be “less than today” but “more than 2015.” Id.
`
` “Greater fault tolerance and higher reliability,” “[S]calability”: Williams
`
`cannot identify any “hard and fast number” for these criteria. Id., 94:1-95:5.
`
`2.
`
`PO’s proposed “server” construction is unsupported by the
`specification
`
`PO’s “second server” characteristics are entirely absent from the specification.
`
` 8
`
`
`
`

`

`IPR2021-01492 of Patent No. 10,257,319
`
`Figure 3 provides “an example of a communication network in accordance with the
`
`present invention” (4:3-5), but does not show any “second server” under PO’s
`
`construction:
`
`Q. Do any of the components drawn in Figure 3 correspond to the
`second server of Claim 1 of the ’319 patent under your construction of
`second server?
`A. No.
`EX-1111, 110:17-21.
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`PO therefore altered Figure 3 by adding a “Proxy Server 6” between the “Client”
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`and “Agent”:
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`POR, 8; EX-2065 ¶ 59. This contrasts with PO’s earlier annotation of Figure 3 in the
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`IPR2021-01492 of Patent No. 10,257,319
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`District Court. Section II.B, below.
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`Williams admits that he cut Proxy Server 6 out of prior art Figure 1 and pasted it
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`into Figure 3. EX-1111, 112:20-24. Proxy Server 6 is referenced in the ’319 patent only
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`as to the prior art in Figure 1. EX-1001, 2:8-23. But the patent disparages the use of such
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`proxy servers. Id., 2:24-32. The specification never describes any Proxy Server 6
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`communicating with the Agent 122 or Client 102 shown in Figure 3. EX-1111, 114:3-
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`14, 117:11-118:2.
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`C.
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`PO’s Constructions Require Comparisons Between Unidentified
`Devices at Unidentified Points in Time
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`PO’s “client device” and “server” characteristics are not tied to the patent filing
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`date or any other time period. Williams claimed that the assessment of the characteristics
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`occurs at the “point in time at which [a] POSA was determining infringement.” EX-
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`1111, 33:9-23.
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`Williams opined that a hypothetical computer was a “client device” as of “today,”
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`but when the hypothetical was changed to 2012, he could not recall the characteristics of
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`clients and servers in 2012 and therefore “can’t express an opinion.” Id., 37:16-38:16;
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`see also id., 31:11-13 (bandwidth numbers change over time), 90:13-91:22 (number of
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`“server” connections varies over time).
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`Williams also testified repeatedly that his characteristics are “relative” and must be
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`assessed against “server” characteristics as to potential “client devices,” and vice versa.
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`Id., 34:11-19, 48:2-7, 96:7-16. But Williams never identifies any particular “server”
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`IPR2021-01492 of Patent No. 10,257,319
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`against which to assess a potential “client device,” or vice versa. Id., 38:23-39:3, 97:4-16.
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`PO’s circular reasoning requires one to know a “server” to define a “client device,” and
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`to know a “client device” to define a “server.”
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`D. Williams Cannot Consistently Apply His Own Constructions
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`Williams testified that a device would not need to meet all seven of his “client
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`device” characteristics to be a “client device.” Id., 52:5-11. Williams did not know
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`whether a device could meet three, or even one, of the seven criteria and still be a “client
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`device.” Id., 52:12-53:11. The same is true of PO’s proposed list of eleven
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`characteristics defining a “server.” Id., 77:21-79:2.
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`Williams could not consistently apply his own claim constructions. Williams:
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` Could not determine whether an Apple MacBook Pro laptop was a “client
`
`device” even after review of an Apple technical specification. Id., 69:2-
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`72:24. The laptop might be a “server.” Id., 72:25-73:19.
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` Could not determine whether an Apple iPhone 14 Pro Max phone was a
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`“client device” even after review of an Apple technical specification. Id.,
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`73:24-74:25. The phone may be a “server.” Id., 75:1-16.
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` Testified that he uses an Apple Mac Mini as a “home server.” Id., 79:23-
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`80:17. But Williams opined that his own “server” was not actually a
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`“server” under his definition. Id., 80:18-81:5. He needed “more
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`information” beyond a “Mac Mini Server” technical specification to assess
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`IPR2021-01492 of Patent No. 10,257,319
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`whether the Mac Mini Server was a “server.” Id., 102:15-23.
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` Identified an “Intel server” as unquestionably a “server” under his
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`construction. Id., 84:4-11. Yet the same “Intel server” hardware may no
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`longer be a “server” if Williams used the Intel server in his own home
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`network. Id., 84:21-86:5.
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`II. THE BOARD SHOULD APPLY THE DISTRICT COURT’S ROLE-
`BASED CONSTRUCTIONS
`
`A. The District Court Has Consistently Applied Role-Based
`Constructions
`
`The District Court rejected PO’s “consumer computer” argument three times. In
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`December 2020, Judge Payne rejected PO’s “consumer computer” argument and
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`construed “client device” as “communication device that is operating in the role of a
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`client.” EX-1017, 10-12. In February 2021, for patents with the same specification,
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`Judge Payne again rejected “consumer computer” and an argument that a “client device”
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`cannot function as a server, ruling that the role-based construction applies “regardless of
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`any additional role the device may serve, including as a server.” EX-1112, 13.5 Judge
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`Payne ruled that “client device” is “defined by the role” and not “by the components of
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`the device.” Id. Chief Judge Gilstrap adopted Judge Payne’s constructions. EX-1113,
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`1114.
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`5 Judge Payne rejected the “consumer computer” construction in another case. EX-
`1115, 10-16.
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`IPR2021-01492 of Patent No. 10,257,319
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`In September 2021, the District Court expressly precluded PO from arguing that
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`“a client device cannot be a server.” EX-1116, 4.
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`The District Court confirmed that “server” (in “second server”) is understood in
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`role-based terms, where a component’s function, and not structure, controls. EX-1020, 8-
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`11; EX-1113. The court made clear that a device may have different roles, stating that “a
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`component can be configured to operate in different roles[.]” EX-1020, 10. Although
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`PO cites to a selective excerpt stating that “a server is not a communication device,” the
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`Court’s actual statement rejected PO’s argument “that a client device is specifically not a
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`server.” Id.
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`The Board adopted the District Court’s claim construction in ten different IDs. ID,
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`17; EXS-1117-1125. Harmonization of IPR and district court claim constructions
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`provides “greater consistency” and “will reduce the potential for inconsistent results.” 83
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`Fed. Reg. 51344, 51348. This is important here, where PO obtained an initial
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`infringement verdict under the District Court’s constructions but now (i) seeks a different
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`claim construction (Section I above) in IPR and (ii) alternatively seeks a new “at all
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`times” role-based limitation that would render the claims incapable of ever being
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`practiced, as admitted by Williams (Section III.A.1 below).
`
`B.
`
`The District Court’s Constructions are Consistent with the
`Intrinsic Evidence
`
`The specification depicts a communication device 200 with generic components
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`(processor, memory, input/output). EX-1001, 5:49-6:40. The communication device
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`IPR2021-01492 of Patent No. 10,257,319
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`200 “may serve as a client, agent, or peer.” Id. at 5:55-57. The device can function in
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`different “roles”—e.g., client, peer, agent. Id. at 9:20-26 (each module “comes into play
`
`according to the specific role that the communication device 200 is partaking…at a given
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`time”).
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`In the District Court, PO not only agreed but affirmatively argued in its claim-
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`construction brief that the claimed “second server” mapped to the Client 102 role (in
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`green) and the “client device” mapped to the Agent 122 role (in red), per PO’s annotated
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`Figure 3:
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`IPR2021-01492 of Patent No. 10,257,319
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`EX-1126, 8; EX-1004, 19-20. PO’s admission confirms role-based constructions, and
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`contrasts with PO’s modified Figure 3 for this IPR.
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`RFC 2616, the HTTP specification, confirms that “client” means “program that
`
`establishes connections for the purpose of sending requests.” EX-1013, 8. “Server”
`
`means “application program that accepts connections in order to service requests by
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`sending back responses.” Id. “Any given program may be capable of being both a client
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`and a server; our use of these terms refers only to the role being performed by the
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`program for a particular connection.” Id.
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`RFC 2616 is directly referenced in the ’319 patent. EX-1001, 16:21-22. Further,
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`claim 1 expressly refers to the HTTP protocol three times, further confirming the
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`significance of RFC 2616’s role-based definitions.
`
`C.
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`PO’s Prosecution History Arguments are Unavailing
`
`The POR’s reference to the prosecution history of the parent ’936 patent (POR,
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`19-21) is incorrect, for four reasons.
`
`First, the POR mistakenly suggests that the Examiner “recognized a server cannot
`
`be equated to a client device regardless of the role being performed at a given moment in
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`time.” POR, 19. PO’s prosecution history arguments attempted to distinguish a “cache
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`server 306” in Garcia, yet PO does not argue here that any prior art component is a
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`“cache server.” EX-2026, 215. PO further based its arguments on “identifying and using
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`another client device for supporting a content request by a specific client,” a limitation
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`IPR2021-01492 of Patent No. 10,257,319
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`absent from the Challenged Claims. Id.
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`Further, after PO changed the generic description of intermediaries from “one or
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`more devices” (EX-2026, 205), the Examiner changed from noting Garcia discloses “one
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`or more devices” (id., 458) to stating that it discloses “a group of clients” or “one or more
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`clients.” Id., 173. Contrary to the POR (19-20), the Examiner found method steps (f)-(g)
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`absent in Garcia but did not acquiesce in any PO statement of claim scope. EX-2026,
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`174.
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`Second, the ’936 claims are quite different (compare EX-2025 with EX-1001) and
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`never recite “client device,” so disclaimer analysis should not apply. Ventana Medical
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`Systems v. Biogenex Labs., 473 F.3d 1173, 1182 (Fed. Cir. 2006).
`
`Third, during reexamination of the child ’510 patent, and the family member ’511
`
`patent, the USPTO adopted the court’s role-based construction. EX-1127, 3; EX-1128,
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`70. Common terms in related patents with shared specifications should be interpreted
`
`consistently. SightSound Techs., LLC v. Apple Inc., 809 F.3d 1307, 1316 (Fed. Cir.
`
`2015).
`
`Fourth, the examiner cited Harrow (EX-2026, 173), which states that “clients may
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`be servers, desktops, laptops, PDAs…or any other device capable of communicating
`
`with other devices.” EX-1129, [0057]. This contradicts PO’s arguments.
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`Further, PO’s reference to the ’319 and ’510 patent prosecution histories are
`
`irrelevant. The applicant’s vague references to “networks” and “physical apparatuses,”
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