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

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`IPR2021-01492 of Patent No. 10,257,319
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`TABLE OF CONTENTS
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`I.
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`INTRODUCTION ............................................................................................... 1
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`II. PETITIONERS DO NOT APPLY DISTRICT COURT CONSTRUCTIONS .. 5
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`III. PETITIONERS IGNORE THE NOVEL ARCHITECTURE OF THE
`CLAIMS ..................................................................................................................... 6
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`A. CONTRARY TO PETITIONERS’ ARGUMENTS, THE SPECIFICATION
`DIFFERENTIATES SERVERS AND CLIENT DEVICES .................................. 8
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`B. CONTRARY TO PETITIONERS’ ARGUMENTS, THE SPECIFICATION
`DOES NOT DESCRIBE COMPONENTS IN TERMS OF ROLES ...................10
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`C. CONTRARY TO PETITIONERS’ ARGUMENTS, THE USPTO HAS NOT
`ISSUED ANY FINAL CONSTRUCTIONS ........................................................12
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`D. PETITIONERS’ CONSTRUCTIONS CANNOT BE CORRECT ................13
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`IV. PETITIONERS MISCHARACTERIZE PO’S CONSTRUCTIONS ............14
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`A. LEXICOGRAPHY IN THE SPECIFICATION SUPPORTS PO’S
`CONSTRUCTIONS .............................................................................................18
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`B. PROSECUTION HISTORIES SUPPORT PO’S CONSTRUCTIONS ........19
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`C. PO’S CONSTRUCTIONS SHOULD BE ADOPTED ..................................21
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`V. CROWDS, BORDER, AND MORPHMIX DO NOT INVALIDATE THE
`CLAIMS ...................................................................................................................22
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`A. CROWDS .......................................................................................................23
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`B. BORDER ........................................................................................................24
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`C. MORPHMIX ..................................................................................................24
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`D. TEACHING AWAY ......................................................................................25
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`E. MR. TERUYA HAS NO CREDIBILITY ......................................................26
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`VI. PO’S STRONG SHOWING OF SECONDARY CONSIDERATIONS .......27
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`VII. CONCLUSION ..............................................................................................29
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`i
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`Cases
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`IPR2021-01492 of Patent No. 10,257,319
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`TABLE OF AUTHORITIES
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`
`
`Amdocs Isr. Ltd. v. Openet Telecom, Inc., 841 F.3d 1288 (Fed. Cir. 2016) .............. 6
`
`BlephEx, LLC v. Myco Indus., 24 F.4th 1391 (Fed. Cir. 2022) ................................. 7
`
`Datamize, LLC v Plumtree Software, Inc., 417 F.3d 1342 (Fed. Cir 2005) ............17
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`Halliburton Energy Servs. v. M-I LLC, 514 F.3d 1244 (Fed. Cir. 2008) ................17
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`Kyocera Senco Indus. Tools, Inc. v. ITC, 22 F.4th 1369 (Fed. Cir. 2022) ..............18
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`Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292 (Fed. Cir. 2015) ....................... 9
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`Millennium Pharm., Inc. v. Sandoz Inc., 862 F.3d 1356 (Fed. Cir. 2017). .............26
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`Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898 (2014) ................. 14, 16, 17
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`Netword, LLC v. Centraal Corp., 242 F.3d 1347 (Fed. Cir. 2001) .........................11
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`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) ............................ 11, 19, 20
`
`Sightsound Techs., LLC v. Apple Inc., 809 F.3d 1307 (Fed. Cir. 2015) ..................12
`
`TecSec, Inc. v. Adobe Inc., 978 F.3d 1278 (Fed. Cir. 2020) ...................................... 7
`
`Thales Visionix, Inc. v. United States, 850 F.3d 1343 (Fed. Cir. 2017) .................... 6
`
`Trading Techs. Int'l, Inc. v. CQG, Inc., 675 F. App'x 1001 (Fed. Cir. 2017) ........... 7
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`Ventana Medical Systems v. Biogenex Laboratories, 473 F.3d 1173 (Fed. Cir.
`
`2006)........................................................................................................................21
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`ii
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`Other Authorities
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`IPR2021-01492 of Patent No. 10,257,319
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`USPTO, Approach to Indefiniteness under 35 U.S.C. § 112 in AIA Post-grant
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`Proceedings (Jan. 6, 2021),
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`https://www.uspto.gov/sites/default/files/documents/IndefinitenessMemo.pdf. .17
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`iii
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`PO
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`POR
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`Reply
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`POSA
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`TPG
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`IPR2021-01492 of Patent No. 10,257,319
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`
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`LIST OF ABBREVIATIONS
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`Patent Owner
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`Patent Owner Response (Paper 31)
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`Petitioners’ Reply (Paper 40)
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`Person of ordinary skill in the art
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`Patent Trial and Appeal Board Consolidated Trial Practice Guide
`(November 2019), available at
`https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf?MURL=
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`U.S. Patent No. 10,257,319 (EX. 1001)
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`‘319
`Patent
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`‘936
`Patent
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`Harrow U.S. Pub. No. 2003/0009518 (EX. 1129)
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`U.S. Patent No. 10,069,936 (EX. 2025)
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`iv
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`I.
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`INTRODUCTION
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`IPR2021-01492 of Patent No. 10,257,319
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`Petitioners improperly attempt to reduce the novel and non-conventional
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`“second server – first client device – web server” architecture of the claims to a
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`generic three-node architecture. Petitioners ignore the character of the nodes and
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`focus only on the sending and receiving of information, in direct contradiction to
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`the district court’s Alice Order. POR at 12-13; EX.2024. Like the defendants in
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`district court, Petitioners here ignore the context of the ‘319 Patent and the claim
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`language itself in order to improperly map prior art onto the claims.
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`PO respectfully submits that the “first client device” must consistently meet
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`the construction of “client device” during the performance of claim 1. Similarly,
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`the “second server” must consistently meet the construction of “second server”
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`during the performance of claim 1. This would be impossible under Petitioners’
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`purely role-based constructions which shows that Petitioners’ constructions cannot
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`be correct. In contrast, PO’s constructions recognize the differences between client
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`devices and servers and are appropriate in view of the specification, the claim
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`
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`1
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`

`

`
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`language, and the prosecution history statements made by Applicant. PO’s
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`IPR2021-01492 of Patent No. 10,257,319
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`constructions are correct and should be adopted.1
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`As will be discussed below, Petitioners feign that they are applying the
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`district court constructions, but that is wrong. In their Reply, Petitioners never
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`address the sections in the POR explaining how the positions taken by Petitioners
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`directly contradict the findings of the district court. POR at 9-13. At minimum, the
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`district court recognized that the “second server” is indeed a server, which is a term
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`easily understood by a POSA. Further, the district court recognized that a server is
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`not a client device in the context of the ‘319 Patent. Petitioners continue to ignore
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`at least these two findings by the district court.
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`Although the district court referred to roles being performed, the district
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`court differentiated communication devices and servers in its constructions. The
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`district court expressly rejected genericizing the claimed components with purely
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`role-based constructions. EX.2021 at 14 and 20. That is, however, exactly what
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`Petitioners advocate for here.
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`1 PO explained why the district court’s reasoning for not adopting PO’s proposed
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`constructions is not correct at least in view of recent Federal Circuit precedent.
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`POR at 18-22 and 23-25.
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`
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`2
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`As PO explained, the only way to properly analyze the purely role-based
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`IPR2021-01492 of Patent No. 10,257,319
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`constructions is by looking at the particular point in time recited in each method
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`step. For each reference, the alleged second server is not operating in the role of a
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`server during at least steps 1 and 4 of claim 1; and the alleged first client device is
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`not operating in the role of a client during at least steps 1 and 4 of claim 1.
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`Therefore, Petitioners fail to meet their burden when applying their own purely
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`role-based constructions.
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`Moreover, the Petition fails to establish that any of the references disclose or
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`teach the novel architecture of the claims under either set of constructions. In their
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`Reply, Petitioners still do not explain their inconsistent treatment of:
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`• Jondo 4 (alleged second server) and jondo 6 (alleged first client device) in
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`Crowds;
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`• Proxy server 105 (alleged second server) and proxy server 107 (alleged first
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`client device) in Border; and
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`• Node B (alleged second server) and node C (alleged first client device) in
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`MorphMix.
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`If Petitioners consistently applied their own logic to the jondos of Crowds, the
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`proxy servers of Border, or the nodes of MorphMix; then it would be impossible to
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`justify how they can deem one intermediary a server and another identical
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`3
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`

`
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`intermediary a client device. These intermediaries perform the same roles albeit at
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`IPR2021-01492 of Patent No. 10,257,319
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`different points in time.
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`To meet PO’s constructions, Petitioners argue that “nothing excludes” the
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`alleged modifications (Reply at 21-22), but that does not satisfy Petitioners’
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`burden. Petitioners are using the claims as a roadmap, showing improper hindsight.
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`Petitioners also ignore teachings away.
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`Lastly, Petitioners improperly raise a new argument in their Reply that
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`is not explained in the Petition, in direct contradiction to the TPG. TPG at 73-
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`75. The Petition does not explain how MorphMix teaches the architecture of the
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`claims under PO’s constructions. POR at 50-53. The Reply now argues that a
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`POSA would be motivated to insert a proxy server into the communication
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`network of MorphMix. Reply at 21. This new argument is improper and as
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`explained by the TPG, Petitioners’ Reply should not be considered. TPG at 74.2
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`2 “The Board is not required to attempt to sort proper from improper portions of the
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`reply[.]” Id.
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`4
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`II.
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`PETITIONERS DO NOT APPLY DISTRICT COURT
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`IPR2021-01492 of Patent No. 10,257,319
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`CONSTRUCTIONS
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`PO explained in detail how Petitioners’ constructions and application thereof
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`directly contradict the findings of the district court. POR at 9-13. Petitioners’
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`Reply does not address or explain the contradictions.
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`Even if the district court constructions were applied correctly, Crowds and
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`MorphMix do not disclose the claimed “second server.” All jondos of Crowds and
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`all nodes of MorphMix are client devices, not servers. Border does not disclose the
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`claimed “first client device” because proxy servers 105, 107 are servers, not client
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`devices. The district court recognized that a server is not a client device regardless
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`of the role being performed. E.g., EX.1020 at 10; POR at 29-31.
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`Additionally, regarding the district court trial, PO properly applied the
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`district court constructions which are NOT the same as Petitioners’ purely role-
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`based constructions. Contra Reply at 18-19. The district court recognized a client
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`device is a communication device and a server is a server.3 At trial, the defendants
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`alleged anticipation by Crowds, which was rejected by the jury and should be
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`3 As explained by Dr. Williams, in Bright Data’s residential proxy service, the
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`SuperProxy is a server and the peer SDK is a communication device/consumer
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`computer. POR at 57-59 and 68. PO has been consistent with its analysis.
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`5
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`

`

`IPR2021-01492 of Patent No. 10,257,319
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`rejected here in this IPR as well. EX.2001 at 5. No defendant or petitioner can
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`explain how one jondo is a server and another identical jondo is a client device
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`under any set of constructions. There is nothing to distinguish the jondos of
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`Crowds, which are the same type of user computers and perform the same roles as
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`intermediaries sending/receiving information.
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`III.
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`PETITIONERS IGNORE THE NOVEL ARCHITECTURE OF
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`THE CLAIMS
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`The district court recognized that the claims recite the use of a non-
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`traditional network architecture with specific components at specific locations
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`relative to each other. EX.2024 at 8-10. Supporting the district court’s decision, the
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`Federal Circuit has found that the architecture of method claims is significant.
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`Amdocs Isr. Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1303 (Fed. Cir.
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`2016)(“The collection, filtering, aggregating, and completing steps all depend upon
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`the invention’s unique distributed architecture …”); Thales Visionix, Inc. v.
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`United States, 850 F.3d 1343, 1349 (Fed. Cir. 2017)(“[System claim 1 and method
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`claim 22] specify a particular configuration of inertial sensors and a particular
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`method of using the raw data from the sensors in order to more accurately calculate
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`the position and orientation of an object on a moving platform. The mathematical
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`equations are a consequence of the arrangement of the sensors and the
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`6
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`

`

`IPR2021-01492 of Patent No. 10,257,319
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`
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`unconventional choice of reference frame in order to calculate position and
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`orientation. Far from claiming the equations themselves, the claims seek to
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`protect only the application of physics to the unconventional configuration of
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`sensors as disclosed.”)(emphasis added); Trading Techs. Int'l, Inc. v. CQG, Inc.,
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`675 F. App'x 1001, 1004 (Fed. Cir. 2017) (“The [method] claims require a specific,
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`structured graphical user interface paired with a prescribed functionality directly
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`related to the graphical user interface's structure that is addressed to and resolves a
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`specifically identified problem in the prior state of the art.”); e.g., EX.1004 at 15-
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`16 and 26 and EX.2024 at 3.
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`Recently, the Federal Circuit has maintained this significance. TecSec, Inc.
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`v. Adobe Inc., 978 F.3d 1278, 1295 (Fed. Cir. 2020)(“[Method claim 1] goes
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`beyond managing access to objects using multiple levels of encryption, as required
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`by "multilevel . . . security." Notably, it expressly requires, as well, accessing an
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`"object-oriented key manager" and specified uses of a "label" as well as encryption
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`for the access management … To disregard those express claim elements is to
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`proceed at "a high level of abstraction" that is "untethered from the claim
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`language" and that "overgeneraliz[es] the claim.“)(internal citations
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`omitted)(emphasis added); see also BlephEx, LLC v. Myco Indus., 24 F.4th 1391
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`(Fed. Cir. 2022).
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`7
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`IPR2021-01492 of Patent No. 10,257,319
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`A.
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`CONTRARY TO PETITIONERS’ ARGUMENTS, THE
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`SPECIFICATION DIFFERENTIATES SERVERS AND
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`CLIENT DEVICES
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`The specification differentiates servers (proxy servers, acceleration servers,
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`web servers) and client devices (clients, peers, agents). E.g., EX.1001 at 2:8-39
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`(describing prior art proxy servers and problems); 2:40-43 (contrasting client
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`devices from servers); 4:43-50 (server not included as communication device); 5:8-
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`34 (discussing different servers versus communications devices); 4:6-13
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`(identifying Figs. 4-6 as illustrating “a communication device of the
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`communication network of FIG. 3”); Fig. 6 (showing that client module 224 is
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`loaded onto a communication device, not a server).
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`As discussed in detail with respect to Fig. 1 and Fig. 3, the specification
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`clearly distinguishes between servers (e.g., proxy server 6 of Fig. 1) and client
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`devices (e.g., agent 122 of Fig. 3). POR at 14-18. As intermediaries, proxy server 6
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`and agent 122 toggle roles at different points in time. Under Petitioners’
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`application of their purely role-based constructions, there would be nothing to
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`distinguish intermediary proxy server 6 (which is a server) from intermediary agent
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`122 (which is a client device).
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`Based on the disclosure in the specification, and Figs. 1 and 3 in particular, a
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`POSA would understand that a server is not a client device and that a client device
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`8
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`is not a server in the context of the ‘319 Patent. “[T]he Board's construction cannot
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`IPR2021-01492 of Patent No. 10,257,319
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`be divorced from the specification and the record evidence” and “must be
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`consistent with the one that those skilled in the art would reach.” Microsoft Corp.
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`v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015). “A construction that is
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`unreasonably broad and which does not reasonably reflect the plain language and
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`disclosure will not pass muster.” Id. (citation and internal quotation marks
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`omitted).
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`Contrary to Petitioner’s arguments, the specification does not disparage the
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`use of proxy servers as shown in modified Figure 3, provided by Dr. Williams.4
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`Contra Reply at 10. The specification identifies problems of using a prior art proxy
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`server as an exit node communicating with a web server. To solve those problems,
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`claim 1 recites a method for using a proxy client device located between a proxy
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`server and a web server.
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`4 Additionally, PO explained the district court briefing was taken out of context
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`and merely used to illustrate the lines of communication (see POR at 6-7, n.1) and
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`like defendants in that case, Petitioners attempt to improperly read out the “second
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`server – first client device – web server” architecture of the claims.
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`9
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`

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`The inventive method of claim 1 keeps the benefits of using a prior art proxy
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`IPR2021-01492 of Patent No. 10,257,319
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`server (e.g., provides anonymity); avoids the problems of using a prior art proxy
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`server and prior art peer systems (e.g., lowers infrastructure costs and handles
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`dynamic content); and adds the benefits of enabling millions of proxy client
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`devices in a highly scalable network. EX.1001 at 2:24-39; 2:52-58; 2:64-3:3.
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`Moreover, both the “second server” and “first client device” are disclosed as
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`intermediaries located between, for example, a requesting client device and a target
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`web server. The specification expressly discloses a requesting client device
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`communicating with a proxy server is known in the art. E.g., EX.1001 at 2:8-15;
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`POR at 7, n.2. Consistent with Dr. Williams’ modified Figure 3, a POSA would
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`have known to have, for example, requesting client device 102 shown in Fig. 3
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`communicating with a proxy server.
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`B.
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`CONTRARY TO PETITIONERS’ ARGUMENTS, THE
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`SPECIFICATION DOES NOT DESCRIBE COMPONENTS
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`IN TERMS OF ROLES
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`The roles of client, peer, agent referenced in the Reply are all roles of a
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`communication device 200, which is a client device. With reference to Fig. 3,
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`client 102, peers 112, 114, 116, and agent 122 are all client devices. POR at 11;
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`EX.2065 at ¶70.
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`10
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`

`

`IPR2021-01492 of Patent No. 10,257,319
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`
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`PO does not dispute that, for example, agent 122 may sometimes operate in
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`the role of a server by receiving requests/sending response and sometimes operate
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`in the role of a client by sending requests/receiving responses. POR at 16-18.
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`Regardless of the role being performed, agent 122 is a client device.
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`Although the specification references standard Internet protocols, RFC 2616
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`does not define the claim terms. Contra Reply at 15. Unlike RFC 2616, the
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`specification distinguishes servers from client devices regardless of the role being
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`performed. Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005)(“The
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`only meaning that matters in claim construction is the meaning in the context of
`
`the patent.”) (citing and quoting Netword, LLC v. Centraal Corp., 242 F.3d 1347,
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`1352 (Fed. Cir. 2001) (“The claims are directed to the invention that is described in
`
`the specification; they do not have meaning removed from the context from which
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`they arose.”)).
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`Petitioners misplace reliance on RFC 2616 because it actually supports PO’s
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`criticism of Petitioners’ purely role-based constructions. POR at 46. RFC 2616
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`specifically refers to the role being performed for a particular connection. Thus,
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`during, for example, step 4 of claim 1, the “second server” is operating in the role
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`of a client and the “client device” is operating in the role of a server for that
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`particular connection. As such, the purely role-based constructions cannot be
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`correct in view of the express claim language.
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`11
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`C.
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`CONTRARY TO PETITIONERS’ ARGUMENTS, THE
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`IPR2021-01492 of Patent No. 10,257,319
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`USPTO HAS NOT ISSUED ANY FINAL
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`CONSTRUCTIONS
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`Petitioners’ arguments regarding related proceedings are misleading for at
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`least three reasons.
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`First, reexamination uses a different BRI standard for claim construction and
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`those proceedings are not yet final. Contra Reply at 16. Petitioners also ignore the
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`claim construction arguments made by PO in those proceedings distinguishing
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`client devices from servers and vice versa.
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`Second, Petitioners rely on SightSound, in which the Board applied the BRI
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`standard. Sightsound Techs., LLC v. Apple Inc., 809 F.3d 1307, 1316 (Fed. Cir.
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`2015). Moreover, the Federal Circuit disagreed with the Board’s claim
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`interpretation requiring “clear disclaimer” and not accounting for “implied
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`disclaimer”. Id. at 1316-17.
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`Third, in all related IPRs, the Board has only issued preliminary
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`constructions and there has been no final written decision. Contra Reply at 13.
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`
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`12
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`D.
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`PETITIONERS’ CONSTRUCTIONS CANNOT BE
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`IPR2021-01492 of Patent No. 10,257,319
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`CORRECT
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`Under PO’s application of the purely role-based constructions, an
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`intermediary would be a “client device” and a “second server” albeit at different
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`points in time. It is impossible to reconcile the purely role-based constructions with
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`the claim language, for example, step 4 of claim 1. Petitioners therefore choose to
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`ignore the role being performed in each method step.
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`Under Petitioners’ application of their own constructions, an intermediary
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`would be both a “client device” and a “second server” because an intermediary
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`sends/receives information and therefore would meet both constructions. Under
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`Petitioners’ application, a POSA would not be able to determine whether an
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`intermediary is a client device or a server – it would be both.
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`Petitioners’ constructions and application thereof are not tied to the claim
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`language and directly contradict the specification. Petitioners cannot be correct at
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`least because a POSA would be unable to differentiate proxy server 6 of Fig. 1
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`(prior art) and agent 122 of Fig 3 (inventive embodiment).
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`13
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`IV.
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`PETITIONERS MISCHARACTERIZE PO’S CONSTRUCTIONS
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`IPR2021-01492 of Patent No. 10,257,319
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`
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`Unlike Petitioners’ constructions, PO’s constructions are consistent with the
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`specification, the claim language, and the prosecution history statements made by
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`Applicant during prosecution, which all differentiate client devices and servers.
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`PO explains that a POSA would understand a “client device” means a
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`“consumer computer” based on express lexicography in the specification. POR at
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`22; EX.1001 at 2:44-46; Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898,
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`908 (2014)(“… claims are to be read in light of the patent’s specification and
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`prosecution history”).
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`PO explains that a POSA would understand a “second server” means a
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`“server that is not a client device”. POR at 28. PO does not propose that a “second
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`server” is anything that is not a consumer computer, e.g., a router or switch. The
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`“second server” is a server and a server is not a client device in the context of the
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`‘319 Patent.
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`Contrary to Petitioners’ arguments, PO does not seek to “apply[] checklists
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`of physical characteristics”. See Reply at 1. PO does not suggest that a certain
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`number of characteristics must be satisfied in order to qualify as a “client device”
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`or a “server.” PO simply discussed some characteristics known to a POSA that
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`differentiate client devices and servers in this context. PO used relative terms
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`because the specification discloses two types of network components: client
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`devices (including clients, peers, and agents) and servers (including acceleration
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`servers, proxy servers, and web servers). Petitioners ignore the context of the
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`patent itself.
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`Many of the characteristics discussed (see, e.g., POR at 26-27 and 29-30) are
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`drawn directly from the prosecution histories; they are also consistent with
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`extrinsic materials that further support Dr. Williams’ expert testimony regarding
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`the understandings of a POSA. Petitioners mischaracterize the discussion of these
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`characteristics to suggest, for example, that the claimed “client device” is required
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`to be owned and operated by a consumer. Reply at 2. However, PO explained that
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`this is just one of many characteristics that may be evaluated.5 Determination of
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`ownership is not a claim limitation and is ultimately a legal conclusion. However,
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`identification of a “client device” in the context of the ’319 Patent is within the
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`skillset of a POSA. With respect to evaluating, for example, number of
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`5 In the example briefed by Petitioners (Reply at 2-3), an employee versus a
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`company installing and operating an app on a company-issued cellphone relates to
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`personal use versus commercial use. A POSA would evaluate if, for example, the
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`company requires the cellphone always be available/online, plugged in, etc. such
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`that it could be used reliably as a proxy. Context matters.
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`connections, bandwidth/storage, and availability/reliability, Petitioners ignore any
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`background knowledge or common sense of a POSA.6
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`Finally, Petitioners allege that the characteristics are “vague and subjective,”
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`but provide no expert testimony from Mr. Teruya in support of their allegations.
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`Reply at 1; TPG at 73; Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 908
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`(2014)(“… definiteness is to be evaluated from the perspective of someone skilled
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`in the relevant art.”). Petitioners also rely on the wrong standard for
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`6 During deposition, Petitioners questioned Dr. Williams on whether an Apple
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`MacBook Pro laptop, Apple iPhone 14 Pro Max phone, Apple Mac Mini, or Intel
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`Server satisfied each “checklist” characteristic. The main problem with Petitioners’
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`line of questioning is Petitioners’ failure to consider the context of the ‘319 Patent.
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`Petitioners asked incomplete hypotheticals about each component, in isolation,
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`without any details as to context such as the context provided in the claims.
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`indefiniteness.7 Petitioners’ Reply does not even address the correct Supreme
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`Court standard:
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`“Cognizant of the competing concerns, we read §112, ¶2 to require
`that a patent’s claims, viewed in light of the specification and
`prosecution history, inform those skilled in the art about the scope of
`the invention with reasonable certainty. The definiteness requirement,
`so understood, mandates clarity, while recognizing that absolute
`precision is unattainable. The standard we adopt accords with
`opinions of this Court stating that “the certainty which the law
`requires in patents is not greater than is reasonable, having regard to
`their subject-matter.”
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`Nautilus at 910.
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`Consistent with the statutory purpose of §112, PO respectfully submits that
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`the public is on notice of the scope of the claimed inventions. See id. at 909-910.
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`The claims recite a novel “second server – client device – web server” architecture
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`7 Petitioners rely on Datamize and Halliburton which both apply the “insolubly
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`ambiguous” standard for indefiniteness. Datamize, LLC v Plumtree Software, Inc.,
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`417 F.3d 1342, 1347 (Fed. Cir 2005); Halliburton Energy Servs. v. M-I LLC, 514
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`F.3d 1244, 1250 (Fed. Cir. 2008). The USPTO issued a memo clarifying the
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`approach to indefiniteness as set forth in Nautilus. See USPTO, Approach to
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`Indefiniteness under 35 U.S.C. § 112 in AIA Post-grant Proceedings (Jan. 6, 2021),
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`https://www.uspto.gov/sites/default/files/documents/IndefinitenessMemo.pdf.
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`that is necessarily distinct from (1) a prior art “client device – proxy server – web
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`server” architecture (see Fig. 1) and also from (2) a prior art “client device – client
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`device – web server” architecture (see Fig. 2). As made clear during prosecution of
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`the ‘319 Patent, the claims recite a client device located between two servers which
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`is not disclosed or taught by the prior art. POR at 21; EX.1002 at 282-283.
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`A.
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`LEXICOGRAPHY IN THE SPECIFICATION SUPPORTS
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`PO’S CONSTRUCTIONS
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`The specification expressly defines client devices as consumer computers.
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`The phrase “referred to herein as” is definitional and has been recognized as such
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`by the Federal Circuit.8 Kyocera Senco Indus. Tools, Inc. v. ITC, 22 F.4th 1369,
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`1379 (Fed. Cir. 2022). As in Kyocera, “[t]he surrounding written description
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`language supports this interpretation.” Id. at 1378. As explained in the POR and
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`herein, Petitioners’ purely role-based constructions would be inconsistent with the
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`specification.
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`The patentee’s lexicographical definition is not incidental; it sets forth a
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`solution to the prior art problems. The patent expressly discloses the need for “a
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`8 Additionally, because the patentee defined “client devices” as consumer
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`computers, the patentee need not re-mention “consumer computers” elsewhere in
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`the specification. Contra Reply at 5.
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`new method of data transfer that is fast for the consumer, cheap for the content
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`distributor and does not require infrastructure investment for ISPs…” EX.1001 at
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`2:45-46 and 1:54-56.
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`PO does not dispute that client devices were used in prior art peer systems.
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`However, client devices are used in a novel and non-conventional way in the
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`claimed inventions. Again, the claims recite a client device located between two
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`servers which is not the same as prior art peer systems.
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`B.
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`PROSECUTION HISTORIES SUPPORT PO’S
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`CONSTRUCTIONS
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`Applicant consistently differentiated client devices and servers in the related
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`prosecution histories. POR at 18-22. The POR discusses these statements in detail.
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`POR at 19-22; see also Phillips at 1317 (“…the prosecution history can often
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`inform the meaning of the claim language by demonstrating how the inventor
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`understood the invention and whether the inventor limited the invention in the
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`course of prosecution, making the claim scope narrower than it would otherwise
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`be.”) The PTO would not have issued the ‘319 Patent assuming the Petitioners’
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`purely role-based constructions because then the claims would read directly on
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`using intermediate proxy servers, which is expressly disclosed in Fig. 1 of the
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`patent itself as prior art. POR at 14-18. The applicant would not have sought
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`claims that read on the prior art figure and the PTO would not have allowed the
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`claims. See also Phillips at 1327-1328.
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`Petitioners attempt to minimize the significance of the applicant’s statements
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`during prosecution. See Reply at 15-16. Petitioners’ arguments fail for at least 4
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`reasons.
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`First, statements regarding the cache server 306 of Garcia are relevant at
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`least because Border expressly states that: “Proxy servers 105 and 107, according
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`to an embodiment of the present invention, are Hypertext Transfer Protocol
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`(HTTP) proxy servers with HTTP caches 115 and 117, respectively.” EX.1012 at
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`4:8-11. Proxy servers 105, 107 of Border are cache servers, which are not client
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`devices.
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`Second, the functions performed by “the selected client” of the ‘936 Patent
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`may be equated to the “first client device” of the ‘319 Patent. Applicant
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`consistently argued that client devices are different from servers to distinguish the
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`Garcia reference and ultimately, the examiner withdrew rejections based on Garcia
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`and issued new rejections based on other references. POR at 19-21.
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`Third, the ‘936 prosecution history statements inform a POSA of the
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`applicant’s understanding that a client device is not a server and vice versa. A
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`POSA would understand that the “clients” claimed in the ‘936 Patent correspond to
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`“client devices” in the ‘319 Patent. Applicant used the term “client