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UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_________________________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________________
`
`
`NETNUT LTD.,
`
`Petitioner
`
`v.
`
`BRIGHT DATA LTD.,
`
`Patent Owner
`
`_________________________
`
`Case IPR2021-01492
`
`Patent No. 10,257,319
`
`_________________________
`
`
`
`
`
`UPDATED MANDATORY NOTICES PURSUANT TO 37 C.F.R. §§
`42.8(b)(2) AND (b)(4)(i)
`
`
`
`
`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
`
`Pursuant to 37 C.F.R. §§ 42.8(b)(2) and (b)(4)(i), Patent Owner Bright Data
`
`Ltd. hereby provides the following updated mandatory notices in connection with
`
`IPR2021-01492 of Patent No. 10,257,319 entitled “System providing faster and
`
`more efficient data communication.” Specifically, this paper updates related
`
`matters and provides additional clarification on the service information for lead
`
`counsel.
`
`I. Real Parties-In-Interest
`
`The real party-in-interest remains the same.
`
`II. Related Matters
`
`This administrative proceeding is related to IPR2021-01493 of Patent No.
`
`10,484,510 and involves the same petitioner. Patent No. 10,484,510 is based upon a
`
`continuation of the application that issued as Patent No. 10,257,319.
`
`Other administrative proceedings involving Patent Nos. 10,257,319 and
`
`10,484,510 are:
`
`• IPR2020-01266 of Patent No. 10,257,319 (institution denied);
`
`• IPR2020-01358 of Patent No. 10,484,510 (institution denied);
`
`• IPR2022-00135 of Patent No. 10,257,319 (pending);
`
`• IPR2022-00138 of Patent No. 10,484,510 (pending);
`
`
`
`1
`
`

`

`
`
`IPR2021-01492 of Patent No. 10,257,319
`
`• IPR2022-00861 of Patent No. 10,257,319 (pending);
`
`• IPR2022-00862 of Patent No. 10,484,510 (pending);
`
`• IPR2022-00915 of Patent No. 10,257,319 (pending); and
`
`• IPR2022-00916 of Patent No. 10,484,510 (pending).
`
`Other reexamination proceedings involving Patent Nos. 10,257,319 and
`
`10,484,510 are:
`
`• Control No. 90/014,875 of Patent No. 10,257,319 (pending; currently
`
`stayed in view of IPR2021-01492); and
`
`• Control No. 90/014,876 of Patent No. 10,484,510 (pending; currently
`
`stayed in view of IPR2021-01493).
`
`Court cases involving Patent Nos. 10,257,319 and 10,484,510 are styled as
`
`follows:
`
`• Bright Data Ltd. f/k/a Luminati Networks Ltd. v. Tefincom S.A., No.
`
`2:19-cv-414 (E.D. Tex.)(pending);
`
`• Bright Data Ltd. v. NetNut Ltd., No 2:21-cv-225 (E.D. Tex.)(pending);
`
`• Bright Data Ltd. v. Ninja-Tech, SIA, No. 2:21-cv-00434 (E.D.
`
`Tex.)(pending);
`
`
`
`2
`
`

`

`
`
`IPR2021-01492 of Patent No. 10,257,319
`
`• Bright Data Ltd. f/k/a Luminati Networks Ltd. v. Teso LT, UAB, et al.,
`
`No. 2:19-cv-395 (E.D. Tex.)(jury verdict entered; asserted patents
`
`found valid and infringed);
`
`• Luminati Networks Ltd. v. BI Science (2009) Ltd., No. 2:19-cv-397
`
`(E.D. Tex.)(dismissed, but pending Rule 60 Motion in the district court;
`
`subject to deactivated appeals);
`
`• Luminati Networks Ltd. v. BI Science (2009) Ltd., No. 2020-2118 (Fed.
`
`Cir.)(deactivated appeal pending Rule 60 Motion in the district court);
`
`and
`
`• Luminati Networks Ltd. v. BI Science, Inc., No. 2020-2181 (Fed.
`
`Cir.)(deactivated appeal pending Rule 60 Motion in the district court).
`
`Petitioner has also filed for inter partes review, challenging other patents
`
`assigned to Patent Owner. They are:
`
`• IPR2021-00458 of Patent No. 9,241,044 (pending); and
`
`• IPR2021-00465 of Patent No. 9,742,866 (pending).
`
`Petitioner has also filed Ex Parte Requests for Reexamination with the
`
`USPTO on other patents assigned to Patent Owner. They are:
`
`• Control No. 90/014,624 of Patent No. 10,484,511 (pending);
`
`• Control No. 90/014,652 of Patent No. 10,637,968 (pending);
`
`• Control No. 90/019,041 of Patent No. 10,491,713 (pending);
`
`
`
`3
`
`

`

`
`
`IPR2021-01492 of Patent No. 10,257,319
`
`• Control No. 90/014,920 of Patent No. 11,050,852 (pending); and
`
`• Control No. 90/014,940 of Patent No. 11,044,346 (pending).
`
`There was another district court case between Patent Owner and Petitioner
`
`that involved other patents assigned to Patent Owner, styled as follows: Luminati
`
`Networks Ltd. f/k/a Hola Networks Ltd. v. NetNut Ltd., No. 2:20-cv-00188 (E.D.
`
`Tex.)(closed).
`
`III. Lead and First Back-Up Counsel
`
`The lead and first back-up counsel information remains the same.
`
`
`IV. Service Information
`
`The service information remains the same. With this update, Patent Owner
`
`only provides additional clarification for service by electronic mail address for lead
`
`counsel, Thomas M. Dunham. Please use tomd@ruyakcherian.com (for
`
`correspondence from Petitioner) or tom@dunham.cc (for correspondence from
`
`PTAB E2E).
`
`
`
`4
`
`
`
`

`

`IPR2021-01492 of Patent No. 10,257,319
`
`
`
`
`Date: May 9, 2022
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`
`
`
`
`
`
`By: /s/ Thomas M. Dunham
`Thomas M. Dunham
`Reg. No. 39,965
`
`RuyakCherian LLP
`1901 L Street NW, Suite 700
`Washington, D.C. 20036
`(202) 838-1567
`
`ATTORNEY FOR PATENT OWNER,
`BRIGHT DATA LTD.
`
`5
`
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`

`

`
`
`IPR2021-01492 of Patent No. 10,257,319
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned hereby certifies the
`
`UPDATED MANDATORY NOTICES PURSUANT TO 37 C.F.R. §§ 42.8(b)(2)
`
`AND (b)(4)(i) was served on the undersigned date via email, as authorized by
`
`Petitioner, at the following email addresses:
`
`ron.abramson@listonabramson.com
`
`ari.jaffess@listonabramson.com
`
`michael.lewis@listonabramson.com
`
`
`
`
`
`
`Date: May 9, 2022
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`
`
`
`
`
`
`By: /s/ Thomas M. Dunham
`Thomas M. Dunham
`Reg. No. 39,965
`
`RuyakCherian LLP
`1901 L Street NW, Suite 700
`Washington, D.C. 20036
`(202) 838-1567
`
`ATTORNEY FOR PATENT OWNER,
`BRIGHT DATA LTD.
`
`6
`
`

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