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
`
`_________________________
`
`
`
`
`
`JOINT MOTION TO TERMINATE AS TO PETITIONER DUE TO
`SETTLEMENT UNDER 35 U.S.C. § 317 AND 37 C.F.R. § 42.741
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`1 This Joint Motion was authorized by the Board in an e-mail dated May 24, 2022.
`
`
`
`_________________________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________________
`
` NETNUT LTD.,
`
`Petitioner
`
`v.
`
`BRIGHT DATA LTD.,
`
`Patent Owner
`
`_________________________
`
`Case IPR2021-01492
`
`Patent No. 10,257,319
`
`_________________________
`
`
`
`
`
`JOINT MOTION TO TERMINATE AS TO PETITIONER DUE TO
`SETTLEMENT UNDER 35 U.S.C. § 317 AND 37 C.F.R. § 42.741
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`1 This Joint Motion was authorized by the Board in an e-mail dated May 24, 2022.
`
`
`
`IPR2021-01492 of Patent No. 10,257,319
`
`
`
`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION ............................................................................................... 1
`
`II. CERTIFICATION ............................................................................................... 1
`
`III. BACKGROUND ................................................................................................. 2
`
`IV. THE PARTIES HAVE SETTLED THEIR DISPUTES. .................................... 3
`
`V. THE BOARD HAS NOT MADE A DECISION ON THE MERITS. ............... 3
`
`VI. GRANTING TERMINATION AS TO PETITIONER IS MANDATORY. ...... 4
`
`VII. CONCLUSION .................................................................................................. 4
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`i
`
`
`
`IPR2021-01492 of Patent No. 10,257,319
`
`I.
`
`INTRODUCTION
`
`Pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.74, Petitioner NetNut Ltd.
`
`and Patent Owner Bright Data Ltd. (together, the “Parties”) jointly move to terminate
`
`IPR2021-01492 (this proceeding) and IPR2021-01493 (related proceeding) as to
`
`Petitioner due to settlement. As discussed below, the Parties respectfully request
`
`termination as to Petitioner for at least three reasons:
`
`1. the Parties have settled their disputes;
`
`2. the Board has not made a decision on the merits;
`
`3. granting termination as to Petitioner is mandatory.
`
`Under 35 U.S.C. 317(a), “[a]n inter partes review instituted under this chapter
`
`shall be terminated with respect to any petitioner upon the joint request of the
`
`petitioner and the patent owner, unless the Office has decided the merits of the
`
`proceeding before the request for termination is filed.” (emphasis added).
`
`II. CERTIFICATION
`
`In compliance with 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b), the Parties
`
`have filed Exhibit 2019, a true copy of the written settlement agreement between the
`
`Parties, and the Parties concurrently filed a Joint Request to File Settlement
`
`Agreement as Business Confidential Information and Be Kept Separate from the
`
`Patent Files. Exhibit 2019 has been filed for access by the “Parties and Board Only.”
`
`
`
`1
`
`
`
`IPR2021-01492 of Patent No. 10,257,319
`
`The Parties jointly certify that Exhibit 2019 reflects final settlement and resolution
`
`of all disputes between the Parties, including those relating to Patent No. 10,257,319
`
`(the “’319 Patent”), and there are no other collateral agreements or understandings
`
`made in connection with, or in contemplation of, the termination sought.
`
`III. BACKGROUND
`
`Trial was recently instituted on March 21, 2021. Paper 12. The Board issued
`
`a Scheduling Order setting the due date for the Patent Owner Response and/or
`
`Motion to Amend on June 15, 2022. Paper 13 at 11. The Board issued an Order sua
`
`sponte staying the concurrent ex parte reexamination of the ‘319 Patent in Control
`
`No. 90/014,875 on April 7, 2022. Paper 14.
`
`On May 13, 2022, the Parties sent a joint email to inform the Board that they
`
`had reached settlement in principle and to request a conference call to discuss
`
`authorization to file papers related to termination.
`
`On May 18, 2022, Patent Owner filed a Notice of Settlement and Related
`
`Court Order. Paper 16.
`
`On May 20, 2022, the Parties held a conference call with the Board to discuss
`
`authorization to file papers related to termination.
`
`On May 24, 2022, the Board authorized the filing of papers related to
`
`termination.
`
`
`
`2
`
`
`
`IPR2021-01492 of Patent No. 10,257,319
`
`IV. THE PARTIES HAVE SETTLED THEIR DISPUTES.
`
`With authorization from the Board, the Parties jointly move to terminate this
`
`proceeding as to Petitioner due to settlement. No other petitioner remains in the
`
`proceeding.2
`
`The Parties have resolved all disputes between them and with regard to the
`
`‘319 Patent. The Parties contemplate no new administrative or district court
`
`proceeding between them in the foreseeable future.
`
`V. THE BOARD HAS NOT MADE A DECISION ON THE MERITS.
`
`This IPR is at a relatively early stage. The Parties have not yet fully briefed
`
`their arguments following the Board’s institution decision. There have been no
`
`expert depositions and there has been no briefing regarding exclusion of evidence.
`
`There has been no prehearing conference and the oral argument (set for December
`
`
`2 In IPR2022-00861, Petitioners Code200, UAB et al. moved for joinder to this
`
`IPR. Patent Owner opposes joinder for the reasons set forth in its opposition filed
`
`on May 18, 2022. See id., Paper 11. In IPR2022-00915, Petitioner Major Data
`
`UAB moved for joinder to this IPR. Patent Owner opposes joinder and for the
`
`reasons set forth in its opposition filed on May 23, 2022. See id., Paper 7.
`
`
`
`3
`
`
`
`16, 2022) has not yet occurred. No final written decision has been issued in this
`
`IPR2021-01492 of Patent No. 10,257,319
`
`proceeding.
`
`VI. GRANTING TERMINATION AS TO PETITIONER IS
`MANDATORY.
`
`The Parties respectfully submit this Joint Motion with authorization from the
`
`Board. With this Joint Motion, termination as to Petitioner NetNut Ltd. is mandatory
`
`because, as discussed, the Board has not decided the merits of the proceeding. 35
`
`U.S.C. § 317(a).
`
`VII. CONCLUSION
`
`Based on the foregoing, the Parties respectfully request that the Board grant
`
`termination of this proceeding as to Petitioner NetNut Ltd.
`
`
`
`
`
`
`
`
`
`
`
`
`
`4
`
`
`
`IPR2021-01492 of Patent No. 10,257,319
`
`Respectfully submitted on May 24, 2022,
`
`
`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.
`
`
`By: /s/ Ronald Abramson (with
`permission)
`Ronald Abramson
`Reg. No. 34,762
`
`Liston Abramson LLP
`405 Lexington Avenue, 46 FL
`New York, N.Y. 10174
`(212) 822-0163
`
`ATTORNEY FOR PETITIONER,
`NETNUT LTD.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`5
`
`
`
`IPR2021-01492 of Patent No. 10,257,319
`
`CERTIFICATE OF COMPLIANCE
`
`The undersigned hereby certifies that this Paper is within the 15 page-limit,
`
`in compliance with 37 C.F.R. § 42.24(a)(1)(v).
`
`
`
`
`
`
`
`
`Date: May 24, 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
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2021-01492 of Patent No. 10,257,319
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned hereby certifies JOINT
`
`MOTION TO TERMINATE AS TO PETITIONER DUE TO SETTLEMENT
`
`UNDER 35 U.S.C. § 317 AND 37 C.F.R. § 42.74 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 24, 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.
`
`7
`
`
`
`
`
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
