UNITED STATES PATENT AND TRADEMARK OFFICE
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`_________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_________________________
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` CODE200, UAB; TESO LT, UAB; METACLUSTER LT, UAB;
`OXYSALES, UAB; and CORETECH LT, UAB,
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`Petitioners
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`v.
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`BRIGHT DATA LTD.,
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`Patent Owner
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`_________________________
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`Case IPR2021-014921
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`Patent No. 10,257,319
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`_________________________
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`PATENT OWNER’S NOTICE OF APPEAL
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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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`1 Petitioners in IPR2022-00861 were joined to this case, with IPR2022-00861 then
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`terminated.
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`_________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_________________________
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` CODE200, UAB; TESO LT, UAB; METACLUSTER LT, UAB;
`OXYSALES, UAB; and CORETECH LT, UAB,
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`Petitioners
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`v.
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`BRIGHT DATA LTD.,
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`Patent Owner
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`_________________________
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`Case IPR2021-014921
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`Patent No. 10,257,319
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`_________________________
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`PATENT OWNER’S NOTICE OF APPEAL
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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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`1 Petitioners in IPR2022-00861 were joined to this case, with IPR2022-00861 then
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`terminated.
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`IPR2021-01492 of Patent No. 10,257,319
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`Pursuant to 35 U.S.C. §§ 141, 142, and 319, and 37 C.F.R. §§ 90.2 and 90.3,
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`notice is hereby given that Patent Owner Bright Data Ltd. appeals to the U.S. Court
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`of Appeals for the Federal Circuit from the Final Written Decision (Paper 53) entered
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`on September 22, 2023 in IPR2021-01492, and from all underlying orders,
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`decisions, ruling, and opinions that are adverse to Patent Owner.2,3,4 The public
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`2 Lead Case No. 23-2144, pending in its early stages before the Fed. Cir., involves
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`the same patent, the same disputed claim terms, the same primary prior art reference
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`(Crowds), and the same petitioners.
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`3 Case No. 23-2414, pending in its early stages before the Fed. Cir., involves the
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`same patent, the same disputed claim terms, and the same primary prior art
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`references (Crowds, Border).
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`4 Patent Owner is simultaneously filing a Notice of Appeal in IPR2021-01492 and
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`IPR2021-01493, which involve related patents having the same specification, the
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`same disputed claim terms, and the same prior art references. There are also similar
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`claim construction issues in pending administrative matters: IPR2022-00687 and
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`IPR2023-01425; as well as Reexamination Control Nos. 90/014,652, 90/014,816,
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`90/014,624, and 90/014,827; all which involve related patents having the same
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`specification. There are also similar claim construction issues in stayed
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`Reexamination Control Nos. 90/014,875 and 90/014,876, as well as stayed district
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`1
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`IPR2021-01492 of Patent No. 10,257,319
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`version of the Final Written Decision (Paper 54) entered on September 27, 2023 is
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`attached to this Notice as Exhibit A.
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`In accordance with 37 C.F.R. § 90.2(a)(3)(ii), Patent Owner intends to appeal
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`at least the following issues:
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`i. Whether the Board’s construction of the claim term “client device” was
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`incorrect and/or not reasonable in light of the evidence of record;
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`ii. Whether the Board’s construction of the claim term “second server”
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`was incorrect and/or not reasonable in light of the evidence of record;
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`iii. Whether the Board erred in determining that Petitioners established by
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`a preponderance of the evidence that claims 1, 19, and 21-29 of U.S.
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`Patent No. 10,257,319 (“the ‘319 Patent”) are unpatentable as
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`anticipated by Crowds5;
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`iv. Whether the Board erred in determining that Petitioners established by
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`court matters: Case Nos. 2:19-cv-395, 2:19-cv-396, and 2:19-cv-414 in the Eastern
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`District Court of Texas.
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`5 Michael Reiter & Aviel Rubin, Crowds: Anonymity for Web Transactions, ACM
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`Transactions on Information and System Security, Vol. 1, No. 1 (Nov. 1998) (Ex.
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`1006, “Crowds”).
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`2
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`IPR2021-01492 of Patent No. 10,257,319
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`a preponderance of the evidence that claims 1, 2, 14, 15, 17-19, and 21-
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`29 of the ‘319 Patent are unpatentable as obvious over the combination
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`of Crowds and RFC 26166;
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`v. Whether the Board erred in determining that Petitioners established by
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`a preponderance of the evidence that claims 1, 12, 14, 21, 22, 24, 25,
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`and 27-29 of the ‘319 Patent are unpatentable as anticipated by Border7;
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`vi. Whether the Board erred in determining that Petitioners established by
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`a preponderance of the evidence that claims 1, 12, 14, 15, 17-19, 21,
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`22, 24, 25, and 27-29 of the ‘319 Patent are unpatentable as obvious
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`over the combination of Border and RFC 2616;
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`vii. Whether the Board erred in determining that Petitioners established by
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`a preponderance of the evidence that claims 1, 17, 19, and 21-29 of the
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`6 Fielding, et al., RFC 2616, Hypertext Transfer Protocol -- HTTP/1.1, Internet
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`Engineering Task Force, Network Working Group (June 1999) (Ex. 1013, “RFC
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`2616”).
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`7 Border, et al., U.S. Patent No. 6,795,848 B1 (Sep. 21, 2004) (Ex. 1012, “Border”).
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`3
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`IPR2021-01492 of Patent No. 10,257,319
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`‘319 Patent are unpatentable as anticipated by MorphMix8;
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`viii. Whether the Board erred in determining that Petitioners established by
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`a preponderance of the evidence that claims 1, 2, 14, 15, 17-19, and 21-
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`29 of the ‘319 Patent are unpatentable as obvious over the combination
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`of MorphMix and RFC 2616; and
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`ix. Whether the Board erred in any further findings or determinations
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`supporting or relating to the issues above, including the Board’s
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`consideration of
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`the expert
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`testimony, prior art, secondary
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`considerations of non-obviousness, and other evidence in the record.
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`Pursuant to 37 C.F.R. § 90.3, this Notice is timely, having been duly filed
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`within 63 days after the date of the Final Written Decision.
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`A complete and entire copy of this Notice is being filed simultaneously with
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`each of the Patent Trial and Appeal Board and the Clerk’s Office for the U.S. Court
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`of Appeals for the Federal Circuit, along with the required fee. A complete and entire
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`copy of this Notice is being served simultaneously on each of the Director of the
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`U.S. Patent and Trademark Office and the petitioners.
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`8 Marc Rennhard, MorphMix – A Peer-to-Peer-based System for Anonymous
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`Internet Access (2004) (Ex. 1008, “MorphMix”).
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`4
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`IPR2021-01492 of Patent No. 10,257,319
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`No fees are believed to be due to the U.S. Patent and Trademark Office in
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`connection with this filing, but authorization is hereby given for any requisite fees
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`to be charged to Deposit Account No. 603803 (Customer No. 144371).
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`Date: September 27, 2023
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`Respectfully submitted,
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`
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`By: /s/ Thomas M. Dunham
`Thomas M. Dunham
`Reg. No. 39,965
`
`Cherian LLP
`1901 L Street NW, Suite 700
`Washington, D.C. 20036
`(202) 838-1567
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`ATTORNEY FOR PATENT OWNER,
`BRIGHT DATA LTD.
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`5
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`IPR2021-01492 of Patent No. 10,257,319
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`CERTIFICATE OF FILING AND SERVICE
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`The undersigned hereby certifies a complete and entire copy of this paper
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`was served on the undersigned date via USPS Priority Mail Express® on the
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`Director of the USPTO at the following address:
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`Mail Stop 8
`Office of the General Counsel
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`
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`The undersigned hereby certifies a complete and entire copy of this paper
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`was filed on the undersigned date with the Clerk’s Office for the United States
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`Court of Appeals for the Federal Circuit and that the required docket fee was paid
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`electronically through the Court’s CM/ECF system.
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`The undersigned hereby certifies a complete and entire copy of this paper
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`was served on the undersigned date via email, as authorized by Petitioners, at the
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`following email addresses:
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`jscott@ccrglaw.com
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`jheuton@ccrglaw.com
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`ctolliver@ccrglaw.com
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`6
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`Date: September 27, 2023
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`IPR2021-01492 of Patent No. 10,257,319
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`Respectfully submitted,
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`
`
`
`
`By: /s/ Thomas M. Dunham
`Thomas M. Dunham
`Reg. No. 39,965
`
`Cherian LLP
`1901 L Street NW, Suite 700
`Washington, D.C. 20036
`(202) 838-1567
`
`ATTORNEY FOR PATENT OWNER,
`BRIGHT DATA LTD.
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`7
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`EXHIBIT A
`EXHIBIT A
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`
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`Trials@uspto.gov
`Tel: 571-272-7822
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`PUBLIC VERSION
`
`
`
`
`Paper 54
`Entered: September 27, 2023
`
`
`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,
`Petitioner,
`v.
`BRIGHT DATA LTD.,
`Patent Owner.
`
`IPR2021-014921
`Patent 10,257,319 B2
`
`
`
`
`
`
`
`
`
`
`
`Before THOMAS L. GIANNETTI, SHEILA F. McSHANE, and
`RUSSELL E. CASS, Administrative Patent Judges.
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`GIANNETTI, Administrative Patent Judge.
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`
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`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`Granting Motion to Seal
`35 U.S.C. § 318(a); 37 C.F.R. § 42.14
`
`
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`1 Joined by the petitioners in IPR2022-00861.
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`
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`IPR2021-01492
`Patent 10,257,319 B2
`
`
`INTRODUCTION
`I.
`On September 3, 2021, NetNut Ltd. (NetNut”) filed a Petition (Paper
`2, “Pet.”) requesting inter partes review of claims 1, 2, 12, 14, 15, 17–19,
`and 21–29 (the “challenged claims”) of U.S. Patent No. 10,257,319 B2 (Ex.
`1001, “the ’319 patent”). Patent Owner, Bright Data Ltd.,2 filed a
`Preliminary Response (Paper 9, “Prelim. Resp.”).
`We determined that NetNut’s Petition established a reasonable
`likelihood that it would prevail with respect to at least one claim, and on
`March 21, 2022, we instituted inter partes review as to all challenged claims
`of the ’319 patent and all grounds of unpatentability asserted in the Petition.
`Paper 12 (“Institution Dec.”).
`On April 18, 2022, Code200, UAB; Teso LT, UAB; Metacluster LT,
`UAB; Oxysales, UAB; and coretech lt, UAB (collectively, “Petitioner”)3
`filed a “substantially identical” petition challenging the same claims of the
`’319 patent on the same grounds as the Petition filed by NetNut,
`accompanied by a request for joinder to this proceeding. IPR2022-00861
`Papers 1, 7.
`On May 24, 2022, NetNut and Patent Owner submitted a joint motion
`to terminate this proceeding as to NetNut, as a result of a settlement. Paper
`17. On May 27, 2022, we granted the motion and terminated NetNut as a
`party to this proceeding but did not terminate the proceeding. Paper 20.
`
`
`2 Bright Data Ltd. was formerly known as Luminati Networks, Ltd. See Pet.
`1; Prelim. Resp. 11 n.8.
`3 Our references to “Petitioner” also include NetNut prior to its termination
`as a party.
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`2
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`IPR2021-01492
`Patent 10,257,319 B2
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`
`On October 19, 2022, we instituted inter partes review in IPR2022-
`00861 and granted the joinder request. IPR2022-00861 Paper 19. 4
`Following institution of this proceeding, Patent Owner filed a
`Response. Paper 31 (“PO Resp.”), Petitioner filed a Reply (Paper 40, “Pet.
`Reply”), and Patent Owner filed a Sur-reply (Paper 41, “PO Sur-reply”).
`An oral hearing was held on June 9, 2023. A transcript of that hearing
`is part of the record. Paper 51 (“Hearing Tr.”).
`We have jurisdiction under 35 U.S.C. § 6. This decision is a Final
`Written Decision issued pursuant to 35 U.S.C. § 318(a). For the reasons we
`discuss below, we determine that Petitioner has proven by a preponderance
`of the evidence that claims 1, 2, 12, 14, 15, 17–19, and 21–29 of the ’319
`patent are unpatentable.
`
`II. BACKGROUND
`A. Related Matters
`The parties identify several district court proceedings involving the
`’319 patent and a related patent, U.S. Patent No. 10,484,510 (“the ’510
`patent”), including Bright Data Ltd. v. NetNut Ltd., No. 2:21-cv-225 (E.D.
`Tex.) (the “NetNut Litigation”);5 and Luminati Networks Ltd. v. Teso LT,
`UAB, et al., No. 2:19-cv-395 (E.D. Tex.) (the “Teso Litigation”). Pet. 2–3;
`Paper 4, 1–2.
`
`
`4 On August 23, 2022, the USPTO Director, sua sponte, vacated our initial
`decision denying inter partes review in IPR2022-00861 and remanded the
`case to the Board. See IPR2022-00861 Paper 18.
`5 Patent Owner alternatively refers to this case as the “NetNut II Litigation.”
`See Prelim. Resp. 25.
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`3
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`IPR2021-01492
`Patent 10,257,319 B2
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`
`The parties also identify a number of district court actions involving
`patents related to the ’319 patent. See Pet. 3–4; Paper 4, 2–3.
`The ’319 patent was previously before the Board in IPR2020-01266
`(institution denied). Pet. 4; Paper 4, 1. The ’510 patent is involved in
`IPR2021-01493 (pending), and was previously before the Board in
`IPR2020-01358 (institution denied). Pet. 5; Paper 4, 1. The parties also
`identify a number of other USPTO proceedings involving patents related to
`the ’319 patent. See Pet. 4–5; Paper 4, 2.
`In addition, Patent Owner identifies ex parte reexaminations requested
`for the ’319 and ’510 patents, respectively, Control No. 90/014,875 and
`Control No. 90/014,876. Paper 6, 1–2; Prelim. Resp. 17. Those
`reexamination proceedings have been stayed by the Board. IPR2021-01492,
`Paper 14; IPR2021-01493, Paper 13.
`B. Real Parties-in-Interest
`The Petition filed by NetNut identifies NetNut Ltd. as the only real
`party-in-interest. Pet. 2. The petition in IPR2022-00861 identifies Code200,
`UAB; Teso LT, UAB; Metacluster LT, UAB; Oxysales, UAB; and coretech
`lt, UAB as the real parties-in-interest. IPR2022-00861 Paper 1, 3. Patent
`Owner identifies Bright Data Ltd. as the only real party-in-interest. Paper 4,
`1.
`
`C. The ’319 Patent (Ex. 1001)
`The ’319 patent is titled “System Providing Faster and More Efficient
`Data Communication.” Ex. 1001, (54). According to the ’319 patent, there
`is a “need for a new method of data transfer that is fast for the consumer,
`cheap for the content distributor and does not require infrastructure
`investment for ISPs.” Id. at 1:54–56. The patent states that other “attempts
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`4
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`IPR2021-01492
`Patent 10,257,319 B2
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`at making the Internet faster for the consumer and cheaper for the
`broadcaster,” such as proxy servers and peer-to-peer file sharing, have
`various shortcomings. Id. at 1:58–59; 2:24–2:32; 2:59–3:3.
`The ’319 patent describes a system and method “for faster and more
`efficient data communication within a communication network,” such as in
`the network illustrated in Figure 3, reproduced below (id. at 4:41–44):
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`Figure 3 is a schematic diagram depicting communication network 100
`including a number of communication devices. Id. at 4:43–45. Due to the
`functionality provided by software stored within each communication
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`5
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`IPR2021-01492
`Patent 10,257,319 B2
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`device, “each communication device may serve as a client, peer, or agent,
`depending upon requirements of the network 100.” Id. at 4:46–50.
`
`Client 102 is capable of communicating with peers 112, 114, and 116,
`as well as with one or more agents 122. Id. at 4:56–58. Web server 152
`may be “a typical HTTP server, such as those being used to deliver content
`on any of the many such servers on the Internet.” Id. at 4:63–67.
`Acceleration server 162 includes an acceleration server storage device 164
`with an acceleration server database, which “stores Internet Protocol (IP)
`addresses of communication devices within the communication network 100
`having acceleration software stored therein.” Id. at 5:8–14.
`
`In operation, a client may request a resource on the network, for
`example, through the use of an Internet browser. See id. at 12:62–13:3. If
`server 152 is the target of the request, the client sends the IP address of
`server 152 to acceleration server 162. Id. at 13:8–15. Acceleration server
`162 then prepares a list of agents that can handle the request, which includes
`communication devices “that are currently online, and whose IP address is
`numerically close to the IP of the destination Web server 152.” Id. at 13:19–
`29. The client then sends the original request to the agents in the list to find
`out which “is best suited to be the one agent that will assist with this
`request.” Id. at 13:31–36.
`Each agent responds to the client with information which “can help
`the client to download the requested information from peers in the network.”
`Id. at 13:53–57. “Specifically, each agent responds with whether the agent
`has seen a previous request for this resource that has been fulfilled. In such
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`6
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`IPR2021-01492
`Patent 10,257,319 B2
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`a case, the agent may then provide the client with the list of peers and
`checksums of the chunks[6] that each of them have.” Id. at 13:57–61.
`The client selects an agent based on a number of factors, and the
`selected agent determines whether data stored in its memory or the memory
`of the peers “still mirrors the information that would have been received
`from the server itself for this request.” Id. at 13:62–14:1, 14:35–38. If the
`selected agent does not have the necessary information to service a request,
`it may “load the information directly from the server in order to be able to
`provide an answer to the requesting client.” Id. at 14:62–67.
`
`D. Illustrative Claim
`The ’319 patent has 29 claims. As noted, claims 1, 2, 12, 14, 15, 17–
`19, and 21–29 are challenged in the Petition. Pet. 1. Claim 1, the only
`independent claim in the ’319 patent, is illustrative of the claimed subject
`matter and is reproduced below:7
`1. [Preamble] A method for use with a first client device,
`for use with a first server that comprises a web server that is a
`Hypertext Transfer Protocol (HTTP) server that responds to
`HTTP requests, the first server stores a first content identified
`by a first content identifier, and for use with a second server,
`the method by the first client device comprising:
`[1a] receiving, from the second server, the first content
`identifier;
`
`
`6 ”[C]hunks . . . are defined as equally sized pieces of data that together form
`the whole content of the URL, namely, the entire content whose location is
`described by the URL.” Ex. 1001, 10:60–63.
`7 Paragraph references in brackets tracking Petitioner‘s analysis have been
`added.
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`7
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`IPR2021-01492
`Patent 10,257,319 B2
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`[1b] sending, to the first server over the Internet, a
`Hypertext Transfer Protocol (HTTP) request that comprises the
`first content identifier;
`[1c] receiving, the first content from the first server over
`the Internet in response to the sending of the first content
`identifier; and
`[1d] sending, the first content by the first client device to
`the second server, in response to the receiving of the first
`content identifier.
`Ex. 1001, 19:16–32.
`E. Prior Art References and Other Evidence
`Petitioner relies on the following references:
`1. Michael Reiter & Aviel Rubin, Crowds: Anonymity
`for Web Transactions, ACM Transactions on Information and
`System Security, Vol. 1, No. 1 (Nov. 1998) (Ex. 1006,
`“Crowds”);
`2. Border, et al., U.S. Patent No. 6,795,848 B1 (Sep. 21,
`2004) (Ex. 1012, “Border”);
`3. Marc Rennhard, MorphMix – A Peer-to-Peer-based
`System for Anonymous Internet Access (2004) (Ex. 1008,
`“MorphMix”);
`4. Fielding, et al., RFC 2616, Hypertext Transfer
`Protocol -- HTTP/1.1, Internet Engineering Task Force,
`Network Working Group (June 1999) (Ex. 1013, “RFC 2616”).
`In addition to these references, Petitioner relies on a Declaration of
`
`Keith J. Teruya. Ex. 1005 (“Teruya Decl.”). Patent Owner submitted a
`Declaration of Dr. V. Thomas Rhyne with its Preliminary Response.
`Ex. 2006. 8 After institution, Patent Owner submitted a Declaration of Dr.
`
`
`8 According to Patent Owner, Dr. Rhyne’s declaration was previously
`submitted in IPR2020-01266.
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`8
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`IPR2021-01492
`Patent 10,257,319 B2
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`Tim A.Williams. Paper 2065 (“Williams Decl.”).° Petitioner has submitted
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`a transcript ofDr. Williams’s deposition. Ex. 1111 (“Williams Dep.”).
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`Patent Owner has submitted a transcript ofMr. Teruya’s deposition from
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`IPR2022-00861, also involving the ’319 patent and whose petitioners have
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`been joined with this proceeding. Ex. 2067.
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`E. The Asserted Grounds ofUnpatentability
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`Petitioner asserts the following grounds ofunpatentability. Pet. 10.
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`Claim(s) Challenged
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`Reference(s)!°
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`Crowds, RFC 2616
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`1, 2, 14, 15, 17-19, 21-29
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`° Patent Owner submitted both confidential and public (redacted) versions of
`Dr. Williams’s declaration.
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`10 The Petition’s obviousnesschallengesadditionally referto the
`“{k|nowledge of [a person ofordinary skill in the art].” Pet. 10. We
`understand this to refer to a person ofordinary skill in the art’s
`understanding ofthe applied references and not attempting to supply missing
`limitations or incorporating an unspecified disclosure by reference.
`'! Although the Petition’slisting ofthe assertedgrounds excludesclaim 23
`for this ground(see Pet. 10), the Petition includes claim 23 in its analysis of
`anticipation based on Crowds(see id. at 38). Accordingly, we include claim
`23 here.
`
`!2 Becausethe application from which the ’319 patentissued has an earliest
`effective filing date before March 16, 2013 (Ex. 1001, (60)),citations to 35
`U.S.C. §§ 102 and 103 are to the pre-AIA versions. Leahy-SmithAmerica
`Invents Act (“AIA”), Pub. L. No. 112-29.
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`
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`IPR2021-01492
`Patent 10,257,319 B2
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`Claim(s) Challenged
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`Basis
`35 U.S.C. §
`103
`
`Reference(s)!?
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`
`
`1, 12, 14, 15, 17-19,21, 22,
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`24.25. 27-2913 p03 Border,RFC2616
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`1.17,19,21-29
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`Moni
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`1, 2, 14, 15, 17-19, 21-29
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`MorphMix, RFC 2616
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`Ill. ANALYSIS OF THE CHALLENGED CLAIMS
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`A. Anticipation and Obviousness
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`The Federal Circuit addressed the legal standard for anticipation in
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`Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331 (Fed. Cir. 2016):
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`Under 35 U.S.C. § 102(b), a prior art reference will anticipate if
`it “disclose[s] each and every element ofthe claimedinvention
`.
`. .arranged or combinedin the same wayasin the claim.”
`
`815 F.3d at 1341 (citation omitted) (footnote omitted). The Federal Circuit
`
`wenton to explain:
`
`However, areference can anticipate a claim evenifit ‘d[oes]
`not expressly spell out’all the limitations arranged or combined
`as in the claim,ifa person ofskill in the art, reading the
`reference, would ‘at once envisage’ the claimed arrangement or
`combination.
`
`Id. (quoting Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376,
`
`1381 (Fed. Cir. 2015))
`
`A claim is unpatentable as obvious under 35 U.S.C. § 103 “if the
`
`differences between the claimed invention andthepriorart are such that the
`
`claimed invention as a whole would have been obviousbefore the effective
`
`13 Although the Petition’slisting ofthe asserted groundsdoesnotidentify
`claim 19 for this ground (see Pet. 10), the Petition includes claim 19 in its
`analysis ofobviousness based on Border and RFC 2616 (see id. at 58).
`Accordingly, we include claim 19 here.
`
`10
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`
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`IPR2021-01492
`Patent 10,257,319 B2
`
`filing date of the claimed invention to a person having ordinary skill in the
`art to which the claimed invention pertains.” 35 U.S.C. § 103 (2011). The
`question of obviousness is resolved on the basis of underlying factual
`determinations, including: (1) the scope and content of the prior art; (2) any
`differences between the claimed subject matter and the prior art; (3) the level
`of skill in the art; and (4) so-called “secondary considerations,” including
`commercial success, long-felt but unsolved needs, failure of others, and
`unexpected results. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`Patent Owner has presented any evidence on the fourth Graham factor. See
`infra, Section III.F.3.
`B. Level of Ordinary Skill in the Art
`According to Petitioner, a person of ordinary skill in the pertinent art
`
`“would have at least a bachelor’s degree in Computer Science or related
`field (or equivalent experience), and two or more years’ experience working
`with and programming networked computer systems as of the Priority Date.”
`Pet. 20 (citing Teruya Decl. ¶¶ 25–27). Petitioner continues that “[s]uch a
`person would be familiar with the underlying principles of Web, Internet, or
`network communication, data transfer, and content sharing across networks,
`including the HTTP and TCP/IP protocols.” Id.
`
`Patent Owner submits that a person of ordinary skill in the art would
`have “a Master’s Degree or higher in the field of Electrical Engineering,
`Computer Engineering, or Computer Science or as of that time had a
`Bachelor’s Degree in the same fields and two or more years of experience in
`Internet Communications” as of 10/8/2009. Prelim. Resp. 47; PO Resp. 2.
`But Patent Owner acknowledges that its analysis “does not change under the
`Board’s preliminary definition.” PO Resp. 2.
`
`11
`
`
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`IPR2021-01492
`Patent 10,257,319 B2
`
`In our Institution Decision, we adopted Petitioner’s formulation.
`
`Institution Dec. 17–18. We regarded Petitioner’s more specific definition as
`consistent with the ’319 patent and the prior art before us. See Okajima v.
`Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect
`an appropriate level of skill). For this reason, for the purpose of this
`decision, we continue to apply Petitioner’s formulation. We find, however,
`that this definition and Patent Owner’s definition of a person of ordinary
`skill in the art are not materially different, and furthermore, that our decision
`would be the same using either definition.
`C. Claim Construction
`For this inter partes review, the Board applies the same claim
`
`construction standard as that applied in federal courts. See 37 C.F.R
`§ 42.100(b) (2019). Under this standard, claim terms “are generally given
`their ordinary and customary meaning” as understood by a person of
`ordinary skill in the art in question at the time of the invention. Phillips v.
`AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc) (citations
`omitted). “In determining the meaning of the disputed claim limitation, we
`look principally to the intrinsic evidence of record, examining the claim
`language itself, the written description, and the prosecution history, if in
`evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d
`1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17).
`Extrinsic evidence is “less significant than the intrinsic record in
`determining ‘the legally operative meaning of claim language.’” Phillips,
`415 F.3d at 1317 (citation omitted).
`
`12
`
`
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`IPR2021-01492
`Patent 10,257,319 B2
`
`Petitioner asserts that the district court’s claim constructions in the
`
`Teso Litigation,14 are appropriate in this case. Pet. 21. In particular,
`Petitioner points to two claim construction orders in that case—the “Teso
`Order” (Ex. 1017) and the “Teso Supplemental Order” (Ex. 1020). Pet. 21–
`22.
`In the Teso Litigation, the parties agreed to certain constructions that
`
`were subsequently adopted by the district court. Id. at 21. Thus, the district
`court construed the preamble of claim 1 of the ’319 patent to be limiting, and
`construed certain other terms to have their “plain and ordinary meaning.”
`Id. In addition, the district court construed certain disputed terms, including
`“client device” and “second server.” Id. at 21–22. The district court
`construed “client device” as “communication device that is operating in the
`role of a client.” Ex. 1017, 12. 15 The district court initially construed
`“second server” as “server that is not the client device.” Id. at 14. Later, the
`court granted the defendants’ request for clarification as to the scope of this
`construction, and in a supplemental order, determined that a “second server”
`is “a device that is operating in the role of a server and that is not the first
`client device.” Ex. 1020, 8, 11.
`Initially, Patent Owner agreed that we should apply the claim
`constructions in the Teso Order for the preamble, “client device,” and
`“second server.” Prelim. Resp. 48. For “second server,” Patent Owner
`
`
`14 Luminati Networks Ltd. v. Teso LT, UAB, et al., No. 2:19-cv-395 (E.D.
`Tex.). The case caption in this litigation was later changed to identify
`plaintiff as Bright Data Ltd. Ex. 1020, 1.
`15 Unless otherwise specified, citations to exhibits use the page numbers
`assigned by the parties and not the original page numbers.
`
`13
`
`
`
`IPR2021-01492
`Patent 10,257,319 B2
`
`initially proposed that we apply the district court’s construction of that term
`from the Teso Order (“server that is not the client device”). Id. (citing
`Ex. 1017, 14). Patent Owner quoted from the Teso Supplemental Order
`(Ex, 1020) which states that the district court “is not now changing the scope
`of the terms in any way,” and alleged that Petitioner is “seeking a broader
`construction of the term ‘second server’ to remove the requirements that it
`be a server.” Prelim. Resp. 49.
`For the purposes of our Institution Decision, we adopted the district
`court’s construction for the “second server” as clarified in the Teso
`Supplemental Order. Institution Dec. 19 (citing Ex. 1020, 11). Thus, we
`adopted the district court’s original construction, with the clarification that
`the second server is “a device that is operating in the role of a server and that
`is not the first client device.” Id. (citing Ex. 1020, 8). We determined that
`this construction is consistent with the extrinsic evidence offered by
`Petitioner, as well as the construction of “server” adopted by the Board in
`IPR2021-00458, involving a patent similar to the ’319 patent. Id. at 19–20
`(citing Ex. 1018, 5; IPR2021-00458, Paper 11. 21). Specifically, we adopted
`the district court’s clarification that “a component can be configured to
`operate in different roles—so long as it does not simultaneously serve as
`more than one of: the client device, the first server/second server, and the
`web server.” Id. at 20 (citing Ex. 1020, 10 (internal quotation marks
`omitted)).
`Post-institution, Patent Owner objects to what it describes as the
`Petitioner’s “purely role-based” constructions. PO Resp. 8–27. Patent
`Owner contends that “[t]he purely role-based constructions contradict the
`Court’s Orders because they refer to generic devices operating in a particular
`
`14
`
`
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`IPR2021-01492
`Patent 10,257,319 B2
`
`role.” Id. at 10. Patent Owner continues, ‘[t]he purely role-based
`constructions fail to account for the physical/structural differences between
`client devices and servers.” Id. (emphasis added)
`More specifically, Patent Owner now contends that the Petitioner
`“deviated from the Court’s construction for the term ‘client device’ and
`do[es] not attribute any special meaning to the term ‘communication
`device.’” Id. at 8. Patent Owner further contends that Petitioner “treat[s]
`client devices and servers as interchangeable general purpose computers.”
`Id. at 9.
`For the reasons that follow, we do not agree with Patent Owner’s
`argument that we should not follow Petitioner’s proposed constructions for
`“client device” and “second server,” which adopt the district court’s
`constructions of these terms. Instead, we maintain the construction for those
`terms we adopted for our Institution Decision.
`Contentions of the Parties
`1.
` Client Device
`a)
`As noted supra, Patent Owner’s position on construction issues has
`shifted during the course of this proceeding. Initially, Patent Owner agreed
`that we should apply the role-based claim construction for client device in
`the Teso Order: ‘“client device’ means [a] ‘communication device that is
`operating in the role of a client.”’ Prelim. Resp. 48 (quoting Ex. 1017, 12)
`(emphasis omitted). As the case progressed, while maintaining its support
`for the district court’s constructions, Patent Owner presented a few twists.
`Referring both to “client device” and “second server,” according to Patent
`Owner’s new theory, the district court “expressly rejected referring to these
`terms as generic devices operating in a particular role.” PO Resp. 9. Patent
`
`15
`
`
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`IPR2021-01492
`Patent 10,257,319 B2
`
`Owner now contends that “[t]he Court found that a “client device” is a
`physical communication device, which has a special meaning in the context
`of the specification.” Id. Patent Owner argues that “[a] communication
`device in the context of the specification is not simply any device that
`communicates over the Internet.” Id. According to Patent Owner, in the
`NetNut Litigation (see supra), NetNut “proposed a construction of “client”
`as ‘a device operating in the role of a client.’” Id. at 10 (citing Ex. 2021,
`14). Patent Owner argues that “the Court expressly rejected removing the
`word ‘communication’ from its construction of this term.” Id. (citing Ex.
`2021, 14) (emphasis omitted). From this, Patent Owner concludes that
`“‘communication device’ has a special meaning in the context of the
`specification as referring to a ‘client device.’” Id. Further, Patent Owner
`contends a ‘“client device’ in the context of the specification is not merely a
`general-purpose computer.” Id. at 10–11.
`Patent Owner expands on this newly-proposed construction of “client
`device” by equating the term “client device” with “consumer computer” or,
`alternatively, a “consumer communication
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