IPR2021-01492, No. 2 Petition - Petition for Inter Partes Review of US Patent No 10,257,319 (P.T.A.B. Sep. 3, 2021)

In the
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`NetNut Ltd.
`Petitioner,
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`v.
`Bright Data Ltd.
`Patent Owner.
`
`Case IPR2021-01492
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`U.S. Patent No. 10,257,319
`
`PETITION FOR INTER PARTES REVIEW
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Oﬃce
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
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`2042-04-319-IPR (US 10,257,319)
`
`Petition for Inter Partes Review
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`Contents
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`1 INTRODUCTION
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`2 STATUTORY PREDICATES
`2.1 Mandatory Notices (37 CFR § 42.8)
`2.1.1 Real Parties-In-Interest .
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`2.1.2 Related Matters .
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`2.1.3 Lead and Backup Counsel
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`2.1.4
`Service Information .
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`2.2 Other
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`3 DISCRETIONARY CONSIDERATIONS
`3.1 Fintiv Factors . . . .
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`3.1.1
`Factor 1—Existence or likelihood of a stay .
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`Factor 2—Proximity of trial date to ﬁnal written decision 11
`3.1.3
`Factor 3—Investment in parallel proceedings .
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`3.1.4
`Factor 4—Overlap in issues raised .
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`3.1.5
`Factor 5—Whether the parties are the same .
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`3.1.6
`Factor 6—Other circumstances including the merits .
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`3.2 General Plastic Factors . .
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`3.2.1
`Factor 1—Prior petition by same petitioner
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`3.2.2
`Factor 2—Petitioner’s prior knowledge of asserted art . 13
`3.2.3
`Factor 3—Petitioner’s prior receipt of preliminary re-
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`2042-04-319-IPR (US 10,257,319)
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`Petition for Inter Partes Review
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`3.2.4
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`3.2.5
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`3.2.6
`3.2.7
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`Factor 4—Elapsed time since the petitioner learned of
`the asserted art
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`Factor 5—Explanation of time elapsed since prior pe-
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`Factor 6—The ﬁnite resources of the Board .
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`Factor 7—The requirement for a ﬁnal written decision
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`4 OVERVIEW OF THE ’319 PATENT
`4.1 Claims . . . . . . . .
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`4.2 Speciﬁcation . . . .
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`4.3 Priority Date
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`5 LEVEL OF SKILL IN THE ART
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`6 CLAIM CONSTRUCTION
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`7 OVERVIEW OF CITED ART
`7.1 Crowds
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`7.2 MorphMix . . . . . .
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`7.3 Border . . . . . . . .
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`7.4 RFCs
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`8 GROUNDS FOR INVALIDITY
`8.1 GROUND 1: ANTICIPATION OF CLAIMS 1, 19, and 21-29
`BY CROWDS . . . .
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`2042-04-319-IPR (US 10,257,319)
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`Petition for Inter Partes Review
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`8.1.1 Claim 1 . . .
`8.1.2 Claims 19, and 28-29 (corresponding recorded media,
`downloading, and device)
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`8.1.3 Claims 21-22 and 24-25 (communications via TCP)
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`8.1.4 Claim 23 (running a browser)
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`8.1.5 Claim 26 (client O/S) .
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`8.1.6 Claim 27 (sequential execution)
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`8.2 GROUND 2: OBVIOUSNESS OF CLAIMS 1-2, 14-15, 17-
`19, and 21-29 OVER CROWDS + RFC 2616 + GENERAL
`KNOWLEDGE . . .
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`8.2.1 Claim 1 . . .
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`8.2.2 Claim 2 (client device identiﬁes itself on startup)
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`8.2.3 Claims 14-15 (validity check)
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`8.2.4 Claims 17-18 (periodically communicating) .
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`8.2.5 Claims 19 and 21-29 .
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`8.3 GROUND 3: ANTICIPATION OF CLAIMS 1, 12, 14, 21-22,
`24-25, AND 27-29 BY BORDER .
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`8.3.1 Claim 1 . . .
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`8.3.2 Claim 12 (storing the received content)
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`8.3.3 Claim 14 (validity check) .
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`8.3.4 Claims 21-22 and 24-25 (communications via TCP)
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`8.3.5 Claim 27 (sequential execution)
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`8.3.6 Claims 28-29 (corresponding recorded media and de-
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`2042-04-319-IPR (US 10,257,319)
`
`Petition for Inter Partes Review
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`8.4 GROUND 4: OBVIOUSNESS OF CLAIMS 1, 12, 14-15, 17-
`19, 21-22, 24-25, and 27-29 OVER BORDER + RFC 2616 +
`GENERAL KNOWLEDGE .
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`8.4.1 Claim 1 . . .
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`8.4.2 Claim 15 (validity check, RFC 2616)
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`8.4.3 Claims 17-18 (periodically communicating) .
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`8.4.4 Claim 19 (downloading software application) .
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`8.4.5 Claims 12, 14, 21-22, 24-25, and 27-29 .
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`8.5 GROUND 5: ANTICIPATION OF CLAIMS 1, 17, 19, and
`21-29 BY MORPHMIX .
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`8.5.1 Claim 1 . . .
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`8.5.2 Claim 17 (periodically communicating) .
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`8.5.3 Claims 19 and 28-29 (corresponding recorded media,
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`8.5.4 Claim 23 (web-page and browser)
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`8.5.5 Claims 21-22 and 24-25 (communications via TCP)
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`8.5.6 Claim 26 (client O/S) .
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`8.5.7 Claim 27 (sequential execution)
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`8.6 GROUND 6: OBVIOUSNESS OF CLAIMS 1-2, 14-15, 17-
`19, 21-29 OVER MORPHMIX + RFC 2616 + GENERAL
`KNOWLEDGE . . .
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`8.6.1 Claim 1 . . .
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`8.6.2 Claim 2 (client device identiﬁes itself at startup)
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`2042-04-319-IPR (US 10,257,319)
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`Petition for Inter Partes Review
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`8.6.4 Claim 18 (periodically communicating; keep-alives)
`8.6.5 Claims 19 and 21-29 .
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`2042-04-319-IPR (US 10,257,319)
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`Petition for Inter Partes Review
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`EXHIBIT LIST
`1001 United States Patent No. 10,257,319 to Shribman et al.
`1002 File History for United States Patent No. 10,257,319
`1003 Petitioners’ Chart of Challenged Claims
`1004 Luminati’s Opposition to Defendants’ Motion to Dismiss, Luminati
`Networks Ltd. v. Teso LT, UAB et al., 2:19-cv-00395-JRG (E.D.
`Tex.)
`1005 Declaration of Keith J. Teruya with curriculum vitae
`1006 Michael Reiter & Aviel Rubin, Crowds: Anonymity for Web Trans-
`actions, ACM Transactions on Information and System Security,
`Vol. 1, No. 1, Nov. 1998, at 66-92
`1007 Declaration of Scott Delman (regarding Crowds)
`1008 Marc Rennhard, MorphMix – A Peer-to-Peer-based System for
`Anonymous Internet Access (2004) (Doctoral Thesis)
`1009 Declaration of Marc Rennhard (regarding MorphMix)
`1010 Declaration of Bernhard Plattner (regarding MorphMix)
`1011 Declaration of Andreas Berz (regarding MorphMix)
`1012 United States Patent No. 6,795,848 to Border et al.
`1013 Fielding, R. et al., “Hypertext Transfer Protocol – HTTP/1.1”, RFC
`2616, June 1999
`1014 Socolofsky, T. and C. Kale, “TCP/IP Tutorial”, RFC 1180, January
`1991
`1015 Postel, J., “Internet Protocol”, STD 5, RFC 791, September 1981
`1016 Braden, R., Ed., “Requirements for Internet Hosts - Communication
`Layers”, STD 3, RFC 1122, October 1989
`1017 Claim Construction Opinion and Order, Luminati Networks Ltd. v.
`Teso LT, UAB et al., 2:19-cv-00395-JRG (E.D. Tex.)
`1018 W3C, Glossary of Terms for Device Independence (Jan. 2005)
`available at https://www.w3.org/TR/di-gloss/#ref-wca-terms
`1019 U.S. Pat. Pub. No. 2009/0037977
`1020 Supplemental Claim Construction Opinion and Order, Luminati Net-
`works Ltd. v. Teso LT, UAB et al., 2:19-cv-00395-JRG (E.D. Tex.)
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`2042-04-319-IPR (US 10,257,319)
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`Petition for Inter Partes Review
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`Exhibit List (Continued)
`1021 Transcript of Pretrial Conference, Luminati Networks Ltd. v. Teso
`LT, UAB et al., 2:19-cv-00395-JRG (E.D. Tex.)
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`- vii -
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`2042-04-319-IPR (US 10,257,319)
`
`Petition for Inter Partes Review
`
`1.
`
`INTRODUCTION
`
`Petitioner NetNut Ltd. (“Petitioner” or “NetNut”) seeks inter partes review
`and cancellation of claims 1-2, 12, 14-15, 17-19, and 21-29 (“Challenged
`Claims”) of U.S. Patent No. 10,257,319, Ex. 1001 (the “’319 patent” or the
`“Patent”). The Petition is supported by the Exhibits listed above, including the
`Expert Declaration of Keith J. Teruya (Ex. 1005).
`The Patent Owner is Bright Data Ltd. (formerly known as Luminati Net-
`works Ltd.). Since 2018, Patent Owner has been suing its competitors in this
`ﬁeld (including Petitioner) on numerous patents stemming from two provi-
`sional applications ﬁled respectively in 2009 (relevant to this case) and 2013.
`Despite pursuing ten district court cases, Patent Owner has avoided most eﬀorts
`to obtain PTAB review.1
`The sum and substance of claim 1 of the ’319 patent is simply the ordinary
`process of retrieving content from a web server through a proxy:
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`second server <—> client (proxy) device <—> web server
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`Patent Owner has asserted that the manner in which the claim language
`labels the device in the middle (above), as a “client” (rather than a “server”)
`deﬁnes a patentably unique “architecture.” However, court constructions have
`rejected the narrow construction of “client” and “server” on which Patent
`Owner would rely to support that argument. Even if one were to accept Patent
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`1 There were two recent exceptions in IPRs, also brought by Petitioner,
`which were instituted on August 12, 2021. See IPR2021-00458, Paper 11;
`IPR2021-00465, Paper 11.
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`Page 1 of 76
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`Petition for Inter Partes Review
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`Owner’s unreasonably narrow constructions, there are numerous examples of
`proxy retrieval scenarios in the prior art that easily meet the claim requirements.
`The ’319 patent was previously challenged, on the same art presented
`herein, in a petition (by another competitor) whose institution was denied, but
`on discretionary grounds. See Code200, UAB et al. v. Luminati Networks
`Ltd., IPR2020-01266, Paper 18 at 2 (generally, the “’1266 IPR”). The present
`Petition arises in a diﬀerent posture, being ﬁled very early in relation to the
`lawsuit against Petitioner, such that this case is likely to result in a ﬁnal written
`decision before the trial in the district court case. That timing, plus the plain
`deﬁciencies of the ’319 patent, strongly favor PTAB review.
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`2. STATUTORY PREDICATES
`
`2.1. Mandatory Notices (37 CFR § 42.8)
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`2.1.1. Real Parties-In-Interest
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`The real party-in-interest is Petitioner NetNut Ltd. (“Petitioner” or “Net-
`Nut”).
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`2.1.2. Related Matters
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`Judicial
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`Matter
`Bright Data Ltd. v. NetNut Ltd., No.
`2:21-cv-00225 (E.D. Tx.)
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`Subject Matter
`Patent Nos.
`10,257,319 and
`10,484,510
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`2042-04-319-IPR (US 10,257,319)
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`Petition for Inter Partes Review
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`Luminati Networks Ltd. v. Teﬁncom SA
`d/b/a NordVPN, No. 2-19-cv-00414 (E.D.
`Tx.)
`
`Luminati Networks Ltd. v. Teso LT, UAB
`a/k/a UAB Teso LT et al., No.
`2-19-cv-00395 (E.D. Tx.)
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`Luminati Networks Ltd. v. BI Science
`(2009) Ltd., No. 2-19-cv-00397 (E.D. Tx.)
`
`Luminati Networks Ltd. f/k/a Hola
`Networks Ltd. v. NetNut Ltd., No.
`2:20-cv-00188 (E.D. Tx.)
`Bright Data Ltd. v. code200, UAB et al.,
`No. 2-19-cv-00396 (E.D. Tx.)
`
`Luminati Networks Ltd. v. BI Science
`(2009) Ltd. a/k/a BIScience Inc., No.
`2-19-cv-00352 (E.D. Tx.)
`Luminati Networks Ltd. v. IP Ninja Ltd.,
`No. 2-19-cv-00196 (E.D. Tx.)
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`Luminati Networks Ltd. v. BIScience Ltd.
`a/k/a BIScience Inc., No. 2-18-cv-00483
`(E.D. Tx.)
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`Patent Nos.
`10,257,319;
`10,469,614;
`10,484,510;
`10,484,511; and
`10,637,968
`Patent Nos.
`10,257,319;
`10,469,614; and
`10,484,510
`Patent Nos.
`10,257,319;
`10,469,614;
`10,484,510; and
`10,484,511
`Patent Nos.
`10,484,511 and
`10,637,968
`Patent Nos.
`10,484,511 and
`10,637,968
`Patent No.
`10,410,244
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`Patent Nos.
`9,241,044 and
`9,742,866
`Patent Nos.
`9,241,044 and
`9,742,866
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`Page 3 of 76
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`2042-04-319-IPR (US 10,257,319)
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`Petition for Inter Partes Review
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`Luminati Networks Ltd. v. UAB Tesonet,
`No. 2-18-cv-00299 (E.D. Tx.)
`
`Luminati Networks Ltd. v. UAB Tesonet,
`No. 2-18-cv-00299 (E.D. Tx.)
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`Luminati Networks Ltd. v. BI Science
`(2009) Ltd., No. 21-1664 (Fed. Cir.)
`Luminati Networks Ltd. v. BI Science
`(2009) Ltd., No. 21-1667 (Fed. Cir.)
`Luminati Networks Ltd. v. BI Science Inc.,
`No. 20-2181 (Fed. Cir.)
`Bright Data Ltd. v. BI Science (2009) Ltd.,
`No. 20-2118 (Fed. Cir.)
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`Patent Nos.
`9,241,044 and
`9,742,866
`Patent Nos.
`9,241,044 and
`9,742,866
`Appeal
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`Appeal
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`Appeal
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`Appeal
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`Administrative—PTAB
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`Matter
`Code200, UAB et al v. Luminati Networks
`Ltd. f/k/a Hola Networks Ltd.,
`IPR2020-01266 (Petition denied)
`NetNut Ltd. v. Bright Data Ltd. f/k/a
`Luminati Networks Ltd., IPR2021-00465
`(Petition instituted)
`NetNut Ltd. v. Bright Data Ltd. f/k/a
`Luminati Networks Ltd., IPR2021-00458
`(Petition instituted)
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`Subject Matter
`Patent No.
`10,257,319
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`Patent No.
`9,742,866
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`Patent No.
`9,241,044
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`Page 4 of 76
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`2042-04-319-IPR (US 10,257,319)
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`Petition for Inter Partes Review
`
`Code200, UAB et al v. Luminati Networks
`Ltd. f/k/a Hola Networks Ltd.,
`IPR2020-01358 (Petition denied)
`Code200, UAB et al v. Luminati Networks
`Ltd. f/k/a Hola Networks Ltd.,
`IPR2020-01506 (Petition denied)
`Code200, UAB et al v. Luminati Networks
`Ltd. f/k/a Hola Networks Ltd.,
`IPR2021-00249 (Petition denied)
`BI Science (2009) Ltd. a/k/a BIScience Inc.
`v. Luminati Networks Ltd., IPR2020-00166
`(Terminated prior to institution decision)
`BI Science (2009) Ltd. a/k/a BIScience Inc.
`v. Luminati Networks Ltd., IPR2020-00167
`(Terminated prior to institution decision)
`Teso LT, UAB f/k/a UAB Tesonet et al v.
`Luminati Networks Ltd. f/k/a Hola
`Networks Ltd., IPR2021-00122 (Petition
`denied)
`
`Patent No.
`10,484,510
`
`Patent No.
`10,469,614
`
`Patent No.
`10,637,968
`
`Patent No.
`9,241,044
`
`Patent No.
`9,742,866
`
`Patent No.
`10,484,511
`
`Administrative—Matters Shown in PAIR
`In the following, the “’624 Family” refers to patents claiming priority to
`provisional application No. 61/249,624 (the provisional of the ’319 patent,
`ﬁled Oct. 8, 2009), while the “’815 Family” refers to patents claiming priority
`to a later provisional application, No. 61/870,815 (ﬁled Aug. 28, 2013).
`
`App. No.
`12/836,059
`14/025,109
`
`Status/Issued As
`U.S. Pat. No. 8,560,604
`U.S. Pat. No. 10,069,936
`
`Related To
`’624 Family
`’624 Family
`
`Page 5 of 76
`
`

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`
`Petition for Inter Partes Review
`
`14/468,836
`14/930,894
`15/663,762
`15/957,942
`15/957,945
`15/957,950
`16/031,636
`16/140,749
`16/140,785
`16/214,433
`16/214,451
`16/214,476
`16/214,496
`16/278,104
`16/278,105
`16/278,106
`16/278,107
`16/278,109
`16/292,363
`16/292,382
`16/292,364
`16/292,374
`16/292,382
`16/365,250
`16/365,315
`16/368,002
`16/368,041
`16/396,695
`16/396,696
`16/524,026
`
`U.S. Pat. No. 9,241,044
`U.S. Pat. No. 9,742,866
`U.S. Pat. No. 10,277,711
`U.S. Pat. No. 10,313,484
`U.S. Pat. No. 10,257,319
`U.S. Pat. No. 10,225,374
`U.S. Pat. No. 10,616,375
`U.S. Pat. No. 10,652,357
`U.S. Pat. No. 10,659,562
`U.S. Pat. No. 10,469,614
`U.S. Pat. No. 10,440,146
`U.S. Pat. No. 10,652,358
`U.S. Pat. No. 10,721,325
`U.S. Pat. No. 10,523,788
`U.S. Pat. No. 10,469,628
`U.S. Pat. No. 10,491,712
`U.S. Pat. No. 10,484,510
`U.S. Pat. No. 10,484,511
`U.S. Pat. No. 10,469,615
`U.S. Pat. No. 10,447,809
`Pending
`Pending
`Pending
`Pending
`Pending
`U.S. Pat. No. 10,582,013
`U.S. Pat. No. 10,582,014
`U.S. Pat. No. 10,637,968
`U.S. Pat. No. 10,637,968
`Pending
`
`’815 Family
`’815 Family
`’815 Family
`’624 Family
`’624 Family
`’624 Family
`’624 Family
`’815 Family
`’815 Family
`’815 Family
`’815 Family
`’815 Family
`’815 Family
`’624 Family
`’624 Family
`’624 Family
`’624 Family
`’624 Family
`’815 Family
`’815 Family
`’815 Family
`’815 Family
`’815 Family
`’815 Family
`’815 Family
`’624 Family
`’624 Family
`’624 Family
`’624 Family
`’815 Family
`
`Page 6 of 76
`
`

`2042-04-319-IPR (US 10,257,319)
`
`Petition for Inter Partes Review
`
`16/566,929
`16/567,496
`16/593,996
`16/593,999
`16/600,504
`16/600,505
`16/600,506
`16/600,507
`16/662,800
`16/662,883
`16/693,306
`16/782,073
`16/782,076
`16/807,661
`16/807,691
`16/865,362
`16/865,364
`16/865,366
`16/910,724
`16/910,863
`16/932,763
`16/932,764
`16/932,766
`16/932,767
`17/019,267
`17/019,268
`17/098,392
`17/146,701
`17/146,625
`17/146,649
`
`Pending
`Pending
`Pending
`Pending
`Pending
`Pending
`Pending
`Pending
`Pending
`Pending
`Pending
`Pending
`Pending
`Pending
`Pending
`Pending
`Pending
`Pending
`Pending
`Pending
`Pending
`Pending
`Pending
`Pending
`Pending
`U.S. Pat. No. 10,931,792
`U.S. Pat. No. 10,958,768
`U.S. Pat. No. 11,044,346
`Pending
`Pending
`
`’815 Family
`’815 Family
`’815 Family
`’815 Family
`’624 Family
`’624 Family
`’624 Family
`’624 Family
`’624 Family
`’815 Family
`’624 Family
`’624 Family
`’624 Family
`’624 Family
`’624 Family
`’815 Family
`’815 Family
`’815 Family
`’624 Family
`’624 Family
`’815 Family
`’815 Family
`’815 Family
`’815 Family
`’624 Family
`’624 Family
`’624 Family
`’624 Family
`’815 Family
`’815 Family
`
`Page 7 of 76
`
`

`2042-04-319-IPR (US 10,257,319)
`
`Petition for Inter Partes Review
`
`17/146,728
`17/194,272
`17/194,273
`17/194,336
`17/194,339
`17/241,111
`17/241,113
`17/241,119
`17/331,980
`17/332,001
`17/332,023
`17/332,077
`17/332,116
`17/332,171
`17/332,220
`17/332,260
`17/332,290
`90/014,624
`90/014,652
`17/395,926
`90/014,816
`90/014,827
`
`Pending
`Pending
`Pending
`Pending
`Pending
`Pending
`Pending
`Pending
`Pending
`Pending
`Pending
`Pending
`Pending
`Pending
`Pending
`Pending
`Pending
`Pending
`Pending
`Pending
`Pending
`Pending
`
`’624 Family
`’815 Family
`’815 Family
`’624 Family
`’624 Family
`’815 Family
`’815 Family
`’815 Family
`’624 Family
`’624 Family
`’624 Family
`’624 Family
`’624 Family
`’624 Family
`’624 Family
`’624 Family
`’624 Family
`’624 Family
`’624 Family
`’624 Family
`’624 Family
`’624 Family
`
`2.1.3. Lead and Backup Counsel
`
`Lead Counsel
`Back-up Counsel
`
`Ronald Abramson, #34,762
`M. Michael Lewis, #50,478
`Ari J. Jaﬀess, #74,558
`
`Page 8 of 76
`
`

`2042-04-319-IPR (US 10,257,319)
`
`Petition for Inter Partes Review
`
`2.1.4. Service Information
`
`Electronic Mail
`
`Postal (and
`hand-delivery)
`mailing address
`Telephone
`Facsimile
`
`(1) ron.abramson@listonabramson.com
`(2) ari.jaﬀess@listonabramson
`(3) michael.lewis@listonabramson.com
`Liston Abramson LLP, 405 Lexington
`Ave, 46th Floor, New York, NY 10174
`
`(212) 257-1630
`(914) 462-4175
`
`Additionally, Petitioner consents to electronic service via e-mail at the e-mail
`addresses noted above.
`
`2.2. Other
`
`The USPTO is authorized to charge any required fees, including the fee as
`set forth in 37 C.F.R. §42.15(a) and any excess claim fees, to Deposit Account
`603258.
`Pursuant to 37 C.F.R. §42.104(a), Petitioner certiﬁes that the ‘319 patent
`is available for inter partes review and that Petitioner is not barred or estopped
`from requesting inter partes review challenging the patent claims on the
`grounds identiﬁed in this Petition.
`
`Page 9 of 76
`
`

`2042-04-319-IPR (US 10,257,319)
`
`Petition for Inter Partes Review
`
`Pursuant to 37 CFR § 42.104(b), Petitioner states that it seeks cancella-
`tion of the claims listed below on the statutory grounds, patents, and printed
`publications stated for each:
`
`2
`
`3
`
`No. Claims
`1
`1, 19, 21-22, and
`24-29
`1-2, 14-15, 17-19,
`21-29
`1, 12, 14, 21-22,
`24-25, and 27-29
`1, 12, 14-15, 17-
`18, 21-22, 24-25,
`and 27-29
`1, 17, 19, 21-29
`1-2, 14-15, 17-19,
`21-29
`
`4
`
`5
`6
`
`Challenge
`§ 102 Crowds
`
`§ 103 Crowds + Knowledge of POSITA +
`RFC 2616
`§ 102 Border
`
`§ 103 Border + Knowledge of POSITA +
`RFC 2616
`
`§ 102 MorphMix
`§ 103 MorphMix + Knowledge of POSITA
`+ RFC 2616 (§ 103)
`
`3. DISCRETIONARY CONSIDERATIONS
`
`Patent Owner sued Petitioner on June 18, 2021 in the Eastern District of
`Texas (“EDTX”), No. 2:2-cv-00225 (the “Related Litigation”) asserting the
`Patent against Petitioner. The Patent was also the subject of a prior IPR by
`another party (IPR2021-01266), in which institution was denied. (There are
`also parallel cases asserting the Patent against other parties.)
`
`Page 10 of 76
`
`

`2042-04-319-IPR (US 10,257,319)
`
`Petition for Inter Partes Review
`
`This Petition is being ﬁled very early in the Related Litigation, before even
`the time for Petitioner to answer the complaint.
`3.1. Fintiv Factors
`
`3.1.1. Factor 1—Existence or likelihood of a stay
`
`This IPR is being ﬁled early in the Related Litigation. Whether the court
`will grant a stay is not known, and so this factor should be considered neutral.
`
`3.1.2. Factor 2—Proximity of trial date to ﬁnal written decision
`
`Because of the early ﬁling of this Petition, a ﬁnal written decision is likely
`before the EDTX case goes to trial. No trial date has been set. This factor
`strongly favors institution.
`
`3.1.3. Factor 3—Investment in parallel proceedings
`
`There have been no substantive proceedings in the Related Litigation,
`which favors institution.
`
`3.1.4. Factor 4—Overlap in issues raised
`
`There have been no invalidity contentions in the Related Litigation and thus
`there is currently no overlap between this IPR and the Related Litigation. Even
`if there is some possibility of overlap, Petitioner submits this sole consideration
`does not warrant non-institution. If the Related Litigation reaches the invalidity
`contentions phase, Petitioner reserves the right include a stipulation in those
`contentions to mitigate any overlap concerns.
`
`Page 11 of 76
`
`

`2042-04-319-IPR (US 10,257,319)
`
`Petition for Inter Partes Review
`
`3.1.5. Factor 5—Whether the parties are the same
`
`The parties in the Related Litigation are the same. However, this proceed-
`ing will likely address the challenged patent before any ruling on the merits in
`the Related Litigation, favoring institution. See Apple Inc. v. Parus Holding,
`Inc., IPR2020-00687, Paper 9 at 21 (this factor can “weigh either in favor of, or
`against, exercising discretion to deny institution, depending on which tribunal
`was likely to address the challenged patent ﬁrst.”).
`
`3.1.6. Factor 6—Other circumstances including the merits
`
`The broad court construction of “client device” (and its likewise ruling out
`any argument that a client device is speciﬁcally not a server) makes it highly
`unlikely that Patent Owner can avoid the art asserted in this Petition, favoring
`institution.
`
`3.2. General Plastic Factors
`
`The Board has recently ruled on General Plastic issues in IPRs 2021-00458
`and -465, involving the same parties, and those decisions provide considerable
`guidance.
`
`3.2.1. Factor 1—Prior petition by same petitioner
`
`Petitioner diﬀers from the prior petitioners in IPR2021-01266, and there
`is no relationship, much less a signiﬁcant relationship, with them. Since
`Petitioner was not involved with the prior IPR challenging the Patent, this
`
`Page 12 of 76
`
`

`2042-04-319-IPR (US 10,257,319)
`
`Petition for Inter Partes Review
`
`factor strongly favors institution. See Valve Corp. v. Elec. Scripting Prods.,
`IPR2019-00062, Paper 11 at 10 (PTAB Apr. 2, 2019) (designated precedential
`May 7, 2019) (“Valve”).
`
`3.2.2. Factor 2—Petitioner’s prior knowledge of asserted art
`
`Petitioner was not even sued on the Patent until a year after IPR2021-01266.
`IPR2021-01266 was ﬁled on July 14, 2020, only shortly after the time
`Petitioner was being sued in an earlier ﬁled EDTX action (No. 2:20-cv-00188),
`on diﬀerent patents. Petitioner was not sued on the Patent until nearly a year
`later (June 11, 2021). There is no reason Petitioner should have investigated
`prior art relative to the Patent prior to Related Litigation.
`This factor therefore has little applicability and thus favors institution.
`
`3.2.3. Factor 3—Petitioner’s prior receipt of preliminary response or
`institution decision
`
`Both the Patent Owner Preliminary Response (“POPR”) and the Board’s
`Order denying institution in IPR2021-01266 were available to Petitioner prior
`to this Petition. However, since neither provided a substantial roadmap as any
`response to the prior art, this factor is at least neutral.
`Patent Owner’s primary assertions in the POPR consisted of Fintiv ar-
`guments and a narrow construction that would limit the term “client device”
`to consumer devices. See IPR2021-01266, Paper 16 at 4-14, 19-25, 40, 43.
`The arguments on the Fintiv factors provide no guidance as to the prior art,
`while the claim construction defense was mooted by the Markman order in
`
`Page 13 of 76
`
`

`2042-04-319-IPR (US 10,257,319)
`
`Petition for Inter Partes Review
`
`another lawsuit on the Patent. See Ex. 1017 at 12 (interpreting “client device”
`broadly to mean a “communication device that is operating in the role of a
`client.”) Hence, the POPR in IPR2021-01266 provides little guidance as to
`technical deﬁciencies in the Petition beyond those hinging on now-mooted
`claim construction arguments.
`More signiﬁcantly, the Board’s basis for denying institution of IPR2021-
`01266 was premised on discretionary factors. See IPR2021-01266, Paper 18
`at 2, 6-11. The decision denying institution thus provides no roadmap for
`adapting any challenges based on prior art, and the grounds asserted in this
`Petition remain substantially the same as in the prior petition. This factor thus
`favors institution, or is at least neutral.
`3.2.4. Factor 4—Elapsed time since the petitioner learned of the asserted
`art
`
`This factor, and factor 5 below, concern the situation where the second
`petition is ﬁled by a party using prior art allegedly newly discovered after
`receiving the Board’s unfavorable decision in the ﬁrst petition. See General
`Plastic at 10.
`In contrast to General Plastic, however, this petition relies upon the same
`art as the Prior petition, favoring institution.
`3.2.5. Factor 5—Explanation of time elapsed since prior petition
`
`Petitioner has proceeded with its own Petition because, since the Prior
`Petition ﬁled by unrelated parties, Petitioner has been separately sued on the
`challenged patent.
`In response to such suit, Petitioner has acted quickly,
`
`Page 14 of 76
`
`

`2042-04-319-IPR (US 10,257,319)
`
`Petition for Inter Partes Review
`
`bringing this IPR within about two months of being sued on the Patent. This
`factor thus favors institution.
`3.2.6. Factor 6—The ﬁnite resources of the Board
`
`Since there are no other cases before the Board challenging the Patent, this
`factor favors institution. See Valve at 15.
`
`3.2.7. Factor 7—The requirement for a ﬁnal written decision within a
`year
`
`There is nothing about this case that should impede the Board in rendering
`a decision within a year after institution, favoring institution.
`
`4. OVERVIEW OF THE ’319 PATENT
`
`The ’319 patent resulted from a Track One procedure. Ex. 1002 at
`358. The only art-based rejection was under § 103, based on Fang et al.,
`US2006/0212542, in view of Zaid et al., US2011/0035503. Id. at 302. The
`applicant traversed by arguing that Fang et al. disclosed fetching content from
`the wrong server (id. at 287-88). The subsequent action was an allowance. Id.
`at 46.
`
`4.1. Claims
`
`The Challenged Claims are listed in Ex. 1003.
`The following ﬁgure schematically represents the data ﬂow corresponding
`to claim 1, and the steps performed by the intermediate device (in the middle
`of the ﬁgure):
`
`Page 15 of 76
`
`

`2042-04-319-IPR (US 10,257,319)
`
`Petition for Inter Partes Review
`
`’319 Patent Claim 1 Data Flow
`
`This is the data ﬂow of a conventional “proxy server”—a device that
`stands in the middle to relay requests and responses to and from an ordinary
`web server.
`The only other aspect of claim 1 is that it refers to the device in the middle
`of this diagram, performing the role of a proxy for purposes of the claim, as
`a “client device,” and to the device (on the left), requesting content through
`the middle device, as a “server.” However, the “client” labelling of the middle
`device follows from the fact that it operates in the role of a client relative
`to the web server (on its right). Likewise, the device on the left can be a
`“server” where it otherwise also has a role as a server. Thus, the claim’s mere
`labelling of devices implies very little. There are no structural or procedural
`claim limitations that require either the left-hand or middle devices to have any
`special features or capabilities, other than the ability of the left-hand device to
`act in the role of a server, and the ability of the middle device to act in the role
`of a client. Prior art exists that provides proxy functionality and satisﬁes these
`minimal additional role requirements.
`
`Page 16 of 76
`
`

`2042-04-319-IPR (US 10,257,319)
`
`Petition for Inter Partes Review
`
`As will be individually addressed, the dependent Challenged Claims merely
`recite additional common steps, for example such as that “TCP/IP” is used, or
`that an HTTP header used in the prior art RFC 2616 standard is used, additional
`features commonly found in proxy devices well known in the art.
`
`4.2. Speciﬁcation
`
`The ’319 patent uses as an example a peer-to-peer swarm of devices,
`provisioned so they can variously act as either “clients” or “servers” (and
`sometimes as both), at various times and under various circumstances.
`In the disclosure, any of a plurality of “communication devices,” running
`a common “acceleration application” 220, can function in diﬀerent roles,
`including as a “client” (device that requests content, for example for the client’s
`web browser) “agent” (device that obtains content an origin web server and/or
`manages its retrieval from peers), or “peer” (device that continues to cache
`content received while the peer acted as a client or agent):
`
`Page 17 of 76
`
`

`2042-04-319-IPR (US 10,257,319)
`
`Petition for Inter Partes Review
`
`Fig. 3 from the ’319 patent
`
`Network 100 shown in Fig. 3 “contains multiple communication devices,”
`and “each communication device may serve as a client, peer, or agent. . . .”
`Ex. 1001, 4:44-53. The ﬁgure shows “peer[s],” a “client,” and an “agent”
`communicating, with the “agent” forming a connection to a server.
`Communication requests generated by applications (e.g., a web browser)
`are intercepted by software running on the same machine. Id. The IP address of
`the content server for the communication request (origin server) is transmitted
`
`Page 18 of 76
`
`

`2042-04-319-IPR (US 10,257,319)
`
`Petition for Inter Partes Review
`
`to the acceleration server, which provides to the content requester a list of
`agents to use for retrieving content from the IP address of the origin server.
`Id., 13:4-15.
`The requesting device then sends a copy of the communication request
`itself (URL) to each of the speciﬁed agents. One or more agents respond with
`a list of peers that have previously seen some or all of the content responsive
`to this request (after checking whether this data is still valid). Id., 13:31-36,
`13:50-61. The client then downloads the data from these peers in parts and
`in parallel. Retrieving the content as previously cached with multiple peers
`potentially speeds up the web transfer and reduces traﬃc with web servers. Id.,
`15:13-52.
`The preferred operation is for requesting clients to obtain as much of the
`desired content as feasible from peer caches. See id.
`However, all requested content still must come from its actual origin. If an
`agent determines that the content request cannot be satisﬁed from peer caches,
`processing reverts to a model, more pertinent to the claimed embodiments, in
`which the agent serves as a retrieval intermediary, as shown in Fig. 3 of the
`’319 patent: in this scenario (i.e., no cache hit among the connected peers),
`the agent makes a request directly to the web server for the content, and after
`the web server sends the data, the agent responds to the requesting client,
`listing itself as the only peer with responsive data, and then, acting as that peer,
`transfers the responsive data to the requesting client upon the latter’s request
`
`Page 19 of 76
`
`

`2042-04-319-IPR (US 10,257,319)
`
`Petition for Inter Partes Review
`
`(id., 14:62-15:11), thus implementing at a high level the characteristic proxy
`server data ﬂow ﬁrst shown above.2
`
`4.3. Priority Date
`
`The ’319 patent claims priority to provisional application 61/249,624 (the
`“2009 Provisional”) ﬁled on October 8, 2009 (“Priority Date”). (The claimed
`priority pre-dates the March 16, 2013 eﬀective date of the First Inventor to File
`provisions of the AIA.)
`
`5. LEVEL OF SKILL IN THE ART
`
`A person of ordinary skill in the art (“POSITA”) in the ﬁeld to which
`the ’319 patent pertains 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. Such a person would be familiar with the underlying
`principles of Web, Internet, or network communication, data transfer, and
`content s

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