IPR2022-00135 of Patent No. 10,257,319
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_________________________
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`
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_________________________
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` THE DATA COMPANY TECHNOLOGIES INC.,
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`Petitioner
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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 IPR2022-00135
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`Patent No. 10,257,319
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`_________________________
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`PATENT OWNER’S PRELIMINARY RESPONSE
`UNDER 37 C.F.R. § 42.107
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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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`IPR2022-00135 of Patent No. 10,257,319
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`TABLE OF CONTENTS
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`I. DISCRETIONARY DENIAL ............................................................................. 3
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`A. FINTIV ANALYSIS ......................................................................................... 4
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`B. GENERAL PLASTIC ANALYSIS ................................................................... 9
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`C. ADVANCED BIONICS ANALYSIS ..............................................................10
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`II. OVERVIEW OF THE ‘319 PATENT ..............................................................12
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`A. THE CHALLENEGED CLAIMS ..................................................................15
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`B. PRIORITY DATE ..........................................................................................15
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`C. PERSON OF ORDINARY SKILL IN THE ART .........................................15
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`D. PETITIONER’S MISCHARACTERIZATION OF THE ‘319 PATENT .....18
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`E. PETITIONER’S MISCHARACTERIZATION OF THE COURT’S CLAIM
`CONSTRUCTION ................................................................................................23
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`III. OVERVIEW OF PLAMONDON .....................................................................26
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`A. MIXING AND MATCHING EMBODIMENTS OF PLAMONDON ..........27
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`B. THE EMBODIMENTS OF SECTION A (FIGS. 1A-C) DO NOT
`DISCLOSE USE OF A “FIRST CLIENT DEVICE” BETWEEN A “SECOND
`SERVER” AND A “WEB SERVER” AS CLAIMED IN THE ‘319 PATENT..31
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`C. THE EMBODIMENTS OF SECTION F (FIGS. 6A-B) DO NOT
`DISCLOSE USE OF A “FIRST CLIENT DEVICE” BETWEEN A “SECOND
`SERVER” AND A “WEB SERVER” AS CLAIMED IN THE ‘319 PATENT..36
`
`D. THE EMBODIMENTS OF SECTION B (FIGS. 2A-B) DO NOT
`DISCLOSE USE OF A “FIRST CLIENT DEVICE” BETWEEN A “SECOND
`SERVER” AND A “WEB SERVER” AS CLAIMED IN THE ‘319 PATENT..38
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`E. THE EMBOIDMENTS OF SECTION E (FIGS. 5A-B) DO NOT
`DISCLOSE USE OF A “FIRST CLIENT DEVICE” BETWEEN A “SECOND
`SERVER” AND A “WEB SERVER” AS CLAIMED IN THE ‘319 PATENT..40
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`F. THE EMBODIMENTS OF SECTION G (FIGS. 7A-B), SECTION H (FIGS.
`8A-B), AND SECTION O (FIGS. 15A-B) DO NOT DISCLOSE USE OF A
`“FIRST CLIENT DEVICE” BETWEEN A “SECOND SERVER” AND A
`“WEB SERVER” AS CLAIMED IN THE ‘319 PATENT .................................41
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`IPR2022-00135 of Patent No. 10,257,319
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`G. THE EMBODIMENTS OF SECTION L (FIGS. 12A-B) AND SECTION N
`(FIGS. 14A-C) DO NOT DISCLOSE USE OF A “FIRST CLIENT DEVICE”
`BETWEEN A “SECOND SERVER” AND A “WEB SERVER” AS CLAIMED
`IN THE ‘319 PATENT .........................................................................................42
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`IV. PLAMONDON DOES NOT DISCLOSE ALL STEPS OF CLAIM 1 OF THE
`‘319 PATENT ..........................................................................................................43
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`A. THE PREAMBLE OF CLAIM 1 ...................................................................44
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`1. A POSA would not understand appliance 200 as the “first client device”
`claimed in the ‘319 Patent .................................................................................44
`
`2. Petitioner takes contradictory positions from the Teso defendants regarding
`appliance 200 .....................................................................................................45
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`3. Petitioner takes contradictory positions from the examiner regarding
`appliance 200 .....................................................................................................46
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`4. Client 102 is not a “second server” in the context of the ‘319 Patent ........47
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`B. STEP 1 OF CLAIM 1 .....................................................................................49
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`C. STEP 2 OF CLAIM 1 .....................................................................................50
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`D. STEP 3 OF CLAIM 1 .....................................................................................54
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`E. STEP 4 OF CLAIM 1 .....................................................................................54
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`V. ALLEGED ANTICIPATION OF DEPENDENT CLAIMS 12-14 AND 21-27
`BY PLAMONDON..................................................................................................59
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`VI. BECAUSE PLAMONDON DOES NOT ANTICIPATE CLAIM 1, AND
`BECAUSE PETITIONER PROVIDES NO OBVIOUSNESS ANALYSIS OF
`CLAIM 1, GROUNDS 2-7 AUTOMATICALLY FAIL ........................................59
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`IPR2022-00135 of Patent No. 10,257,319
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`TABLE OF AUTHORITIES
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`Adobe v. RAH Color Techs., IPR2019-00627, Paper 41 (Sept. 10, 2019) ................ 4
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`Advanced Bionics v. MED-EL, IPR2019-01469, Paper 6 (PTAB Feb. 13, 2020)
`(precedential)(“Advanced Bionics”) .................................................................3, 10
`
`
`Apple Inc. v. Fintiv Inc., IPR2020-00019, Paper 11 (PTAB March 20,
`2020)(precedential)(“Fintiv”) ...................................................................... 3, 8, 10
`
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`General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357,
`Paper 19 (PTAB Sept. 6, 2017)(precedential)(“General Plastic”) ..................3, 10
`
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`Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 114 USPQ2d 1250
`(Fed. Cir. 2015) .....................................................................................................27
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`Koninklijke Philips N.V. v. Google LLC, 2019-1177 (Fed. Cir. Jan. 30, 2020) ........ 9
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`Microsoft Corp. v. Biscotti, Inc., Nos. 2016-2080, -2082, -2083, 2017 WL 6613262
`(Fed. Cir. Dec. 28, 2017) ......................................................................................27
`
`
`Net Moneyin v. Verisign, 545 F.3d 1359 (Fed Cir 2008) ........................................27
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`NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8 (PTAB Sept.
`12, 2018)(precedential)(“NHK”) ............................................................................ 8
`
`
`SCHOTT Gemtron Corp. v. SSW Holding Co., IPR2014-00367, Paper 62 (PTAB
`May 26, 2015) .......................................................................................................16
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`Supercell Oy, v. Gree, Inc., IPR2020-00310, Paper 13 (PTAB June 18, 2020) ........ 8
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`IPR2022-00135 of Patent No. 10,257,319
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`PATENT OWNER’S LIST OF EXHIBITS
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`Declaration of Dr. V. Thomas Rhyne
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`U.S. Patent No. 10,469,614
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`U.S. Patent No. 10,491,712
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`U.S. Patent No. 10,491,713
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`U.S. Patent No. 11,050,852
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`U.S. Patent No. 8,972,602
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`Order (Dkt. 303) in the case of Bright Data Ltd. f/k/a
`Luminati Networks Ltd. v. Teso LT, UAB a/k/a UAB Teso
`LT, et al., Case No. 2:19-cv-00395-JRG (E.D. Tex. Feb.
`12, 2021)
`
`Patent Owner’s Sur-Reply (Dkt. 47) in the case of Bright
`Data Ltd. f/k/a Luminati Networks Ltd. v. Teso LT, UAB
`a/k/a UAB Teso LT, et al., Case No. 2:19-cv-00395-JRG
`(E.D. Tex. May 5, 2020)
`
`Patent Owner’s Reply (Dkt. 145) in the case of Bright Data
`Ltd. f/k/a Luminati Networks Ltd. v. Teso LT, UAB a/k/a
`UAB Teso LT, et al., Case No. 2:19-cv-00395-JRG (E.D.
`Tex. Oct. 20, 2020)
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`
`v
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`
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`EX. 2001
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`EX. 2002
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`EX. 2003
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`EX. 2004
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`EX. 2005
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`EX. 2006
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`EX. 2007
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`EX. 2008
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`EX. 2009
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`IPR2022-00135 of Patent No. 10,257,319
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`Patent Owner Bright Data Ltd. (“Patent Owner” or “Bright Data”)
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`respectfully requests the Board deny institution of the requested inter partes review
`
`(“IPR”) of claims 1-29 (“Challenged Claims”) of U.S. Patent No. 10,257,319 (“the
`
`‘319 Patent”).1, 2
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`Patent Owner primarily relies on the lack of merit in the Petition to argue
`
`that the Board should deny institution for at least five reasons:
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`First, Petitioner mischaracterizes the claimed inventions of the ‘319 Patent.
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`Most notably, both client 102 and agent 122 of the ‘319 Patent are client devices.
`
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`1 In this Patent Owner Preliminary Response (“POPR”), Bright Data is only
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`addressing select issues demonstrating that review should not be instituted. In so
`
`doing, Bright Data is not acquiescing to other issues raised by Petitioner and
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`reserves the right to address all issues and to challenge all points raised by
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`Petitioner in any future response if proceedings are instituted. (See U.S.P.T.O.
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`Trial Practice Guide, November 2019 Update, at 49-52).
`
`2 This POPR is substantially similar to Bright Data’s preliminary response in the
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`related IPR proceeding, IPR2022-00138, involving U.S. Patent No. 10,484,510,
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`which is based upon a continuation of the application that issued as the ‘319
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`Patent.
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`1
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`IPR2022-00135 of Patent No. 10,257,319
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`Second, Petitioner also mischaracterizes the Court’s claim construction of
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`the term “second server” used in the ‘319 Patent. The Court construed “second
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`server” as meaning a “server that is not the client device.” (EX. 1006 at 14).
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`Petitioner seeks and applies a broader construction, removing the requirement that
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`the “second server” must be a server.
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`Third, Petitioner also mischaracterizes the disclosure of at least primary
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`reference U.S. Pub. No. 2008/0228938 (“Plamondon”)(EX. 1010). Most notably,
`
`the appliance 200 of Plamondon is not a client device.
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`Fourth, both parties agree that all steps of claim 1 of the ‘319 Patent are
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`performed by the “first client device.” Appliance 200 of Plamondon does not
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`perform all steps of claim 1 of the ‘319 Patent and therefore, Plamondon cannot
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`anticipate claim 1 of the ‘319 Patent.
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`Fifth, claim 1 is the only independent claim of the ‘319 Patent and, in
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`Ground 1, Petitioner alleges anticipation of claim 1 based on Plamondon. In
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`Grounds 2-7, Petitioner alleges obviousness of dependent claims of the ‘319
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`Patent. However, Petitioner provides no obviousness analysis of the steps of claim
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`1 which are necessarily incorporated into each and every dependent claim that
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`ultimately depends on claim 1. Thus, if Petitioner fails to meet its burden with
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`respect to claim 1, then all Grounds must fail.
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`2
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`IPR2022-00135 of Patent No. 10,257,319
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`I. DISCRETIONARY DENIAL
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`Petitioner raised arguments regarding the Fintiv3 factors (see Paper 2 at 69-
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`72); the General Plastic4 factors (see Paper 2 at 72-74); and the Advanced Bionics5
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`factors (see Paper 2 at 74-77) with respect to discretionary denial, which Patent
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`Owner briefly responds to in this section. Patent Owner respectfully submits its
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`responses are relevant because there are six other proceedings involving the ‘319
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`Patent which only has one independent claim. Patent Owner respectfully submits
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`that it is not an efficient use of the Board’s resources to continuously re-evaluate
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`the validity of the ‘319 Patent. As explained by the Board:
`
`“The Board weighs petitioners’ desires to be heard against the
`interests of patent owners who seek to avoid harassment. See H.R.
`Rep. No. 112–98, pt. 1, at 48 (2011) (explaining that post-grant
`review proceedings “are not to be used as tools for harassment or a
`means to prevent market entry through repeated litigation and
`administrative attacks on the validity of a patent,” and that “[d]oing so
`would frustrate the purpose of the section as providing quick and cost
`effective alternatives to litigation”).”
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`
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`3 Apple Inc. v. Fintiv Inc., IPR2020-00019, Paper 11 (PTAB March 20,
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`2020)(precedential)(“Fintiv”)
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`4 General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357,
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`Paper 19 (PTAB Sept. 6, 2017)(precedential)(“General Plastic”)
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`5 Advanced Bionics v. MED-EL, IPR2019-01469, Paper 6 (PTAB Feb. 13, 2020)
`
`(precedential)(“Advanced Bionics”)
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`3
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`Adobe v. RAH Color Techs., IPR2019-00627, Paper 41, 16-17 (Sept. 10,
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`IPR2022-00135 of Patent No. 10,257,319
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`2019)(cited by Petitioner, Paper 2 at 77).
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`A. FINTIV ANALYSIS
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`There are six other proceedings involving the ‘319 Patent:
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`1. The Teso Litigation6 in which the jury entered a verdict finding claims
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`1 and 26 of the ‘319 Patent were not invalid;
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`2. The Tefincom Litigation7 which is currently awaiting trial;
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`3. The NetNut Litigation8 which is currently awaiting trial;
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`4. The Code200/Teso IPR9 which was denied institution;
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`5. The NetNut IPR10 which is currently awaiting an institution decision;
`
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`6 Bright Data Ltd. f/k/a Luminati Networks Ltd. v. Teso LT, UAB a/k/a UAB Teso
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`LT, et al., Case No. 2:19-cv-00395-JRG (E.D. Tex.)(“Teso Litigation”).
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`7 Bright Data Ltd. f/k/a Luminati Networks Ltd. v. Tefincom SA d/b/a NordVPN,
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`Case No. 2:19-cv-00414-JRG (E.D. Tex.)(“Tefincom Litigation”).
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`8 Bright Data Ltd. v. NetNut Ltd., Case No. 2:21-cv-00225-JRG (E.D.
`
`Tex.)(“NetNut Litigation”).
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`9 Code200, UAB et al., v. Luminati Networks Ltd. f/k/a Hola Networks Ltd.,
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`IPR2020-01266 (PTAB)(“Code200/Teso IPR”).
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`10 NetNut Ltd. v. Bright Data Ltd., IPR2021-01492 (PTAB)(“NetNut IPR”).
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`IPR2022-00135 of Patent No. 10,257,319
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`6. The Teso Reexam11 in which reexamination was ordered.
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`Most notably, in the NetNut Litigation, the defendant NetNut Ltd. identified
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`Plamondon as allegedly anticipating or rendering obvious claims 1, 2, 14, 15, 17,
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`18, and 21-27 in its invalidity contentions served on 12/17/2021. The NetNut
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`Litigation is currently at an advanced stage and has jury trial scheduled for
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`9/12/2022 in the Eastern District of Texas. See, e.g., NetNut Ltd. v. Bright Data
`
`Ltd., IPR2021-01492, Paper 9 at 19-24 (PTAB Dec. 27, 2021)(Patent Owner’s
`
`analysis of certain Fintiv factors in its preliminary response in the NetNut IPR
`
`involving the ‘319 Patent). Therefore, the district court will resolve invalidity
`
`issues involving Plamondon, at least as to independent claim 1, in September 2022;
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`long before a final written decision is due in this proceeding in June 2023.
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`Additionally, on 12/20/2021, Bright Data submitted an information
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`disclosure statement (“IDS”) identifying Plamondon in the pending Teso
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`Reexamination proceeding. Therefore, that examiner will consider the materiality
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`of Plamondon long before a final written decision is due in this proceeding in June
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`2023.
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`Also, in the Teso Litigation, a jury found that the asserted claims of related
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`U.S. Patent No. 10,469,614 were not invalid based on Mithyantha (U.S. Patent No.
`
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`11 Teso LT, UAB v. Bright Data Ltd., Control No. 90/014,875 (“Teso Reexam”).
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`IPR2022-00135 of Patent No. 10,257,319
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`8,972,602)(EX. 2006).12 The claimed methods of both U.S. Patent No. 10,469,614
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`(“the ‘614 Patent”)(EX. 2002)13 and the ‘319 Patent operate within the unique
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`second server ↔ first client device ↔ web server architecture. (EX. 2001 at ¶
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`83). In contrast, Mithyantha discloses the exact same computer ↔ computer ↔
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`computer architecture as Plamondon. (EX. 2001 at ¶ 83 (compare, e.g., EX. 1010,
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`Plamondon, FIG. 1A and EX. 2006, Mithyantha, FIG. 1B)). Neither Mithyantha
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`nor Plamondon disclose the use of “client devices” as claimed in the ‘614 and ‘319
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`Patents. During the Teso trial, the jury found in favor of Bright Data, properly
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`recognizing the differences between a “client device” and “second server”. As will
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`be discussed further below, the Teso defendants did not allege appliance 200 of
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`Plamondon/Mithyantha is a client device, but rather some type of server.14
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`12 The jury also found that the asserted claims of the ‘319 Patent were not invalid
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`based on a different reference.
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`13 There is only one independent claim in U.S. Patent No. 10,469,614. (See EX.
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`2002).
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`14 The Teso defendants alleged that appliance 200 is the “second server” and that
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`appliance 200’ is the “client device.” Teso’s designations were purely arbitrary and
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`failed to distinguish or otherwise explain any differences between appliance 200
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`IPR2022-00135 of Patent No. 10,257,319
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`Petitioner now takes a contradictory position from the Teso defendants with
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`respect to appliance 200. The Board need not expend resources conducting an
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`entire trial in order to conclude that appliance 200 of Plamondon/Mithyantha does
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`not correspond to the “first client device” in claim 1 of the ‘319 Patent.
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`Although Petitioner is not a defendant in any pending district court litigation
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`involving the ‘319 Patent, Petitioner’s ambiguous statement regarding the real-
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`parties-in-interest (“RPIs”) leaves Patent Owner unsure whether Petitioner is or is
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`not in any way related to any defendant in active district court litigation.15 As of
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`the filing of this POPR, Patent Owner is not currently aware of any relationship
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`that would result in denial of institution due to, for example, the time bar under §
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`315(b).
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`Nonetheless, the Board has explained:
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`“Even when a petitioner is unrelated to a defendant, however, if
`the issues are the same as, or substantially similar to, those already or
`about to be litigated, or other circumstances weigh against redoing
`the work of another tribunal, the Board may, nonetheless, exercise
`the authority to deny institution. An unrelated petitioner should,
`therefore, address any other district court or Federal Circuit
`proceedings involving the challenged patent to discuss why
`
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`and appliance 200’. The jury rejected Teso’s arguments characterizing appliances
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`200, 200’.
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`15 Patent Owner intends to further investigate this RPI issue in the event the Board
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`decides to institute this proceeding.
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`IPR2022-00135 of Patent No. 10,257,319
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`addressing the same or substantially the same issues would not be
`duplicative of the prior case even if the petition is brought by a
`different party.”
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`Fintiv at 14 (internal citations omitted)(emphasis added).16 Based on the foregoing,
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`Patent Owner disagrees that “there is no meaningful overlap between this IPR and
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`the EDTX cases” (see Paper 2 at 70) especially given that there is only one
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`independent claim in the ‘319 Patent.
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`Patent Owner further disagrees that the Petition presents a “strong showing
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`on the merits” (see Paper 2 at 72). The Board need not expend resources
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`conducting an entire trial in order to conclude that Plamondon does not anticipate
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`claim 1 of the ‘319 Patent. Petitioner made a strategic decision to allege only
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`16 Additionally, the Board has explained that an objective of the AIA was to
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`provide “an effective and efficient alternative to district court litigation.” (NHK
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`Spring Co. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8 at 20 (PTAB Sept.
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`12, 2018)(precedential)(“NHK”)). “[W]here no such alternative is needed in view
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`of a district court’s just and speedy adjudication of the same issue, there is no need
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`for the Board to unnecessarily duplicate the district court’s efforts at the expense of
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`the Board’s time and resources, which are appropriately and best applied
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`elsewhere.” (Supercell Oy, v. Gree, Inc., IPR2020-00310, Paper 13 at 8-9 (PTAB
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`June 18, 2020)(citing NHK at 20)).
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`IPR2022-00135 of Patent No. 10,257,319
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`anticipation of claim 1. Petitioner did not allege obviousness of claim 1 and the
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`Board cannot institute an IPR on a ground not found in the petition. See
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`Koninklijke Philips N.V. v. Google LLC, 2019-1177 (Fed. Cir. Jan. 30, 2020). Also,
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`Petitioner did not set forth any obviousness analysis of claim 1 in the other
`
`Grounds challenging the dependent claims of the ‘319 Patent. Therefore, if
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`Petitioner is unsuccessful regarding claim 1, then all Grounds must fail.
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`B. GENERAL PLASTIC ANALYSIS
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`
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`Patent Owner is not presently aware of a significant relationship between
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`Petitioner and NetNut, Code200, or Teso.17 However, Petitioner had access to
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`Patent Owner’s preliminary response to the Code200/Teso Petition against the
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`‘319 Patent as of November 2020. Petitioner also had access to various docket
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`entries in the district court litigations involving the ‘319 Patent prior to the filing of
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`the Petition. Patent Owner respectfully submits that Petitioner has received a
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`benefit from having the opportunity to study Bright Data’s arguments regarding the
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`‘319 Patent.
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`17 Patent Owner is mindful of the Board’s guidance regarding application of the
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`General Plastic factors in its institution decisions in IPR2021-00458 and IPR2021-
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`00465.
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`IPR2022-00135 of Patent No. 10,257,319
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`As discussed above with respect to Fintiv as well as General Plastic, Patent
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`Owner is mindful of the finite resources of the Board and respectfully submits that
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`instituting this IPR would not be an efficient use of those resources.
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`C. ADVANCED BIONICS ANALYSIS
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`
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`Petitioner mischaracterizes the Board’s precedent which clearly states:
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`“[p]reviously presented art includes . . . art provided to the Office by an applicant,
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`such as on an [IDS].” Advanced Bionics, Paper 6 at 7–8. When a reference is
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`identified on an IDS during prosecution, that reference qualifies as art that was
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`“previously presented” to the Office under step 1.
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`Petitioner attempts to disqualify the disclosure of U.S. Patent No. 7,865,585
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`(“Samuels”)(EX. 1054) from the Advanced Bionics framework. However,
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`Petitioner makes three relevant admissions.
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`First, Petitioner admits Samuels shares overlapping material with
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`Plamondon, including FIGS. 1A-1E, 2A-2B, 3 and paragraphs [0202]-[0362] of
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`Plamondon. (See Paper 2 at 75).
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`Second, Petitioner admits Samuels was cited on the IDS and initialed by
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`Examiner during prosecution of the ‘319 Patent. (See Paper 2 at 75).
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`IPR2022-00135 of Patent No. 10,257,319
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`Third, Petitioner admits Samuels was applied in related patent applications,
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`Nos. 12/836,05918 and 14/025,10919. (See Paper 2 at 76). These patent applications,
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`as well as the ‘319 Patent, had the same examiner, Minh Chau Nguyen.
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`Petitioner argues that the Petition relies only on the new disclosure of
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`Plamondon, including paragraphs [0363]-[0682]. “Plamondon’s new, non-
`
`overlapping subject matter describes functionality— including the parallel
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`revalidation methods [in FIGS. 6A-6B and paragraphs [0442]-[0453]] described
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`above—that anticipates the steps in challenged claim 1. The Patent Office never
`
`considered this functionality when discussing Samuels.” (Paper 2 at 75).
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`However, Samuels and Plamondon (as well as Mithyantha) disclose the
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`same network architecture, even if additional functionality is disclosed in
`
`Plamondon. The examiner considered (a) the same network architecture and (b) the
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`same, overlapping functionality in Samuels/Plamondon during prosecution of the
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`‘319 Patent. Petitioner does not identify any error by the examiner based on, for
`
`example, the examiner’s interpretation of the network architecture in both Samuels
`
`and Plamondon. As will be discussed further below, the examiner did not
`
`understand appliance 200 of Samuels/Plamondon to be a client device, but rather a
`
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`18 Issued as U.S. Patent No. 8,560,604
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`19 Issued as U.S. Patent No. 10,069,936
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`11
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`IPR2022-00135 of Patent No. 10,257,319
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`type of server. Petitioner now takes a contradictory position from the examiner, as
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`well as the Teso defendants, with respect to appliance 200. The Board need not
`
`expend resources conducting an entire trial in order to conclude that appliance 200
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`of Samuels/Plamondon/Mithyantha does not correspond to the “first client device”
`
`in claim 1 of the ‘319 Patent.
`
`As explained herein, the computer ↔ computer ↔ computer architecture
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`disclosed in Samuels/Plamondon/Mithyantha is different from the novel and
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`unique second server ↔ first client device ↔ web server architecture disclosed
`
`in the ‘319 Patent.
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`II. OVERVIEW OF THE ‘319 PATENT
`
`
`
`The ‘319 Patent describes a novel “system designed for increasing network
`
`communication speed for users …” (EX. 1001 at Abstract). To achieve the
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`advantages described in the specification, the ‘319 Patent claims methods utilizing
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`a novel “second server ↔ first client device ↔ web server” architecture, whereby
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`a “first client device” serves as a proxy between the “second server” and “web
`
`server.”
`
`A problem in the art was the fact that certain websites with public information
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`nevertheless create technological roadblocks to obtaining that information from
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`certain requesting devices. For example, companies often make many thousands of
`
`requests or more when they are trying to maintain current data from other company
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`IPR2022-00135 of Patent No. 10,257,319
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`websites, such as a travel website searching airlines for up-to-the-minute ticket
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`prices, and those requests will be blocked if the target web server identifies the user
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`as a competitor, which often occurs when they come from a commercial IP address
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`and/or if too many requests are made from the same IP address.
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`To overcome these challenges, the proxy service of the claims sends requests
`
`through one or more of a large group of proxy “client devices,” such as individual
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`cell phone devices configured with software to function as proxies. As the proxy
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`devices belong to real people who otherwise send such requests to target web servers
`
`as customers, the targets will allow the queries and not artificially block them.
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`The ‘319 Patent explains that previous “proxy servers” fail to provide a
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`“comprehensive solution for Internet surfing,” in part because they “would need to
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`be deployed at every point around the world where the Internet is being consumed.”
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`(EX. 1001 at 2:24-27; see also 2:8-23). Instead, to create a new type of consumer-
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`based network that never existed before, the ‘319 Patent employs “client devices”
`
`that operate as proxies. (Id. at 3:13-55).
`
`Claim 1 of the ‘319 Patent recites a method for use over the unique second
`
`server ↔ first client device ↔ web server architecture recited in the claim:
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`“1. 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
`
`
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`IPR2022-00135 of Patent No. 10,257,319
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`by a first content identifier, and for use with a second server, the method by the
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`first client device comprising:
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`receiving, from the second server, the first content identifier;
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`sending, to the first server over the Internet, a Hypertext Transfer Protocol
`
`(HTTP) request that comprises the first content identifier;
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`receiving, the first content from the first server over the Internet in response
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`to the sending of the first content identifier; and
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`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 at 19:16-32 (emphasis added)).
`
`It is clear from Claim 1 that the method is performed “by the first client
`
`device” which is a communication device. (See EX. 1006 at 12). The
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`communication device can serve as a proxy in requesting content using the “second
`
`server ↔ first client device ↔ web server” architecture shown below:
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`(EX. 2001 at ¶ 38). The unique arrangement of the devices recited in the claims,
`
`together with the specific steps that are recited, serve to differentiate the Challenged
`
`Claims from prior art systems and to achieve the advantages of the inventions.
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`A. THE CHALLENEGED CLAIMS
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`
`
`The ‘319 Patent contains 29 claims, with only claim 1 being independent. In
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`this proceeding, Petitioner challenges claims 1-29 of the ‘319 Patent. (Paper 2 at
`
`2).
`
`
`
`B. PRIORITY DATE
`
`The ‘319 Patent claims priority back through earlier continuation and
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`divisional applications to provisional application number 61/249,624 filed October
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`8, 2009. Petitioner has not contested this priority date. (See, e.g., Paper 2 at 8).
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`C. PERSON OF ORDINARY SKILL IN THE ART
`
`
`
`Patent Owner respectfully submits a person of ordinary skill in the art
`
`(“POSA”) is someone who, as of 10/8/2009, “had 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.” (EX. 2001 at ¶ 21). Petitioner has
`
`adopted this POSA definition for purposes of this IPR. (Paper 2 at 7).
`
`Patent Owner relies on the expert declaration of Dr. Rhyne in this
`
`proceeding who satisfied the qualifications of a POSA as of 10/8/2009. Dr. Rhyne
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`was also designated and recognized by the Court as a qualified expert in the Teso
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`Litigation involving the ‘319 Patent. (EX. 2001 at ¶ 4).
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`IPR2022-00135 of Patent No. 10,257,319
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`Petitioner relies on the expert declaration of Dr. Levin in this proceeding.
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`Patent Owner respectfully submits that Petitioner has not affirmatively established
`
`that its expert, Dr. Levin, satisfied the qualifications of a POSA as of 10/8/2009.20
`
`In his declaration, Dr. Levin simply stated that “I have worked with many people
`
`who fit the characteristics of the POSA, and I am familiar with their level of skill
`
`in and around October 2009. When developing the opinions set forth in this
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`declaration, I assumed the perspective of a person having ordinary skill in the art,
`
`as set forth above.” (EX. 1003 at ¶ 35). Because Petitioner did not establish that
`
`Dr. Levin satisfied the qualifications of a POSA as of 10/8/2009, the expert
`
`declaration should be given less weight. See SCHOTT Gemtron Corp. v. SSW
`
`Holding Co., IPR2014-00367, Paper 62 at 11-13 (PTAB May 26, 2015)
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`(“Petitioner’s witness … does not qualify as a person of ordinary skill” and
`
`
`20 Dr. Levin does not have a Master’s degree and did not obtain his Ph.D. until
`
`2010. (EX. 1004 at 1). Under the alternative POSA definition, Dr. Levin obtained
`
`his B.S. in Computer Science in 2002 (EX. 1004 at 1), but Petitioner has not
`
`established Dr. Levin also had two or more years of experience in Internet
`
`Communications. Between 2002 and 2009, Dr. Levin was employed as a Software
`
`Engineer and had three summer internships. (EX. 1004 at 13).
`
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`IPR2022-00135 of Patent No. 10,257,319
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`accordingly “we accord the testimony ... regarding the alleged obviousness of the
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`claims less weight.”).
`
`Additionally, Dr. Levin’s analysis appears to be biased by hindsight. Dr.
`
`Levin seems to use hindsight in an attempt to line up the components of
`
`Plamondon with the claim language. For example, Petitioner, relying on Dr. Levin,
`
`“arbitrarily calls client 102 a server.” (EX. 2001 at ¶ 64)(emphasis added). It is
`
`improper to use hindsight to recharacterize the components of Plamondon, contrary
`
`to the way a POSA would understand the components of Plamondon.
`
`Also, Dr. Levin takes inconsistent positions on Grounds 5 and 6 with respect
`
`to claim 2, revealing his hindsight bias. For example, in Ground 5 (Plamondon +
`
`IEEE 802.11), Dr. Levin relies on IEEE 802.11 in his obviousness analysis to
`
`allege (a) appliance 200 is identified by a MAC address and (b) a first message to
`
`client 102 comprises the MAC address. (Paper 2 at 44-45; see also EX. 1003 at ¶¶
`
`380-384). In Ground 6 (Plamondon + Price), Dr. Levin makes the conclusory
`
`statement that:
`
`“All application messages sent on a WiFi or Ethernet link would
`include the source MAC address. This provides a first message from
`appliance 200 to client 102a, comprising the appliance 200 MAC
`address as the source in a packet header, as part of the start-up of
`appliance 200, as claimed.”
`
`(EX. 1003 at ¶ 412). Ground 6 does not rely on IEEE 802.11 as an obviousness
`
`reference. Dr. Levin thus has no basis to allege (a) appliance 200 is identified by a
`
`
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`IPR2022-00135 of Patent No. 10,257,319
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`MAC address or (b) a first message to client 102 comprises the MAC address in
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`Ground 6. Dr. Levin’s hindsight bias in Ground 6 is objectively shown based on
`
`his earlier reliance on IEEE 802.11 in Ground 5.
`
`D. PETITIONER’S MISCHARACTERIZATION OF THE ‘319
`PATENT
`
`
`
`In Fig. 3 of the ‘319 Patent, a POSA would understand that both client 102
`
`and agent 122 of the ‘319 Patent are client devices. (E.g., EX. 2001 at ¶ 44). To the
`
`contrary, Petitioner alleges that client 102