Filed on behalf of Petitioner by:
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`Michael N. Rader, Reg. No. 52,146
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`Adam R. Wichman, Reg. No. 43,988
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`WOLF, GREENFIELD & SACKS, P.C.
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`600 Atlantic Avenue
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`Boston, MA 02210
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`(617) 646-8000 Phone
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`(617) 646-8646 Fax
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`Paper No. __
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`THE DATA COMPANY TECHNOLOGIES INC.,
`Petitioner,
`
`v.
`
`BRIGHT DATA LTD.,
`Patent Owner.
`_____________
`
`Case No. IPR2022-00135
`Patent No. 10,257,319
`_____________
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`
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`PETITIONER’S REPLY TO PATENT OWNER’S
`PRELIMINARY RESPONSE
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`
`
`
`
`Michael N. Rader, Reg. No. 52,146
`
`Adam R. Wichman, Reg. No. 43,988
`
`WOLF, GREENFIELD & SACKS, P.C.
`
`600 Atlantic Avenue
`
`Boston, MA 02210
`
`(617) 646-8000 Phone
`
`(617) 646-8646 Fax
`
`Paper No. __
`
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`THE DATA COMPANY TECHNOLOGIES INC.,
`Petitioner,
`
`v.
`
`BRIGHT DATA LTD.,
`Patent Owner.
`_____________
`
`Case No. IPR2022-00135
`Patent No. 10,257,319
`_____________
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`
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`PETITIONER’S REPLY TO PATENT OWNER’S
`PRELIMINARY RESPONSE
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`TABLE OF CONTENTS
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`1.
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`Fintiv Factors 5 and 4 Strongly Favor Institution ........................................... 1
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`a.
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`b.
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`Factor 5: Overlap—or Lack Thereof—of Parties ................................. 1
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`Factor 4: Overlap—or Lack Thereof—of Issues .................................. 2
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`2.
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`Fintiv Factors 1-3 Strongly Favor Institution .................................................. 3
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`a.
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`b.
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`Factor 1: Possibility of a Stay ............................................................... 3
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`Factor 2: Proximity of Trial Date and
`Factor 3: Investment by District Court .................................................. 3
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`Fintiv Factor 6 (Merits) Strongly Favors Institution ....................................... 4
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`PO’s Remaining Arguments Are Irrelevant Under Fintiv ............................... 5
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`3.
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`4.
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`- i -
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`TABLE OF AUTHORITIES
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`CASES
`Adobe v. RAH Color Techs.,
`IPR2019-00627, Paper 41 (Sep. 10, 2019) ............................................................. 1
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`Advanced Bionics v. MED-EL,
`IPR2019-01469, Paper 6 (Feb. 13, 2020) ............................................................... 5
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`Apple v. Fintiv,
`IPR2020-00019, Paper 11 (Mar. 20, 2020) ................................................... 1, 3, 5
`Applied Materials v. Ocean Semiconductor,
`IPR2021-01339, Paper 14 (Feb. 9, 2022) ............................................................... 2
`Bose v. Koss,
`IPR2021-00680, Paper 15 (Oct. 13, 2021) ............................................................. 2
`Group III Int’l v. Targus Group Int’l,
`IPR2021-00371, Paper 21 (July 9, 2021) ............................................................... 5
`Kavo Dental Techs. v. Osseo Imaging,
`IPR2020-00659, Paper 10 (June 10, 2020) ............................................................ 1
`Lab. Corp. Am. Holdings v. Ravgen,
`IPR2021-01026, Paper 11 (Dec. 14, 2021) ............................................................ 2
`Mueller Sys. v. Rein Tech.,
`IPR2020-00099, Paper 9 (May 20, 2020) .............................................................. 5
`
`NetNut v. Bright Data
`IPR2021-01492, Paper 12 (Mar. 21, 2022) ............................................................ 3
`STATUTES
`35 U.S.C. § 325(d) ..................................................................................................... 1
`REGULATIONS
`37 C.F.R. § 1.56 ......................................................................................................... 5
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`- ii -
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`Plamondon, which the Petition shows renders every challenged claim
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`unpatentable, is not at issue in any other IPR, and there is no evidence it will be at
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`issue in any jury trial. Accordingly, there is no basis for discretionary denial.
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`Patent Owner (“PO”) elected not to address the Fintiv factors individually.
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`Instead, Patent Owner broadly suggests that the ’319 patent has been challenged
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`too many times, citing Adobe v. RAH Color Techs., IPR2019-00627, Paper 41
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`(Sep. 10, 2019). Adobe, however, did not even address the Fintiv factors—it
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`instituted trial over a patent owner’s objection under Section 325(d). Id., 16-20.
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`There is no bright-line test for the number of proceedings in which a patent
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`can be challenged—particularly here, since PO has sued on the ’319 patent
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`repeatedly. Rather, discretionary denial is evaluated based on the Fintiv factors.
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`1. Fintiv Factors 5 and 4 Strongly Favor Institution
`a.
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`Factor 5: Overlap—or Lack Thereof—of Parties
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`Petitioner reiterates that it is a new startup, incorporated in June 2021, and is
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`an independent company with no involvement in any of the pending litigations
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`concerning the ’319 patent. Patent Owner admits Petitioner is not a defendant and
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`admits it is “not currently aware of any relationship that would result in denial of
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`institution.” POPR (Paper 7), 7. Accordingly, there is no dispute that this factor
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`“strongly weighs against…exercising discretion to deny institution.” Kavo Dental
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`Techs. v. Osseo Imaging, IPR2020-00659, Paper 10, 18 (June 10, 2020).
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`- 1 -
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`
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`b.
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`Factor 4: Overlap—or Lack Thereof—of Issues
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`Patent Owner focuses on the NetNut case (“the 225 case,” Petition, xv). In
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`particular, Patent Owner emphasizes NetNut’s purported inclusion of Plamondon
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`in its invalidity contentions after this Petition was filed—but PO declined to file a
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`copy of those contentions. POPR, 5. This Board has repeatedly found that mere
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`inclusion of a reference in invalidity contentions does not make overlap at trial
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`likely enough to favor discretionary denial. In Bose v. Koss, IPR2021-00680,
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`Paper 15 (Oct. 13, 2021), Koss argued, as Patent Owner does here, that a different
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`party (Apple) had cited Bose’s primary reference in its invalidity contentions, with
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`a district court trial scheduled before the FWD. Id., 17-18. The Board recognized
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`that “Apple’s invalidity theories are subject to narrowing so that Apple may not
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`rely on [the overlapping reference]” at trial—and also noted that, as here, the IPR
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`challenged claims not asserted in the litigation. Id., 18. The Board thus found that
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`Factor 4 “weighs against exercising our discretion to deny institution.” Id. See
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`also Applied Materials v. Ocean Semiconductor, IPR2021-01339, Paper 14, 11-12
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`(Feb. 9, 2022) (Factor 4 weighed against exercising discretion: “Considering that
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`Petitioner is a non-party to the litigation … even if Breka is identified as prior art
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`in the invalidity contentions, there is no evidence that Petitioner has had or will
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`have any control over whether and how Breka will be presented to the jury.”); Lab.
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`Corp. Am. Holdings v. Ravgen, IPR2021-01026, Paper 11, 24 (Dec. 14, 2021)
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`- 2 -
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`(third party’s contentions did not favor denying institution: “The notion that most,
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`much less all, of Natera’s myriad invalidity bases listed in its contentions will be
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`litigated at trial to a verdict and judgment is implausible … the risk of duplicating
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`work or inconsistency between the Board resolving Petitioner’s challenge and the
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`court resolving Natera’s invalidity arguments at trial is indeterminable.”).
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`2. Fintiv Factors 1-3 Strongly Favor Institution
`a.
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`Factor 1: Possibility of a Stay
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`PO does not dispute that this factor is neutral. Petition, 72.
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`b.
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`Factor 2: Proximity of Trial Date and
`Factor 3: Investment by District Court
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`Focusing on the NetNut district court trial currently scheduled for September
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`2022, Patent Owner cites its own Fintiv analysis from an IPR filed by NetNut,
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`IPR2021-01493. POPR, 5. Earlier this week, the Board disagreed with PO’s
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`analysis and instituted a trial in the NetNut IPR. See IPR2021-01492, Paper 12
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`(Mar. 21, 2022). Because the NetNut litigation has not even reached a Markman
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`hearing, this Board should find, as the Board did in the NetNut IPR, that Factor 3
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`“strongly favors not exercising our discretion to deny the Petition.” Id., 12.
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`In the NetNut IPR, the Board found the September 2022 NetNut district
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`court trial “only slightly favors exercising our discretion to deny the Petition.” Id.,
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`11. Here, Petitioner is not a party to the NetNut case, which means Factor 2
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`weighs against discretionary denial. Petition, 72.
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`- 3 -
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`3. Fintiv Factor 6 (Merits) Strongly Favors Institution
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`The district court’s claim constructions define “client” and “server” based on
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`their functions (“device operating in the role of…” a client or server, respectively).
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`Petition, 8-9. The Petition explained that Plamondon’s “appliance 200” operates in
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`the role of a client (hence it is a “client device” per claim 1) and its “client 102”
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`operates in the role of a server (hence it is a “server” per claim 1). Petition, 15-18.
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`PO calls these identifications “arbitrary” but fails to address the devices’
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`functions as outlined in the Petition. E.g., POPR, 35. In essence, PO argues,
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`contrary to the district court’s constructions, that devices should be categorized
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`based on their structures or labels, rather than their functions. PO’s erroneous
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`approach is exemplified by its reversal on its own ’319 patent. PO told the court
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`that “client 102” in Figure 3 in the ’319 patent is a “server.” Ex. 1005, 4
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`(annotated figure). So did PO’s expert. See No. 2:19-cv-395-JRG, D.I. 126-5, 7
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`(“the ‘client 102’ of Figure 3 is an example of the ‘second server’ of the claims”).
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`Now, faced with Plamondon’s “client 102”— directly analogous to the ’319
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`patent’s “client 102”—PO and its expert reversed themselves. POPR, 1, 18 (“both
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`client 102 and agent 122 of the ’319 Patent are client devices”); Ex. 2001 ¶ 44
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`(same). In the NetNut IPR, the Board found that PO had strayed from the district
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`court’s claim constructions. IPR2021-01492, Paper 12, 18-20. The Board should
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`institute this IPR for the same reason it instituted IPR2021-01492.
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`- 4 -
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`4.
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`PO’s Remaining Arguments Are Irrelevant Under Fintiv
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`PO also seeks Fintiv-based denial on the basis that, after filing of the
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`Petition, PO listed Plamondon on an IDS in Reexamination No. 90/014,875.
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`POPR, 5. Under this logic, reexamination would always preclude IPR institution
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`given that 37 C.F.R. § 1.56 requires a patent owner to submit the prior art raised in
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`an IPR. In any event, reexamination is not a Fintiv issue. The Board considers
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`reexamination under the Advanced Bionics framework. Mueller Sys. v. Rein Tech.,
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`IPR2020-00099, Paper 9, 13 (May 20, 2020). Under that framework, merely
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`listing Plamondon on an IDS (in this case, one of 19 IDS’s spanning 123 pages)
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`does not raise a discretionary denial issue. Group III Int’l v. Targus Group Int’l,
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`IPR2021-00371, Paper 21 (July 9, 2021) (Advanced Bionics Step 1 not met where
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`petition relied on prior art in IDS not applied by Examiner to reject claims)
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`Finally, PO urges discretionary denial based on presentation to the jury in
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`the Teso trial of a different prior art reference (Ex. 2006) that was applied to a
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`different patent (Ex. 2002), which received a different claim construction for
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`“client device” (Ex. 1006, 23-24). The Teso trial plainly has no relevance to the
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`Fintiv analysis with respect to Petitioner’s IPR against the ’319 patent, and the
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`POPR cites no authority suggesting it should be considered.
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`
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`Date: March 25, 2022
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`Respectfully submitted,
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`/Michael N. Rader/
`Michael N. Rader, Reg. No. 52,146
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`- 5 -
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`CERTIFICATE OF SERVICE UNDER 37 C.F.R. § 42.6 (E)(4)
`I certify that on March 25, 2022, I will cause a copy of the foregoing
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`document, including any exhibits filed therewith, to be served via electronic mail,
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`as previously consented to by Patent Owner, upon the following:
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`tomd@ruyakcherian.com
`elizabetho@ruyakcherian.com
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`/MacAulay Rush/
`MacAulay Rush
`Paralegal
`WOLF, GREENFIELD & SACKS, P.C.
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`Thomas M. Dunham
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`Elizabeth A. O'Brien
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`Date: March 25, 2022
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