UNITED STATES PATENT AND TRADEMARK OFFICE
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`_________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_________________________
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` 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 NOTICE OF APPEAL
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`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`_________________________
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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 NOTICE OF APPEAL
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`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`
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`IPR2022-00135 of Patent No. 10,257,319
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`Pursuant to 35 U.S.C. §§ 141, 142, and 319, and 37 C.F.R. §§ 90.2 and 90.3,
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`notice is hereby given that Patent Owner Bright Data Ltd. appeals to the U.S. Court
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`of Appeals for the Federal Circuit from the Final Written Decision (Paper 49) entered
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`on May 25, 2023 in IPR2022-00135, and from all underlying orders, decisions,
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`ruling, and opinions that are adverse to Patent Owner.1 The public version of the
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`Final Written Decision (Paper 51) entered on May 31, 2023 is attached to this Notice
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`as Exhibit A.
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`1 Patent Owner is simultaneously filing a Notice of Appeal in each of IPR2022-
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`00135, IPR2022-00138, IPR2022-00103, and IPR2022-00353, all which involve
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`related patents having the same specification and the same disputed claim terms.
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`There are also similar claim construction issues in pending administrative matters:
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`IPR2021-01492, IPR2021-01493, IPR2022-00915, IPR2022-00916, and IPR2022-
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`00687; as well as Reexamination Control Nos. 90/014,652, 90/014,816, 90/014,624,
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`and 90/014,827; all which involve related patents having the same specification.
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`There are also similar claim construction issues in stayed Reexamination Control
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`Nos. 90/014,875 and 90/014,876, as well as stayed district court matters: Case Nos.
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`2:19-cv-395, 2:19-cv-396, and 2:19-cv-414 in the Eastern District Court of Texas.
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`IPR2022-00135 of Patent No. 10,257,319
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`In accordance with 37 C.F.R. § 90.2(a)(3)(ii), Patent Owner intends to appeal
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`at least the following issues:
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`i. Whether the Board’s construction of the claim term “client device” was
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`incorrect and/or not reasonable in light of the evidence of record;
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`ii. Whether the Board’s construction of the claim term “second server”
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`was incorrect and/or not reasonable in light of the evidence of record;
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`iii. Whether the Board erred in determining that Petitioner established by
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`a preponderance of the evidence that claims 1, 12-14, and 21-27 of U.S.
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`Patent No. 10,257,319 (“the ‘319 Patent”) are unpatentable as
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`anticipated by Plamondon2;
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`iv. Whether the Board erred in determining that Petitioner established by
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`a preponderance of the evidence that claims 28 and 29 of the ‘319
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`Patent are unpatentable as obvious over Plamondon;
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`v. Whether the Board erred in determining that Petitioner established by
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`a preponderance of the evidence that claims 15-17 of the ‘319 Patent
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`are unpatentable as obvious over the combination of Plamondon and
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`2 Plamondon, U.S. Patent Application Publication US 2008/0228938 A1, published
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`September 18, 2008 (Ex. 1010).
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`RFC 26163;
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`IPR2022-00135 of Patent No. 10,257,319
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`vi. Whether the Board erred in determining that Petitioner established by
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`a preponderance of the evidence that claims 17-18 of the ‘319 Patent
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`are unpatentable as obvious over the combination of Plamondon and
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`RFC 11224;
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`vii. Whether the Board erred in determining that Petitioner established by
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`a preponderance of the evidence that claim 2 of the ‘319 Patent is
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`unpatentable as obvious over the combination of Plamondon and IEEE
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`802.11-20075;
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`3 RFC 2616, Hypertext Transfer Protocol—HTTP/1.1, Network Working Group,
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`The Internet Society, 1999 (Ex. 1018).
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`4 RFC 1122, Requirements for Internet Hosts - Communication Layers, Network
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`Working Group, Internet Engineering Task Force, 1989 (Ex. 1014).
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`5
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`IEEE 802.11-2007,
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`IEEE Standard
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`for
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`Information Technology –
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`Telecommunications and Information Exchange Between Systems - Local and
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`Metropolitan Area Networks-Specific Requirements – Part 11: Wireless LAN
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`Medium Access Control (MAC) and Physical Layer (PHY) Specifications, IEEE
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`Standards, June 12, 2007 (Ex. 1022).
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`IPR2022-00135 of Patent No. 10,257,319
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`viii. Whether the Board erred in determining that Petitioner established by
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`a preponderance of the evidence that claims 2-5 and 19-20 of the ‘319
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`Patent are unpatentable as obvious over the combination of Plamondon
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`and Price6;
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`ix. Whether the Board erred in determining that a person of ordinary skill
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`in the art would combine Plamondon with Price;
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`x. Whether the Board erred in determining that Petitioner established by
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`a preponderance of the evidence that claims 6-11 of the ‘319 Patent are
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`unpatentable as obvious over the combination of Plamondon and
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`Kozat7;
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`xi. Whether the Board erred in determining that a person of ordinary skill
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`in the art would combine Plamondon with Kozat; and
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`xii. Whether the Board erred in any further findings or determinations
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`supporting or relating to the issues above, including the Board’s
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`6 Price, U. S. Patent Application Publication US 2006/0026304 A1, published
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`February 2, 2006 (Ex. 1023).
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`7 Kozat, U. S. Patent Application Publication US 2009/0055471 A1, published
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`February 26, 2009 (Ex. 1024).
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`IPR2022-00135 of Patent No. 10,257,319
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`consideration of
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`the expert
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`testimony, prior art, secondary
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`considerations of non-obviousness, and other evidence in the record.
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`Pursuant to 37 C.F.R. § 90.3, this Notice is timely, having been duly filed
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`within 63 days after the date of the Final Written Decision.
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`A complete and entire copy of this Notice is being filed simultaneously with
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`each of the Patent Trial and Appeal Board and the Clerk’s Office for the U.S. Court
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`of Appeals for the Federal Circuit, along with the required fee. A complete and entire
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`copy of this Notice is being served simultaneously on each of the Director of the
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`U.S. Patent and Trademark Office and the petitioner.
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`No fees are believed to be due to the U.S. Patent and Trademark Office in
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`connection with this filing, but authorization is hereby given for any requisite fees
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`to be charged to Deposit Account No. 603803 (Customer No. 144371).
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`Respectfully submitted,
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`By: /s/ Thomas M. Dunham
`Thomas M. Dunham
`Reg. No. 39,965
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`Date: July 7, 2023
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`Cherian LLP
`1901 L Street NW, Suite 700
`Washington, D.C. 20036
`(202) 838-1567
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`ATTORNEY FOR PATENT OWNER,
`BRIGHT DATA LTD.
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`IPR2022-00135 of Patent No. 10,257,319
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`CERTIFICATE OF FILING AND SERVICE
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`The undersigned hereby certifies a complete and entire copy of this paper
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`was served on the undersigned date by hand on the Director of the USPTO at the
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`following address:
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`Office of the General Counsel
`United States Patent and Trademark Office
`Madison Building East, Room 10B20
`600 Dulany Street
`Alexandria, VA 22314
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`
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`The undersigned hereby certifies a complete and entire copy of this paper
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`was filed on the undersigned date with the Clerk’s Office for the United States
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`Court of Appeals for the Federal Circuit and that the required docket fee was paid
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`electronically through the Court’s CM/ECF system.
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`The undersigned hereby certifies a complete and entire copy of this paper
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`was served on the undersigned date via email, as authorized by Petitioner, at the
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`following email addresses:
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`MRader-PTAB@wolfgreenfield.com
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`AWichman-PTAB@wolfgreenfield.com
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`GNieberg-PTAB@wolfgreenfield.com
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`Marie.McKiernan@wolfgreenfield.com
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`IPR2022-00135 of Patent No. 10,257,319
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`Date: July 7, 2023
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`Respectfully submitted,
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`By: /s/ Thomas M. Dunham
`Thomas M. Dunham
`Reg. No. 39,965
`
`Cherian LLP
`1901 L Street NW, Suite 700
`Washington, D.C. 20036
`(202) 838-1567
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`ATTORNEY FOR PATENT OWNER,
`BRIGHT DATA LTD.
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`EXHIBIT A
`EXHIBIT A
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`
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`PUBLIC VERSION
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`Paper 51
`Trials@uspto.gov
`Date: May 31, 2023
`Tel: 571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`THE DATA COMPANY TECHNOLOGIES INC.,
`Petitioner,
`v.
`BRIGHT DATA LTD.,
`Patent Owner.
`
`IPR2022-00135
`Patent 10,257,319 B2
`
`
`
`Before THOMAS L. GIANNETTI, SHEILA F. McSHANE, and
`RUSSELL E. CASS, Administrative Patent Judges.
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`CASS, Administrative Patent Judge.
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`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`Granting Motions to Seal
`Granting Motion to Exclude
`35 U.S.C. § 318(a); 37 C.F.R. § 42.14; 37 C.F.R. § 42.64
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`IPR2022-00135
`Patent 10,257,319 B2
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`
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`I. INTRODUCTION
`
`A. Background
`In this inter partes review, The Data Company Technologies Inc.
`(“Petitioner”) challenges the patentability of claims 1–29 (the “challenged
`claims”) of U.S. Patent No. 10,257,319 B2 (Ex. 1001, “the ’319 patent”),
`which is assigned to Bright Data Ltd. (“Patent Owner”).
`We have jurisdiction under 35 U.S.C. § 6. This Final Written
`Decision, issued pursuant to 35 U.S.C. § 318(a), addresses issues and
`arguments raised during the trial in this inter partes review. For the reasons
`discussed below, Petitioner has proven by a preponderance of the evidence
`that claims 1–29 are unpatentable.
`B. Procedural History
`In this proceeding, Petitioner relies upon the following references:
`1. Plamondon, U.S. Patent Application Publication US
`2008/0228938 A1, published September 18, 2008 (Ex. 1010).
`2. RFC 2616, Hypertext Transfer Protocol—HTTP/1.1,
`Network Working Group, The Internet Society, 1999
`(Ex. 1018).
`3. RFC 1122, Requirements for Internet Hosts–
`Communication Layers, Network Working Group, Internet
`Engineering Task Force, 1989 (Ex. 1014).
`4. IEEE 802.11-2007, IEEE Standard for Information
`Technology–Telecommunications and Information Exchange
`Between Systems - Local and Metropolitan Area Networks–
`Specific Requirements–Part 11: Wireless LAN Medium Access
`Control (MAC) and Physical Layer (PHY) Specifications, IEEE
`Standards, June 12, 2007 (Ex. 1022).
`5. Price, U. S. Patent Application Publication US
`2006/0026304 A1, published February 2, 2006 (Ex. 1023).
`6. Kozat, U. S. Patent Application Publication US
`2009/0055471 A1, published February 26, 2009 (Ex. 1024).
`2
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`IPR2022-00135
`Patent 10,257,319 B2
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`Petition (“Pet.”) vii, 2.
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`Petitioner submitted a declaration from Prof. David Levin (Ex. 1003,
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`“Levin Decl.”). Patent Owner submitted a Declaration of Dr. V. Thomas
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`Rhyne with the Preliminary Response (Ex. 2001, “Rhyne Decl.”’), and
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`submitted a declaration from Dr. Tim A. Williams with the Patent Owner
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`Response (Ex. 2044, “Wiliams Decl.”).
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`Petitioner challenges the Patentability of claims 1—29 on the following
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`grounds:
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`
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`Pet. 2. Patent Ownerfiled a Preliminary Response. Paper 7 (“Prelim.
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`Resp.”). With our permission, Petitioner filed a Reply to the Prelimmary
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`! The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 287-88 (2011), amended 35 U.S.C. §§ 102 and 103, effective
`March 16, 2013. Because the ?319 patent claimspriority to a provisional
`application that wasfiled before this date, we apply the pre-AIA versions of
`§§ 102 and 103. See Ex. 1001, code (60).
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`Patent 10,257,319 B2
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`Response (Paper 8), and Patent Owner filed a Sur-reply to Petitioner’s Reply
`(Paper 9).
`During the trial, Patent Owner filed a Response (Paper 16, “PO
`Resp.”), Petitioner filed a Reply (Paper 23, “Pet. Reply”), and Patent Owner
`filed a Sur-reply (Paper 29, “PO Sur-reply”).
`An oral hearing was held on March 1, 2023, a transcript of which
`appears in the record. Paper 48 (“Tr.”).
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`C. Real Parties-in-Interest
`Petitioner identifies itself as the only real party-in-interest. Pet. xiv.
`Without conceding that they are real parties in interest, Petitioner also
`identifies Avantis Team Technologies Ltd. and Cytronix Ltd. Id.
`Patent Owner identifies Bright Data Ltd. as the only real party-in-
`interest. Paper 4, 1.
`D. Related Matters
`The parties identify several district court proceedings involving the
`’319 patent and its child, U.S. Patent No. 10,484,510 (“the ’510 patent”), 2
`including Bright Data Ltd. v. NetNut Ltd., No. 2:21-cv-225 (E.D. Tex.) (the
`“NetNut Litigation”); and Luminati Networks Ltd. v. Teso LT, UAB, et al.,
`No. 2:19-cv-395 (E.D. Tex.) (the “Teso Litigation”). Pet. xv; Paper 4, 1–2.
`The ’319 patent is or was previously before the Board in IPR2020-
`01266 (institution denied), IPR2021-01492 (pending), IPR2022-00861
`(joined with IPR2021-01492), IPR2022-00915 (pending), IPR2022-01109
`(terminated) and IPR2023-00038 (terminated). Pet. xiv–xv; Paper 5, 1;
`
`
`2 The ’510 patent is based on a continuation of the application for the ’319
`patent. Ex. 1025, code (60).
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`4
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`IPR2022-00135
`Patent 10,257,319 B2
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`Paper 39, 3. The ’510 patent is or was involved in IPR2020-01358
`(institution denied), IPR2021-01493 (pending), IPR2021-00862 (joined with
`IPR2021-01493), IPR2022-00916 (pending), IPR2022-01110 (terminated),
`and IPR2023-00039 (terminated). Paper 5, 1–2; Paper 39, 3–4.
`In addition, Patent Owner identifies two ex parte reexaminations,
`Control Nos. 90/014,875 and 90/014,876, that have been ordered for the
`’319 and ’510 patents, respectively. Paper 5, 2. Those reexaminations have
`since been stayed by the Board. See IPR2021-01492, Paper 14 (Apr. 7,
`2022); IPR2021-01493, Paper 13 (Apr. 7, 2022).
`E. The ’319 Patent
`The ’319 patent is titled “System Providing Faster and More Efficient
`Data Communication.” Ex. 1001, (54). According to the ’319 patent, there
`is a “need for a new method of data transfer that is fast for the consumer,
`cheap for the content distributor and does not require infrastructure
`investment for ISPs.” Id. at 1:54–56. The patent states that other “attempts
`at making the Internet faster for the consumer and cheaper for the
`broadcaster,” such as proxy servers and peer-to-peer file sharing, have
`various shortcomings. Id. at 1:58–59; 2:24–2:32; 2:59–3:3.
`The ’319 patent describes a system and method “for faster and more
`efficient data communication within a communication network,” such as in
`the network illustrated in Figure 3, reproduced below (id. at 4:41–44):
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`Figure 3 is a schematic diagram depicting communication network 100
`including a number of communication devices. Id. at 4:43–45. Due to the
`functionality provided by software stored within each communication
`device, “each device may serve as a client, peer, or agent, depending upon
`requirements of the network 100.” Id. at 4:46–50.
`Client 102 is capable of communicating with peers 112, 114, and 116,
`as well as with one or more agents 122. Id. at 4:56–58. Web server 152
`may be “a typical HTTP server, such as those being used to deliver content
`on any of the many such servers on the Internet.” Id. at 4:63–67.
`Acceleration server 162 includes an acceleration server storage device 164
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`with an acceleration server database, which “stores Internet Protocol (IP)
`addresses of communication devices within the communication network 100
`having acceleration software stored therein.” Id. at 5:8–15.
`In operation, a client may request a resource on the network, for
`example, through the use of an Internet browser. See id. at 12:62–13:3. If
`server 152 is the target of the request, the client sends the IP address of
`server 152 to acceleration server 162. Id. at 13:8–15. Acceleration server
`162 then prepares a list of agents that can handle the request, which includes
`communication devices “that are currently online, and whose IP address is
`numerically close to the IP of the destination Web server 152.” Id. at 13:19–
`29. The client then sends the original request to the agents in the list to find
`out which “is best suited to be the one agent that will assist with this
`request.” Id. at 13:31–36.
`Each agent responds to the client with information which “can help
`the client to download the requested information from peers in the network.”
`Id. at 13:53–57. “Specifically, each agent responds with whether the agent
`has seen a previous request for this resource that has been fulfilled. In such
`a case, the agent may then provide the client with the list of peers and
`checksums of the chunks that each of them have.” Id. at 13:57–61.
`The client selects an agent based on a number of factors, and the
`selected agent determines whether data stored in its memory or the memory
`of the peers “still mirrors the information that would have been received
`from the server itself for this request.” Id. at 13:62–14:1, 14:35–38. If the
`selected agent does not have the necessary information to service a request,
`it may “load the information directly from the server in order to be able to
`provide an answer to the requesting client.” Id. at 14:62–67.
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`IPR2022-00135
`Patent 10,257,319 B2
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`F. Illustrative Claim
`The ’319 patent has 29 claims. As noted, all claims are challenged in
`the Petition. Pet. 1. Claim 1, the only independent claim in the ’319 patent,
`is illustrative of the claimed subject matter and is reproduced below:3
`1. [1P1] A method
`[1P2] 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,
`[1P3] the first server stores a first content identified by a
`first content identifier, and
`[1P4] for use with a second server, the method by the
`first client device comprising:
`[1B] receiving, from the second server, the first content
`identifier;
`[1C] sending, to the first server over the Internet, a
`Hypertext Transfer Protocol (HTTP) request that comprises the
`first content identifier;
`[1D] receiving, the first content from the first server over
`the Internet in response to the sending of the first content
`identifier; and
`[1E] sending, the first content by the first client device to
`the second server, in response to the receiving of the first
`content identifier.
`Ex. 1001, 19:16–32.
`
`II. ANALYSIS OF THE CHALLENGED CLAIMS
`A. The Parties’ Arguments
`In our Decision on Institution, we concluded that the arguments and
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`evidence advanced by Petitioner demonstrated a reasonable likelihood that at
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`3 References in brackets provided by Petitioner have been added and spacing
`has been altered.
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`Patent 10,257,319 B2
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`least one claim of the ’319 patent would have been anticipated or obvious.
`Inst. Dec. 17–34. Here, we must consider whether Petitioner has established
`by a preponderance of the evidence that claims 1–29 of the ’319 patent
`would have been anticipated or obvious. 35 U.S.C. § 316(e). We previously
`instructed Patent Owner that “Patent Owner is cautioned that any arguments
`not raised in the response may be deemed waived.” Paper 13, 9; see also In
`re NuVasive, Inc., 842 F.3d 1376, 1379–82 (Fed. Cir. 2016) (holding patent
`owner waived an argument addressed in the preliminary response by not
`raising the same argument in the patent owner response). Additionally, the
`Board’s Trial Practice Guide states that the Patent Owner Response “should
`identify all the involved claims that are believed to be patentable and state
`the basis for that belief.” Consolidated Trial Practice Guide (Nov. 2019)4
`(“TPG”), 66.
`
`Patent Owner has chosen not to address certain arguments and
`evidence advanced by Petitioner to support its unpatentability contentions.
`In this regard, the record contains persuasive arguments and evidence
`presented by Petitioner regarding the manner in which the prior art discloses
`the corresponding limitations of claims 1–29 of the ’319 patent and the
`rationale for combining the asserted references.
`B. Level of Ordinary Skill in the Art
`Referring to a Preliminary Response in IPR2020-01358, Petitioner
`adopts Patent Owner’s assessment that a person of ordinary skill in the art is
`“an individual who, as of October 8, 2009 . . . had a Master’s Degree or
`higher in the field of Electrical Engineering, Computer Engineering, or
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`4 Available at
`https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf?MURL=.
`9
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`Patent 10,257,319 B2
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`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.”
`Pet. 7 (citing Ex. 1008, 18; Ex. 1003 ¶¶ 30–37) (alteration in original).
`Patent Owner submits that a person of ordinary skill in the art should
`have the qualifications identified by Petitioner and adopts them. PO Resp. 2
`(citing Ex. 1003 ¶ 34; Ex. 2044 ¶ 30).
`We adopt the assessment offered by the parties as it is consistent with
`the ’319 patent and the prior art before us. See Okajima v. Bourdeau, 261
`F.3d 1350, 1355 (Fed. Cir. 2001).
`C. Claim Construction
`In this inter partes review, claims are construed using the same claim
`construction standard that would be used to construe the claims in a civil
`action under 35 U.S.C. § 282(b). 37 C.F.R. § 42.100(b) (2021). Under the
`principles set forth by the Federal Circuit, the “words of a claim ‘are
`generally given their ordinary and customary meaning,’” as would be
`understood by a person of ordinary skill in the art in question at the time of
`the invention. Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005)
`(en banc) (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582
`(Fed. Cir. 1996)). “In determining the meaning of the disputed claim
`limitation, we look principally to the intrinsic evidence of record, examining
`the claim language itself, the written description, and the prosecution
`history, if in evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek,
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`Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at
`1312–17).
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`1. “client device”
`a. Petitioner’s Assertions
`Petitioner asserts that the district court’s construction in Luminati
`Networks Ltd. v. Teso LT, UAB, No. 2:19-cv-395 (E.D. Tex.) (“Teso
`litigation”)5 should be applied here for the term “client device.” Pet. 9. In
`the district court litigation, the magistrate judge construed “client device” as
`“communication device that is operating in the role of a client.” Id.;
`Ex. 1006, 12. Petitioner points to two claim construction orders in that
`case—an original order (Ex. 1006) and a supplemental order (Ex. 1009). In
`those orders, the magistrate judge construed the preamble of claim 1 to be
`limiting, and also construed the terms “second server” and “client device.”
`Pet. 9. Petitioner also refers to the claim construction order in Luminati
`Networks Ltd. v. Code200, No. 2:19-cv-396 (E.D. Tex.), which concerns
`patents with the same specification as the ’319 patent, where it was found
`that “the role-based construction applies ‘regardless of any additional role
`the device may serve, including as a server.’” Pet. Reply 3 (citing Ex. 1082,
`13). Petitioner indicates that in the Texas litigations, the constructions were
`adopted by the district judge. Id. (citing Ex. 1074; Ex. 1083). Petitioner
`also refers to the claim construction order in Bright Data Ltd. v. NetNut Ltd.,
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`5 Luminati Networks Ltd. is now Bright Data Ltd.
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`No. 2:21-cv-225 (E.D. Tex.), where Patent Owner’s construction based on
`“consumer computer” was rejected. Id. at 4 (citing Ex. 2013, 10–16).
`b. Patent Owner’s Assertions
`Patent Owner asserts that a person of ordinary skill in the art would
`have understood the term “client device” to be a “consumer computer,” or
`alternatively, to be a “consumer communication device.” PO Resp. 10
`(citing Ex. 2044 ¶ 69). Patent Owner argues that these constructions are
`consistent with the claim language, Specification, and the prosecution
`histories. Id. at 10–11. Patent Owner contends that a person of ordinary
`skill in the art would have understood that a client device is a
`communication device because the Specification states that “each
`communication device may serve as a client, peer, or agent” which
`“informs” a person of skill “that client 102, peers 112, 114, 116, and agent
`122 are all ‘client devices’ in the context of the [S]pecification.” Id. at 11
`(citing Ex. 2044 ¶ 70; Ex. 1001, 4:44–50, 5:21–29).
`Patent Owner alleges that the Specification discloses how a
`communication device can be configured to be a client, agent, or peer by its
`disclosure of a requesting client device ↔ proxy server ↔ proxy client
`device ↔web server architecture. PO Resp. 11–12 (citing Ex. 1001, 4:44–
`50, 5:21–29, 9:12–50). Patent Owner alleges that the Specification explains
`that when executing the fetching method, “the requesting client device may
`be executing the client module 224 disclosed in FIG. 6, while the proxy
`client device may be executing the agent module 228 disclosed in FIG. 6.”
`Id. at 12. Based upon this, Patent Owner contends that a person of ordinary
`skill in the art “would understand in the context of the ’319 [p]atent, a client
`device is a consumer computer with specific software to operate in
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`accordance with the claims.” Id. Referring to Figure 6 of the Specification,
`Patent Owner asserts that a person of ordinary skill in the art would
`understand that “one ‘client device’ may be configured to be the requesting
`client device and another ‘client device’ may be configured to be the proxy
`client device.” Id. (citing Ex. 2044 ¶ 73). In support, Patent Owner also
`refers to modified annotated Figure 3, reproduced below, alleging that agent
`122 is disclosed as a client device “that is selected, for example, because
`agent 122 is closest to the web server 152.” Id. at 8, 12–13 (citing Ex. 2044
`¶¶ 74–75).
`
`
`Patent Owner alleges that a person of ordinary skill’s understanding of
`requesting client device (purple) ↔ second server (green) ↔ first client
`device (red) ↔ web server (blue) would correspond to client 102 ↔ proxy
`server 6 ↔ agent 122 ↔ web server 152, shown in Patent Owner’s version
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`of modified annotated Figure 3 of the ’319 patent, above, which presents a
`schematic diagram of the network. Id. at 8.
`Patent Owner further asserts that in light of the Specification, “a client
`device would be understood to be, more specifically, a consumer computer
`like a laptop, desktop, tablet, or smartphone.” PO Resp. 13 (citing Ex. 2044
`¶ 76 (citing Ex. 1001, 2:44–46 (“In the network 50, files are stored on
`computers of consumers, referred to herein as client devices.”) (emphasis
`omitted))).
`Patent Owner argues that the district court’s rejection of its proposed
`construction of a “client device” as “consumer computer” is wrong for three
`reasons. PO Resp. 13–15. First, Patent Owner asserts that, although the
`district court found that there was no express lexicography in the
`Specification, the Specification states that “computers of consumers” are
`“referred to herein as client devices.” Id. at 13 (citing Ex. 2044 ¶ 76;
`Ex. 1001, 2:47–49). Patent Owner further asserts that a person of ordinary
`skill in the art would have understood that a consumer device is
`distinguished from a commercial device and that a consumer device is not a
`dedicated proxy server. Id. at 13–14 (citing Ex. 2044 ¶ 76). Second, Patent
`Owner disagrees with the district court’s finding that in the Specification the
`term “consumer” refers to the consumer of content, as opposed to a
`broadcaster of content. Id. at 14 (citing Ex. 1006, 11). Rather, Patent
`Owner argues, the common understanding of “consumer” as “a person who
`buys goods or services for their own use” is not a deviation from the use of
`the term in the Specification, and personal use is often distinguished from
`commercial use. Id. at 14 (citing Ex. 2015; Ex. 2016; 15 U.S.C. § 6809(9);
`12 C.F.R. § 332.3(e)(1)). Third, Patent Owner disagrees with the district
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`court’s finding that the term “consumer” does not appear to be used in
`connection with the claimed invention, contending that the Specification
`refers to “computers of consumers,” and there were statements made during
`the prosecution of the parent application to the ’319 patent that refer to this
`issue. Id. at 14–15 (citing Ex. 2044 ¶ 76; Ex. 1001, 2:44–46; Ex. 1072,
`624).
`Patent Owner contends that in the ’319 patent, “a client device is not a
`server.” PO Resp. 15. Patent Owner disagrees with the district court’s view
`that there was insufficient support for including a negative limitation in the
`construction that a client device is unable to act as a server in all cases. Id.
`(citing Ex. 1006, 12). According to Patent Owner, a person of ordinary skill
`in the art would have understood that a client device is not a server in the
`context of the patent, and the MPEP does not require that a negative
`limitation be recited verbatim in the Specification. Id. (citing, inter alia,
`Ex. 2044 ¶ 62). Patent Owner argues that the Specification describes the
`shortcomings of using a proxy server as an intermediary, and therefore
`provides a reason to exclude a client device encompassing a proxy server.
`Id. at 16 (citing Ex. 1001, 2:24–32; Ex. 1006, 12; Ex. 2044 ¶ 83).
`Patent Owner asserts that, in view of the recited architecture of the
`’319 patent claims that distinguishes between client devices and servers, the
`use of three interchangeable general use computers in a pathway would not
`disclose that architecture. PO Resp. 16 (citing Ex. 2044 ¶¶ 78–79). Patent
`Owner also argues that the recited architecture in the ’319 patent claims, that
`is, a second server ↔ first client device ↔ web server architecture, also
`distinguishes the use of a client device, rather than a proxy server, as an
`intermediary, and that this distinction is consistent with an Alice order in the
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`Teso litigation. Id. at 16–17 (citing Ex. 2044 ¶ 79; Ex. 2007, 8–9); PO Sur-
`reply 2. Patent Owner further contends that the district court “repeatedly
`acknowledged that a client device is not a merely general-purpose
`computer.” PO Resp. 16 (citing Ex. 2013, 14–15).
`Patent Owner argues that a person of ordinary skill in the art would
`have understood “that a client device is typically portable and easily moved,
`like, for example, a laptop, desktop, tablet or smartphone.” PO Resp. 17
`(citing Ex. 2044 ¶ 80). Patent Owner contends that a person of ordinary skill
`in the art would be informed by statements made during prosecution that a
`client device is not a dedicated network device, typically uses a single or
`relatively few connections, and is resource limited (e.g., bandwidth and
`storage), unlike a server. Id. Patent Owner also argues that a person of skill
`would have understood that a client device typically is understood “(a) to be
`regularly switched off and taken offline; (b) to be capable of processing only
`a limited number of requests at any given time . . . and/or (c) to have lesser
`fault tolerance, lesser reliability, and lesser scalability, prioritizing value to
`users over system costs.” Id. at 17–18 (citing Ex. 2044 ¶ 81). Patent Owner
`asserts that a person of ordinary skill’s understanding of “client” would have
`been consistent with its plain and ordinary meaning, which is “an application
`that runs on a personal computer or workstation and relies on a server to
`perform some operations.” Id. at 18 (citing Ex. 2044 ¶ 82; Ex. 2017; Ex.
`2045). Patent Owner contends that a person of ordinary skill would have
`understood that there are structural differences between client devices and
`servers. Id. (citing Ex. 2044 ¶ 84).
`Patent Owner also contends that, upon reviewing Figures 1 and 3 of
`the Specification, a person of ordinary skill in the art would have understood
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`that proxy server 6 must be structurally different from agent 122 and that “a
`server is not a client device and that a client device is not a
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