HIGHLY CONFIDENTIAL – OUTSIDE ATTORNEYS’ EYES ONLY
`SOURCE CODE
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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 IPR2022-00135
`
`Patent No. 10,257,319
`
`_________________________
`
`PATENT OWNER RESPONSE
`
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`
`SOURCE CODE
`
`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 IPR2022-00135
`
`Patent No. 10,257,319
`
`_________________________
`
`PATENT OWNER RESPONSE
`
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`
`
`HIGHLY CONFIDENTIAL – OUTSIDE ATTORNEYS’ EYES ONLY
`SOURCE CODE
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`IPR2022-00135 of Patent No. 10,257,319
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`TABLE OF CONTENTS
`
`
`
`
`
`I.
`
`INTRODUCTION ............................................................................................... 1
`
`II. PRIORITY DATE AND PERSON OF ORDINARY SKILL IN THE ART ..... 2
`
`III. OVERVIEW OF THE ‘319 PATENT ................................................................ 3
`
`A. PROBLEMS IDENTIFIED IN THE SPECIFICATION .............................. 3
`
`B. DETAILED DESCRIPTION ......................................................................... 4
`
`C. PETITIONER MISCHARACTERIZES THE ‘319 PATENT ...................... 9
`
`IV. CLAIM CONSTRUCTION ................................................................................ 9
`
`A. “CLIENT DEVICE” ....................................................................................10
`
`1. FIGURES IN THE SPECIFICATION ....................................................19
`
`2. PROSECUTION HISTORIES .................................................................23
`
`B.
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`“SECOND SERVER” ..................................................................................29
`
`V. OVERVIEW OF PLAMONDON .....................................................................33
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`VI. GROUND 1 FAILS ...........................................................................................36
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`A. NO DISCLOSURE OF CLAIM 1, STEP 1 UNDER ROLE-BASED
`
`CONSTRUCTIONS ............................................................................................36
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`B. NO DISCLOSURE OF CLAIM 1, STEP 4 UNDER ROLE-BASED
`
`CONSTRUCTIONS ............................................................................................37
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`C. NO DISCLOSURE OF ARCHITECTURE OF CLAIM 1 UNDER
`
`PATENT OWNER’S PROPOSED CONSTRUCTIONS ...................................38
`
`1. CLIENT 102 .............................................................................................41
`
`2. APPLIANCE 200 .....................................................................................45
`
`3. PETITIONER’S ARGUMENTS ARE HINDSIGHT BIASED ..............46
`
`D. NO DISCLOSURE OF DEPENDENT CLAIMS .......................................47
`
`1. CLAIM 14 ................................................................................................47
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`2. CLAIM 24 ................................................................................................50
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`VII. GROUNDS 2-7 FAIL ..................................................................................52
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`A. GROUND 6 (PLAMONDON + PRICE) ....................................................53
`
`B. GROUND 7 (PLAMONDON + KOZAT) ..................................................55
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`VIII. BRIGHT DATA PRACTICES THE CHALLENGED CLAIMS ...............57
`
`A. NEXUS ........................................................................................................57
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`B. COMMERCIAL SUCCESS ........................................................................69
`
`C. LONG FELT NEED ....................................................................................72
`
`D. COPYING ....................................................................................................73
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`E.
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`INDUSTRY PRAISE ...................................................................................75
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`IX. CONCLUSION ..................................................................................................75
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`PATENT OWNER’S LIST OF EXHIBITS
`
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`EX. 2001 Declaration of Dr. V. Thomas Rhyne
`
`EX. 2002 U.S. Patent No. 10,469,614
`
`EX. 2003 U.S. Patent No. 10,491,712
`
`EX. 2004 U.S. Patent No. 10,491,713
`
`EX. 2005 U.S. Patent No. 11,050,852
`
`EX. 2006 U.S. Patent No. 8,972,602 (“Mithyantha”)
`
`EX. 2007 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 (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 (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 (E.D. Tex. Oct. 20, 2020)
`
`EX. 2010 Deposition Transcript of Dave Levin, dated July 22, 2022
`
`EX. 2011 U.S. Patent No. 8,560,604
`
`EX. 2012 U.S. Patent No. 10,069,936
`
`Claim Construction Order (Dkt. 146) in the case of Bright Data
`Ltd. v. NetNut Ltd., Case No. 2:21-cv-00225 (E.D. Tex. May 10,
`2022)
`
`EX. 2008
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`EX. 2009
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`EX. 2013
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`EX. 2014
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`EX. 2018
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`EX. 2019
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`Bright Data, “Residential Proxy Network”, accessed at
`https://brightdata.com/proxy-types/residential-proxies on July 29,
`2022
`
`EX. 2015 Definition “Consumer”, Cambridge English Dictionary; accessed at
`https://dictionary.cambridge.org/us/dictionary/english/consumer on
`June 10, 2022
`
`EX. 2016 Definition “Consumer”, Collins English Dictionary; accessed at
`https://www.collinsdictionary.com/us/dictionary/english/consumer
`on June 10, 2022
`
`EX. 2017 Network Fundamentals Study Guide, published February 17, 2015;
`accessed at https://www.webopedia.com/reference/network-
`fundamentals-studyguide/#topologies on June 14, 2022
`
`Bright Data, Network Diagram – HIGHLY CONFIDENTIAL –
`OUTSIDE ATTORNEYS’ EYES ONLY
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`EMK Capital, “EMK acquires Luminati”, published August 10,
`2017; accessed at https://www.emkcapital.com/emk-acquires-
`luminati-worlds-largest-ip-proxy-network-brings-transparency-
`internet/ on July 29, 2022
`
`EX. 2020 Appendix to Declaration of Dr. Tim A. Williams - HIGHLY
`CONFIDENTIAL – OUTSIDE ATTORNEYS’ EYES ONLY –
`SOURCE CODE
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`Source Code File 1 of 4 - HIGHLY CONFIDENTIAL – OUTSIDE
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`Source Code File 2 of 4 - HIGHLY CONFIDENTIAL – OUTSIDE
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`Source Code File 3 of 4 - HIGHLY CONFIDENTIAL – OUTSIDE
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`EX. 2021
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`EX. 2022
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`EX. 2023
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`v
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`EX. 2024
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`EX. 2025
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`EX. 2026
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`EX. 2027
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`EX. 2028
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`EX. 2029
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`Source Code File 4 of 4 - HIGHLY CONFIDENTIAL – OUTSIDE
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`Frost & Sullivan Report, “Global IP Proxy Networks Market,”
`published July 2019
`
`Excerpts from Trial Transcript, Day 1 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 (E.D. Tex. Nov. 1, 2021)
`
`Excerpts from Trial Transcript, Day 3 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 (E.D. Tex. Nov. 3, 2021)
`
`Jury Verdict (Dkt. 516) 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 (E.D. Tex. Nov. 5, 2021)
`
`Bright Data, “Proxy Services”, accessed at
`https://brightdata.com/proxy-types on July 29, 2022
`
`EX. 2030 Oxylabs, “Legal Timeline Between Oxylabs and Luminati (now
`Bright Data)”, accessed at https://oxylabs.io/legal-timeline on
`August 4, 2022
`
`Earthweb, “16 Best Residential Proxies to Buy in 2022”, last
`updated May 19, 2022; accessed at
`https://earthweb.com/residential-proxies/ on May 19, 2022
`
`SmartProxy, “What is the difference between residential and
`datacenter proxies?”, published June 3, 2021; accessed at
`https://smartproxy.com/blog/what-is-the-difference-between-
`proxy-servers-and-data-centers on May 19, 2022
`
`EX. 2033 Microleaves, “Backconnect Residential Proxies”, accessed at
`https://web.archive.org/web/20170913105635/https://microleaves.c
`om/services/backconnect-proxies?promotion=dNPa on May 20,
`2022
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`EX. 2031
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`EX. 2032
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`vi
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`EX. 2035
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`EX. 2036
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`EX. 2038
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`EX. 2039
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`EX. 2040
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`EX. 2037
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`EX. 2034 Oxylabs, “Residential Proxies,” accessed at
`https://web.archive.org/web/20200701171337/https://oxylabs.io/pr
`oducts/residential-proxy-pool on May 20, 2022
`
`Bright Data, “When should I use the residential network?”,
`accessed at https://help.brightdata.com/hc/en-
`us/articles/4413156951825-When-should-I-use-the-residential-
`network- on August 2, 2022
`
`Bright Data, “Cost effectiveness of residential IPs”, accessed at
`https://help.brightdata.com/hc/en-us/articles/4413161607441-Cost-
`effectiveness-of-residential-IPs on August 2, 2022
`
`Bright Data, “Using the system”, accessed at
`https://help.brightdata.com/hc/en-us/articles/4413167165969-
`Using-the-system on August 2, 2022
`
`Bright Data, “Which ports and protocols are supported by Bright
`Data?”, accessed at https://help.brightdata.com/hc/en-
`us/articles/4413222000017-Which-ports-and-protocols-are-
`supported-by-Bright-Data- on August 2, 2022
`
`Bright Data, “How do I integrate Bright Data as my proxy
`network?”, accessed at https://help.brightdata.com/hc/en-
`us/articles/4413213552273-How-do-I-integrate-Bright-Data-as-my-
`proxy-network- on August 2, 2022
`
`Bright Data, “How do I integrate Bright Data into a web browser
`automation tool?”, accessed at https://help.brightdata.com/hc/en-
`us/articles/4413213588369-How-do-I-integrate-Bright-Data-into-a-
`web-browser-automation-tool- on August 2, 2022
`
`Bright Data, “What is Bright Data Proxy Browser Extension?”,
`accessed at https://help.brightdata.com/hc/en-
`us/articles/4413213983633-What-is-Bright-Data-Proxy-Browser-
`Extension- on August 2, 2022
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`EX. 2041
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`vii
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`EX. 2043
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`EX. 2045
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`EX. 2042 Wikipedia, “Domain Name System”, accessed at
`https://en.wikipedia.org/wiki/Domain_Name_System on August 2,
`2022
`
`Bright Data, “Using BrightData in Android settings”, accessed at
`https://help.brightdata.com/hc/en-us/articles/4413168253969-
`Using-BrightData-in-Android-settings on August 2, 2022
`
`EX. 2044 Declaration of Dr. Tim A. Williams - HIGHLY CONFIDENTIAL
`– OUTSIDE ATTORNEYS’ EYES ONLY
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`Excerpts from Tanenbaum, A., et al., “Computer Networks – Fifth
`Edition”, copyright 2011, ISBN 0-13-212695-8
`
`Joint Protective Order
`
`Redlined version of the Joint Protective Order (compared to
`Default Protective Order)
`
`Executed Acknowledgements from Dr. Tim A. Williams, by lead
`counsel for Patent Owner, and by first back-up counsel for Patent
`Owner
`
`
`EX. 2049 Nimble, “Nimble, Your Effortless Web Data Gathering Solution”,
`accessed at https://www.nimbleway.com/ on August 5, 2022
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`EX. 2050 Nimble, “Privacy Policy”, accessed at
`https://www.nimbleway.com/privacy-policy/ on August 5, 2022
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`EX. 2046
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`EX. 2047
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`EX. 2048
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`I.
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`INTRODUCTION
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`Petitioner fails to show by a preponderance of the evidence that claims 1-29
`
`of Patent No. 10,257,319 (EX.1001, “the ‘319 Patent”) are unpatentable for at least
`
`4 reasons.
`
`First, the primary reference Plamondon (EX.1010) does not anticipate claim
`
`1 of the ‘319 Patent, i.e., the only independent claim. Specifically, Plamondon does
`
`not anticipate steps 1 and 4 of claim 1 under the preliminary role-based
`
`constructions proposed by Petitioner and applied by the Board in the Institution
`
`Decision. Moreover, Plamondon likewise does not anticipate claim 1 under Patent
`
`Owner’s proposed constructions because Plamondon does not disclose the unique
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`second server ↔ first client device ↔ web server architecture in which the
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`claimed methods of the ‘319 Patent operate. Because Plamondon does not
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`anticipate independent claim 1, Plamondon does not anticipate dependent claims
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`12-14 and 21-27. Therefore, under either (a) the role-based constructions or (b)
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`Patent Owner’s proposed constructions, Ground 1 fails.
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`Second, in Grounds 2-7, Petitioner alleges obviousness of certain dependent
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`claims, however, Petitioner provides no obviousness analysis of the steps of
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`independent claim 1, which are necessarily incorporated into each and every
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`1
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`dependent claim. Because Plamondon does not anticipate claim 1, and because
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`Petitioner provided no obviousness analysis of claim 1, Grounds 2-7 also fail.
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`Third, Grounds 6 and 7 additionally fail because Petitioner relies on expert
`
`testimony that is replete with hindsight bias. A POSA would not be motivated to
`
`make the alleged combinations at least because the problems are already solved by
`
`Plamondon.
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`Fourth, there are overwhelming secondary considerations of non-
`
`obviousness in view of Patent Owner’s residential proxy service that embodies the
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`claimed features.
`
`II. PRIORITY DATE AND PERSON OF ORDINARY SKILL IN THE
`ART
`
`There is no dispute between the parties regarding the 10/8/2009 priority date
`
`of the ‘319 Patent and Petitioner adopts Patent Owner’s proposal regarding the
`
`level of ordinary skill in that art for purposes of this IPR. Paper 2 at 7. A person of
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`ordinary skill in the art 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.” Id.; EX.1003 at
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`¶34; EX.2044 at ¶30.
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`2
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`III. OVERVIEW OF THE ‘319 PATENT
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`The ‘319 Patent claims refer to a “first client device” serving as an
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`intermediary between a “second server” and a “web server”. EX.2044 at ¶52. The
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`method claims are performed by the “first client device” within a second server ↔
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`first client device ↔ web server architecture. EX.2044 at ¶54. Other patents in
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`the same family, e.g., U.S. Patent Nos. 110,491,713 (EX.2004) and 11,050,852
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`(EX.2005) which share the same specification as the ’319 Patent, claim methods
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`performed by the “requesting client device” within a similar requesting client
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`device ↔ second server ↔ first client device ↔ first/web server architecture.
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`EX.2044 at ¶55.
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`A. PROBLEMS IDENTIFIED IN THE SPECIFICATION
`
`The specification distinguishes two prior art systems. EX.2044 at ¶57. The
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`first prior art system is the traditional use of a proxy server as an intermediary
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`between a client device and a web server. Id. (citing EX.1001 at 2:8-39). The
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`second prior art system is the traditional use of a peer-to-peer system using caching
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`client devices. Id. (citing EX.1001 at 2:40-3:3). The specification explains that the
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`prior art systems are cost prohibitive and do not handle dynamic content due to the
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`3
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`typical cache-storage methods. Id. As one example, the traditional use of a proxy
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`server, as discussed above, would require a proxy server in almost every city
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`within the United States and across the world. Id. As another example, the
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`traditional use of a proxy server, as discussed above, may still result in being
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`blocked by the web server, if the IP address of the proxy server is used so regularly
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`that it becomes recognizable and/or because the IP address of the proxy server is a
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`commercial IP address as opposed to residential IP address. Id.
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`B. DETAILED DESCRIPTION
`
`The specification provides several exemplary embodiments in the detailed
`
`description and the figures showing that both servers and client devices can be
`
`configured to operate as intermediaries. EX.2044 at ¶59. For example, Figure 1
`
`and the associated discussion show a proxy server between one or more client
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`devices and a web server in a communication pathway. Id. (citing EX.1001, FIG.
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`1 and 2:8-15).
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`4
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`Similarly, Figure 3 shows an exemplary embodiment of network 100 with an
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`agent serving as an intermediary between a client and web server. EX.2044 at ¶60.
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`As described in the specification, the communication network comprises
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`communication devices that can serve as a client, peer, or agent, as well as separate
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`servers and web servers. Id; EX.1001 at 4:41-5:10. As each communication device
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`is configured to operate as a client, agent or peer as necessary, a POSA would
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`understand client 102 and agent 122 to both be client devices. EX.2044 at ¶61.
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`5
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`As shown in Figure 3, agent 122, in some embodiments, is a client device
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`which can receive requests for content intended for web server 152. EX.2044 at
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`¶61 (citing, e.g., EX.1001 at 5:21-29). The specification also describes that the
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`‘agent’ can request this content directly from the web server. Id. (citing, e.g.,
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`EX.1001 at 15:62-16:11).
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`6
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`The specification discloses how a communication device can be configured
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`
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`to serve as a client, agent, or peer. EX.2044 at ¶62 (citing EX.1001 at 4:44-50;
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`5:21-29; see also 9:12-50). For example, the specification discloses, when
`
`executing the fetching method, the requesting client device may be executing the
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`client module 224 disclosed in FIG. 6, while the proxy client device may be
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`executing the agent module 228 disclosed in FIG. 6. Id.
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`7
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`A POSA would understand that proxy server 6 of Figure 1 could be inserted
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`
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`between client 102 and agent 122 of Figure 3, as shown below in a modified
`
`version of Figure 3. EX.2044 at ¶64. A POSA would understand the requesting
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`client device ↔ second server ↔ first client device ↔ web server corresponds
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`to client 102 ↔ proxy server 6 ↔ agent 122 ↔ web server 152, as annotated in the
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`modified figure below. Id. Therefore, a POSA would understand the specification
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`discloses a requesting client device ↔ proxy server ↔ proxy client device ↔
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`web server architecture as well. Id.
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`8
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`C. PETITIONER MISCHARACTERIZES THE ‘319 PATENT
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`Petitioner mischaracterizes the ‘319 Patent and takes an annotated FIG. 3
`
`
`
`from Patent Owner’s briefing (EXS.1005;1007) in Case No. 2:19-cv-395 (E.D.
`
`Tex.)(“Teso Litigation”) out of context to allege that client 102 is a “second
`
`server” and that agent 122 is a “first client device.” Paper 2 at 5. The Teso
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`defendants similarly attempted to limit the express claim language by suggesting a
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`server and a client device are interchangeable. In its responsive briefing, Patent
`
`Owner explained that the annotated FIG. 3 was only used to illustrate the lines of
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`communication showing the steps performed by the proxy client device. See
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`EX.2008 at 7-8 and EX.2009 at 1-3. Patent Owner further explained that the Teso
`
`defendants ignored the accompanying citations to the specification of the ‘319
`
`Patent distinguishing client devices and servers. See, e.g., EX.2008 at 8.
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`IV. CLAIM CONSTRUCTION
`
`Patent Owner respectfully disagrees with the Board’s preliminary
`
`constructions for the terms “client device” and “second server” as discussed below.
`
`Paper 12 at 18-23. Patent Owner notes that terms of the ‘319 Patent were
`
`previously construed in the Teso Litigation as well as Case No. 2:21-cv-225 (E.D.
`
`Tex.)(“NetNut Litigation”). EX.1006, EX.1009, EX.2013. However, the Court did
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`not have the benefit of the detailed discussion herein regarding the applicant’s
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`distinctions between client devices and servers.
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`As discussed below, Patent Owner’s proposed constructions for these terms
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`are consistent with the claim language, the specification, and the prosecution
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`histories distinguishing client devices and servers. Patent Owner explains how the
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`Board’s preliminary constructions fail to account for certain prosecution history
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`statements and improperly focus on a role being performed at a given moment in
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`time. Patent Owner additionally explains how the Board’s preliminary
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`constructions contradict the Court’s most recent Claim Construction Order in the
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`NetNut Litigation (EX.2013).
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`A. “CLIENT DEVICE”
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`The Board preliminarily construed the term “client device” as a
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`“communication device that is operating in the role of a client.” Paper 12 at 22.
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`Based upon the specification, a POSA would understand the term “client
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`device” to mean a “consumer computer.” EX.2044 at ¶69 (citing EX.1001 at 2:44-
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`46 (“In the network 50, files are stored on computers of consumers, referred to
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`herein as client devices.”)). Alternatively, a POSA would understand the term
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`“client device” to mean a “consumer communication device”. Id. These proposed
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`constructions are consistent with the claim language, the specification, and the
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`prosecution histories distinguishing servers from client devices, as will be
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`discussed further below. Id.
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`A POSA would understand a client device is a communication device in the
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`context of the specification. EX.2044 at ¶70. This is consistent with the Court’s
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`constructions in the Teso Litigation and in the NetNut Litigation. Id.; EX.1006,
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`EX.1009, EX.2013. As described in the specification, “each communication device
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`may serve as a client, peer, or agent” (EX.1001 at 4:48-49) which informs a POSA
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`that client 102, peers 112, 114, 116, and agent 122 are all “client devices” in the
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`context of the specification. EX.2044 at ¶70; see also EX.1001 at 4:44-50; 5:21-29.
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`In the NetNut Litigation, Defendant NetNut Ltd. proposed a construction of
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`“client” as “a device operating in the role of a client”, but the Court expressly
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`rejected removing the word “communication” from the Court’s prior construction
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`of this same term in the Teso Litigation. EX.2013 at 14. A POSA would
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`understand that ‘communication device’ has a special meaning in the context of the
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`specification as referring to a ‘client device’. EX.2044 at ¶71.
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`The specification discloses HOW a communication device can be configured
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`to serve as a client, agent, or peer. EX.2044 at ¶72 (citing, for example, EX.1001 at
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`4:44-50; 5:21-29; see also 9:12-50). For example, as discussed above, the
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`specification discloses a requesting client device ↔ proxy server ↔ proxy client
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`device ↔ web server architecture. Id. The specification explains, when executing
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`the fetching method, the requesting client device may be executing the client
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`module 224 disclosed in FIG. 6, while the proxy client device may be executing
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`the agent module 228 disclosed in FIG. 6. Id. Therefore, a POSA would understand
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`in the context of the ‘319 Patent, a client device is a consumer computer with
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`specific software to operate in accordance with the claims. Id.
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`In the specification, this software is disclosed, for example, in Figure 6
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`showing acceleration application 220 on communication device 200. EX.2044 at
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`¶73. Figure 6 and the associated text disclose communication devices having
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`client, peer, and agent modules, but no server module. Id. A POSA would
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`understand from the specification that one “client device” may be configured to be
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`the requesting client device and another “client device” may be configured to be
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`the proxy client device. Id. A POSA would understand the term “client device” to
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`have a consistent definition for either the Requestor or the Proxy. Id.
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`With respect to the modified version of Figure 3 annotated above, a POSA
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`would understand that client 102 corresponds to the requesting client device and
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`that agent 122 corresponds to the proxy client device. EX.2044 at ¶¶74-75. Agent
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`122 is disclosed as a “client device” (as opposed to a server) that is selected, for
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`example, because agent 122 is closest to the web server 152. EX.2044 at ¶75
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`(citing, e.g., EX.1001 at 5:27; see also 5:30-34).
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`Thus, in the context of the specification, a client device would be understood
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`to be, more specifically, a consumer computer like a laptop, desktop, tablet, or
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`smartphone. EX.2044 at ¶76 (citing EX.1001 at 2:44-46 (“In the network 50, files
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`are stored on computers of consumers, referred to herein as client
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`devices.”)(emphasis added)).
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`During the NetNut Litigation, the Court referenced its prior decision in the
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`Teso Litigation, where the Court had rejected Patent Owner’s proposed
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`construction of “client device” as “consumer computer” for three reasons.
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`First, the Court found no express lexicography in the specification. EX.1006
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`at 11. Patent Owner disagrees. The specification explicitly states that “computers
`
`of consumers” are “referred to herein as client devices” and the term “client
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`device” is used in the claims. EX.2044 at ¶76; EX.1001 at 2:47-49. Patent Owner
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`respectfully submits that upon reading the specification, a POSA would understand
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`a “client device” is a consumer computer in the context of the specification. Id.
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`This is also consistent with statements made by Applicant during prosecution of
`
`the parent application that issued as Patent No. 10,069,936, further discussed
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`below. E.g., EX.1072 at 624. In the context of the specification, a POSA would
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`understand that a consumer device is distinguished from a commercial device.
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`EX.2044 at ¶76. A POSA would also understand that a consumer device is not a
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`dedicated proxy server. Id.
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`Second, the Court found that the term “consumer” was used in the
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`specification as consumer of content, as opposed to a broadcaster of content.
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`EX.1006 at 11. Patent Owner disagrees that the term “consumer” as used in the
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`specification deviates from its common understanding. A “consumer” is commonly
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`defined as “a person who buys goods or services for their own use” or “someone
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`who buys goods or services for personal use”. E.g., EXS. 2015; 2016; see also
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`EX.2044 at ¶77. In the financial context, consumer use or individual, personal use
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`is often distinguished from commercial use. E.g., 15 U.S.C. § 6809(9) and 12
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`C.F.R. § 332.3(e)(1). Patent Owner also refers to statements made by Applicant
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`during prosecution of the parent application that issued as Patent No. 10,069,936,
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`further discussed below, where the applicant stated that client devices are
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`“typically consumer owned and operated.” EX.1072 at 624; see also EX.2044 at
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`¶77.
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`Third, the Court found that the term “consumer” does not appear in
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`connection with the description of the claimed inventions. EX.1006 at 11. Patent
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`Owner disagrees. The specification explicitly states that “computers of consumers”
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`are “referred to herein as client devices” and the term “client device” is used in the
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`claims. EX.2044 at ¶76; EX.1001 at 2:44-46. Patent Owner also refers to
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`statements made by Applicant during prosecution of the parent application that
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`issued as Patent No. 10,069,936, further discussed below. E.g., EX.1072 at 624.
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`As will be discussed below regarding specific prosecution history
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`statements, Patent Owner further submits that an alternative construction for
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`“client device” is a consumer communication device. See, e.g., EX.1072 at 624.
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`This alternative construction is in no way inconsistent with the proposed
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`construction “consumer computer.”
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`In the context of the ‘319 Patent, a client device is not a server. The Court
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`found that Patent Owner’s briefing did not cite to a sufficient reason for including
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`the negative limitation that a client device is unable to act as a server in all cases.
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`EX.1006 at 12. Patent Owner respectfully submits that, upon reviewing the
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`intrinsic evidence, a POSA would understand that a client device is not a server in
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`the context of the ‘319 Patent. The MPEP does not require that the negative
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`limitation be recited verbatim in the specification. E.g., Ex parte Parks, 30
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`USPQ2d 1234, 1236 (Bd. Pat. App. & Inter. 1993). For example, as discussed
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`above, Figure 6 and the associated text disclose communication devices having
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`client, peer, and agent modules, but no server module. See EX.2044 at ¶62
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`The specification expressly describes the shortcomings of using a proxy
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`server as an intermediary. E.g., EX.1001 at 2:24-32. Therefore, Patent Owner
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`respectfully submits that the specification describes a reason to exclude a proxy
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`client device encompassing a proxy server. EX.2044 at ¶83. As cited by the Court,
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`"[n]egative claim limitations are adequately supported when the specification
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`describes a reason to exclude the relevant limitation." EX.1006 at 12 (citing
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`Santarus, Inc. v. Par Pharm., Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012)).
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`Given that the above recited architecture in the ‘319 Patent claims
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`distinguish between client devices and servers (e.g. proxy server ↔ proxy client
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`device ↔ web server) a POSA would understand that the mere inclusion of three
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`interchangeable general use computers in pathway such as a generic computer ↔
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`computer ↔ computer architecture would not by itself disclose the recited
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`architecture of the ‘319 Patent. EX.2044 at ¶¶78-79. The Court repeatedly
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`acknowledged that a client device is not merely a general-purpose computer. E.g.,
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`EX.2013 at 14-15.
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`The recited architecture in the claims of the ‘319 Patent distinguishes the
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`novel use of a client device, rather than a proxy server, as an intermediary.
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`EX.2044 at ¶79. This is consistent with the Teso Alice Order finding the claims of
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`the ’319 Patent not abstract. EX.2007 at 8-9 (“If the claimed methods in this case
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`were simply the receipt and forwarding of information over the Internet, Teso
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`might have a compelling argument. However, it is the use of non-traditional client
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`devices that transforms the Asserted Claims into non-abstract subject matter.”)
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`This is also consistent with the Court’s Claim Construction Orders.
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`EXS.1006;1009;2013.
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`Furthermore, a POSA would understand that a client device is typically
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`portable and easily moved, like, for example, a laptop, desktop, tablet or
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`smartphone. EX.2044 at ¶80. Patent Owner also submits that a POSA would be
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`informed by the applicant’s statements during prosecution that a client device is
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`not a dedic
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