IPR2022-00103 of Patent No. 11,044,342
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________________
` CODE200, UAB; TESO LT, UAB; METACLUSTER LT, UAB; and
`OXYSALES, UAB,
`
`Petitioners
`
`v.
`
`BRIGHT DATA LTD.,
`
`Patent Owner
`
`_________________________
`
`Case IPR2022-00103
`Patent No. 11,044,342
`_________________________
`
`
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`UNDER 37 C.F.R. § 42.107
`
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`i
`
`Data Co Exhibit 1088
`Data Co v. Bright Data
`IPR2022-00135
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`

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`IPR2022-00103 of Patent No. 11,044,342
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`TABLE OF CONTENTS
`
`
`INTRODUCTION TO THE ‘342 PATENT ....................................................... 2
`I.
`A. THE CHALLENGED CLAIMS ...................................................................... 5
`B. THE ALLEGED GROUNDS........................................................................... 5
`II. THE BOARD SHOULD DENY INSTITUTION BASED ON THE
`ADVANCED BIONICS FRAMEWORK ................................................................... 6
`A. THE FIRST PART OF THE ADVANCED BIONICS FRAMEWORK ........... 7
`B. THE SECOND PART OF THE ADVANCED BIONICS FRAMEWORK ...... 7
`1. EXAMINER’S FAMILIARITY WITH THE COMMON
`SPECIFICATION ................................................................................................ 8
`2. EXAMINER’S FAMILIARITY WITH CROWDS ..................................... 9
`3. EXAMINER’S FAMILIARITY WITH RFC 1122 ....................................11
`4. EXAMINER’S FAMILIARITY WITH RFC 2616 ....................................13
`5. EXAMINER’S FAMILIARITY WITH THE CLAIM LANGUAGE........16
`6. EXAMINER’S FAMILIARITY WITH OTHER PEER-TO-PEER
`SYSTEMS .........................................................................................................26
`III. LACK OF MERIT IN THE PETITION .........................................................31
`A. PRIORITY DATE ..........................................................................................31
`B. PERSON OF ORDINARY SKILL IN THE ART .........................................31
`C. PETITIONERS MISCHARACTERIZE THE ‘342 PATENT ......................32
`D. PETITIONERS MISCHARACTERIZE THE COURT’S CLAIM
`CONSTRUCTION ................................................................................................37
`E. PETITIONERS MISPLACE THEIR RELIANCE ON CROWDS ...............41
`1. SUMMARY OF CROWDS ........................................................................41
`2. FAILURE OF CROWDS ............................................................................44
`F. PETITIONERS MISPLACE THEIR RELIANCE ON DR. FREEDMAN ...46
`1. THE TESO LITIGATION INVOLVING RELATED PATENT NOS.
`10,257,319 AND 10,484,510 .............................................................................47
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`ii
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`IPR2022-00103 of Patent No. 11,044,342
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`2. THE CODE200 LITIGATION INVOLVING RELATED PATENT NO.
`10,484,511 .........................................................................................................48
`IV. CONCLUSION ..............................................................................................50
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`IPR2022-00103 of Patent No. 11,044,342
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`TABLE OF AUTHORITIES
`
`
`Cases
`Advanced Bionics, LLC v. Med-El Electromedizinishe Gerӓte GMBH, IPR2019-
`01469, Paper 6 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”) .. 6, 7,
`25, 26, 50
`
`
`Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313 (Fed. Cir. 2003) ........ 7
`
`Google LLC v. Kewazinga Corp., IPR2021-00527, Paper 16 (PTAB Aug. 24,
`2021) .....................................................................................................................17
`
`
`Ocado Group PLC v. Autostore Technology AS, IPR2021-00398, Paper 10 (PTAB
`July 21, 2021)........................................................................................................16
`
`
`Statutes
`35 U.S.C. § 314 ....................................................................................................1, 50
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`35 U.S.C. § 325 ............................................................................................... 1, 6, 50
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`Other Authorities
`MPEP 2103 ..............................................................................................................15
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`MPEP 609.02 ...........................................................................................................14
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`iv
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`IPR2022-00103 of Patent No. 11,044,342
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`PATENT OWNER’S LIST OF EXHIBITS
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`Patent Family Tree containing Patent No. 11,044,342
`
`Select portions from prosecution history of Patent No. 10,785,347
`entered on 7/27/2020
`
`Select portions from prosecution history of Patent No. 10,805,429
`entered on 8/4/2020
`
`Select portions from prosecution history of Patent No. 11,038,989
`entered on 10/27/2020
`
`Select portions from prosecution history of Patent No. 11,089,135
`entered on 10/28/2020
`
`Select portions from prosecution history of Patent No. 10,931,792
`entered on 11/24/2020
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`Select portions from prosecution history of Patent No. 11,044,341
`entered on 11/25/2020
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`Select portions from prosecution history of Patent No. 11,044,342
`entered on 12/22/2020
`
`Select portions from prosecution history of Patent No. 11,044,344
`entered on 12/22/2020
`
`Select portions from prosecution history of Patent No. 10,958,768
`entered on 1/6/2021
`
`Select portions from prosecution history of Patent No. 11,044,346
`entered on 3/30/2021
`
`Dkt. 136 Redacted Version of Bright Data Ltd.’s Sealed Motion
`for Partial Summary Judgment on Certain Invalidity Grounds
`(Dkt. 129) in the case of Bright Data Ltd. v. Code200, UAB, et al.,
`No. 2-19-cv-00396 (E.D. Tex. Apr. 12, 2021)
`
`v
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`2001
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`2002
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`2003
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`2004
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`2005
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`2006
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`2007
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`2008
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`2009
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`2010
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`2011
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`2012
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`IPR2022-00103 of Patent No. 11,044,342
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`Dkt. 155 Redacted Version of Code200, UAB, et al.’s Sealed
`Response (Dkt. 149) and exhibits thereto regarding Bright Data
`Ltd.’s Sealed Motion for Partial Summary Judgment on Certain
`Invalidity Grounds (Dkt. 129) in the case of Bright Data Ltd. v.
`Code200, UAB, et al., No. 2-19-cv-00396 (E.D. Tex. Apr. 26,
`2021)
`
`Patent No. 10,491,713
`
`Patent No. 11,050,852
`
`Declaration of Dr. V. Thomas Rhyne (previously submitted in
`IPR2021-01492 of Patent No. 10,257,319 as EX. 2006; originally
`submitted in IPR2020-01266 of Patent No. 10,257,319 as EX.
`2012)
`
`Declaration of Dr. V. Thomas Rhyne (originally submitted in
`IPR2022-00135 of Patent No. 10,257,319 as EX. 2001)
`
`Rennhard, Marc, "MorphMix—A Peer-to-Peer based System for
`Anonymous Internet Access", 2004 (307 pages)(“MorphMix”)
`(originally submitted in IPR2021-01492 of Patent No. 10,257,319
`as EX. 1008)
`
`Plaintiff’s Sur-reply in opposition to Defendants’ Motion to
`Dismiss (Dkt. 47) in the case of Bright Data Ltd. f/k/a Luminati
`Networks Ltd. v. Teso LT, UAB a/k/a UAB Teso LT, et al., Case
`No. 2:19-cv-00395-JRG (E.D. Tex. May 5, 2020)
`
`Order on Pretrial Motions and Motions in Limine (Dkt. 476) in the
`case of Bright Data Ltd. f/k/a Luminati Networks Ltd. v. Teso LT,
`UAB a/k/a UAB Teso LT, et al., Case No. 2:19-cv-00395-JRG
`(E.D. Tex. Sept. 9, 2021)
`
`Order (Dkt. 303) in the case of Bright Data Ltd. f/k/a Luminati
`Networks Ltd. v. Teso LT, UAB a/k/a UAB Teso LT, et al., Case
`No. 2:19-cv-00395-JRG (E.D. Tex. Feb. 12, 2021)
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`2013
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`2014
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`2015
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`2016
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`2017
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`2018
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`2019
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`2020
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`2021
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`IPR2022-00103 of Patent No. 11,044,342
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`2022
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`2023
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`2024
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`2025
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`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-JRG (E.D. Tex. Nov. 5, 2021)
`
`Yu (U.S. Pub. No. 2006/0212584)
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`Barth (U.S. Pub. No. 2001/0054020)
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`Select portions from prosecution history of Patent No. 10,069,936
`entered on 1/10/2017
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`vii
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`IPR2022-00103 of Patent No. 11,044,342
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`In this inter partes review (“IPR”) proceeding, Petitioners challenge the
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`validity of claims 1, 2, 6-11, 13, 15, 16, and 18-23 (“Challenged Claims”) of Patent
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`No. 11,044,342 (the “’342 Patent”) owned by Bright Data Ltd. (“Patent Owner” or
`
`“Bright Data”). (Petition at 12).1
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`Patent Owner respectfully requests that the Patent Trial and Appeal Board
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`(“Board”) exercise its discretion and deny institution under 35 U.S.C. § 325 for at
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`least two reasons. First, institution should be denied because Petitioners have failed
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`to demonstrate that the examiner erred in a manner material to the patentability of
`
`the Challenged Claims. Second, institution should be denied because it would be an
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`inefficient use of the Board’s resources to re-analyze the same prior art references
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`when the examiner has already analyzed these references at least ten times.
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`Additionally, Patent Owner respectfully requests that the Board exercise its
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`discretion and deny institution under 35 U.S.C. § 314 because Petitioners fail to
`
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`1 In this Patent Owner Preliminary Response (“POPR”), Bright Data is only
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`addressing select issues demonstrating that review should not be instituted. In so
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`doing, Bright Data is not acquiescing to other issues raised by Petitioners and
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`reserves the right to address all issues and to challenge all points raised by Petitioners
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`in any future response if proceedings are instituted. (See U.S.P.T.O. Trial Practice
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`Guide, November 2019 Update, at 49-52).
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`1
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`IPR2022-00103 of Patent No. 11,044,342
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`establish a reasonable likelihood that they would prevail with respect to at least one
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`of the claims challenged in the Petition. Only Grounds 1 and 2 challenge claim 1 of
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`the ‘342 Patent, i.e., the only independent claim of the ‘342 Patent. Ground 1 alleges
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`anticipation of claim 1 based on a single reference (Crowds) and Ground 2 alleges
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`obviousness of claim 1 based on a single reference (Crowds). Claim 1 of the ‘342
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`Patent is strongly novel and nonobvious when compared to Crowds. As explained
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`below, the primary reference (Crowds) and alleged combinations of references
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`fundamentally fail to teach or suggest the claimed combinations of elements recited
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`in the Challenged Claims to achieve the objectives and advantages of the ‘342
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`Patent.2 Thus, the substantive weaknesses of the Grounds further militates in favor
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`of denying institution.
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`I.
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`INTRODUCTION TO THE ‘342 PATENT
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`The ‘342 Patent describes a novel “system designed for increasing network
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`communication speed for users …” (EX. 1001 at Abstract). To achieve the
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`advantages described in the specification, the ‘342 Patent claims methods utilizing
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`a novel “second server ↔ first client device ↔ web server” architecture, whereby
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`2 By way of example, a jury recently found the asserted claims of related Patent Nos.
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`10,257,319 and 10,484,510 were not anticipated by Crowds, as further explained
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`below. (EX. 2022 at 5).
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`2
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`a “first client device” serves as a proxy between the “second server” and “web
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`IPR2022-00103 of Patent No. 11,044,342
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`server.”
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`A problem in the art was the fact that certain websites with public information
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`nevertheless create technological roadblocks to obtaining that information from
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`certain requesting devices. For example, companies often make many thousands of
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`requests or more when they are trying to maintain current data from other company
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`websites, such as a travel website searching airlines for up-to-the-minute ticket
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`prices, and those requests will be blocked if the target web server identifies the user
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`as a competitor, which often occurs when they come from a commercial IP address
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`and/or if too many requests are made from the same IP address.
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`To overcome these challenges, the proxy service of the claims sends requests
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`through one or more of a large group of proxy “client devices,” such as individual
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`cell phone devices configured with software to function as proxies. As the proxy
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`devices belong to real people who otherwise send such requests to target web servers
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`as customers, the targets will allow the queries and not artificially block them.
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`The ‘342 Patent explains that previous “proxy servers” fail to provide a
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`“comprehensive solution for Internet surfing,” in part because they “would need to
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`be deployed at every point around the world where the Internet is being consumed.”
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`(EX. 1001 at 2:24-27; see also 2:8-23). Instead, to create a new type of consumer-
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`based network that never existed before, the ‘342 Patent employs “client devices”
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`IPR2022-00103 of Patent No. 11,044,342
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`that operate as proxies. (Id. at 3:13-55).
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`Claim 1 of the ‘342 Patent recites a method for use over the unique second
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`server ↔ first client device ↔ web server architecture recited in the claim:
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`1. A method for use with a web server that responds to Hypertext Transfer
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`Protocol (HTTP) requests and stores a first content that is identified by a first
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`Uniform Resource Locator (URL), the method by a first client device comprising:
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`executing, by the first client device, a web browser application or an email
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`application;
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`establishing a Transmission Control Protocol (TCP) connection with a
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`second server;
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`receiving, the first content from the web server over an Internet; and
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`sending the received first content, to the second server over the established
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`TCP connection, in response to the receiving of the first URL.
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`It is clear from Claim 1 that the method is performed “by the first client device”
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`which is a communication device. (See EX. 1011 at 12). The communication device
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`can serve as a proxy in requesting content using the “second server ↔ first client
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`device ↔ web server” architecture, shown below.
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`4
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`IPR2022-00103 of Patent No. 11,044,342
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` The unique arrangement of the devices recited in the claims, together with the specific
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`steps that are recited, serve to differentiate the Challenged Claims from prior art
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`
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`systems and to achieve the advantages of the inventions.
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`A. THE CHALLENGED CLAIMS
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`The ‘342 Patent contains 24 claims with only claim1 being independent.
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`Petitioners challenge claims 1, 2, 6-11, 13, 15, 16, and 18-23 of the ‘342 Patent.
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`(Petition at 12).
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`B. THE ALLEGED GROUNDS
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`Petitioners allege the following Grounds (see Petition at 12-14):
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`Ground 1
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`Claims 1, 2, 6, 7, 15, 16, and 18-23
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`Ground 2
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`Claims 1, 2, 6, 7, 15, 16, and 18-23
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`Ground 3 With Ground 1 as a predicate, Claims 8
`and 9
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`Ground 4 With Ground 2 as a predicate, Claims 8
`and 9
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`Ground 5 With Ground 1 as a predicate, Claims 10,
`11, and 13
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`§ 102(b) over Crowds
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`§ 103(a) over Crowds
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`§ 103(a) over Crowds
`and RFC 1122
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`§ 103(a) over Crowds
`and RFC 1122
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`§ 103(a) over Crowds
`and RFC 2616
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`5
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`IPR2022-00103 of Patent No. 11,044,342
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`Ground 6 With Ground 2 as a predicate, Claims 10,
`11, and 13
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`§ 103(a) over Crowds
`and RFC 2616
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`
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`II. THE BOARD SHOULD DENY INSTITUTION BASED ON THE
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`ADVANCED BIONICS FRAMEWORK
`
`The precedential decision in Advanced Bionics states that: “under § 325(d),
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`the Board uses the following two-part framework: (1) whether the same or
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`substantially the same art previously was presented to the Office or whether the same
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`or substantially the same arguments previously were presented to the Office; and (2)
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`if either condition of first part of the framework is satisfied, whether the petitioner
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`has demonstrated that the Office erred in a manner material to the patentability of
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`challenged claims.” Advanced Bionics, LLC v. Med-El Electromedizinishe Gerӓte
`
`GMBH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential)
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`(“Advanced Bionics”). The application of this two-part framework that “reflects a
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`commitment to defer to previous Office evaluations of the evidence of record unless
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`material error is shown.” Id. at 8-9.
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`The Board should deny institution under 35 U.S.C. § 325(d) because the
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`Petition relies on references that were previously presented to the Office and
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`Petitioners have failed to demonstrate that the examiner erred in a manner material
`
`to the patentability of the challenged claims. When “the first part of the framework
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`IPR2022-00103 of Patent No. 11,044,342
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`is satisfied and the petitioner fails to make a showing of material error, the Director
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`generally will exercise discretion not to institute inter partes review.” Advanced
`
`Bionics at 8-9.
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`A. THE FIRST PART OF THE ADVANCED BIONICS FRAMEWORK
`
`It is undisputed that the first part of the Advanced Bionics is satisfied. (See
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`Petition at 61). Crowds, RFC 1122, and RFC 2616 were all presented to the Office
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`during prosecution of the ‘342 Patent, as discussed in the Petition and further
`
`discussed below. See also Advanced Bionics at 7-8 (“Previously presented art
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`includes . . . art provided to the Office by an applicant, such as on an Information
`
`Disclosure Statement (IDS), in the prosecution history of the challenged patent.”)
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`B. THE SECOND PART OF THE ADVANCED BIONICS FRAMEWORK
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`Having reviewed and considered the prior art references, the examiner
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`allowed the Challenged Claims as being novel and nonobvious in view of Crowds,
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`RFC 1122, and RFC 2616. Patent Owner respectfully submits the Board need not
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`repeat this review a second time. “If reasonable minds can disagree regarding the
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`purported treatment of the art or arguments” by the examiner, then “it cannot be said
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`that the Office erred in a manner material to patentability.” Advanced Bionics at 9.
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`The Board “must presume the examiner did his job.” Amgen Inc. v. Hoechst Marion
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`Roussel, Inc., 314 F.3d 1313, 1327 (Fed. Cir. 2003).
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`IPR2022-00103 of Patent No. 11,044,342
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`In sum, Petitioners allege that the examiner materially erred in allowing the
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`Challenged Claims because the examiner did not issue a rejection based on Crowds
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`as set forth in Grounds 1 and 2. (See Petition at 63; see also id. at 67). Although
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`Petitioners rely on the declaration of Dr. Freedman (EX. 1003), this evidence alone
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`is insufficient to justify expenditure of the Board’s finite resources. Patent Owner
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`respectfully submits that there was no material error by the examiner during
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`prosecution of the ‘342 Patent, as discussed below.
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`1. EXAMINER’S FAMILIARITY WITH THE COMMON
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`SPECIFICATION
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`As of the filing of this POPR, the patent family tree claiming priority to
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`Provisional Application No. 61/249,624 consists of 36 issued patents, all having a
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`common specification. (EX. 2001). All but 4 of the 36 issued patents were examined
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`and allowed by the same Examiner Minh Chau Nguyen. Therefore, Patent Owner
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`respectfully submits that Examiner Nguyen was very familiar with the specification
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`and the inventions described therein; also, that Examiner Nguyen was very familiar
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`with Applicant’s arguments distinguishing the novel use of “client devices” from the
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`prior art. There was no material error by Examiner Nguyen during prosecution of
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`the ‘342 Patent.
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`The branch of the patent family tree containing the ‘342 Patent is reproduced
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`below, with the ‘342 Patent highlighted in blue:
`8
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`IPR2022-00103 of Patent No. 11,044,342
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`PROV
`App. No. 61/249,624
`filed 10/8/2009
`
`NONPROV
`Patent No. 8,560,604
`
`DIV
`Patent No.
`10,069,936
`
`CON
`Patent No.
`10,257,319
`
`CON
`Patent No.
`10,484,510
`
`CON
`Patent No.
`10,491,712
`
`CON
`Patent No.
`11,044,342
`
`CON
`Patent No.
`11,044,344
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`
`
`
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`2. EXAMINER’S FAMILIARITY WITH CROWDS
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`The Crowds reference was cited by Applicant on an IDS and subsequently
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`reviewed/considered by Examiner Nguyen during prosecution of the ‘342 Patent.
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`(EX. 2008 at 2; see also Petition at 61). Based on the prosecution histories of the
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`related patents in the ‘342 Patent’s family, Examiner Nguyen reviewed/considered
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`the Crowds reference ten times before the notice of allowance was entered on
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`4/1/2021 for the ‘342 Patent. Therefore, Patent Owner respectfully submits that
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`Examiner Nguyen was very familiar with the Crowds reference during prosecution
`9
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`IPR2022-00103 of Patent No. 11,044,342
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`of the ‘342 Patent. Nonetheless, Examiner Nguyen never issued a rejection over
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`Crowds because the claimed inventions are easily distinguishable from the
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`disclosure of Crowds. There was no material error by Examiner Nguyen during
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`prosecution of the ‘342 Patent.
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`In the List of References Cited by Applicant and Considered by Examiner
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`(“LORCAC”) from the prosecution histories of related patents in the ‘342 Patent’s
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`family:
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`(cid:120) Examiner initialed Crowds in the LORCAC entered on 7/27/2020 during
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`prosecution of related Patent No. 10,785,347 (EX. 2002 at 2);
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`(cid:120) Examiner initialed Crowds in the LORCAC entered on 8/4/2020 during
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`prosecution of related Patent No. 10,805,429 (EX. 2003 at 18);
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`(cid:120) Examiner initialed Crowds in the LORCAC entered on 10/27/2020 during
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`prosecution of related Patent No. 11,038,989 (EX. 2004 at 18);
`
`(cid:120) Examiner initialed Crowds in the LORCAC entered on 10/28/2020 during
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`prosecution of related Patent No. 11,089,135 (EX. 2005 at 10);
`
`(cid:120) Examiner initialed Crowds in the LORCAC entered on 11/24/2020 during
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`prosecution of related Patent No. 10,931,792 (EX. 2006 at 19);
`
`(cid:120) Examiner initialed Crowds in the LORCAC entered on 11/25/2020 during
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`prosecution of related Patent No. 11,044,341 (EX. 2007 at 10);
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`10
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`IPR2022-00103 of Patent No. 11,044,342
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`(cid:120) Examiner initialed Crowds in the LORCAC entered on 12/22/2020 during
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`prosecution of the ‘342 Patent (EX. 2008 at 2; see also Petition at 61);
`
`(cid:120) Examiner initialed Crowds in the LORCAC entered on 12/22/2020 during
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`prosecution of related Patent No. 11,044,344 (EX. 2009 at 18);
`
`(cid:120) Examiner initialed Crowds in the LORCAC entered on 1/6/2021 during
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`prosecution of related Patent No. 10,958,768 (EX. 2010 at 11); and
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`(cid:120) Examiner initialed Crowds in the LORCAC entered on 3/30/2021 during
`
`prosecution of related Patent No. 11,044,346 (EX. 2011 at 2).
`
`As further discussed below in section III, Crowds does not anticipate or render
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`obvious the Challenged Claims of the ‘342 Patent. Crowds merely discloses a peer-
`
`to-peer system that does not utilize the second server ↔ first client device ↔ web
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`server architecture of the ‘342 Patent. Crowds’ jondos are generic, user computers
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`that operate within a computer ↔ computer ↔ server architecture. The ‘342 Patent
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`claims operate within a specific architecture, which is not disclosed in Crowds.
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`3. EXAMINER’S FAMILIARITY WITH RFC 1122
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`Like Crowds, the RFC 1122 reference was cited by Applicant on an IDS and
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`subsequently reviewed/considered by Examiner Nguyen during prosecution of the
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`‘342 Patent. (EX. 2008 at 3; see also Petition at 61). Based on the prosecution
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`histories of the related patents in the ‘342 Patent’s family, Examiner Nguyen
`
`reviewed/considered the RFC 1122 reference ten times before the notice of
`11
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`IPR2022-00103 of Patent No. 11,044,342
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`allowance was entered on 4/1/2021 for the ‘342 Patent. Therefore, Patent Owner
`
`respectfully submits that Examiner Nguyen was very familiar with the RFC 1122
`
`reference during prosecution of the ‘342 Patent.
`
`Both Crowds and RFC 1122 were in fact cited on the same IDS, yet Examiner
`
`Nguyen never issued a rejection over RFC 1122 because the claimed inventions are
`
`easily distinguishable from the disclosure of RFC 1122 either alone or in
`
`combination with Crowds.
`
`In the LORCACs from the prosecution histories of related patents:
`
`(cid:120) Examiner initialed RFC 1122 in the LORCAC entered on 7/27/2020 during
`
`prosecution of related Patent No. 10,785,347 (EX. 2002 at 3);
`
`(cid:120) Examiner initialed RFC 1122 in the LORCAC entered on 8/4/2020 during
`
`prosecution of related Patent No. 10,805,429 (EX. 2003 at 19);
`
`(cid:120) Examiner initialed RFC 1122 in the LORCAC entered on 10/27/2020 during
`
`prosecution of related Patent No. 11,038,989 (EX. 2004 at 19);
`
`(cid:120) Examiner initialed RFC 1122 in the LORCAC entered on 10/28/2020 during
`
`prosecution of related Patent No. 11,089,135 (EX. 2005 at 11);
`
`(cid:120) Examiner initialed RFC 1122 in the LORCAC entered on 11/24/2020 during
`
`prosecution of related Patent No. 10,931,792 (EX. 2006 at 20);
`
`
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`12
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`IPR2022-00103 of Patent No. 11,044,342
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`(cid:120) Examiner initialed RFC 1122 in the LORCAC entered on 11/25/2020 during
`
`prosecution of related Patent No. 11,044,341 (EX. 2007 at 11);
`
`(cid:120) Examiner initialed RFC 1122 in the LORCAC entered on 12/22/2020 during
`
`prosecution of the ‘342 Patent (EX. 2008 at 3; see also Petition at 61);
`
`(cid:120) Examiner initialed RFC 1122 in the LORCAC entered on 12/22/2020 during
`
`prosecution of related Patent No. 11,044,344 (EX. 2009 at 19);
`
`(cid:120) Examiner initialed RFC 1122 in the LORCAC entered on 1/6/2021 during
`
`prosecution of related Patent No. 10,958,768 (EX. 2010 at 12); and
`
`(cid:120) Examiner initialed RFC 1122 in the LORCAC entered on 3/30/2021 during
`
`prosecution of related Patent No. 11,044,346 (EX. 2011 at 7).
`
`There was no material error by Examiner Nguyen with respect to RFC 1122 during
`
`prosecution of the ‘342 Patent. RFC 1122 does not cure the deficiencies of Crowds
`
`with respect to independent claim 1 and therefore, Crowds in combination with RFC
`
`1122 does not teach or suggest the Challenged Claims of the ‘342 Patent.
`
`4. EXAMINER’S FAMILIARITY WITH RFC 2616
`
`The RFC 2616 reference was cited by Applicant on two separate IDS and
`
`twice reviewed/considered by Examiner Nguyen during prosecution of the ‘342
`
`Patent. (EX. 2008 at 12 and 20; see also Petition at 61).
`
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`IPR2022-00103 of Patent No. 11,044,342
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`RFC 2616 was first cited by Applicant on an IDS and subsequently
`
`reviewed/considered by Examiner Nguyen on 1/10/2017 during prosecution of
`
`Patent No. 10,069,936. (EX. 2025 at 5). MPEP 609.02 states that: “The examiner of
`
`the continuing application will consider information which has been considered by
`
`the Office in the parent application.” Therefore, based on the many continuations in
`
`the ‘342 Patent family, and in compliance with the MPEP, the RFC 2616 reference
`
`was reviewed/considered by Examiner Nguyen at least twenty-five times before the
`
`notice of allowance was entered on 4/1/2021 for the ‘342 Patent. Patent Owner
`
`respectfully submits that Examiner Nguyen was very familiar with the RFC 2616
`
`reference during prosecution of the ‘342 Patent.
`
`In multiple cases, RFC 2616 was also cited by Applicant on two separate IDS:
`
`(cid:120) Examiner initialed RFC 2616 in the LORCAC entered on 7/27/2020 during
`
`prosecution of related Patent No. 10,785,347 (EX. 2002 at 12 and 20);
`
`(cid:120) Examiner initialed RFC 2616 in the LORCAC entered on 8/4/2020 during
`
`prosecution of related Patent No. 10,805,429 (EX. 2003 at 6 and 14);
`
`(cid:120) Examiner initialed RFC 2616 in the LORCAC entered on 10/27/2020 during
`
`prosecution of related Patent No. 11,038,989 (EX. 2004 at 6 and 14);
`
`(cid:120) Examiner initialed RFC 2616 in the LORCAC entered on 10/28/2020 during
`
`prosecution of related Patent No. 11,089,135 (EX. 2005 at 6 and 20);
`
`
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`IPR2022-00103 of Patent No. 11,044,342
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`(cid:120) Examiner initialed RFC 2616 in the LORCAC entered on 11/24/2020 during
`
`prosecution of related Patent No. 10,931,792 (EX. 2006 at 6 and 14);
`
`(cid:120) Examiner initialed RFC 2616 in the LORCAC entered on 11/25/2020 during
`
`prosecution of related Patent No. 11,044,341 (EX. 2007 at 6 and 20);
`
`(cid:120) Examiner initialed RFC 2616 in the LORCAC entered on 12/22/2020 during
`
`prosecution of the ‘342 Patent (EX. 2008 at 12 and 20; see also Petition at
`
`61);
`
`(cid:120) Examiner initialed RFC 2616 in the LORCAC entered on 12/22/2020 during
`
`prosecution of related Patent No. 11,044,344 (EX. 2009 at 6 and 14);
`
`(cid:120) Examiner initialed RFC 2616 in the LORCAC entered on 1/6/2021 during
`
`prosecution of related Patent No. 10,958,768 (EX. 2010 at 6 and 21); and
`
`(cid:120) Examiner initialed RFC 2616 in the LORCAC entered on 3/30/2021 during
`
`prosecution of related Patent No. 11,044,346 (EX. 2011 at 12 and 21).
`
`Additionally, RFC 2616 appears in the ‘342 Patent’s specification. (EX. 1001
`
`at 16:21-22). The examiner is presumed to have reviewed the specification’s
`
`discussion of the prior art and considered it when evaluating the proposed claims.
`
`See MPEP 2103 (explaining that examiners are required to “review the complete
`
`specification”). “In this way, the record better supports Patent Owner’s argument[]
`
`that the disclosure of the asserted prior art reference[ was] submitted and reviewed
`
`
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`IPR2022-00103 of Patent No. 11,044,342
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`by the Examiner.” Ocado Group PLC v. Autostore Technology AS, IPR2021-00398,
`
`Paper 10 at 22 (PTAB July 21, 2021).
`
`There was no material error by Examiner Nguyen with respect to RFC 2616
`
`during prosecution of the ‘342 Patent. RFC 2616 does not cure the deficiencies of
`
`Crowds with respect to independent claim 1 and therefore, Crowds in combination
`
`with RFC 2616 does not teach or suggest the Challenged Claims of the ‘342 Patent.
`
`5. EXAMINER’S FAMILIARITY WITH THE CLAIM LANGUAGE
`
`During prosecution of the ‘342 Patent, in response to double-patenting
`
`rejections, Applicant filed a terminal disclaimer with related Patent Nos. 10,257,319;
`
`10,484,510; and 10,491,712; and with Application No. 16/662,800 (now issued
`
`Patent No. 11,044,344)3. The examiner then issued a Notice of Allowance on
`
`4/1/2021 and stated that “Examiner agrees that the limitations of the independent
`
`claims, within its environment, is allowable subject matter over the prior art, in light
`
`
`3 There were no claim amendments during prosecution of Patent No. 11,044,344.
`
`Also, Examiner Nguyen issued a Notice of Allowance of the claims in Patent No.
`
`11,044,344 on 3/18/2021, before issuing a Notice of Allowance of the claims in the
`
`‘342 Patent on 4/1/2021.
`
`
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`of the specification and in view of the Applicant’s arguments.” (EX. 1007 at 11-12)
`
`IPR2022-00103 of Patent No. 11,044,342
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`(emphasis added).
`
`The double-patenting rejections show that Examiner Nguyen considered the
`
`prosecution of related Patent Nos. 10,257,319; 10,484,510; 10,491,712; and
`
`11,044,344 during the prosecution of the ‘342 Patent. See, e.g., Google LLC v.
`
`Kewazinga Corp., IPR2021-00527, Paper 16 at 12 (PTAB Aug. 24, 2021). All of
`
`these patents recite methods that operate within the same second server ↔ first
`
`client device ↔ web server architecture, which Examiner Nguyen recognized as
`
`being unique.
`
`Petitioners argue that: “Applicant did not make any argument during
`
`prosecution about why the claims, or the limitations identified by the Examiner, were
`
`allowable over the prior art …Thus, it is not clear what Applicant arguments the
`
`Examiner was referring to in their last sentence [of the Notice of Allowance].”
`
`(Petition at 63). Patent Owner respectfully submits that this alleged lack of clarity
`
`does not rise to the level of material error by Examiner.
`
`Also, Applicant did make arguments with respect to the unique network
`
`architecture during prosecution of the related patents. For example, during
`
`prosecution of Patent No. 10,257,319; in Remarks dated 10/18/2018 and in response
`
`to a § 101 rejection, Applicant explained: “[i]t is noted that the claims here are even
`
`
`
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`IPR2022-00103 of Patent No. 11,044,342
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`less abstract since the steps involves not only a single generic computer, but few
`
`types of devices (servers/clients) communicating over a network.” (EX. 1018 at 15).
`
`“Specifically, the claim discloses a server receiving information from another server
`
`via a client device, which is unique and solves a specific problem such as anonymity
`
`when fetching information.” (EX. 1018 at 15). Applicant also argued “[a]s admitted
`
`in the Action, the claims involve specific networking of physical elements such as
`
`servers and clients, connected via various networks forming a specific structure and
`
`relationships, which are physical apparatuses, and are NOT [sic] a ‘generic
`
`computer’ as stated in the Action.” (EX. 1018 at 16).
`
`The novel use of a “client device” as claimed in the related patents was
`
`considered by Examiner during prosecution of the ‘342 Patent and Examiner’s
`
`review/consideration led to the allowance of properly issued claims. As dis