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 IPR2022-00353
`Patent No. 11,044,344
`_________________________
`
`
`
`
`
`PATENT OWNER 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
`
`
`
`Data Co Exhibit 1089
`Data Co v. Bright Data
`IPR2022-00135
`
`

`

`IPR2022-00353 of Patent No. 11,044,344
`
`TABLE OF CONTENTS
`
`INTRODUCTION TO THE ‘344 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 .........................................................................................................28
`III. LACK OF MERIT IN THE PETITION .........................................................32
`A. PRIORITY DATE ..........................................................................................33
`B. PERSON OF ORDINARY SKILL IN THE ART .........................................33
`C. CLAIM CONSTRUCTION ...........................................................................34
`D. PETITIONERS MISPLACE THEIR RELIANCE ON CROWDS ...............42
`1. SUMMARY OF CROWDS ........................................................................42
`2. FAILURE OF CROWDS ............................................................................45
`E. PETITIONERS MISPLACE THEIR RELIANCE ON DR. FREEDMAN ...47
`1. THE TESO LITIGATION INVOLVING RELATED PATENT NOS.
`10,257,319 AND 10,484,510 .............................................................................48
`2. THE CODE200 LITIGATION INVOLVING RELATED PATENT NO.
`10,484,511 .........................................................................................................49
`IV. CONCLUSION ..............................................................................................51
`
`
`
`ii
`
`

`

`IPR2022-00353 of Patent No. 11,044,344
`
`
`
`TABLE OF AUTHORITIES
`
`Cases
`Advanced Bionics, LLC v. Med-El Electromedizinishe Gerӓte GMBH, IPR2019-
`01469, Paper 6 (Feb. 13, 2020) (precedential) (“Advanced Bionics”) ......... passim
`
`
`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) .....................................................................................................................16
`
`
`Ocado Group PLC v. Autostore Technology AS, IPR2021-00398, Paper 10 (PTAB
`July 21, 2021)........................................................................................................15
`
`
`Statutes
`35 U.S.C. § 314 ....................................................................................................1, 51
`
`35 U.S.C. § 325 ............................................................................................... 1, 6, 51
`
`Other Authorities
`MPEP 2103 ..............................................................................................................15
`
`MPEP 609.02 ...........................................................................................................13
`
`
`
`
`
`
`
`
`
`iii
`
`

`

`IPR2022-00353 of Patent No. 11,044,344
`
`
`PATENT OWNER’S LIST OF EXHIBITS
`
`Patent Family Tree containing Patent No. 11,044,344
`
`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
`
`Select portions from prosecution history of Patent No. 11,044,341
`entered on 11/25/2020
`
`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. 10,069,936
`entered on 1/10/2017
`
`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)
`
`iv
`
`2001
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`2007
`
`2008
`
`2009
`
`2010
`
`2011
`
`2012
`
`
`
`

`

`IPR2022-00353 of Patent No. 11,044,344
`
`
`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)
`
`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)
`
`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)
`
`
`v
`
`2013
`
`2014
`
`2015
`
`2016
`
`2017
`
`2018
`
`2019
`
`2020
`
`2021
`
`
`
`
`
`

`

`IPR2022-00353 of Patent No. 11,044,344
`
`In this inter partes review (“IPR”) proceeding, Petitioners challenge the
`
`validity of claims 1, 2, 6-11, 13, 16, 18-25, 29-34, 36, 39, 41-46 (“Challenged
`
`Claims”) of Patent No. 11,044,344 (the “’344 Patent”) owned by Bright Data Ltd.
`
`(“Patent Owner” or “Bright Data”). (Petition at 10).1
`
`Patent Owner respectfully requests that the Patent Trial and Appeal Board
`
`(“Board”) exercise its discretion and deny institution under 35 U.S.C. § 325 for at
`
`least two reasons. First, institution should be denied because Petitioners have failed
`
`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
`
`inefficient use of the Board’s resources to re-analyze the same prior art references
`
`when the examiner has already analyzed these references at least nine times.
`
`Additionally, Patent Owner respectfully requests that the Board exercise its
`
`discretion and deny institution under 35 U.S.C. § 314 because Petitioners fail to
`
`
`1 In this Patent Owner Preliminary Response (“POPR”), Bright Data is only
`
`addressing select issues demonstrating that review should not be instituted. In so
`
`doing, Bright Data is not acquiescing to other issues raised by Petitioners and
`
`reserves the right to address all issues and to challenge all points raised by Petitioners
`
`in any future response if proceedings are instituted. (See U.S.P.T.O. Trial Practice
`
`Guide, November 2019 Update, at 49-52).
`
`
`
`1
`
`

`

`IPR2022-00353 of Patent No. 11,044,344
`
`establish a reasonable likelihood that they would prevail with respect to at least one
`
`of the claims challenged in the Petition. The independent claims 1 and 24 of the ‘344
`
`Patent are challenged based on alleged anticipation by a single reference (Crowds)
`
`and/or alleged obviousness based on a single reference (Crowds). The independent
`
`claims of the ‘344 Patent are strongly novel and nonobvious when compared to
`
`Crowds. As explained below, the primary reference (Crowds) and alleged
`
`combinations of references fundamentally fail to teach or suggest the claimed
`
`combinations of elements recited in the Challenged Claims to achieve the objectives
`
`and advantages of the ‘344 Patent.2 Thus, the substantive weaknesses of the Grounds
`
`further militates in favor of denying institution.
`
`I.
`
`INTRODUCTION TO THE ‘344 PATENT
`
`The ‘344 Patent describes a novel “system designed for increasing network
`
`communication speed for users …” (EX. 1002 at Abstract). To achieve the
`
`advantages described in the specification, the ‘344 Patent claims methods utilizing
`
`a novel “second server ↔ first client device ↔ web server” architecture, whereby
`
`a “first client device” serves as a proxy between the “second server” and “web
`
`
`2 By way of example, a jury recently found the asserted claims of related Patent Nos.
`
`10,257,319 and 10,484,510 were not anticipated by Crowds, as further explained
`
`below. (EX. 2019 at 5).
`
`
`
`2
`
`

`

`IPR2022-00353 of Patent No. 11,044,344
`
`server.”
`
`A problem in the art was the fact that certain websites with public information
`
`nevertheless create technological roadblocks to obtaining that information from
`
`certain requesting devices. For example, companies often make many thousands of
`
`requests or more when they are trying to maintain current data from other company
`
`websites, such as a travel website searching airlines for up-to-the-minute ticket
`
`prices, and those requests will be blocked if the target web server identifies the user
`
`as a competitor, which often occurs when they come from a commercial IP address
`
`and/or if too many requests are made from the same IP address.
`
`To overcome these challenges, the proxy service of the claims sends requests
`
`through one or more of a large group of proxy “client devices,” such as individual
`
`cell phone devices configured with software to function as proxies. As the proxy
`
`devices belong to real people who otherwise send such requests to target web servers
`
`as customers, the targets will allow the queries and not artificially block them.
`
`The ‘344 Patent explains that previous “proxy servers” fail to provide a
`
`“comprehensive solution for Internet surfing,” in part because they “would need to
`
`be deployed at every point around the world where the Internet is being consumed.”
`
`(EX. 1002 at 2:24-27; see also 2:8-23). Instead, to create a new type of consumer-
`
`based network that never existed before, the ‘344 Patent employs “client devices”
`
`that operate as proxies. (Id. at 3:13-55).
`
`
`
`3
`
`

`

`IPR2022-00353 of Patent No. 11,044,344
`
`Exemplary independent claim 1 of the ‘344 Patent recites a method for use
`
`over the unique second server ↔ first client device ↔ web server architecture
`
`recited in the claim:
`
`1. A method for use with a web server that stores a first web-page
`
`identified by a first Uniform Resource Locator (URL), the method by a first
`
`client device comprising:
`
`communicating with a second server;
`
`receiving, from the second server, the first URL;
`
`sending, to the web server over the Internet, the first URL;
`
`receiving, the first web-page from the web server over the Internet in
`
`response to the sending of the first URL; and
`
`sending the received first web-page to the second server, in response to the
`
`receiving of the first URL.
`
`
`
`It is clear from claim 1 that the method is performed “by a first client device”
`
`which is a communication device. (See EX. 1011 at 12).3 The communication device
`
`can serve as a proxy in requesting content using the “second server ↔ first client
`
`device ↔ web server” architecture, shown below.
`
`
`3 Similarly, claim 24 is performed “by a first device.”
`
`
`
`4
`
`

`

`IPR2022-00353 of Patent No. 11,044,344
`
`The unique arrangement of the devices recited in the claims, together with the specific
`
`steps that are recited, serve to differentiate the Challenged Claims from prior art
`
`
`
`systems and to achieve the advantages of the inventions.
`
`A. THE CHALLENGED CLAIMS
`
`The ‘344 Patent contains 46 claims with claims 1 and 24 being independent.
`
`Petitioners challenge claims 1, 2, 6-11, 13, 16, 18-25, 29-34, 36, 39, 41-46 of the
`
`‘344 Patent. (Petition at 10).
`
`B. THE ALLEGED GROUNDS
`
`Petitioners allege the following Grounds (see Petition at 10-12):
`
`Ground 1
`
`Claims 1, 2, 6, 7, 16, 18-23
`
`Ground 2
`
`Claims 1, 2, 6, 7, 16, 18-23
`
`Ground 3
`
`Claims 24, 25, 29, 30, 39, and 41-46
`
`Grounds 4
`and 5
`
`With Grounds 1 and 2 as predicates,
`Claims 8 and 9
`
`Ground 6 With Ground 3 as a predicate, Claims 31
`and 32
`
`Grounds 7
`and 8
`
`With Grounds 1 and 2 as predicates,
`Claims 10, 11, and 13
`
`
`
`5
`
`§ 102(b) over Crowds
`
`§ 103(a) over Crowds
`
`§ 103(a) over Crowds
`
`§ 103(a) over Crowds
`and RFC 1122
`
`§ 103(a) over Crowds
`and RFC 1122
`
`§ 103(a) over Crowds
`and RFC 2616
`
`

`

`IPR2022-00353 of Patent No. 11,044,344
`
`Ground 9 With Ground 3 as a predicate, Claims 33,
`34, and 36
`
`
`
`
`§ 103(a) over Crowds
`and RFC 2616
`
`
`II. THE BOARD SHOULD DENY INSTITUTION BASED ON THE
`
`ADVANCED BIONICS FRAMEWORK
`
`The precedential decision in Advanced Bionics states that: “under § 325(d),
`
`the Board uses the following two-part framework: (1) whether the same or
`
`substantially the same art previously was presented to the Office or whether the same
`
`or substantially the same arguments previously were presented to the Office; and (2)
`
`if either condition of first part of the framework is satisfied, whether the petitioner
`
`has demonstrated that the Office erred in a manner material to the patentability of
`
`challenged claims.” Advanced Bionics, LLC v. Med-El Electromedizinishe Gerӓte
`
`GMBH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential)
`
`(“Advanced Bionics”). The application of this two-part framework that “reflects a
`
`commitment to defer to previous Office evaluations of the evidence of record unless
`
`material error is shown.” Id. at 8-9.
`
`The Board should deny institution under 35 U.S.C. § 325(d) because the
`
`Petition relies on references that were previously presented to the Office and
`
`Petitioners have failed to demonstrate that the examiner erred in a manner material
`
`
`
`6
`
`

`

`IPR2022-00353 of Patent No. 11,044,344
`
`to the patentability of the challenged claims. When “the first part of the framework
`
`is satisfied and the petitioner fails to make a showing of material error, the Director
`
`generally will exercise discretion not to institute inter partes review.” Advanced
`
`Bionics at 8-9.
`
`A. THE FIRST PART OF THE ADVANCED BIONICS FRAMEWORK
`
`It is undisputed that the first part of the Advanced Bionics is satisfied. (See
`
`Petition at 64). Crowds, RFC 1122, and RFC 2616 were all presented to the Office
`
`during prosecution of the ‘344 Patent, as discussed in the Petition and further
`
`discussed below. See also Advanced Bionics at 7-8 (“Previously presented art
`
`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.”)
`
`B. THE SECOND PART OF THE ADVANCED BIONICS FRAMEWORK
`
`Having reviewed and considered the prior art references, the examiner
`
`allowed the Challenged Claims as being novel and nonobvious in view of Crowds,
`
`RFC 1122, and RFC 2616. Patent Owner respectfully submits the Board need not
`
`repeat this review a second time. “If reasonable minds can disagree regarding the
`
`purported treatment of the art or arguments” by the examiner, then “it cannot be said
`
`that the Office erred in a manner material to patentability.” Advanced Bionics at 9.
`
`The Board “must presume the examiner did his job.” Amgen Inc. v. Hoechst Marion
`
`Roussel, Inc., 314 F.3d 1313, 1327 (Fed. Cir. 2003).
`7
`
`
`
`

`

`IPR2022-00353 of Patent No. 11,044,344
`
`In sum, Petitioners allege that the examiner materially erred in allowing the
`
`Challenged Claims because the examiner did not issue a rejection based on Crowds
`
`as set forth in the Grounds. (See Petition at 65; see also id. at 70-71). Although
`
`Petitioners rely on the declaration of Dr. Freedman (EX. 1003), this evidence alone
`
`is insufficient to justify expenditure of the Board’s finite resources. Patent Owner
`
`respectfully submits that there was no material error by the examiner during
`
`prosecution of the ‘344 Patent, as discussed below.
`
`1. EXAMINER’S FAMILIARITY WITH THE COMMON
`
`SPECIFICATION
`
`As of the filing of this POPR, the patent family tree claiming priority to
`
`Provisional Application No. 61/249,624 consists of 37 issued patents, all having a
`
`common specification. (EX. 2001). All but 4 of the 37 issued patents were examined
`
`and allowed by the same Examiner Minh Chau Nguyen. Therefore, Patent Owner
`
`respectfully submits that Examiner Nguyen was very familiar with the specification
`
`and the inventions described therein; also, that Examiner Nguyen was very familiar
`
`with Applicant’s arguments distinguishing the novel use of “client devices” from the
`
`prior art. There was no material error by Examiner Nguyen during prosecution of
`
`the ‘344 Patent.
`
`The branch of the patent family tree containing the ‘344 Patent is reproduced
`
`below, with the ‘344 Patent highlighted in blue:
`8
`
`
`
`

`

`IPR2022-00353 of Patent No. 11,044,344
`
`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
`
`
`
`
`
`2. EXAMINER’S FAMILIARITY WITH CROWDS
`
`The Crowds reference was cited by Applicant on an IDS and subsequently
`
`reviewed/considered by Examiner Nguyen during prosecution of the ‘344 Patent.
`
`(EX. 2009 at 18; see also Petition at 64). Based on the prosecution histories of the
`
`related patents in the ‘344 Patent’s family, Examiner Nguyen reviewed/considered
`
`the Crowds reference nine times before the notice of allowance was entered on
`
`3/18/2021 for the ‘344 Patent. Therefore, Patent Owner respectfully submits that
`
`Examiner Nguyen was very familiar with the Crowds reference during prosecution
`9
`
`
`
`

`

`IPR2022-00353 of Patent No. 11,044,344
`
`of the ‘344 Patent. Nonetheless, Examiner Nguyen never issued a rejection over
`
`Crowds because the claimed inventions are easily distinguishable from the
`
`disclosure of Crowds. There was no material error by Examiner Nguyen during
`
`prosecution of the ‘344 Patent.
`
`In the List of References Cited by Applicant and Considered by Examiner
`
`(“LORCAC”) from the prosecution histories of related patents in the ‘344 Patent’s
`
`family:
`
`(cid:120) Examiner initialed Crowds in the LORCAC entered on 7/27/2020 during
`
`prosecution of related Patent No. 10,785,347 (EX. 2002 at 2);
`
`(cid:120) Examiner initialed Crowds in the LORCAC entered on 8/4/2020 during
`
`prosecution of related Patent No. 10,805,429 (EX. 2003 at 18);
`
`(cid:120) Examiner initialed Crowds in the LORCAC entered on 10/27/2020 during
`
`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
`
`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
`
`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
`
`prosecution of related Patent No. 11,044,341 (EX. 2007 at 10);
`
`
`
`10
`
`

`

`IPR2022-00353 of Patent No. 11,044,344
`
`(cid:120) Examiner initialed Crowds in the LORCAC entered on 12/22/2020 during
`
`prosecution of the ‘342 Patent (EX. 2008 at 2);
`
`(cid:120) Examiner initialed Crowds in the LORCAC entered on 12/22/2020 during
`
`prosecution of related Patent No. 11,044,344 (EX. 2009 at 18); and
`
`(cid:120) Examiner initialed Crowds in the LORCAC entered on 1/6/2021 during
`
`prosecution of related Patent No. 10,958,768 (EX. 2010 at 11).
`
`As further discussed below in section III, Crowds does not anticipate or render
`
`obvious the Challenged Claims of the ‘344 Patent. Crowds merely discloses a peer-
`
`to-peer system that does not utilize the second server ↔ first client device ↔ web
`
`server architecture of the ‘344 Patent. Crowds’ jondos are generic, user computers
`
`that operate within a computer ↔ computer ↔ server architecture. The ‘344 Patent
`
`claims operate within a specific architecture, which is not disclosed in Crowds.
`
`3. EXAMINER’S FAMILIARITY WITH RFC 1122
`
`Like Crowds, the RFC 1122 reference was cited by Applicant on an IDS and
`
`subsequently reviewed/considered by Examiner Nguyen during prosecution of the
`
`‘344 Patent. (EX. 2009 at 19; see also Petition at 64). Based on the prosecution
`
`histories of the related patents in the ‘344 Patent’s family, Examiner Nguyen
`
`reviewed/considered the RFC 1122 reference nine times before the notice of
`
`allowance was entered on 3/18/2021 for the ‘344 Patent. Therefore, Patent Owner
`
`
`
`11
`
`

`

`IPR2022-00353 of Patent No. 11,044,344
`
`respectfully submits that Examiner Nguyen was very familiar with the RFC 1122
`
`reference during prosecution of the ‘344 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);
`
`(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);
`
`
`
`12
`
`

`

`IPR2022-00353 of Patent No. 11,044,344
`
`(cid:120) Examiner initialed RFC 1122 in the LORCAC entered on 12/22/2020 during
`
`prosecution of the ‘342 Patent (EX. 2008 at 3);
`
`(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); and
`
`(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).
`
`There was no material error by Examiner Nguyen with respect to RFC 1122 during
`
`prosecution of the ‘344 Patent. RFC 1122 does not cure the deficiencies of Crowds
`
`with respect to independent claims 1 or 24 and therefore, Crowds in combination
`
`with RFC 1122 does not teach or suggest the Challenged Claims of the ‘344 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 ‘344
`
`Patent. (EX. 2009 at 6 and 14; see also Petition at 64).
`
`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. 2011 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
`
`
`
`13
`
`

`

`IPR2022-00353 of Patent No. 11,044,344
`
`the ‘344 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 3/18/2021 for the ‘344 Patent. Patent Owner
`
`respectfully submits that Examiner Nguyen was very familiar with the RFC 2616
`
`reference during prosecution of the ‘344 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);
`
`(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);
`
`
`
`14
`
`

`

`IPR2022-00353 of Patent No. 11,044,344
`
`(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);
`
`(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); and
`
`(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).
`
`Additionally, RFC 2616 appears in the ‘344 Patent’s specification. (EX. 1002
`
`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
`
`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 ‘344 Patent. RFC 2616 does not cure the deficiencies of
`
`Crowds with respect to independent claims 1 or 24 and therefore, Crowds in
`
`combination with RFC 2616 does not teach or suggest the Challenged Claims of the
`
`‘344 Patent.
`
`
`
`15
`
`

`

`IPR2022-00353 of Patent No. 11,044,344
`
`5. EXAMINER’S FAMILIARITY WITH THE CLAIM LANGUAGE
`
`During prosecution of the ‘344 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. 16/600,507 (now issued
`
`Patent No. 11,044,342)4. The examiner then issued a Notice of Allowance on
`
`3/18/2021 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
`
`of the specification and in view of the Applicant’s arguments.” (EX. 1005 at 11)
`
`(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
`
`11,044,342 during the prosecution of the ‘344 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.
`
`The novel use of a “client device” between a “second server” and a “web
`
`server” as claimed in the related patents was considered by Examiner during
`
`
`4 There were no claim amendments during prosecution of Patent No. 11,044,342.
`
`
`
`16
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`IPR2022-00353 of Patent No. 11,044,344
`
`prosecution of the ‘344 Patent and Examiner’s review/consideration led to the
`
`allowance of properly issued claims. As discussed below, the examiner applied Fang
`
`(EX. 1021) and Zaid (EX. 1022) during prosecution of Patent No. 10,257,319; and
`
`the examiner applied Yu (EX. 1048) and Barth (EX. 1049) during prosecution of
`
`Patent No. 10,491,712. The claim language of the related patents is relatively similar
`
`as shown, emphasized below:
`
`Patent No.
`10,257,3195
`(EX. 1038)
`1. A method
`for use with a
`first client
`device, for
`use with a
`first server
`that comprises
`a web server
`that is a
`Hypertext
`Transfer
`Protocol
`(HTTP) server
`that responds
`to HTTP
`
`Patent No.
`10,484,5106
`(EX. 1023)
`1. A method
`for use with a
`web server
`that responds
`to Hypertext
`Transfer
`Protocol
`(HTTP)
`requests and
`stores a first
`content
`identified by a
`first content
`identifier, the
`method by a
`
`Patent No.
`10,491,7127
`(EX. 1039)
`1. A method
`for use with a
`web server
`that responds
`to Hypertext
`Transfer
`Protocol
`(HTTP)
`requests and
`stores a first
`content
`identified by a
`first content
`identifier, the
`method by a
`
`Patent No.
`11,044,342
`(EX. 1001)
`1. A method
`for use with a
`web server
`that responds
`to Hypertext
`Transfer
`Protocol
`(HTTP)
`requests and
`stores a first
`content that is
`identified by a
`first Uniform
`Resource
`Locator
`
`The ‘344
`Patent8
`(EX. 1002)
`1. A method
`for use with a
`web server
`that stores a
`first web-page
`identified by a
`first Uniform
`Resource
`Locator
`(URL), the
`method by a
`first client
`device
`comprising:
`
`
`
`5 See also claim 23 (“URL”) of Patent No. 10,257,319.
`
`6 See also claim 20 (“URL”) of Patent No. 10,484,510.
`
`7 See also claim 19 (“URL”) of Patent No. 10,491,712.
`
`8 See also claim 16 ("HTTP requests") of Patent No. 11,044,344.
`
`
`
`17
`
`

`

`requests, the
`first server
`stores a first
`content
`identified by a
`first content
`identifier, and
`for use with a
`second server,
`the method by
`the first client
`device
`comprising:
`
`
`[See issued
`claim 23]
`
`[See issued
`claim 24]
`
`IPR2022-00353 of Patent No. 11,044,344
`
`first client
`device
`comprising:
`
`first client
`device
`comprising:
`
`
`(URL), the
`method by a
`first client
`device
`comprising:
`
`
`[See issued
`claim 21]
`
`[See issued
`claim 20]
`
`establishing a
`Transmission
`Control
`Protocol
`(TCP)
`connection
`with a second
`server;
`
`establishing a
`Transmission
`Control
`Protocol
`(TCP)
`connection
`with a second
`server;
`
`
`
`[See issued
`claim 21]
`
`communicati
`ng with a
`second server;
`
`[See also
`issued claim
`20]
`
`executing, by
`the first client
`device, a web
`browser
`application or
`an email
`application;
`
`
`establishing a
`Transmission
`Control
`Protocol
`(TCP)
`connection
`with a second
`server;
`
`
`
`
`
`
`
`
`
`
`18
`
`

`

`IPR2022-00353 of Patent No. 11,044,344
`
`[See issued
`claim 15]
`
`receiving,
`from the
`second server,
`the first URL;
`
`[See issued
`claim 16]
`
`
`sending, to
`the web server
`over the
`Internet, the
`first URL;
`
`receiving,
`from the
`second server
`over the
`esta