`Trials@uspto.gov
`Entered: June 1, 2022
`Tel: 571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`CODE200, UAB, TESO LT, UAB, METACLUSTER LT, UAB, and
`OXYSALES, UAB,
`Petitioner,
`v.
`BRIGHT DATA LTD.,
`Patent Owner.
`
`IPR2022-00103
`Patent 11,044,342 B2
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`
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`
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`
`
`Before THOMAS L. GIANNETTI, SHEILA F. McSHANE, and
`RUSSELL E. CASS, Administrative Patent Judges.
`
`McSHANE, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`Data Co Exhibit 1097
`Data Co v. Bright Data
`IPR2022-00135
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`IPR2022-00103
`Patent 11,044,342 B2
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`I. INTRODUCTION
`Code200, UAB; Teso LT, UAB; Metacluster LT, UAB; and Oxysales,
`UAB (collectively, “Petitioner”)1 filed a Petition (Paper 1, “Pet.”) requesting
`inter partes review of claims 1, 2, 6–11, 13, 15, 16, and 18–23 (the
`“challenged claims”) of U.S. Patent No. 11,044,342 B2 (Ex. 1001, “the ’342
`patent”). Patent Owner, Bright Data Ltd., filed a Preliminary Response
`(Paper 6, “Prelim. Resp.”).
`The Board has authority to determine whether to institute an inter
`partes review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C.
`§ 314(a), we may not authorize an inter partes review unless the information
`in the petition and the preliminary response “shows that there is a reasonable
`likelihood that the petitioner would prevail with respect to at least 1 of the
`claims challenged in the petition.”
`For the reasons stated below, we determine that Petitioner has
`established a reasonable likelihood that it would prevail with respect to at
`least one claim. We therefore institute inter partes review as to all of the
`challenged claims of the ’342 patent and all of the asserted grounds of
`unpatentability in the Petition.
`
`II. BACKGROUND
`
`
`
`A. Related Matters
`The parties identify several court proceedings that involve patents
`related to the ’342 patent. Pet. 5–6; Paper 4, 2. In particular, the parties
`identify Luminati Networks Ltd. v. Teso LT, UAB, et al., No. 2:19-cv-395
`
`
`1 Petitioner identifies coretech lt, UAB as another real party-in-interest. Pet.
`4–5.
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`2
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`Patent 11,044,342 B2
`(E.D. Tex.) (“the Teso district court litigation”). The parties do not,
`however, identify any district court cases that involve the ’342 patent. Id.
`The parties also identify several inter partes reviews for patents
`related to the ’342 patent, but similarly, none of these cases challenged
`claims of the ’342 patent. Pet. 6–7; Paper 4, 1. In addition, Patent Owner
`identifies ex parte reexaminations ordered for related patents, Control No.
`90/014,875 and Control No. 90/014,876. Paper 4, 1.
`
`B. The ’342 Patent
`The ’342 patent is titled “System Providing Faster And More Efficient
`Data Communication” and issued on June 22, 2021, from an application
`filed on October 13, 2019. Ex. 1001, codes (22), (45), (54). The patent is
`subject to a terminal disclaimer. Id. at code (*). The application for the
`’342 patent claims priority to several applications, including U.S.
`Provisional Application No. 61/249,624, filed October 8, 2009. Id. at code
`(60).
`
`The ’342 patent is directed to addressing the “need for a new method
`of data transfer that is fast for the consumer, cheap for the content distributor
`and does not require infrastructure investment for ISPs.” Ex. 1001, 1:54–56.
`The ’342 patent states that other “attempts at making the Internet faster for
`the consumer and cheaper for the broadcaster,” such as proxy servers and
`peer-to-peer file sharing, have various shortcomings. Id. at 1:58–3:3. The
`’342 patent provides a system and method “for faster and more efficient data
`communication within a communication network,” such as in the network
`illustrated in Figure 3, reproduced below. Id. at 3:13–16, 4:3–5.
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`Patent 11,044,342 B2
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`Figure 3, above, is a schematic diagram depicting communication network
`100 including a number of communication devices. Ex. 1001, 4:54–61.
`Client 102 is capable of communicating with peers 112, 114, and 116, as
`well as with one or more agents 122. Id. at 4:56–58. Web server 152 may
`be “a typical HTTP server, such as those being used to deliver content on
`any of the many such servers on the Internet.” Id. at 4:63–67. Acceleration
`server 162 includes acceleration server storage device 164 with an
`acceleration server database, which “stores Internet Protocol (IP) addresses
`of communication devices within the communication network 100 having
`acceleration software stored therein.” Id. at 5:11–16.
`In operation, a client may request a resource on the network, for
`example, through the use of an Internet browser. Ex. 1001, 12:62–13:3. If
`server 152 is the target of the request, the client sends the IP address of
`server 152 to acceleration server 162. Id. at 13:8–13. Acceleration server
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`162 then prepares a list of agents that can handle the request, which includes
`communication devices “that are currently online, and whose IP address is
`numerically close to the IP of the destination Web server 152.” Id. at
`13:19–29. The client then sends the original request to the agents in the list
`to find out which “is best suited to be the one agent that will assist with this
`request.” Id. at 13:31–36. The connection established between the agent
`and client may be a Transmission Control Protocol [TCP] connection. Id. at
`17:61–64.
`Each agent responds to the client with information as to “whether the
`agent has seen a previous request for this resource that has been fulfilled,”
`and “which can help the client to download the request information from
`peers in the network.” Ex. 1001, 13:51–58. The client selects an agent
`based on a number of factors, and the selected agent determines whether
`data stored in its memory or the memory of the peers “still mirrors the
`information that would have been received from the server itself for this
`request.” Id. at 13:64–14:1, 14:35–38. If the selected agent does not have
`the necessary information to service a request, it may “load the information
`directly from the server in order to be able to provide an answer to the
`requesting client.” Id. at 14:62–67.
`
` C. Illustrative Claim
`The ’342 patent has 24 claims. Claim 1, the only independent claim
`in the ’342 patent, is illustrative of the claimed subject matter and is
`reproduced below, with bracketed designations added to the limitations for
`reference purposes.
`1. [pre] A method for use with a web server that responds to
`Hypertext Transfer Protocol (HTTP) requests and stores a first content
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`that is identified by a first Uniform Resource Locator (URL), the
`method by a first client device comprising:
`[a] executing, by the first client device, a web browser
`application or an email application;
`[b] establishing a Transmission Control Protocol (TCP)
`connection with a second server;
`[c] receiving, the first content from the web server over
`an Internet; and
`[d] sending the received first content, to the second
`server over the established TCP connection, in response to the
`receiving of the first URL.
`Ex. 1001, 19:18–31.
` D. Asserted Grounds of Unpatentability
`Petitioner challenges the patentability of claims 1, 2, 6–11, 13, 15, 16,
`and 18–23 of the ’342 patent on the following grounds:
`Claims Challenged
`35 U.S.C. §2
`Reference(s)
`1, 2, 6, 7, 15, 16, 18–
`102(b)
`Crowds3
`23
`1, 2, 6, 7, 15, 16, 18–
`23
`8, 9
`
`Crowds
`Crowds, RFC 11224,
`
`103(a)
`103(a)
`
`
`2 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 287–88 (2011), amended 35 U.S.C. §§ 102 and 103, effective
`March 16, 2013. Because the ’342 patent claims priority to a provisional
`application that was filed before this date, with Petitioner not contesting that
`priority, the pre-AIA versions of §§ 102 and 103 apply. See Ex. 1001, code
`(60).
`3 Michael K. Reiter, Crowds: Anonymity for Web Transactions, ACM
`Transactions on Information and System Security, Vol. 1, No. 1, November
`1998, at 66–92 (Ex. 1004).
`4 Requirements for Internet Hosts – Communication Layers, Network
`Working Group, RFC 1122, October, 1989 (Ex. 1040).
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`Patent 11,044,342 B2
`Claims Challenged
`10, 11, 13
`Pet. 12–14.
`
`35 U.S.C. §2
`103(a)
`
`Reference(s)
`Crowds, RFC 26165
`
`III. DISCRETIONARY DENIAL
`Under 35 U.S.C. § 325(d), when determining whether to institute an
`
`inter partes review, “the Director may take into account whether, and reject
`the petition or request because, the same or substantially the same prior art
`or arguments previously were presented to the Office.” In evaluating
`arguments under § 325(d), we use
`[a] 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 Elektromedizinische Geräte GmbH,
`IPR2019-01469, Paper 6 at 6 (PTAB Feb. 13, 2020) (precedential)
`(“Advanced Bionics”); see also Becton, Dickinson & Co. v. B. Braun
`Melsungen AG, IPR2017-01586, Paper 8 at 17–18 (PTAB Dec. 15, 2017)
`(precedential as to Section III.C.5, first paragraph) (listing factors to
`consider in evaluating the applicability of § 325(d)) (“Becton Dickinson”).
`
`Both parties acknowledge that Crowds, RFC 1122, and RFC 2616
`were considered before the Patent Office during the prosecution of the ’342
`patent, so the first part of the two-part Advanced Bionics framework applies.
`
`
`5 Hypertext Transfer Protocol—HTTP/1.1, Network Working Group, RFC
`2616, The Internet Society, 1999 (Ex. 1006).
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`Under part two of the Advanced Bionics framework, Becton Dickinson
`factors (c), (e), and (f) are considered in the evaluation of whether the
`examiner erred during prosecution. Advanced Bionics, Paper 6 at 10–11.
`Becton, Dickinson identifies these factors as (c) the extent to which the
`asserted art was evaluated during examination, including whether the prior
`art was the basis for rejection; (e) whether Petitioner has pointed out
`sufficiently how the examiner erred in its evaluation of the asserted prior art;
`and (f) the extent to which additional evidence and facts presented in the
`Petition warrant reconsideration of the prior art or argument. Becton,
`Dickinson, Paper 8 at 17–18.
`
`Petitioner argues that although Crowds, RFC 1122, and RFC 2616
`were considered by the Patent Office during the prosecution of the ’342
`patent, the examiner materially erred in allowing the claims. Pet. 60–67.
`More specifically, Petitioner asserts that the examiner did not issue prior art
`rejections, only obviousness-type double patenting rejections, which were
`overcome with a terminal disclaimer filed by the applicant. Id. at 61–62.
`Petitioner refers to the Notice of Allowance issued by the examiner, which
`stated that the claims were allowed “in view of the Applicant’s arguments.”
`Id. at 62–63. Petitioner contends this was an error by the examiner because
`there were no applicant arguments made during prosecution of the ’342
`patent. Id. (citing Ex. 1007, 11–12). Petitioner contends further with the
`supporting testimony of Dr. Freeman (which was unavailable to the
`examiner), that the Petition demonstrates that Crowds discloses and teaches
`the claims at issue, and therefore also demonstrates the examiner’s material
`error. Id. at 63.
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`Petitioner additionally refers to the prosecution history of related
`patent, U.S. Patent No. 10,484,510, a parent application to the application
`for the ’342 patent, which similarly only had obviousness-type double
`patenting rejections with a terminal disclaimer filed, and with a similar
`Notice of Allowance issued. Pet. 64 (citing Ex. 1017, 4, 9, 10, 12, 13, 35,
`36). Petitioner also refers to the prosecution history of related U.S. Patent
`No. 10,257,319 (“the ’319 patent”), a grandparent application, which had
`claims with some similar steps to the ’342 patent claims, as well as some
`steps that are different, and which had a prior art obviousness rejection over
`Fang and Zaid. Id. at 64 (citing Ex. 1018, 33–46). Petitioner argues that
`Crowds is more material than either Fang or Zaid. Id. at 64–65. More
`specifically, the examiner found that Fang taught some of the steps of claim
`1 of the ’319 patent, but relied on Zaid for teaching others. Id. at 64 (citing
`Ex. 1018, 30. 35–37). Petitioner asserts that in the ’319 patent prosecution,
`the applicant argued to the examiner that “the prior art rejection was unclear,
`the references were ‘directed towards respectively different fields and
`purposes[] and are based on respectively different structures,’ and the
`rationale for combining the references was improperly conclusory.” Id. at
`64–65 (citing Ex. 1018, 13, 19–22).
`
`Patent Owner responds that we should deny the Petition under
`§ 325(d) because Petitioner fails to demonstrate that the examiner erred in a
`manner material to the patentability of the challenged claims. Prelim. Resp.
`6–31. Patent Owner asserts that the examiner was familiar with the ’342
`patent specification, which was common to 32 of the 36 patent applications
`in the ’342 patent family, because the same examiner was involved in all
`their prosecutions. Id. at 8–9. Patent Owner argues also that the examiner
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`was also familiar with Crowds, RFC 1122, and RFC 2616 because those
`references had been cited in many of the prosecutions of the applications in
`the family of the ’342 patent. Id. at 9–16. Patent Owner contends that the
`examiner was familiar with the claim language in the family of cases
`because the examiner had issued a double-patenting rejection in this case
`over some of the claims of the related patents. Id. at 16–17. Patent Owner
`asserts that the rejections show that the examiner was aware that the patents
`operated “within the same second server (cid:316)(cid:3)first client device (cid:316)(cid:3)web server
`architecture, which Examiner Nguyen recognized as being unique.” Id. at
`17. Patent Owner additionally asserts that, although Petitioner argues that
`the examiner’s basis for the Notice of Allowance in the ’342 patent
`prosecution referred to applicant arguments when there were no arguments
`presented, “this alleged lack of clarity does not rise to the level of material
`error by Examiner.” Id.
`
`Patent Owner provides a table comparing the claim language of claim
`1 of the ’342 patent to that of other related patents. Prelim. Resp. 18–22.
`Patent Owner argues that the prosecution histories of the patents that it
`identifies as related are relevant to the second part of Advanced Bionics
`framework, and the same examiner had considered similar claim limitations
`in the related patent as well as the Crowds, RFC 1122, and RFC 2616
`references. Id. at 22. Patent Owner argues that Petitioner fails to show
`material error in its arguments related to Fang and Zaid because the fact that
`the examiner did not issue rejections as set forth in the grounds is not
`material error. Id. at 23. Patent Owner also refers to the prosecution of U.S.
`Patent No. 10,491,712 (“the ’712 patent”), which is alleged to have similar
`claim limitations to the claims of the ’342 patent. Id. at 24. In that
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`prosecution, the examiner issued a rejection over Yu and Barth, alleging that
`Petitioner never addressed the fact that the examiner allowed claims in the
`’712 patent that correspond to claims of the ’342 patent. Id. Patent Owner
`additionally refers to U.S. Patent No. 11,044,344 (“the ’344 patent”), which
`is alleged to have claims that are similar to those of the ’342 patent, where
`the same examiner allowed its claims after a terminal disclaimer was filed.
`Id. Patent Owner also asserts that it was the novel use of a client device that
`led to the allowance of the claims in that application. Id. at 18.
`
`Under factor (c) and based on the record before us, the fact that
`Crowds was not the basis of rejection in the prosecution of the ’342 patent
`nor was identified by the parties as the basis of rejection of in any of the
`related patents weighs strongly against exercising our discretion to deny
`institution under 35 U.S.C. § 325(d). See Becton, Dickinson, Paper 8 at 17;
`see also Kayak Software Corp. v. Int’l Bus. Machs. Corp., CBM2016-00075,
`Paper No. 16 at 11 (PTAB Dec. 15, 2016) (informative). As such, the record
`does not demonstrate the extent to which the Examiner considered Crowds
`alone or in combination with RFC 1122 and RFC 2616, as asserted in this
`Petition and applied to the challenged claims. Under factor (f), and as
`discussed infra at Section IV.D, Petitioner has provided sufficient evidence
`that Crowds discloses every limitation of the independent claim of the ’342
`patent. Additionally, the examiner did not have the benefit of the claim
`construction of the district court, which we have adopted here (infra Section
`IV.B), which included broad construction of the terms “client device” and
`“second server.”
`
`We also determine that Crowds, asserted here, is more material than
`the combination of Fang and Zaid, which were the basis of a rejection in
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`prosecution of the related ’319 patent. As Petitioner points out, the basis of
`the applicant’s arguments regarding the examiner’s rejection over Fang and
`Zaid includes that the rejection was not clear, the prior art was non-
`analogous, and there was improper rationale for combining the references. 6
`Pet. 64–65 (citing Ex. 1018, 13, 19–22). The examiner’s basis for allowance
`of the claims of the ’319 patent application, while lacking specificity, does
`state that allowance was granted “in view of the Applicant’s arguments.”
`Ex. 1018, 9. Here, the applicant’s arguments, that include assertions of non-
`analogous art and improper rationale to combine, with the examiner
`identifying applicant’s arguments as a reason for allowance, persuade us that
`the single reference Crowds is more material than the combination of Fang
`and Zaid. Or, in other words, we do not discern that the combination of
`Fang and Zaid is stronger prior art than Crowds.
`
`Additionally, we do not find persuasive Patent Owner’s arguments
`that Petitioner should have addressed the Yu and Barth references, which
`were the basis of rejection in the prosecution of the ’712 patent, and also
`should have also addressed the prosecution of the ’344 patent. Prelim. Resp.
`24–25. The ’712 and ’344 patents are not in the direct history of
`continuations of the ’342 patent and do not appear on the face of the ’342
`patent. See Ex. 1001, code (60). And, as Patent Owner notes, there are 36
`issued patents that all claim priority to Provisional Application No.
`61/249,624 and have a common specification (Prelim. Resp. 8). Under these
`
`
`6 The applicant also argued that Fang did not disclose two limitations of
`claim 1 of the ’319 patent application (which claim 1 of the ’342 patent does
`not recite), and that the examiner misinterpreted claim language. Ex. 1018,
`10, 21–22.
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`circumstances, we find that Petitioner was not required to search and address
`all of these file histories. Accordingly, Petitioner has sufficiently addressed
`issues under factor (e).
`
`Considering the issues addressed above, we determine that the
`evidence supports, and Petitioner demonstrates, that the Office erred in a
`manner material to the patentability of challenged claims.
`
`For the foregoing reasons, we are not persuaded to exercise our
`discretion under § 325(d) to deny institution.
`
`IV. ANALYSIS
`A. Level of Ordinary Skill in the Art
`
` According to Petitioner, a person of ordinary skill in the art “would have
`at least a bachelor’s degree in Computer Science or related field (or
`equivalent experience), and two or more years’ experience working with and
`programming networked computer systems” as of the date of the invention.
`Pet. 14–15 (citing Ex. 1003 ¶ 29).
`
`Patent Owner submits that a person of ordinary skill in the art “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.” Prelim. Resp. 31–32 (citing Ex. 2017 ¶ 21). Patent
`Owner acknowledges, however, that the parties’ respective proposed
`qualifications “are not materially different, at least in terms of affecting an
`institution decision in this IPR.” Id. at 32.
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`For the purposes of this Decision, we adopt the assessment offered by
`Petitioner as it is consistent with the ’342 patent and the prior art before us. 7
`See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We note
`that, at this juncture, we agree with Patent Owner that the proposed
`qualifications are not materially different and our assessment of the merits of
`the Petition, as discussed below, would remain the same under either parties’
`proposed qualifications.
`
`
`
`B. Claim Construction
`In this inter partes review, claims are construed using the same claim
`construction standard that would be used to construe the claims in a civil
`action under 35 U.S.C. § 282(b). 37 C.F.R. § 42.100(b) (2021). Under the
`principles set forth by our reviewing court, the “words of a claim ‘are
`generally given their ordinary and customary meaning,’” as would be
`understood by a person of ordinary skill in the art in question at the time of
`the invention. Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005)
`(en banc) (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582
`(Fed. Cir. 1996)). “In determining the meaning of the disputed claim
`limitation, we look principally to the intrinsic evidence of record, examining
`the claim language itself, the written description, and the prosecution
`history, if in evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek,
`
`
`7 The parties are encouraged to address the impact, if any, of differences in
`the level of qualifications on the anticipation and obviousness analyses in
`any subsequent briefing.
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`Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at
`1312–17).
`Petitioner asserts that the district court’s constructions in the Teso
`district court litigation should apply in this case. Pet. 19. In particular,
`Petitioner points to two claim construction orders in that case—an original
`order (Ex. 1011) and a supplemental order (Ex. 1014). As Petitioner notes,
`the district court construed “client device” as “communication device that is
`operating in the role of a client.” Pet. 18. As Petitioner further notes, the
`district court construed “second server” as “server that is not the client
`device.” Id. Petitioner contends that Patent Owner asserted that
`“‘interchangeable’ devices could not be both a ‘client device’ and a
`‘server.’” Id. at 17 (citing Ex. 1026, 20). Petitioner also contends that
`Patent Owner relied on its “server” scope argument as the sole basis to
`distinguish Crowds from the independent claims. Id. at 17–18 (citing Ex.
`1046, 2). Petitoner argues that the district court repeatedly addressed and
`rejected Patent Owner’s arguments on the claim construction for these terms.
`Id. at 18 (citing Ex. 1011, 11–12).
`Petitioner asserts that the district court’s claim interpretations for
`“client device” and “server” means that the “device operat[es] in the role of
`a client or server, respectively.” Pet. 19–20 (citing Ex. 1003 ¶ 48)
`(emphases in original). Petitioner refers to RFC 2616, which defines clients
`and servers based on the roles being performed. Id. at 20 (citing Ex. 1006,
`8).
`
`Petitioner contends that the specification of the ’342 patent is
`consistent with the plain meaning of the terms, as interpreted by the district
`court. Pet. 20 (citing Ex. 1001, 14:67–15. 1, Fig. 3). Petitioner refers to
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`Figure 3 of the ’342 patent where “client 102 is the only device that that the
`patent discloses forwarding URLs to agent 122 (as performed by the claimed
`‘second server’).” Id. at 21 (citing Ex. 1001, 13:31–36, Fig. 3) (emphases in
`original). Petitioner argues that Patent Owner acknowledged this in the Teso
`district court litigation. Id. (citing Ex. 1009, 20; Ex. 1003 ¶ 49). Petitioner
`asserts, consistent with the district court’s interpretation of the claim terms,
`that “client 102” can be considered a “second server” in accordance with the
`’342 specification disclosure, “agent 122” can be considered a “client
`device,” and “web server 152” is the “first server.” Id. at 20–21. Petitioner
`also refers to other portions of the specification which are alleged to support
`that client and agent are distinguished solely based on role, and not separate
`hardware or operating system. Id. at 21–22 (citing Ex. 1001, 5:52–57, 9:20–
`25; Ex. 1003 ¶ 50).
`Petitioner further asserts that the district court considered Patent
`Owner’s argument “‘that a client device is specifically not a server’ is ‘not
`supported by the specification’ and ‘[t]he patents do not include servers as a
`type of ‘communication device,’” and found that this argument “is not
`sufficient to construe ‘client device’ as unable to act as a server in all cases.”
`Pet. 23 (citing Ex. 1011, 11–12). Petitioner also refers to the district court’s
`decision that Patent Owner’s seeking to treat client devices and servers
`interchangeably is an oversimplification of the issue, and the issue is rather
`that a component can be configured in different roles, so long as they do not
`“simultaneously serve as more than one of: the client device, the first
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`server/second server, and the web server.” Id. at 23–24 (citing Ex. 1014,
`10).
`
`Patent Owner agrees that the district court’s claim constructions
`should apply for the preamble, “client device,” and “second server” terms.
`Prelim. Resp. 37–38. Patent Owner asserts that the district court indicated
`that “[t]he patents do not include servers as a type of ‘communication
`device,’” and confirmed “that servers must be configured to be servers.” Id.
`at 38–39 (citing Ex. 1014, 10). Patent Owner refers to the district court’s
`statement that “component can be configured to operate in different roles—
`so long as it does not ‘simultaneously serve as more than one of: the client
`device, the first server/second server, and the web server.’” Id. at 39 (citing
`Ex. 1014, 10). Patent Owner argues that Petitioner is “seeking a broader
`construction for the term ‘second server’ to remove the requirement that it
`be a server.” Id. In support, Patent Owner refers to the district court’s
`supplemental claim construction order, which states that “[t]he Court is not
`changing the construction of ‘first server’ and ‘second server,’ as this
`understanding is already embedded in those terms’ construction.” Id. at 39–
`40 (citing Ex. 1014, 11). Patent Owner also disagrees with Petitioner’s
`assertion that the issue of the scope of the server was the sole basis that
`Patent Owner used to distinguish Crowds from the independent claims
`because the district court referred to the use of non-traditional client servers.
`Id. at 40–41.
`Patent Owner also disagrees with Petitioner’s description of the
`elements of Figure 3 of the ’342 patent. Prelim. Resp. 49. Patent Owner
`contends that Figure 3 was “only used to illustrate the lines of
`communication showing the steps performed by the proxy client device.”
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`Id. (citing Ex. 2007, 7–8). Patent Owner refers to Figure 1 of the ’342 patent
`wherein “a server can be used as an additional intermediary between the
`proxy client device of the claims and a second client device originating the
`requests for content.” Id. at 49.
`Patent Owner has failed to consider some of the district court’s
`statements on the construction of terms. Specifically, the district court stated
`that “a component can be configured to operate in different roles—‘so long
`as it does not simultaneously serve as more than one of: the client device, the
`first server/second server, and the web server.’” Ex. 1014, 10. That is,
`although the district court determined that a single component could not
`simultaneously serve more than one function at any particular time, it stated
`that different components could operate in different roles. Id. More
`particularly, in the discussion of “server” terms, the district court indicated
`that the function of a component, not its structure, serves to define the term.
`Id. at 7–10. For instance, the district court adopted the language “a device
`that is operating in the role of” for the term “client device.” See id. at 10.
`Further, the district court found that the contention “that a client device is
`specifically not a server—is not supported by the specification.” Ex. 1011,
`11. The district court also stated that “[t]he patents do not include servers as
`a type of ‘communication device,’ but that is not sufficient to construe
`‘client device’ as unable to act as a server in all cases.” Id. at 12 (emphasis
`added).
`We credit the district court’s interpretation of the claim terms.
`Accordingly, for the purposes of this decision we adopt the construction of a
`“client device” as “communication device that is operating in the role of a
`client.” Ex. 1011, 12. Additionally, we construe the term “second server”
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`as “server that is not the client device” (id. at 14), consistent with the district
`court’s clarification (Ex. 1014, 8, 11).
`We determine that we need not expressly construe any other claim
`terms to resolve the parties’ disputes on the current record. See Nidec Motor
`Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed.
`Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and
`only to the extent necessary to resolve the controversy.’” (quoting Vivid
`Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).
`C. Principles of Law
`A claim is unpatentable under 35 U.S.C. § 102 if a prior art reference
`discloses each and every limitation of the claimed invention, either explicitly
`or inherently. Glaxo Inc. v. Novopharm Ltd., 52 F.3d 1043, 1047 (Fed. Cir.
`1995); see MEHL/Biophile Int’l Corp. v. Milgraum, 192 F.3d 1362, 1365
`(Fed. Cir. 1999) (“To anticipate, a claim a prior art reference must disclose
`every limitation of the claimed invention . . .;” any limitation not explicitly
`taught must be inherently taught and would be so understood by a person
`experienced in the field); In re Baxter Travenol Labs., 952 F.2d 388, 390
`(Fed. Cir. 1991) (the dispositive question is “whether one skilled in the art
`would reasonably understand or infer” that a reference teaches or discloses
`all of the limitations of the claimed invention).
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter and the prior art are such that
`the subject matter, as a whole, would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
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`factual determinations including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of ordinary skill in the art; and (4) when in evidence, objective
`indicia of nonobviousness. Graham v. John Deere