UNITED STATES PATENT AND TRADEMARK OFFICE
`_________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________________
`
`MAJOR DATA, UAB,
`
`Petitioner
`
`v.
`
`BRIGHT DATA LTD.,
`
`Patent Owner
`
`_________________________
`
`Case IPR2022-00916
`Patent No. 10,484,510
`_________________________
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`
`
`
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`PATENT OWNER PRELIMINARY RESPONSE
`
`
`
`
`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 1109
`Data Co v. Bright Data
`IPR2022-00135
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`

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`IPR2022-00916 of Patent No. 10,484,510
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`TABLE OF CONTENTS
`
`
`INTRODUCTION ............................................................................................... 1
`I.
`II. BACKGROUND TO THE INSTANT PROCEEDINGS ................................... 2
`III. UPDATE TO REAL PARTY-IN-INTEREST (“RPI”) ISSUES ..................... 2
`IV. UPDATE TO COORDINATION BETWEEN CODE200 AND MAJOR
`DATA ......................................................................................................................... 5
`V. THE BOARD SHOULD EXERCISE ITS DISCRETION TO SAVE ITS
`FINITE RESOURCES ............................................................................................... 6
`A. THE FINTIV FACTORS .................................................................................. 7
`1. FINTIV FACTOR 1 IS NEUTRAL .............................................................. 8
`2. FINTIV FACTOR 2 FAVORS DENIAL ..................................................... 9
`3. FINTIV FACTOR 3 FAVORS DENIAL ...................................................10
`4. FINTIV FACTOR 4 FAVORS DENIAL ...................................................10
`5. FINTIV FACTOR 5 FAVORS DENIAL ...................................................13
`6. FINTIV FACTOR 6 FAVORS DENIAL ...................................................14
`7. BALANCING THE FINTIV FACTORS ...................................................18
`INTRODUCTION TO THE MERITS ...........................................................19
`VI.
`VII. OVERVIEW OF THE SPECIFICATION .....................................................23
`A. BACKGROUND ............................................................................................25
`B. DETAILED DESCRIPTION .........................................................................27
`VIII. INTRODUCTION TO CLAIM CONSTRUCTION......................................29
`A. PERSON OF ORDINARY SKILL IN THE ART (“POSA”) .......................29
`B. THE BOARD’S PRELIMINARY CONSTRUCTIONS & PATENT
`OWNER’S PROPOSED CONSTRUCTIONS ....................................................30
`C. A CLIENT DEVICE IS A CONSUMER COMPUTER, OR
`ALTERNATIVELY, A CONSUMER COMMUNICATION DEVICE .............31
`D. A CLIENT DEVICE IS NOT A SERVER ....................................................37
`1. Figure 1 (prior art) versus Figure 3 (exemplary embodiment) ...................40
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`ii
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`IPR2022-00916 of Patent No. 10,484,510
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`2. Prosecution History of Patent No. 10,069,936 ............................................44
`3. Prosecution History of the ‘319 Patent .......................................................47
`4. Prosecution History of the ‘510 Patent .......................................................49
`E. ROLE-BASED CONSTRUCTIONS ARE NOT APPROPRIATE ...............49
`F. A SERVER IS NOT A CLIENT DEVICE ....................................................55
`IX. CROWDS DOES NOT TEACH THE CLAIMED METHODS ...................58
`X. BORDER DOES NOT TEACH THE CLAIMED METHODS .......................60
`XI. MORPHMIX DOES NOT TEACH THE CLAIMED METHODS ..............63
`XII. CONCLUSION ..............................................................................................65
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`IPR2022-00916 of Patent No. 10,484,510
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`
`PATENT OWNER’S LIST OF EXHIBITS
`
`Institution Decision regarding Patent No. 10,257,319, NetNut Ltd.
`v. Bright Data Ltd., IPR2021-01492, Paper 12 (PTAB March 21,
`2022)
`
`Institution Decision regarding Patent No. 10,484,510, NetNut Ltd.
`v. Bright Data Ltd., IPR2021-01493, Paper 11 (PTAB March 21,
`2022)
`
`Claim Construction Order, Bright Data Ltd. v. NetNut Ltd, No.
`2:21-cv-225, Dkt. 146 (E.D. Tex. May 10, 2022)
`
`Definition “Consumer”, Cambridge English Dictionary; accessed
`at https://dictionary.cambridge.org/us/dictionary/english/consumer
`on June 10, 2022
`
`Definition “Consumer”, Collins English Dictionary; accessed at
`https://www.collinsdictionary.com/us/dictionary/english/consumer
`on June 10, 2022
`
`Prosecution History of Patent No. 10,069,936
`
`Network Fundamentals Study Guide, published February 17,
`2015; accessed at https://www.webopedia.com/reference/network-
`fundamentals-studyguide/#topologies on June 14, 2022
`
`Patent No. 10,069,936
`
`Alice Order, Bright Data Ltd. v. Teso LT, UAB, et al., No. 2:19-
`cv-395, Dkt. 303 (E.D. Tex. Feb. 12, 2021)
`
`Motion for Summary Judgment, Bright Data Ltd. v. Teso LT,
`UAB, et al., No. 2:19-cv-395, Dkt. 282 (E.D. Tex. Feb. 8, 2021)
`(redacted version of Dkt. 277)
`
`Order, Bright Data Ltd. v. Teso LT, UAB, et al., No. 2:19-cv-395,
`Dkt. 476 (E.D. Tex. Sept. 9, 2021)
`
`iv
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`EX.2004
`
`EX.2005
`
`EX.2006
`
`EX.2007
`
`EX.2008
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`EX.2009
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`EX.2010
`
`EX.2011
`
`EX.2012
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`
`EX.2013
`
`
`EX.2014
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`IPR2022-00916 of Patent No. 10,484,510
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`
`Jury Verdict, Bright Data Ltd. v. Teso LT, UAB, et al., No. 2:19-
`cv-395, Dkt. 516 (E.D. Tex. Nov. 5, 2021)
`
`Website, Company information regarding “Major Data, UAB”;
`accessed at https://rekvizitai.vz.lt/en/company/major_data/ on
`June 16, 2022
`
`Website, “The Story of Tesonet” published on October 30, 2017;
`accessed at https://tesonet.com/culture/the-story-of-tesonet/ on
`June 16, 2022
`
`LinkedIn Profile, “Tom Okman”; accessed at
`https://www.linkedin.com/in/tokmanas/ on June 16, 2022
`
`Wikipedia Article, “Tom Okman”; accessed at
`https://en.wikipedia.org/wiki/Tom_Okman on June 16, 2022
`
`Website, “Who Owns NordVPN? Can You Really Trust This
`VPN?”; accessed at https://www.technadu.com/who-owns-
`nordvpn/295187/ on June 16, 2022
`
`Order, Bright Data Ltd. v. Tefincom S.A., No. 2:19-cv-414, Dkt.
`176 (E.D. Tex. Nov. 17, 2021)
`
`Docket Control Order, Bright Data Ltd. v. Tefincom S.A., No.
`2:19-cv-414, Dkt. 31 (E.D. Tex. Feb. 9, 2021)
`
`Select Portions of Trial Transcript, Day 3 in the case of Bright
`Data Ltd. v. Teso LT, UAB, et al., No. 2:19-cv-395 (E.D. Tex.
`Nov. 3, 2021)
`
`Select Portions of Trial Transcript, Day 4 in the case of Bright
`Data Ltd. v. Teso LT, UAB, et al., No. 2:19-cv-395 (E.D. Tex.
`Nov. 4, 2021)
`
`Declaration of Dr. Tim A. Williams
`
`
`v
`
`EX.2015
`
`EX.2016
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`EX.2017
`
`EX.2018
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`EX.2019
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`EX.2020
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`EX.2021
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`EX.2022
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`EX.2023
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`EX.2024
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`EX.2025
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`EX.2026
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`IPR2022-00916 of Patent No. 10,484,510
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`Email chain between Petitioner Major Data, UAB and Patent
`Owner regarding discovery requests
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`vi
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`
`I.
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`IPR2022-00916 of Patent No. 10,484,510
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`INTRODUCTION
`Patent Owner previously submitted an Opposition (Paper 7) explaining
`
`certain reasons for denying institution of IPR2022-00916 and denying joinder to
`
`IPR2021-01493.
`
`In this Patent Owner Preliminary Response (“POPR”), Patent Owner
`
`respectfully submits additional reasons for why the Board should exercise its
`
`discretion under 35 U.S.C. § 314 to deny institution of the petition in IPR2022-
`
`00916 based on, for example, the Fintiv1 factors.
`
`Patent Owner additionally, respectfully submits that the Board should deny
`
`institution of the petition based on the merits. Patent Owner respectfully submits
`
`that IPR2021-01493 should never have been instituted in the first place. Patent
`
`Owner provides a detailed claim construction analysis herein with a supporting
`
`expert declaration from Dr. Tim A. Williams (EX.2025).
`
`
`1 Apple Inc. v. Fintiv Inc., IPR2020-00019, Paper 11 (PTAB March 20, 2020); see
`
`also Director Vidal, Memorandum, ‘Interim Procedure for Discretionary Denials in
`
`AIA Post-Grant Proceedings with Parallel District Court Litigation’ dated June 21,
`
`2022.
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`1
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`IPR2022-00916 of Patent No. 10,484,510
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`II. BACKGROUND TO THE INSTANT PROCEEDINGS
`NetNut Ltd. (“NetNut”) filed IPR2021-01492 and IPR2021-01493 (the
`
`“NetNut IPRs”) against the Patent Nos. 10,257,319 (the “’319 Patent) and
`
`10,484,510 (the “‘510 Patent”), respectively. The NetNut IPRs were instituted on
`
`March 21, 2022. EX.2004 and EX.2005. Following institution, NetNut and Patent
`
`Owner reached settlement. On May 27, 2022 NetNut was terminated from the
`
`NetNut IPRs.
`
`Following institution in the NetNut IPRs, the Code200, UAB, et al.
`
`petitioners (“Code200”) filed copycat petitions and motions to join the NetNut
`
`IPRs in IPR2022-00861 and IPR2022-00862 (the “Code200 IPRs”). Major Data
`
`UAB (“Major Data” or “Petitioner”) also filed copycat petitions and motions to
`
`join the NetNut IPRs in IPR2022-00915 and IPR2022-00916 (the “Major Data
`
`IPRs”).
`
`III. UPDATE TO REAL PARTY-IN-INTEREST (“RPI”) ISSUES
`As discussed in Patent Owner’s Opposition (Paper 7 at 14-15) to the joinder
`
`motions, Patent Owner has been diligent seeking discovery on RPI issues. On May
`
`16, 2022, Patent Owner propounded six, targeted discovery requests on Major
`
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`2
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`Data. EX.2026 at 7. As of the filing of this POPR, Patent Owner still has not
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`IPR2022-00916 of Patent No. 10,484,510
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`received any discovery responses from Major Data.2
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`Major Data was formed just over 4 months ago, after the jury verdict in the
`
`case of Bright Data Ltd. v. Teso LT, UAB, et al., No. 2:19-cv-395 (E.D.
`
`Tex.)(“Tex. Litigation”). EX.2016. Patent Owner has repeatedly sought discovery
`
`information from Major Data to no avail. Patent Owner is concerned that Major
`
`Data was formed as a “back-up” option to continue these IPRs in the event that (a)
`
`NetNut settled, which it did, and (b) Code200’s motion for joinder is denied, which
`
`it should be. Patent Owner has not sued Major Data for infringement of any patents
`
`and Patent Owner is not aware of any services offered by Major Data. Also, Major
`
`Data has only ever filed IPR2022-00915 and IPR2022-00916; Major Data has not
`
`
`2 At 4:12PM Eastern, on June 23, 2022 (the due date of this POPR,) Major Data
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`sent an email to Patent Owner regarding the discovery requests. Presumably, Major
`
`Data reviewed the earlier-filed POPRs in the Code200 IPRs which also referenced
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`the discovery requests to Major Data. Patent Owner has not yet had an opportunity
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`to review or consider the email sent by Major Data on June 23rd and reserves all
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`rights regarding the discovery requests and supplemental arguments regarding the
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`same.
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`filed any other petitions against Patent Owner or against any other patents owned
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`IPR2022-00916 of Patent No. 10,484,510
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`by any other party.
`
`It remains unclear whether there is any relationship between Major Data and
`
`any of the petitioners in the Code200 IPRs or any of the defendants in district court
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`litigations. See, e.g., EX.2026 at 2. The Code200 petitioners agree that without
`
`joinder, they are otherwise time-barred from pursuing IPR, given the Tex.
`
`Litigation (No. 2:19-cv-395 in E.D. Tex.). Tefincom S.A. d/b/a NordVPN
`
`(discussed below) is also time-barred from pursuing IPR.
`
`Patent Owner has already outlined the Garmin3 factors (EX.2026 at 1-2) in
`
`response to Major Data’s non-substantive email (EX.2026 at 3-4). Major Data
`
`itself implied that Mr. Koltan has had some professional interaction with Mr.
`
`Okmanas (EX.2026 at 2-3) and Major Data never affirmatively stated that the IPRs
`
`were NOT filed at another party’s behest (EX.2026 at 3). There is no publicly
`
`available information on Major Data and Patent Owner is unable to generate the
`
`requested information by any other means. Patent Owner has already requested for
`
`Major Data to provide alternative discovery requests if Major Data disagrees with
`
`
`3 Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC, Case IPR2012-00001, Paper 26
`
`(PTAB March 5, 2013).
`
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`their present scope (EX.2026 at 1). Even after following up, Major Data has still
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`IPR2022-00916 of Patent No. 10,484,510
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`not responded.
`
`Given Major Data’s unwillingness to provide discovery responses, Patent
`
`Owner may need to seek authorization from the Board to move for additional
`
`discovery to investigate the RPI issues. It would be difficult to conduct motion
`
`briefing and, if granted, conduct discovery, all before the Patent Owner Response
`
`is due in the NetNut IPRs on July 20, 2022.
`
`If the Major Data IPRs were to proceed independently (i.e., instituted, but
`
`not joined to the NetNut IPRs,) then Patent Owner would have approximately three
`
`additional months before a Patent Owner Response is due in the Major Data IPRs.
`
`It would be more fair for Patent Owner to have a longer discovery period in the
`
`Major Data IPRs, separate and apart from the NetNut IPRs.
`
`IV. UPDATE TO COORDINATION BETWEEN CODE200 AND MAJOR
`DATA
`In the instant proceedings, because NetNut has been terminated from the
`
`NetNut IPRs, it is as if Code200 and Major Data had each brought their petitions in
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`the first instance. Neither Code200 nor Major Data will be an “understudy” to
`
`NetNut.
`
`As discussed in Patent Owner’s Opposition (Paper 7 at 13-14) to the joinder
`
`motions, it is still unclear how the parties (if any) should proceed regarding the
`5
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`modified protective order required for confidential productions and the deposition
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`IPR2022-00916 of Patent No. 10,484,510
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`of the petitioners’ testifying expert, Mr. Teruya, all before the Patent Owner
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`Response is due in the NetNut IPRs on July 20, 2022. See Paper 7 at 13-14.
`
`As also discussed in Patent Owner’s Opposition, Major Data did not address
`
`coordination or consolidation of filings with Code200, and Patent Owner does not
`
`have an opportunity to respond to any new arguments raised in Major Data’s
`
`Replies (which are due the same day as this POPR). Patent Owner notes that
`
`Code200 entirely failed to address this issue in its Replies filed on June 20, 2022.
`
`See IPR2022-00861, Paper 13 and IPR2022-00862, Paper 13.
`
`V. THE BOARD SHOULD EXERCISE ITS DISCRETION TO SAVE ITS
`FINITE RESOURCES
`The Board has discretion to deny institution of an IPR. (See 35 U.S.C. §
`
`314(a); 37 C.F.R. § 42.108(a); Harmonic Inc. v. Avid Tech, Inc., 815 F.3d 1356,
`
`1367 (Fed. Cir. 2016); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140
`
`(2016).
`
`Patent Owner has already expended significant resources to defend the
`
`validity of the ‘319 and ‘510 Patents in the Tex. Litigation and in other
`
`proceedings involving the exact same prior art references. As discussed in Patent
`
`Owner’s Opposition (Paper 7) to the joinder motions, Patent Owner respectfully
`
`submits that it would be most economical for the Board to lift the stays in the
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`6
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`reexaminations4, rather than continue the IPRs. Comparing the reexaminations and
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`IPR2022-00916 of Patent No. 10,484,510
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`the IPRs, there is complete overlap between the challenged claims of the ‘319 and
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`‘510 Patents, except for dependent claim 23 of the ‘319 Patent.
`
`
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`Even if the Board chose to proceed independently with the Major Data IPRs
`
`(i.e., instituted, but not joined to the NetNut IPRs,) the parties and the Board would
`
`have at least three additional months for deadlines, including, for example, the
`
`Final Written Decision.
`
`A. THE FINTIV FACTORS
`In the instant proceedings, there is a significant risk of the Board redoing the
`
`work of another tribunal. In the Tex. Litigation, Patent Owner sued Teso LT, UAB;
`
`Oxysales, UAB; and Metacluster LT, UAB for infringement of the ‘319 and ‘510
`
`Patents. Although Major Data was not a defendant in the Tex. Litigation, it is
`
`unclear whether Major Data is related to any of the defendants in the Tex.
`
`Litigation, as discussed above. Also, although Major Data was not a defendant in
`
`the Tex. Litigation, the Tex. Litigation is still relevant because the same issues
`
`
`4 Control Nos. 90/014,875 and 90/014,876. See also IPR20221-01492, Paper 14
`
`and IPR2021-01493, Paper 12.
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`7
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`were litigated with respect to substantially the same claims and therefore,
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`IPR2022-00916 of Patent No. 10,484,510
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`instituting this IPR will lead to duplicative efforts, as discussed below.
`
`In the Tex. Litigation, the parties and the Court invested substantial
`
`resources litigating validity issues related to the ‘319 and ‘510 Patents. The Tex.
`
`Litigation has already reached a final jury verdict. EX.2015. The Board has applied
`
`the Fintiv factors to parallel proceedings even after a jury trial has already
`
`occurred. E.g., Amazon.com, Inc. v. Vocalife LLC, IPR2020-00864, Paper 22 at 19
`
`(PTAB October 28, 2020). In the discussion that follows, Patent Owner will apply
`
`the six Fintiv factors to the Tex. Litigation.
`
`On balance, Patent Owner respectfully submits that the Fintiv factors
`
`overwhelmingly favor denial of institution.
`
`1. FINTIV FACTOR 1 IS NEUTRAL
`The first Fintiv factor is whether the court has granted a stay or evidence
`
`exists that one may be granted if a proceeding is instituted.
`
`The Court stayed post-trial briefing in the Tex. Litigation for additional
`
`mediation. See, e.g, IPR2022-00861, Paper 11 at 3-4 (Response to SMF No. 4).
`
`That mediation also involves other cases in addition to Case No. 2:19-cv-395 (the
`
`Tex. Litigation). Nonetheless, the jury already found that the ‘319 and ‘510 Patents
`
`were not invalid. EX.2015 at 5. Patent Owner is not aware of any cases in which
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`Judge Gilstrap has reversed a jury verdict of no anticipation/obviousness.5 Any
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`IPR2022-00916 of Patent No. 10,484,510
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`appeal of the jury verdict by the defendants is speculative.
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`Even though there is a stay for post-trial briefing, because the Tex.
`
`Litigation has already reached a jury verdict, this factor is neutral.
`
`2. FINTIV FACTOR 2 FAVORS DENIAL
`The second Fintiv factor is the proximity of the court’s trial date to the
`
`Board’s projected statutory deadline for a final written decision.
`
`Because the trial in the Tex. Litigation has already occurred, this factor
`
`favors denial.
`
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`
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`5 In one case Alfonso Cioffi et al. v. Google LLC, No. 2:13-cv-103, Dkt. 319 (E.D.
`
`Tex. March 29, 2018), the Court preserved the jury verdict in all respects except as
`
`to the issue of invalidity pursuant to § 251, properly decided by the Court alone
`
`and not the jury. In another case Metaswitch Networks Ltd. v. Genband US LLC et
`
`al., No. 2:14-cv-744, Dkt. 369 (E.D. Tex. April 14, 2016), the Court granted a
`
`Motion for relief from judgment under Rule 60 and the Court corrected a
`
`“harmless” error in the jury’s verdict regarding invalidity; the jury verdict form
`
`mistakenly listed claim 18 instead of claim 6.
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`IPR2022-00916 of Patent No. 10,484,510
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`3. FINTIV FACTOR 3 FAVORS DENIAL
`The third Fintiv factor is the investment in the parallel district court
`
`proceeding by the Court and the parties.
`
`The parties to the Tex. Litigation and the Court have made substantial
`
`investments litigating invalidity all the way through trial. Additional investment is
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`still being made in mediation efforts and regarding post-trial briefing. Patent
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`Owner should not have to expend more resources defending the validity of the
`
`‘319 and ‘510 Patents given the jury’s verdict in the Tex. Litigation. Granting
`
`institution and joinder in this IPR would be contrary to the purpose of an inter
`
`partes review proceeding. See General Plastic6 at 17.
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`Given this substantial investment in the Tex. Litigation, this factor favors
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`denial.
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`4. FINTIV FACTOR 4 FAVORS DENIAL
`The fourth Fintiv factor is the overlap between issues raised in the Petition
`
`and in the parallel district court proceeding.
`
`
`6 General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357,
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`Paper 19 (PTAB Sept. 6, 2017).
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`10
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`IPR2022-00916 of Patent No. 10,484,510
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`In the Tex. Litigation, the parties conducted a jury trial involving the ‘319
`
`and ‘510 Patents. The defendants chose to present anticipation by Crowds to the
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`jury. Throughout the case, the defendants had litigated the same invalidity
`
`positions based on Crowds, Border, and MorphMix, including for example,
`
`dispositive motions and expert reports. Indeed, the defendants filed invalidity
`
`contentions alleging anticipation/obviousness of claims 1-2, 14-15, 17-18, 21-22,
`
`and 24-27 of the ‘319 Patent, and of claims 1-2, 8-11, 13, 15-16, 18-20, and 22-23
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`of the ‘510 Patent based on Crowds, Border, and MorphMix. The defendants had a
`
`full and fair opportunity to present these invalidity positions to the jury.
`
`The defendants filed a motion for summary judgment of invalidity of claims
`
`1-2, 14-15, 17-18, 21-22, and 24-27 of the ‘319 Patent, and of claims 1-2, 8-11, 13,
`
`15-16, 18-20, and 22-23 of the ‘510 Patent based on anticipation by Crowds. See
`
`generally EX.2013. The motion for summary judgment of invalidity was rejected
`
`by the Court. EX.2014 at 2. As discussed below, MorphMix is cumulative of
`
`Crowds – they both disclose peer-to-peer networks comprising client devices.
`
`Crowds was presented to the jury. As further discussed below, Border cannot
`
`properly be applied to the claims based on the Court’s claim constructions – a
`
`server is not a client device.
`
`The defendants chose to proceed only on anticipation by Crowds of claims 1
`
`and 26 of the ‘319 Patent, and of claims 1 and 22 of the ‘510 Patent, at the trial.
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`The jury agreed with Patent Owner and found that the patents were NOT invalid.
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`IPR2022-00916 of Patent No. 10,484,510
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`EX.2015 at 5. Most notably, claim 1 of the ‘319 Patent is the only independent
`
`claim and claim 1 of the ‘510 Patent is the only independent claim. The non-
`
`overlapping dependent claims do not justify expending resources to conduct IPR.
`
`For example, claim 28 of the ‘319 Patent and claim 24 of the ‘510 Patent both
`
`recite: “A non-transitory computer readable medium containing computer
`
`instructions that, when executed by a computer processor, cause the processor to
`
`perform the method according to claim 1.” Therefore, Patent Owner respectfully
`
`submits that the same validity issues related to claim 1 also relate to these
`
`dependent claims.
`
`Overall, Patent Owner respectfully submits there is not a significant
`
`difference between the claims at issue in this IPR compared to the claims at issue
`
`in the Tex. Litigation. 7 Also, Major Data has not explained any benefit to resolving
`
`the validity of the additionally challenged dependent claims when they are not
`
`being asserted in any litigation.
`
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`7 Compared to the Tex. Litigation, the related IPR adds dependent claims 12, 19,
`
`23, 28, and 29 of the ‘319 Patent; and this IPR adds dependent claims 6, 7, 17, 21,
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`and 24 of the ‘510 Patent.
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`IPR2022-00916 of Patent No. 10,484,510
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`Patent Owner respectfully submits it is not a good use of the Board’s
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`resources to reevaluate the validity of the ‘319 and ‘510 Patents. See also Versata
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`Software, Inc. v. SAP Am., Inc., Case No. 2:07-cv-153, Dkt. 617 at 2 (E.D. Tex.
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`Apr. 21, 2014) (refusing to vacate a final judgment of validity in view of a covered
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`business method (CBM) review decision, and stating that “[t]o hold that later
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`proceeding before the PTAB can render nugatory that entire process, and the time
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`and effort of all of the judges and jurors who have evaluated the evidence and
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`arguments would do a great disservice to the Seventh Amendment and the entire
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`procedure put in place under Article III of the Constitution.”).
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`There is a high possibility of duplicative efforts and conflicting decisions in
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`the instant proceedings. Accordingly, this factor favors denial.
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`5. FINTIV FACTOR 5 FAVORS DENIAL
`Fintiv factor 5 is whether the petitioner and the defendant in the parallel
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`proceedings are the same party.
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`The Code200 petitioners8 agree that they were the defendants in the Tex.
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`Litigation. The defendants were well-resourced and best situated to present the best
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`8 Excluding Code200, UAB and Coretech LT, UAB.
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`possible invalidity case in the Tex. Litigation. The defendants had every
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`opportunity to present the exact same grounds in the district court proceeding.
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`As discussed above, it is unclear whether there is a significant relationship
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`between Major Data and any of the defendants in the Tex. Litigation. The Board
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`has explained:
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`“Even when a petitioner is unrelated to a defendant, however, if the
`issues are the same as, or substantially similar to, those already or
`about to be litigated, or other circumstances weigh against redoing the
`work of another tribunal, the Board may, nonetheless, exercise the
`authority to deny institution. An unrelated petitioner should, therefore,
`address any other district court or Federal Circuit proceedings
`involving the challenged patent to discuss why addressing the same or
`substantially the same issues would not be duplicative of the prior
`case even if the petition is brought by a different party.”
`Fintiv at 14 (internal citations omitted).
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`Patent Owner respectfully submits that institution will lead to duplicative
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`efforts and risks conflicting decisions with respect to the same claims.
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`Furthermore, the District Court and the parties invested substantial resources in
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`preparing for and conducting the jury trial in the Tex. Litigation.
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`Accordingly, this factor favors denial.
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`6. FINTIV FACTOR 6 FAVORS DENIAL
`The sixth Fintiv factor is other circumstances that might impact the Board’s
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`exercise of discretion, including the merits.
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`IPR2022-00916 of Patent No. 10,484,510
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`Patent Owner submits four other circumstances that might impact the
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`Board’s exercise of discretion in this IPR.
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`First, as discussed above, Patent Owner believes lifting the stay in the
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`reexaminations and terminating these proceedings would be the most efficient use
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`of resources. All but dependent claim 23 of the ‘319 Patent are challenged in both
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`this IPR and the reexaminations. The reexaminations are based on the exact same
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`prior art references, Crowds, Border, and MorphMix.
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`Second, there is another set of IPRs challenging the ‘319 and ‘510 Patents,
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`including IPR2022-00135 and IPR2022-00138 (and IPR2022-01109 and IPR2022-
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`01110 seeking joinder thereto), which are based on a different primary prior art
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`reference, Plamondon.
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`There is also another district court case involving the ‘319 and ‘510 Patents;
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`Bright Data Ltd. v. Tefincom S.A. d/b/a NordVPN, No. 2:19-cv-414 (E.D.
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`Tex.)(the “Tefincom Litigation”). Defendant Tefincom has the same
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`owner/founder (Tomas Okmanas) and the same litigation counsel as the defendants
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`in the Tex. Litigation. EXS.2017-2020. Defendant Tefincom served its invalidity
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`contentions, alleging anticipation and/or obviousness of claims 1-2, 14-15, 17-18,
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`21-22, and 24-27 of the ‘319 Patent, and of claims 1-2, 8-11, 13, 15-16, 18-20, and
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`22-23 of the ‘510 Patent, based on primary references Crowds, Border, and
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`MorphMix.
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`In light of the jury verdict in the Tex. Litigation, the trial in the Tefincom
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`Litigation was taken off calendar to allow for concurrent mediation. See EX.2021.
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`As of November 17, 2021 when that Order was entered, jury selection in the
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`Tefincom Litigation was scheduled for 1/3/2022 so both the parties and the Court
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`have already invested significant resources in the Tefincom Litigation. See
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`EX.2022 at 1. A new trial date is expected well before the final written decision in
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`the instant proceedings and therefore, the Tefincom Litigation will resolve the
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`validity of the ‘319 and ‘510 Patents, including at least independent claim 1 of the
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`‘319 Patent and independent claim 1 of the ‘510 Patent, likely based on Crowds,
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`Border, or MorphMix.
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`Third, in the Tex. Litigation, the jury rejected the defendants’ argument
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`about the solely role-based distinctions and instead, agreed with Patent Owner,
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`properly recognizing the differences between a “client device” and “second
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`server”. The instant petition makes substantially similar arguments that were
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`unsuccessful in the Tex. Litigation.
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`For example, the defendants presented the same arguments regarding the
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`elements of claim 1 being anticipated by Crowds that were rejected by the jury. For
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`example, the jury heard extensive arguments over whether jondo 4 of Crowds
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`corresponds to the “second server” of the claims. EX.20239 at 303:18-304:5
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`(Defendants’ expert testifying that Crowd’s jondos are client devices shown in
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`circles); 305:2-11 (Defendants’ expert testifying that jondo 5 is acting in the role of
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`a client); 305:12-19 (Defendants’ expert testifying that jondo 4 is operating in the
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`role of a server); 305:20-306:1 (Defendants’ expert testifying that jondo 6 acts a
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`server with respect to jondo 4 and acts as a client with respect to the web server 5);
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`306:6-18 (Defendants’ expert mapping jondos to the claims); 307:7-18
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`(Defendants’ expert testifying that jondo 4 corresponds to the “second server” of
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`the claims); and EX.202410 at 68:3-9 (Defendants’ expert testifying that a jondo is
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`a client or a server or both); 211:7-9 (Plaintiff’s expert testifying that a jondo is not
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`a server); 212:15-24 (Plaintiff’s expert testifying that no jondos are servers);
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`226:12-17 and 230:12-17 (Plaintiff’s expert testifying that no jondos correspond to
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`the “second server” of the claims); 252:15-20 (Plaintiff’s expert testifying the RFC
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`definition of server is not the same as the Court’s claim construction); 263:17-
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`264:4 (Plaintiff’s expert testifying there was no “second server” of the claims
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`disclosed in Crowds); 284:1-8 (the Court denied all Rule 50(a) motions regarding
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`9 Citations made to internal transcript page numbers, not exhibit page numbers.
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`10 Citations made to internal transcript page numbers, not exhibit page numbers.
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`validity and invalidity and found that those issues are properly submittable to the
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`jury).
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`Fourth, as discussed in detail below, Patent Owner believes the Board’s
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`preliminary claim constructions are not appropriate and the NetNut IPRs should
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`never have been instituted in the first place.
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`7. BALANCING THE FINTIV FACTORS
`The Board has explained that an objective of the AIA was to provide “an
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`effective and efficient alternative to district court litigation.” NHK Spring Co. v.
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`Intri-Plex Techs., Inc., IPR2018-00752, Paper 8 (PTAB Sept. 12,
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`2018)(precedential)(“NHK”) at 20. “[W]here no such alternative is needed in view
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`of a district court’s just and speedy adjudication of the same issue, there is no need
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`for the Board to unnecessarily duplicate the district court’s efforts at the expense of
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`the Board’s time and resources, which are appropriately and best applied
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`elsewhere.” Supercell Oy, v. Gree, Inc., IPR2020-00310, Paper 13 at 8-9 (PTAB
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`June 18, 2020)(citing NHK at 20) .
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`Institution will lead to duplicative efforts and risks conflicting decisions with
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`respect to the ‘319 and ‘510 Patents. Substantial resources have already been
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`invested in preparing for and conducting the jury trial in the Tex. Litigation. The
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`Board should not use its finite resources to reevaluate validity in this IPR. As
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`discussed above, on balance, the Fintiv factors favor denial.
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`VI.
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`INTRODUCTION TO THE MERITS
`As discussed herein, the Board’s preliminary constructions for the terms
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`“client device” and “second server” are not appropriate.11 The preliminary
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`constructions focus primarily on the roles being performed at a given moment in
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`time, contrary to the disclosure in the specification and the statements in the
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`prosecution histories. Patent Owner respectfully submits that the Board may have
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`misconstrued the Board’s supplemental guidance in the Tex. Litigation based on
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`NetNut’s arguments in the IPRs. NetNut made substantially similar arguments in
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`the NetNut Litigation as in the NetNut IPRs. However, in the Court’s most recent
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`Claim Construction Order in the NetNut Litigation, the Court maintained the
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`structural distinctions between “client device” being a “communication device”
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`11 The Board preliminari