UNITED STATES PATENT AND TRADEMARK OFFICE
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`_________________________
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`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________________
`
` THE DATA COMPANY TECHNOLOGIES INC.,
`
`Petitioner
`
`v.
`
`BRIGHT DATA LTD.,
`
`Patent Owner
`
`_________________________
`
`
`
`
`
`Case IPR2022-00135
`
`Patent No. 10,257,319
`
`_________________________
`
`PATENT OWNER’S SUR-REPLY
`
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`
`
`
`
`
`
`
`_________________________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________________
`
` THE DATA COMPANY TECHNOLOGIES INC.,
`
`Petitioner
`
`v.
`
`BRIGHT DATA LTD.,
`
`Patent Owner
`
`_________________________
`
`
`
`
`
`Case IPR2022-00135
`
`Patent No. 10,257,319
`
`_________________________
`
`PATENT OWNER’S SUR-REPLY
`
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`
`
`IPR2022-00135 of Patent No. 10,257,319
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`TABLE OF CONTENTS
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`
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`I.
`
`INTRODUCTION ............................................................................................... 1
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`II. CLAIM CONSTRUCTION ................................................................................ 3
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`A. Lexicography & Validity .................................................................................. 8
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`B. The ‘936 Patent ...............................................................................................12
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`C. Rhyne Testimony ............................................................................................16
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`D. RFC 2616 ........................................................................................................17
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`E. Reexaminations ..............................................................................................17
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`F. The ‘614 Patent ...............................................................................................18
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`III. PLAMONDON DOES NOT ANTICIPATE CLAIM 1 ................................19
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`IV. SECONDARY CONSIDERATIONS ............................................................21
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`V. TESO TRIAL .....................................................................................................24
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`VI. ADDITIONAL ARGUMENTS .....................................................................24
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`A. Claim 14 .........................................................................................................24
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`B. Claim 24 .........................................................................................................25
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`C. PLAMONDON + PRICE ...............................................................................26
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`D. PLAMONDON + KOZAT .............................................................................26
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`VII. CONCLUSION ..............................................................................................27
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`ii
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`IPR2022-00135 of Patent No. 10,257,319
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`TABLE OF AUTHORITIES
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`AC Techs., S.A. v. Amazon.com, Inc., 912 F.3d 1358 (Fed. Cir. 2019) ...................11
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`Assembly Guidance Systems v. Virtek Vision International, IPR2021-00062, Paper
`
`24 May 6, 2022). ...................................................................................................23
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`Elbex Video v. Sensormatic Electronics, 508 F.3d 1366 (Fed. Cir. 2007) .............15
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`EWP Corp. v. Reliance Universal Inc., 755 F.2d 898 (Fed. Cir. 1985). .................19
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`Hill-Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367 (Fed. Cir. 2014) ................... 9
`
`In re WesternGeco LLC, 889 F.3d 1308 (Fed. Cir. 2018) .......................................20
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`Kyocera Senco Indus. Tools, Inc. v. ITC, 22 F.4th 1369 (Fed. Cir. 2022) ................. 8
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`Microsoft Corp. v. Biscotti, Inc., 878 F.3d 1052 (Fed. Cir. 2017) ..........................20
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`Modine Mfg. Co. v. United States Int’l Trade Comm’n, 75 F.3d 1545 (Fed. Cir.
`
`1996) .....................................................................................................................10
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`Netword, LLC v. Centraal Corp., 242 F.3d 1347 (Fed. Cir. 2001) ........................... 9
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`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) .............................. 9, 10, 13
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`Quest Integrity USA, LLC v. Cokebusters USA Inc., 924 F.3d 1220 (Fed. Cir. 2019)
`
` ...............................................................................................................................15
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`Tate Access Floors, Inc. v. Interface Architectural Resources, Inc., 279 F.3d 1357
`
`(Fed. Cir. 2002) .....................................................................................................12
`
`Trs. Of Columbia Univ. v. Symantec Corp., 811 F.3d 1359 (Fed. Cir. 2016) ........... 9
`
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`iii
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`IPR2022-00135 of Patent No. 10,257,319
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`Ventana Medical Systems v. Biogenex Laboratories, 473 F.3d 1173 (Fed. Cir.
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`2006). ....................................................................................................................15
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`iv
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`PATENT OWNER’S LIST OF EXHIBITS
`
`
`EX. 2001 Declaration of Dr. V. Thomas Rhyne
`
`EX. 2002 U.S. Patent No. 10,469,614
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`EX. 2003 U.S. Patent No. 10,491,712
`
`EX. 2004 U.S. Patent No. 10,491,713
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`EX. 2005 U.S. Patent No. 11,050,852
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`EX. 2006 U.S. Patent No. 8,972,602 (“Mithyantha”)
`
`EX. 2007 Order (Dkt. 303) in the case of Bright Data Ltd. f/k/a Luminati
`Networks Ltd. v. Teso LT, UAB a/k/a UAB Teso LT, et al., Case No.
`2:19-cv-00395 (E.D. Tex. Feb. 12, 2021)
`
`Patent Owner’s Sur-Reply (Dkt. 47) in the case of Bright Data Ltd.
`f/k/a Luminati Networks Ltd. v. Teso LT, UAB a/k/a UAB Teso LT,
`et al., Case No. 2:19-cv-00395 (E.D. Tex. May 5, 2020)
`
`Patent Owner’s Reply (Dkt. 145) in the case of Bright Data Ltd.
`f/k/a Luminati Networks Ltd. v. Teso LT, UAB a/k/a UAB Teso LT,
`et al., Case No. 2:19-cv-00395 (E.D. Tex. Oct. 20, 2020)
`
`EX. 2010 Deposition Transcript of Dave Levin, dated July 22, 2022
`
`EX. 2011 U.S. Patent No. 8,560,604
`
`EX. 2012 U.S. Patent No. 10,069,936
`
`Claim Construction Order (Dkt. 146) in the case of Bright Data
`Ltd. v. NetNut Ltd., Case No. 2:21-cv-00225 (E.D. Tex. May 10,
`2022)
`
`
`EX. 2008
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`EX. 2009
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`EX. 2013
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`v
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`EX. 2014
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`IPR2022-00135 of Patent No. 10,257,319
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`Bright Data, “Residential Proxy Network”, accessed at
`https://brightdata.com/proxy-types/residential-proxies on July 29,
`2022
`
`EX. 2015 Definition “Consumer”, Cambridge English Dictionary; accessed at
`https://dictionary.cambridge.org/us/dictionary/english/consumer on
`June 10, 2022
`
`EX. 2016 Definition “Consumer”, Collins English Dictionary; accessed at
`https://www.collinsdictionary.com/us/dictionary/english/consumer
`on June 10, 2022
`
`EX. 2017 Network Fundamentals Study Guide, published February 17, 2015;
`accessed at https://www.webopedia.com/reference/network-
`fundamentals-studyguide/#topologies on June 14, 2022
`
`Bright Data, Network Diagram – HIGHLY CONFIDENTIAL –
`OUTSIDE ATTORNEYS’ EYES ONLY
`
`EMK Capital, “EMK acquires Luminati”, published August 10,
`2017; accessed at https://www.emkcapital.com/emk-acquires-
`luminati-worlds-largest-ip-proxy-network-brings-transparency-
`internet/ on July 29, 2022
`
`EX. 2020 Appendix to Declaration of Dr. Tim A. Williams - HIGHLY
`CONFIDENTIAL – OUTSIDE ATTORNEYS’ EYES ONLY –
`SOURCE CODE
`
`Source Code File 1 of 4 - HIGHLY CONFIDENTIAL – OUTSIDE
`ATTORNEYS’ EYES ONLY – SOURCE CODE
`
`Source Code File 2 of 4 - HIGHLY CONFIDENTIAL – OUTSIDE
`ATTORNEYS’ EYES ONLY – SOURCE CODE
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`Source Code File 3 of 4 - HIGHLY CONFIDENTIAL – OUTSIDE
`ATTORNEYS’ EYES ONLY – SOURCE CODE
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`Source Code File 4 of 4 - HIGHLY CONFIDENTIAL – OUTSIDE
`ATTORNEYS’ EYES ONLY – SOURCE CODE
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`EX. 2018
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`EX. 2019
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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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`vi
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`EX. 2025
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`EX. 2026
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`EX. 2027
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`EX. 2028
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`EX. 2029
`
`
`Frost & Sullivan Report, “Global IP Proxy Networks Market,”
`published July 2019
`
`Excerpts from Trial Transcript, Day 1 in the case of Bright Data
`Ltd. f/k/a Luminati Networks Ltd. v. Teso LT, UAB a/k/a UAB Teso
`LT, et al., Case No. 2:19-cv-00395 (E.D. Tex. Nov. 1, 2021)
`
`Excerpts from Trial Transcript, Day 3 in the case of Bright Data
`Ltd. f/k/a Luminati Networks Ltd. v. Teso LT, UAB a/k/a UAB Teso
`LT, et al., Case No. 2:19-cv-00395 (E.D. Tex. Nov. 3, 2021)
`
`Jury Verdict (Dkt. 516) in the case of Bright Data Ltd. f/k/a
`Luminati Networks Ltd. v. Teso LT, UAB a/k/a UAB Teso LT, et al.,
`Case No. 2:19-cv-00395 (E.D. Tex. Nov. 5, 2021)
`
`Bright Data, “Proxy Services”, accessed at
`https://brightdata.com/proxy-types on July 29, 2022
`
`EX. 2030 Oxylabs, “Legal Timeline Between Oxylabs and Luminati (now
`Bright Data)”, accessed at https://oxylabs.io/legal-timeline on
`August 4, 2022
`
`Earthweb, “16 Best Residential Proxies to Buy in 2022”, last
`updated May 19, 2022; accessed at
`https://earthweb.com/residential-proxies/ on May 19, 2022
`
`SmartProxy, “What is the difference between residential and
`datacenter proxies?”, published June 3, 2021; accessed at
`https://smartproxy.com/blog/what-is-the-difference-between-
`proxy-servers-and-data-centers on May 19, 2022
`
`EX. 2033 Microleaves, “Backconnect Residential Proxies”, accessed at
`https://web.archive.org/web/20170913105635/https://microleaves.c
`om/services/backconnect-proxies?promotion=dNPa on May 20,
`2022
`
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`EX. 2031
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`EX. 2032
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`vii
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`EX. 2035
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`EX. 2036
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`EX. 2037
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`EX. 2038
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`EX. 2034 Oxylabs, “Residential Proxies,” accessed at
`https://web.archive.org/web/20200701171337/https://oxylabs.io/pr
`oducts/residential-proxy-pool on May 20, 2022
`
`Bright Data, “When should I use the residential network?”,
`accessed at https://help.brightdata.com/hc/en-
`us/articles/4413156951825-When-should-I-use-the-residential-
`network- on August 2, 2022
`
`Bright Data, “Cost effectiveness of residential IPs”, accessed at
`https://help.brightdata.com/hc/en-us/articles/4413161607441-Cost-
`effectiveness-of-residential-IPs on August 2, 2022
`
`Bright Data, “Using the system”, accessed at
`https://help.brightdata.com/hc/en-us/articles/4413167165969-
`Using-the-system on August 2, 2022
`
`Bright Data, “Which ports and protocols are supported by Bright
`Data?”, accessed at https://help.brightdata.com/hc/en-
`us/articles/4413222000017-Which-ports-and-protocols-are-
`supported-by-Bright-Data- on August 2, 2022
`
`Bright Data, “How do I integrate Bright Data as my proxy
`network?”, accessed at https://help.brightdata.com/hc/en-
`us/articles/4413213552273-How-do-I-integrate-Bright-Data-as-my-
`proxy-network- on August 2, 2022
`
`Bright Data, “How do I integrate Bright Data into a web browser
`automation tool?”, accessed at https://help.brightdata.com/hc/en-
`us/articles/4413213588369-How-do-I-integrate-Bright-Data-into-a-
`web-browser-automation-tool- on August 2, 2022
`
`Bright Data, “What is Bright Data Proxy Browser Extension?”,
`accessed at https://help.brightdata.com/hc/en-
`us/articles/4413213983633-What-is-Bright-Data-Proxy-Browser-
`Extension- on August 2, 2022
`
`
`EX. 2039
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`EX. 2040
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`EX. 2041
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`EX. 2043
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`EX. 2045
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`EX. 2046
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`EX. 2047
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`EX. 2048
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`EX. 2042 Wikipedia, “Domain Name System”, accessed at
`https://en.wikipedia.org/wiki/Domain_Name_System on August 2,
`2022
`
`Bright Data, “Using BrightData in Android settings”, accessed at
`https://help.brightdata.com/hc/en-us/articles/4413168253969-
`Using-BrightData-in-Android-settings on August 2, 2022
`
`EX. 2044 Declaration of Dr. Tim A. Williams - HIGHLY CONFIDENTIAL
`– OUTSIDE ATTORNEYS’ EYES ONLY
`
`Excerpts from Tanenbaum, A., et al., “Computer Networks – Fifth
`Edition”, copyright 2011, ISBN 0-13-212695-8
`
`Joint Protective Order
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`Redlined version of the Joint Protective Order (compared to
`Default Protective Order)
`
`Executed Acknowledgements from Dr. Tim A. Williams, by lead
`counsel for Patent Owner, and by first back-up counsel for Patent
`Owner
`
`
`EX. 2049 Nimble, “Nimble, Your Effortless Web Data Gathering Solution”,
`accessed at https://www.nimbleway.com/ on August 5, 2022
`
`EX. 2050 Nimble, “Privacy Policy”, accessed at
`https://www.nimbleway.com/privacy-policy/ on August 5, 2022
`
`Email between the parties regarding the source code appendix to
`the expert declaration – HIGHLY CONFIDENTIAL – OUTSIDE
`ATTORNEYS’ EYES ONLY – SOURCE CODE
`
`EX. 2052 Nimble, “Nimble IP | High-Quality Proxy Services - Nimble”,
`accessed at https://www.nimbleway.com/nimble-ip/ with -1x zoom
`view on November 22, 2022
`
`
`EX. 2051
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`ix
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`IPR2022-00135 of Patent No. 10,257,319
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`I.
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`INTRODUCTION
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`As explained herein, Petitioner’s proposed constructions are inappropriate
`
`and inapplicable to the claims of the ‘319 Patent. Moreover, Patent Owner’s strong
`
`evidence of secondary considerations overcomes any alleged obviousness
`
`challenge.
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`Petitioner fails to meet its burden for at least five reasons:
`
`First, Petitioner deviates from the district court’s constructions and argues
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`purely role-based constructions where any device that operates in the role of a
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`client is a “client device” and any device that operates in the role of a server is a
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`“server”. Under Petitioner’s constructions, an intermediary device would be both a
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`“client device” and a “server” albeit at different points in time.1
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`Petitioner now argues that a device need not operate “exclusively” in the
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`client or server roles. E.g., Paper 23 at 1. However, if there is no exclusivity, there
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`is no difference between Petitioner’s constructions for “client device” and “server”.
`
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`1 Patent Owner notes that the “second server” and “first client device” of the claims
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`are both intermediaries located between a requesting client device and a web
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`server. Under Petitioner’s constructions, there is no way to distinguish the “second
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`server” and “first client device”.
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`1
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`IPR2022-00135 of Patent No. 10,257,319
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`As discussed below, Petitioner’s purely role-based constructions ignore
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`express lexicography in the specification, statements during prosecution, and the
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`claim language itself. It is undisputed that claim 1 is performed within a second
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`server ↔ first client device ↔ web server architecture and that the method of
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`claim 1 is performed by the intermediary “first client device”. Patent Owner
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`submits that the “first client device” is a client device regardless of the role being
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`performed at a particular point in time; and that the “second server’ is a server
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`regardless of the role being performed at a particular point in time.
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`Second, under Patent Owner’s proposed constructions, Petitioner fails to
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`show that Plamondon discloses the claimed components “as arranged” in the
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`claim. Petitioner fails to meet the high burden for anticipation.
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`Third, Patent Owner established nexus between claims of the ‘319 Patent
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`and Patent Owner’s source code for its residential proxy service. The strong
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`evidence of secondary considerations outweighs any alleged obviousness.
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`Fourth, Patent Owner has not been inconsistent with its interpretation of the
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`claim terms for purposes of infringement and validity. Contra Paper 23 at 20. As
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`discussed herein, Petitioner’s constructions are different from the district court’s
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`constructions as Petitioner attempts to completely genericize the claimed
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`2
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`IPR2022-00135 of Patent No. 10,257,319
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`components. It is Petitioner who has been inconsistent in defining what constitutes
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`a “client device” versus a “server”.
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`Fifth, Patent Owner briefly addresses Petitioner’s additional arguments
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`regarding anticipation of claims 14 and 24, the combination of Plamondon and
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`Price, and the combination of Plamondon and Kozat. It is clear that Petitioner uses
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`hindsight in an attempt to map the references onto the claims.
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`II. CLAIM CONSTRUCTION
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`Claim construction has become the prominent issue in all pending IPRs for
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`this patent family. Patent Owner has not taken conflicting positions as Petitioner
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`alleged. Paper 23 at 4. Patent Owner has consistently argued that servers are not
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`client devices and vice versa.
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`Patent Owner disagrees with the district court’s constructions, but pre-
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`institution, argued that, even under the district court’s constructions, Petitioner did
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`not carry its burden. Post-institution, Patent Owner explains why its proposed
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`constructions are correct.
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`As discussed herein, Petitioner did not apply the district court’s
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`constructions and instead, argues purely-role based constructions. Unlike
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`Petitioner, the district court recognized that the claimed components are not
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`interchangeable, general use computers. EX.2007. Unlike Petitioner, the district
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`3
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`IPR2022-00135 of Patent No. 10,257,319
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`court recognized a distinction between communication devices (having a special
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`meaning in the context of the ‘319 Patent) and servers in its constructions. E.g.,
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`EX.1006.2 For example, the district court properly recognized that a server is not a
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`client device. See EX.1006 at 12.
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`Petitioner states that it “adopts” the district court’s constructions, but then
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`analyzes the “communication device” as any device that communicates over the
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`internet. Paper 2 at 9; Paper 23 at 12. The district court recognized that the term
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`“communication device” has a special meaning in the context of the ‘319 Patent;
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`the district court recognized that a server is not a communication device and
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`therefore not a client device. See Paper 16 at 30. A communication device is not
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`simply any device that communicates with another device. Contra Paper 23 at 12.
`
`Petitioner attempts to genericize this claimed component.
`
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`2 In the Code200 Litigation, Case No. 2:19-cv-396 (E.D. Tex.), involving the
`
`related ‘511 and ‘968 Patents, the district court simply adopted the same ruling and
`
`reasoning from the Teso Litigation. EX.1082 at 13. Additionally, Patent Owner
`
`notes that the ‘511 and ‘968 Patents are directed at a first client device ↔ first
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`server ↔ web server architecture and do not recite the use of an intermediary client
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`device in claim 1 of either patent. EX.1101 at 1 and 4.
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`
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`4
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`IPR2022-00135 of Patent No. 10,257,319
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`Petitioner also states that it “adopts” the district court’s constructions, but
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`then proposes “second server” means “a device that is operating in the role of a
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`server and that is not the first client device,” which removes the requirement that it
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`be a server. Paper 2 at 9. The district court construed “second server” to mean
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`“server that is not the client device.” EX.1006 at 14 (emphasis added). The district
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`court did not change its construction in the Supplemental Order. EX.1009 at 11. A
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`server is indeed a server. Contra Paper 23 at 17. Petitioner also attempts to
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`genericize this claimed component.
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`The Board’s institution decision provides preliminary constructions that are
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`only “for purposes of this decision”.3 Unlike Petitioner, the Board appears to agree
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`that a server is not a client device in the context of the ‘319 Patent. Paper 12 at 22.
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`The Board suggests that a client device can “act as a server” and therefore qualify
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`as a “server”. Paper 12 at 22. However, under the Board’s preliminary
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`constructions, a POSA cannot distinguish an intermediary server versus an
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`intermediary client device, which is not appropriate in the context of the ‘319
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`Patent. Intermediary proxy server 6 of Fig. 1 is always a server, though at certain
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`points in time, under the Board’s preliminary role-based constructions, it may
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`3 The Board has only ever provided preliminary constructions in institution
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`decisions. No IPR involving a related patent has reached a final decision.
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`5
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`operate in the role of a client. Likewise, intermediary agent 122 of Fig. 3 is always
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`a client device, though at certain points in time, under the Board’s preliminary
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`role-based constructions, it may operate in the role of a server, for example, when
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`it receives requests from/sends responses to client 102. Using an intermediary
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`client device as claimed in the ‘319 Patent solves problems of the prior art by
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`avoiding the high cost of distributing traditional proxy server systems worldwide.
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`See, e.g., EX.1081 at 80:24-83:13; EX.1001 at 2:8-23 and 2:38-39 (providing
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`“large distribution systems without the large hardware costs involved” while
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`maintaining the ability to handle dynamic content). The Board’s preliminary role-
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`based constructions fail to recognize the difference between proxy server 6 and
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`agent 122. Paper 16 at 19-23.
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`Petitioner’s purely role-based constructions improperly genericize the
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`claimed components, which contradicts the express claim language. Patent
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`Owner’s analysis of the role-based constructions shows that they are inappropriate
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`at least in view of the preamble, step 1, and step 4 of claim 1 because the
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`components change roles as the method is performed. For example, the preamble
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`recites “first client device” and must be read consistently with the rest of the claim.
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`Even Petitioner admits that, under the role-based constructions, the “first client
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`6
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`IPR2022-00135 of Patent No. 10,257,319
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`device” would operate in the role of a server, not a client, during steps 1 and 4.
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`Paper 23 at 19 and 21.4
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`Petitioner’s purely role-based constructions cannot distinguish whether an
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`intermediary is a client device or a server. For example, there is nothing to
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`distinguish proxy server 6 shown in Fig. 1 (prior art) and agent 122 shown in Fig. 3
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`(inventive embodiment) of the ‘319 Patent. Paper 16 at 19-23. Petitioner’s purely
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`role-based constructions also contradict the district court’s Orders which found that
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`the claims do not recite generic, interchangeable computers.
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`In the NetNut Litigation, the Court had already construed the claims and did
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`not see a reason to deviate from its prior constructions. E.g., EX.2013 at 14-15.
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`The Court again noted that it would not remove the word “communication” from
`
`its prior construction. The Court again emphasized that “a ‘client device’ is not
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`merely a general-purpose computer.” Id.
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`Patent Owner notes that defendants have repeatedly attempted to treat the
`
`claims as having a generic computer ↔ computer ↔ computer architecture. In the
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`Teso Litigation, the court expressly rejected this premise in the Alice Order.
`
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`4 Petitioner argues “exclusivity” renders the claims “inoperable”. See, e.g., Paper
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`23 at 19. Petitioner’s cited case actually supports Patent Owner’s proposed
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`constructions.
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`7
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`IPR2022-00135 of Patent No. 10,257,319
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`EX.2007.5 Though an Alice Motion was not filed in the NetNut Litigation, the
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`district court rejected this premise during claim construction as explained in the
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`POR. E.g., Paper 16 at 11, 16, and 29; EX.2013 at 15.
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`A. Lexicography & Validity
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`Patent Owner maintains that the term “client device” as used in the claims
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`was expressly defined in the specification: “computers of consumers, referred to
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`herein as client devices.” EX.1001 at 2:45-46.
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`In a recent decision, the Federal Circuit found “[b]ecause the patentee
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`clearly defined “driven position” in the written description, that definition
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`controls.” Kyocera Senco Indus. Tools, Inc. v. ITC, 22 F.4th 1369, 1379 (Fed. Cir.
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`2022). Acting as their own lexicographers, the patentees defined “driven position”
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`in the specification by stating: “This bottom position is also sometimes referred to
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`herein as the “driven position.” Id. at 1378. This clear definition in the Kyocera
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`case is the same type of definition provided in the ‘319 Patent where the patentee
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`used the phrase “referred to herein as” to define a claim term.
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`“Phillips makes clear that “[t]he claims . . . do not stand alone. Rather they
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`are part of a fully integrated written instrument, consisting principally of a
`
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`5 Similarly, the district court rejected this premise in the Alice Order in the
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`Code200 Litigation (Dkt. 98).
`
`
`
`8
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`
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`IPR2022-00135 of Patent No. 10,257,319
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`specification that concludes with the claims.” Trs. Of Columbia Univ. v. Symantec
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`Corp., 811 F.3d 1359, 1363 (Fed. Cir. 2016)(citing Phillips v. AWH Corp., 415
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`F.3d 1303, 1315 (Fed. Cir. 2005)). “The only meaning that matters in claim
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`construction is the meaning in the context of the patent.” Phillips at 1316 (citing
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`and quoting Netword, LLC v. Centraal Corp., 242 F.3d 1347, 1352 (Fed. Cir.
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`2001) (“The claims are directed to the invention that is described in the
`
`specification; they do not have meaning removed from the context from which
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`they arose.”)).
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`Petitioner’s cited cases do not support its arguments. In Hill-Rom, the
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`Federal Circuit noted that “[t]here is no disclosure that, for example, the present
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`invention “is,” “includes,” or “refers to” a wired datalink and there is nothing
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`expressing the advantages, importance, or essentiality of using a wired as opposed
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`to wireless datalink.” Hill-Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1372
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`(Fed. Cir. 2014). That is not the case here. The ‘319 patent expressly “referred to”
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`consumer computers as client devices and the use of a client device as recited in
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`the claims overcomes the problems cited in the prior art. E.g., EX.2044 at ¶127.
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`At minimum, the term “client device” is reasonably susceptible to Patent
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`Owner’s proposed construction, and the term should be construed to preserve the
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`validity of the challenged patent claims. See Modine Mfg. Co. v. United States Int’l
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`Trade Comm’n, 75 F.3d 1545, 1556 (Fed. Cir. 1996) (“When claims are amenable
`
`
`
`9
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`
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`IPR2022-00135 of Patent No. 10,257,319
`
`to more than one construction, they should when reasonably possible be interpreted
`
`so as to preserve their validity.”).
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`More recently, Phillips explains a claim term should be construed to
`
`preserve validity when “it is reasonable to infer that the PTO would not have
`
`issued an invalid patent, and that the ambiguity in the claim language should
`
`therefore be resolved in a manner that would preserve the patent’s validity,” noting
`
`that this was “the rationale that gave rise to the maxim in the first place.” Phillips
`
`at 1327 (emphasis added). “The applicability of the doctrine in a particular case
`
`therefore depends on the strength of the inference that the PTO would have
`
`recognized that one claim interpretation would render the claim invalid, and that
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`the PTO would not have issued the patent assuming that to be the proper
`
`construction of the term.” Id. at 1328 (emphasis added).
`
`The PTO would not have issued the ‘319 Patent assuming the Petitioner’s
`
`purely role-based constructions because then the claims would read directly on
`
`using intermediate proxy servers, which is expressly disclosed in Fig. 1 of the
`
`patent itself as prior art. Paper 16 at 19-23.
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`Additionally, Patent Owner is not seeking to “rewrite claims” (contra Paper
`
`23 at 19), but rather, acknowledge that the claims specifically recite functions
`
`performed by and between a “client device” and a “second server”. Patent Owner
`
`
`
`10
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`
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`IPR2022-00135 of Patent No. 10,257,319
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`argues herein that the claim terms should be given the proper construction
`
`consistent with the record evidence. Petitioner’s cited case is not applicable. In AC
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`Technologies, the patent claim recited storing “at least one piece” and copying
`
`“pieces” of data. AC Techs., S.A. v. Amazon.com, Inc., 912 F.3d 1358, 1366 (Fed.
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`Cir. 2019). The Federal Circuit found that the claims were not limited to copying
`
`and storing only individual pieces of data. Id. There were no prosecution history
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`statements suggesting prohibition of storing or copying pieces contiguously with
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`other pieces of data. Id. That is not the case here where there were many
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`prosecution history statements prohibiting client devices and servers being treated
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`interchangeably.
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`Patent Owner explained why the district court’s reasoning for rejecting the
`
`proposed construction “consumer computer” is not appropriate. Paper 16 at 13-18.
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`In its Reply, Petitioner argues “the relevant records are essentially identical.” Paper
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`23 at 6. This statement is false. Patent Owner notes that the opening claim
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`construction brief is a maximum of 30 pages and addresses multiple claim terms
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`and issues of indefiniteness. For example, in the Teso Litigation, the Opening Brief
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`(EX.1005 at 10-18) and Reply Brief (EX.2009 at 4-9) total 12 pages, whereas the
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`POR dedicates 21 pages to discussing claim construction (Paper 16 at 9-32). The
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`district court briefing did not include the same level of detail and explanation as in
`
`the POR.
`
`
`
`11
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`
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`IPR2022-00135 of Patent No. 10,257,319
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`Based on the intrinsic record, discussed in detail in the POR, the public is on
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`notice that client devices are distinguished from servers. Further, the public is on
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`notice that the claims recite the novel use of a client device as an intermediary
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`between a second server and a web server.6
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`B. The ‘936 Patent
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`Applicant consistently distinguished client devices and servers in the related
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`prosecution histories. Paper 16 at 23-28. Petitioner’s arguments regarding the ‘936
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`patent fail for at least four reasons.
`
`
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`6 In the Tate case, cited in the POR at 19, the Federal Circuit found that the district
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`court did not abuse its discretion in granting the preliminary injunction. Tate
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`Access Floors, Inc. v. Interface Architectural Resources, Inc., 279 F.3d 1357, 1360
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`(Fed. Cir. 2002). The Federal Circuit rejected Interface’s argument that “practicing
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`prior art” is an affirmative defense precluding literal infringement and rejected a
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`narrow construction because “nothing in the language of these claims requires the
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`"border" to be horizontal or formed of a single layer.” Id. at 1369-1370. Tate
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`supports Patent Owner’s arguments because it emphasizes fairness and the public
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`notice function of patent claims. Id. at 1367.
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`
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`12
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`
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`IPR2022-00135 of Patent No. 10,257,319
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`First, Petitioner attempts to minimize the significance of the applicant’s
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`statements distinguishing client devices and servers. See Paper 23 at 15. The POR
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`discusses these prosecution history statements in detail. Paper 16 at 23-28; see also
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`Phillips at 1317 (“…the prosecution history can often inform the meaning of the
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`claim language by demonstrating how the inventor understood the invention and
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`whether the inventor limited the invention in the course of prosecution, making the
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`claim scope narrower than it would otherwise be.”)
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`Second, during prosecution of the ‘936 Patent, the examiner expressly stated
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`that: “Garcia fails to teach a group of clients for data communication between the
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`web server and a requesting client via one or more clients selected from the group;
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`and (f) the selected client receiving the content from the web server; and (g) the
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`requesting client receiving the content from the selected client.” EX.1072 at 594.
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`The functions performed by “the selected client” may be equated to the “first client
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`device” of the ‘319 Patent. In response, Applicant argued that client devices are
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`different from servers (EX.1072 at 624-625) and further distinguished the Garcia
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`reference (EX.1072 at 627-628). The examiner conceded that “Garcia fails to teach
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`a group of clients for data communication; (a) each of the devices sending its
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`identifier to the first server; (b) the first server receiving and storing the identifiers
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`of the devices; (d) the first server selecting one of the clients from the group; and
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`(f) the selected client receiving the content from the web server; and (g) the
`
`
`
`13
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`
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`IPR2022-00135 of Patent No. 10,257,319
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`requesting client receiving the content from the selected client.” EX.1072 at 643.
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`In response, Applicant again argued that client devices are different from servers
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`(EX.1072 at 690-692). In the next action, the examiner withdrew rejections based
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`on Garcia and issued new rejections based on other references. EX.1072 at 703.
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`Third, Petitioner’s argument as to the Harrow reference, cited as a
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`secondary reference during prosecution of the ‘936 Patent, is a red herring.
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`Petitioner attempts to apply the definition of a client from a different and unrelated
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`patent that discloses a different architecture. See Paper 23 at 12.
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`Additionally, Petitioner mischaracterizes Dr. Williams’ testimony. See, e.g.,
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`EX.1081 at 31:12-25; contra Paper 23 at 12, n. 4. Dr. Williams discussed client
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`device 60 of Fig. 2 of the ‘319 Patent, not the disclosure of clients in Harrow. In
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`the context of the ‘319 Patent, client devices are distinguished from servers. E.g.,
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`Paper 16 at 10-18.
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`Fourth, Petitioner’s cited cases do not support its arguments. In Quest,
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`claim 1 was not narrowed to exclude Example 1 because there was no indication
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`that the claims should be re
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