Case 2:19-cv-00395-JRG Document 490 Filed 09/17/21 Page 1 of 32 PageID #: 25364
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`Bright Data Ltd.,
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`Plaintiff,
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`v.
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`Teso LT, UAB, Oxysales, UAB and
`Metacluster LT, UAB,
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`Defendants.
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`Civil Action No.
`2:19-cv-00395-JRG
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`REVISED JOINT PRETRIAL ORDER
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`Plaintiff Bright Data Networks Ltd. (“Bright Data”), and Defendants Teso LT, UAB
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`(“Teso”), Oxysales, UAB (“Oxysales”) and Metacluster LT, UAB (“Metacluster”) (Defendants
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`collectively, “Oxylabs” or “Defendants”) (Bright Data and Defendants, collectively, the “Parties”)
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`hereby submit this Amended Joint Pretrial Order pursuant to the Court’s First Amended Docket
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`Control Order (ECF No. 379) and the Court’s Order on Pretrial Motions (ECF No. 476).
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`A. COUNSEL FOR THE PARTIES
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`1. ATTORNEYS FOR BRIGHT DATA
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`S. Calvin Capshaw
`State Bar No. 03783900
`Elizabeth L. DeRieux
`State Bar No. 05770585
`Capshaw DeRieux, LLP
`114 E. Commerce Ave.
`Gladewater, TX 75647
`Telephone: 903-845-5770
`ccapshaw@capshawlaw.com
`ederieux@capshawlaw.com
`
`Korula T. Cherian
`CA Bar No.: 133967
`(Admitted to practice in E.D. Texas)
`Robert Harkins
`CA Bar No.: 179525
`(Admitted to practice in E.D. Texas)
`RuyakCherian LLP
`1936 University Ave, Ste. 350
`Berkeley, CA 94702
`Telephone: (510) 944-0190
`sunnyc@ruyakcherian.com
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`1
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`Data Co Exhibit 1078
`Data Co v. Bright Data
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`

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`Case 2:19-cv-00395-JRG Document 490 Filed 09/17/21 Page 2 of 32 PageID #: 25365
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`James Mark Mann
`State Bar No. 12926150
`Gregory Blake Thompson
`State Bar No. 24042033
`Mann Tindel & Thompson
`201 E. Howard Street
`Henderson, TX 75654
`Telephone: 903-657-8540
`Mark@TheMannFirm.com
`Blake@TheMannFirm.com
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`
`bobh@ruyakcherian.com
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`Amadou Kilkenny Diaw
`DC Bar No.: 1006908
`(Admitted to practice in E.D. Texas)
`Ronald Wielkopolski
`DC Bar No.: 1013586
`(Admitted to practice in E.D. Texas)
`Thomas M. Dunham
`DC Bar No.: 448407
`(Admitted to practice in E.D. Texas)
`Colby Davis
`CA Bar No.: 307292
`(Admitted to practice in E.D. Texas)
`RuyakCherian LLP
`1901 L Street NW, Suite 700
`Washington, DC 20036
`Telephone: (202) 838-1560
`amadoukd@ruyakcherian.com
`ronw@ruyakcherian.com
`tomd@ruyakcherian.com
`colbyd@ruyakcherian.com
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`2. ATTORNEYS FOR DEFENDANTS/COUNTERCLAIM-PLAINTIFFS
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`MICHAEL C. SMITH
` Texas State Bar No. 18650410
` michael.smith@solidcounsel.com
`SIEBMAN, FORREST,
`BURG & SMITH LLP
`113 East Austin Street
`Marshall, Texas 75671
`Telephone: (903) 938-8900
`Telecopier: (972) 767-4620
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`BRETT C. GOVETT
` Texas State Bar No. 08235900
` brett.govett@nortonrosefulbright.com
`NORTON ROSE FULBRIGHT US LLP
`2200 Ross Avenue, Suite 3600
`Dallas, Texas 75201
`Telephone: (214) 855-8000
`Telecopier: (214) 855-8200
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`DANIEL S. LEVENTHAL
` Texas State Bar No. 24050923
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`STEVEN CALLAHAN
` Texas State Bar No. 24053122
` scallahan@ccrglaw.com
`CRAIG TOLLIVER
` Texas State Bar No. 24028049
` ctolliver@ccrglaw.com
`GEORGE T. “JORDE” SCOTT
` Texas State Bar No. 24061276
` jscott@ccrglaw.com
`MITCHELL SIBLEY
` Texas State Bar No. 24073097
` msibley@ccrglaw.com
`JOHN HEUTON
` Admitted Pro Hac Vice
` jheuton@ccrglaw.com
`CHARHON CALLAHAN
`ROBSON & GARZA, PLLC
`3333 Lee Parkway, Suite 460
`Dallas, Texas 75219
`Telephone: (214) 521-6400
`Telecopier: (214) 764-8392
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` daniel.leventhal@nortonrosefulbright.com
`NORTON ROSE FULBRIGHT US LLP
`1301 McKinney, Suite 5100
`Houston, Texas 77010-3095
`Telephone: (713) 651-5151
`Telecopier: (713) 651-5246
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`B. STATEMENT OF JURISDICTION
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`
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`This Court has subject matter jurisdiction over the action brought by Bright Data pursuant to
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`28 U.S.C. §§ 1331 and 1338(a), because this action arises under the patent laws of the United
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`States, including 35 U.S.C. § 1 et seq. The parties do not dispute that, with respect to Bright Data’s
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`claims, the Court has personal jurisdiction over Bright Data, Teso, Oxysales, and Metacluster and
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`that venue is proper in this judicial district.
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`Oxylabs further asserts that, with respect to Oxylabs’ counterclaims, personal jurisdiction
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`exists over Bright Data, the Court has subject-matter jurisdiction, and venue is proper.
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`C. NATURE OF ACTION
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`1. Bright Data’s Statement:
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`This is a patent infringement case related to Internet Protocol (“IP”) proxy technology, and
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`specifically residential proxy services (“Residential Proxy Services”) that use client devices as
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`proxies in Internet communication. Plaintiff Bright Data alleges that Defendants’ Residential
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`Proxy and Real-Time Crawler services (“Accused Instrumentalities”) infringe claims 1 and 26 of
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`U.S. Patent No. 10,257,319 (the “’319 Patent”), claims 1 and 22 of U.S. Patent No. 10,484,510
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`(the “’510 Patent”) and 1, 6, 11, 16, 20 and 26 of U.S. Patent No. 10,469,614 (the “’614 Patent”),
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`collectively “Asserted Patents” and “Asserted Patent Claims” respectively). Bright Data asserts
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`that Defendants directly or indirectly infringe the Asserted Patent Claims under 25 U.S.C. § 271(a)
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`and/or (b) as Defendants have and continue to use, provide, sell, and offer to sell the Accused
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`Instrumentalities using residential proxies (client device) located in the United States, induce their
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`customers to infringe the same Asserted Patent Claims through the use of the Accused Instrumen-
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`talities, induce their partners and residential proxy suppliers to infringe the Asserted Patent Claims
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`through their support of the Accused Instrumentalities, and import into the United States software
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`development kits (“SDKs”) used to cause client devices in the United States to serve as residential
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`proxies in support of the Accused Instrumentalities.
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`Defendants assert counterclaims of invalidity and non-infringement regarding the Asserted
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`patent Claims, as well as a counterclaim of unenforceability of the ’614 Patent based on Defend-
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`ants’ allegations of inequitable conduct. Bright Data denies these counterclaims and Defendants
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`defenses.
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`2. Defendants’ Statement:
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`Bright Data accuses Oxylabs of infringing Claims 1, 6, 11, 16, 20 and 26 of the ’614 Patent;
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`Claims 1 and 26 of the ’319 Patent; and Claims 1 and 22 of the ’510 Patent (collectively, the
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`“Asserted Claims” and the ’614 Patent, the ’319 Patent, and the ’510 Patent, collectively, the “Pa-
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`tents-in-Suit”).
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`The accused products are Teso’s residential proxy service and Metacluster’s real-time
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`crawler service when operated over Teso’s residential proxy service (collectively, the “Accused
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`Products”). Oxylabs denies that it infringes (whether directly or indirectly, willfully or otherwise)
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`the Patents-in-Suit and further contends that Patents-in-Suit are invalid and not patent eligible un-
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`der 35 U.S.C. § 101. Oxylabs further asserts that the ’614 Patent is unenforceable due to inequita-
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`ble conduct. Oxylabs further asserts that Bright Data’s claims for relief are limited by 35 U.S.C.
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`§§ 286-287 and/or 28 U.S.C. § 1498, prosecution-history estoppel, extraterritoriality principles,
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`and/or the disclosure-dedication doctrine.
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`Oxylabs asserts declaratory judgment claims against Bright Data under the Declaratory Judg-
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`ment Act, 28 U.S.C. §§ 2201(a) and 2202. Oxylabs seeks a declaratory judgment that the Patents-
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`in-Suit are not infringed and invalid, and that the ’614 Patent is unenforceable due to inequitable
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`conduct.
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`D.
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`CONTENTIONS OF THE PARTIES
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`1. Plaintiff Bright Data’s contentions
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`Infringement claims and damages:
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`1. Bright Data contends that Defendants directly infringe the Asserted Patent Claims, literally
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`and/or under the doctrine of equivalents, in violation of 35 U.S.C. § 271 including at least §
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`271(a) because Defendants have used, uses, offered for sale, offers for sale, imported, imports,
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`sells and/or has sold the Accused Instrumentalities in the United States; and § 271(b) because
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`Defendants have and continues to actively induced their customers and residential proxy sup-
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`pliers to infringe the Asserted Patent Claims.
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`2. Bright Data contends that it has been damaged by the offers for sale and sales of the Accused
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`Instrumentalities and is entitled to past damages equal to at least its lost profits and not less
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`than a reasonable royalty under 35 U.S.C. § 284 for the time beginning on April 9, 2019 when
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`Defendants first infringed the ’319 Patent, beginning on November 5, 2019 when Defendants
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`first infringed the ’614 Patent, and beginning November 19, 2019 when Defendants first in-
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`fringed the ’510 Patent.
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`3. Bright Data further contends that it is and has been being irreparably harmed by the offers for
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`sale and sales of the Accused Instrumentalities and that no remedy at law would suffice to
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`compensate Bright Data for the ongoing harm to its business.
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`4. Bright Data contends that Defendants’ infringement has been and continues to be willful at
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`least since the filing of the Complaint and Bright Data is entitled to enhanced damages up to
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`three times under 35 U.S.C. § 284.
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`5. Bright Data further contends that Defendants’ actions related to the case including but not
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`limited to the willful infringement warrants a finding of exceptional case under 35 U.S.C. §
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`285 and an award of attorneys’ fees and costs and any other applicable award as a result of that
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`finding.
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`6. Bright Data further contends that damages are an inadequate remedy to compensate Bright
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`Data for the ongoing harm caused by the continued offers for sale and sale of the Accused
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`Instrumentalities, and consequently Bright Data is entitled to a permanent injunction prohibit-
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`ing the sale of the Accused Instrumentalities.
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`Responses to Defendants’ affirmative defenses and counterclaims:
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`7. Bright Data contends that the Asserted Patent Claims are not invalid for any reason, including
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`under sections 101, 102, 103, and 112 of the Patent Act and any other argument for invalidity
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`raised by Defendants. In addition to other grounds, Bright Data contends that the Asserted
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`Patents are not invalid under section 101 for at least the reasons found in the Court’s February
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`16, 2021 Order (Dkt. 303) denying Oxylabs’ Rule 12(c) motion for judgment on the pleadings
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`and those reasons stated in Bright Data’s response to Defendants’ motion for summary judg-
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`ment of invalidity on the basis of 35 U.S.C. § 101.
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`8. Bright Data contends that its damages are not limited by operation by any provision of law or
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`equity asserted by Defendants.
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`9. Bright Data contends that the Asserted Patents Claims are not unenforceable or barred for any
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`reason, including for prosecution history estoppel, license and/ or exhaustion, or any other
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`equitable or legal theory asserted by Defendants.
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`10. Bright Data contends that it has not dedicated to the public systems, methods, and/or products
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`in the Patents-in-Suit.
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`11. Bright Data contends that it has not engaged in any inequitable conduct whatsoever and did
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`not omit information material to patentability during prosecution, including as Bright Data
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`specifically contends that the ’319 Patent application which serves as the basis for Defendants’
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`inequitable conduct claim is duplicative of the disclosed U.S. Patent No. 8,560,604 (“’604
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`Patent”). Further, to the extent that Defendants assert that claim 1 of the ’319 Patent is coex-
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`tensive with dependent claim 29 of the ’433 Application, which issued as claim 1 of the ‘’614
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`Patent, Bright Data contends that this is incorrect and that Defendants make such contention
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`by excluding the limitations of independent claim 1 of the ’433 Application that are incorpo-
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`rated in dependent claim 29 of the ’433 Application.
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`12. Bright Data contends that its claims are not limited or barred by any provision of law or equity
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`asserted by Defendants.
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`13. Bright Data contends that Defendants are not entitled to a finding in its favor that this case is
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`exceptional under Section 285 or to any other damages, attorneys’ fees, or costs under the
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`Patent Act or any other law or basis in equity.
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`14. Bright Data contends that, upon a finding of Defendants’ liability, it is entitled to a court order
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`imposing a permanent injunction preventing Defendants’ further infringement of the Asserted
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`Patent Claims.
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`15. Bright Data contends that Defendants are not entitled to any relief from Bright Data.
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`16. Bright Data contends that the Court should declare that Defendants are not entitled to any
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`relief, whether in law or equity or otherwise, from its counterclaims against Bright Data.
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`17. Bright Data contends that the Court should declare that Defendants infringe the Asserted Patent
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`Claims.
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`18. Bright Data contends that the Court should declare that the claims of the Asserted Patent
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`Claims are not invalid.
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`19. Bright Data contends that the Court should declare that the claims of the ’614 patent are not
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`unenforceable.
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`20. Bright Data contends that Defendants cannot establish that this an “exceptional case” in De-
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`fendants’ favor.
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`21. Bright Data contends that Defendants are not entitled to recover their attorney’s fees.
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`22. Bright Data contends that Defendants are not entitled to recover their costs.
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`23. Bright Data contends that the Court should award pre-judgment and post-judgment interest on
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`the damages awarded to Bright Data at the highest rate allowed by law.
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`2. Defendants’ contentions
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`1. Oxylabs contends that it has not infringed, whether directly or indirectly, literally or under the
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`doctrine of equivalent, willfully or otherwise, the Patents-in-Suit. For example, Oxylabs con-
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`tends that it does not infringe the Patents-in-Suit or Asserted Claims under any section of the
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`Patent Act, including without limitation 35 U.S.C. §§ 271(a) and (b). Oxylabs has not in any
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`manner, whether directly or indirectly, literally or under the doctrine of equivalents, infringed
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`or induced the infringement of any valid and enforceable claim of the Patents-in-Suit, and is
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`not liable for infringement thereof. Oxylabs has also not imported into the United States or
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`offered to sell, sold, or used within the United States a product which is made by a process
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`patented in the United States. Oxylabs has filed a Motion for Summary Judgment of Non-
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`Infringement. See ECF No. 276.
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`2. Oxylabs contends that the Patents-in-Suit are invalid and/or void for failure to meet the condi-
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`tions for patentability specified by 35 U.S.C. §§ 101 et seq., including but not limited to 35
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`U.S.C. §§ 101, 102, 103, 112 and/or 282 and/or the Rules and Regulations of the United States
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`Patent & Trademark Office. Oxylabs has filed a Motion for Summary Judgment of Invalidity.
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`See ECF No. 277. For example:
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`a. Oxylabs specifically contends that the Patents-in-Suit are invalid as anticipated:
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`i. Oxylabs asserts that the ’319 and ’510 Patents are anticipated by Crowds,1
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`MorphMix,2 and/or Border.3
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`ii. Oxylabs asserts that the ’614 Patent is anticipated by Mithyantha4 and/or
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`MorphMix.
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`b. Oxylabs specifically contends that the Patents-in-Suit are invalid as obvious:
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`i. Oxylabs asserts that the ’319 and ’510 Patents, to the extent not anticipated
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`by Crowds, are rendered obvious based on Crowds itself and/or a combina-
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`tion of Crowds with the general knowledge of a POSA and the RFC 2616
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`HTTP protocol specification (which specification also further evidences the
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`general knowledge of a POSA) and/or with the disclosure of Border and/or
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`with the disclosure of the TCP/IP specifications (RFC 793 and RFC 1180)
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`1 Crowds: Anonymity for Web Transactions (“Crowds”), Michael K. Reiter of Bell Laboratories
`and Aviel D. Rubin of AT&T Labs, ACM Transactions on Information and System Security, Vol.
`1, No. 1, November 1998, Pages 66-92.
`2 MorphMix – A Peer-to-Peer-based System for Anonymous Internet Access (“MorphMix”), Doc-
`toral Thesis authored by Marc Rennhard, of the Swiss Federal Institute of Technology (ETH Zur-
`ich), Computer Engineering and Networks Laboratory; Zurich, Switzerland (2004).
`3 United States Patent 6,795,848 (“Border”) issued to Border et al. on Sep. 21, 2004. Border issued
`from United States Patent Application 09/708,134, filed on Nov. 8, 2000.
`4 United States Patent 8,972,602 (“Mithyantha”) issued to Mithyantha on March 3, 2015. Mith-
`yantha issued from U.S. Patent Application 13/524,799, which was filed June 15, 2012.
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`and/or for the reasons explained in Appendices A and E to Dr. Freedman’s
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`December 18, 2020 Expert Report Regarding Invalidity.
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`ii. Oxylabs asserts that the ’319 and ’510 Patents, to the extent not anticipated
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`by MorphMix, are rendered obvious based on MorphMix itself and/or a
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`combination of MorphMix with the general knowledge of a POSA and the
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`RFC 2616 HTTP protocol specification (which specification also further
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`evidences the general knowledge of a POSA) and/or with the disclosure of
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`Border and/or with the disclosure of the TCP/IP specifications (RFC 793
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`and RFC 1180) and/or for the reasons explained in Appendices B and F to
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`Dr. Freedman’s December 18, 2020 Expert Report Regarding Invalidity.
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`iii. Oxylabs asserts that the ’319 and ’510 Patents, to the extent not anticipated
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`by Border, are rendered obvious based on Border itself and/or a combina-
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`tion of Border with the general knowledge of a POSA and the RFC 2616
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`HTTP protocol specification (which specification also further evidences the
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`general knowledge of a POSA) and/or with the disclosure of Crowds and/or
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`with the disclosure of MorphMix and/or with the disclosure of the TCP/IP
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`specifications (RFC 793 and RFC 1180) and/or for the reasons explained in
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`Appendices C and G to Dr. Freedman’s December 18, 2020 Expert Report
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`Regarding Invalidity.
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`iv. Oxylabs asserts that the ’614 Patent, to the extent not anticipated by Mith-
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`yantha, is rendered obvious based on Mithyantha itself and/or a combina-
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`tion of Mithyantha with the general knowledge of a POSA and the RFC
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`2616 HTTP protocol specification (which specification also further
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`evidences the general knowledge of a POSA) and/or with the disclosure of
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`the TCP/IP specifications (RFC 793 and RFC 1180) and/or with the disclo-
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`sure and/or with a POSA’s understanding regarding resource utilization on
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`general computers and/or with the general knowledge concerning standard
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`process and resource monitoring tools, including Windows Task Manager
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`and Windows Resource Monitor5 and/or for the reasons explained in Ap-
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`pendix I to Dr. Freedman’s December 18, 2020 Expert Report Regarding
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`Invalidity.
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`v. Oxylabs asserts that the ’614 Patent, to the extent not anticipated by
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`MorphMix, is rendered obvious based on MorphMix itself and/or a combi-
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`nation of MorphMix with the general knowledge of a POSA and the RFC
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`2616 HTTP protocol specification (which specification also further evi-
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`dences the general knowledge of a POSA) and/or with the disclosure of the
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`TCP/IP specifications (RFC 793 and RFC 1180) and/or with the disclosure
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`and/or with a POSA’s understanding regarding resource utilization on gen-
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`eral computers, and/or with the general knowledge concerning standard pro-
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`cess and resource monitoring tools, including Windows Task Manager and
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`Windows Resource Monitor, and/or with the disclosure of Border, and/or
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`with the disclosure of Mithyantha and/or with the disclosure of RFC 2547
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`5 “Windows Task Manager” and “Windows Resource Manager” refer herein to Windows Task
`Manager or Resource Manager functionality known to a POSA including through the inclusion of
`the functionality in Microsoft Windows Vista operating system (Microsoft Corp., available Janu-
`ary 2007); Microsoft Windows 8 operating system (Microsoft Corp., available October 2012);
`and/or Microsoft Windows Server 2008 R2 operating system (Microsoft Corp., available Oct.
`2009) and including through the description of such functionality in William R. Stanek, Introduc-
`ing Microsoft Windows Vista (2006).
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`and/or RFC 4026 and/or for the reasons explained in Appendix J to Dr.
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`Freedman’s December 18, 2020 Expert Report Regarding Invalidity.
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`c. Oxylabs specifically contends that the Patents-in-Suit are invalid for claiming un-
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`patentable subject matter under 35 U.S.C. § 101.6 Oxylabs asserts that the Patents-
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`in-Suit are ineligible for patent protection under 35 U.S.C. 101 for the reasons ex-
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`plained in Oxylabs’ briefing associated with its Rule 12(c) motion for judgment on
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`the pleadings and its motion for summary judgment of invalidity relating to 35
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`U.S.C. § 101. Bright Data’s Asserted Claims fail step one of the test set forth in
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`Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208 (2014) because they are di-
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`rected to abstract idea of obtaining information through an intermediary, and no
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`fact exists that would allow any factfinder to find that the claims do so in any man-
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`ner other than through the use of standard computers and servers in the most routine
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`and conventional way possible to exchange data or content from standard and rou-
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`tine Internet communications. Bright Data’s Asserted Claims fail step two of the
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`Alice test because there is nothing in the claims to convert the abstract idea to an
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`inventive concept. The recitation of a standard computer device acting in a standard
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`role of a “client” or “server,” or the recitation of the determination of a proxy de-
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`vice’s resource utilization, cannot convert an abstract idea to an inventive concept
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`under Alice step two. Oxylabs refers to the discussion and caselaw in its briefing
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`associated with its Rule 12(c) motion for judgment on the pleadings and its motion
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`for summary judgment of invalidity.
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`6 Bright Data objects to Defendants’ contentions regarding abstractness as the Court has already
`rejected Defendants’ arguments in the Court’s February 16, 2021 Order denying Defendants’ Mo-
`tion for Judgment on the Pleadings (ECF 303).
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`d. Oxylabs specifically contends that the Patents-in-Suit are invalid for lack of written
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`description, including for the reasons set forth in the December 18, 2020 Expert
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`Report of Dr. Michael Freedman Regarding Invalidity. The disclosure of the spec-
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`ification does not “reasonably convey[] to those skilled in the art that the [patentees]
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`had possession of the claimed subject matter as of” October 8, 2009. Ariad Pharm.,
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`Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010). The specification does
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`not contain a disclosure of the purported server – client device – web server archi-
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`tecture or the claimed methods. Additionally, the specification specifically teaches
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`away from the use of prior art proxy servers and peer-to-peer file sharing systems.
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`Further, the following claim terms lack sufficient written description for at least the
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`following reasons:
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`i. If “first client device” is construed, interpreted, or applied to refer to a spe-
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`cific type of device or hardware other than a standard computer as described
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`in the ’319 and ’510 Patents (despite the Court’s Claim Construction Order),
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`Claim 1 of the ’319 and ’510 patents is invalid for lack of sufficient written
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`description.
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`ii. If “second server” is construed, interpreted, or applied to refer to a specific
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`type of device or hardware other than a standard computer as described in
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`the ’319 and ’510 Patents (despite the Court’s Claim Construction Order),
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`Claim 1 of the ’319 and ’510 patents is invalid for lack of sufficient written
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`description.
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`iii. If Claim 26 of the ’319 Patent or Claim 22 of the ’510 Patent are construed,
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`interpreted, or applied to cover any details relating to a computer operating
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`system beyond what would have been well-known to POSAs, those claims
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`would be invalid because it would lack a sufficient written description re-
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`lating to such claim scope.
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`iv. If Claim 11 of the ’614 Patent is construed, interpreted, or applied to cover
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`any details relating to a computer operating system beyond what would have
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`been well-known to POSAs, those claims would be invalid because they
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`would lack a sufficient written description relating to such claim scope.
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`e. Oxylabs specifically contends that the ’614 Patent is unenforceable as a result of
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`Bright Data’s inequitable conduct. Oxylabs asserts that the ’614 Patent is unen-
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`forceable for at least the reasons explained in Oxylabs’ briefing with respect to
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`Bright Data’s Motion to Dismiss Oxylabs’ Third Amended Complaint and Bright
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`Data’s Motion for Summary Judgment of No Inequitable Conduct. Bright Data
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`committed inequitable conduct by withholding—with specific intent to defraud the
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`Patent Office—the ’319 Patent from the Examiner of the ’433 Application that is-
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`sued as the ’614 Patent. Claim 1 of the ’433 Application was rejected as obvious in
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`view of the prior art. Claim 29 was allowed if rewritten in independent form. Claim
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`29 was coextensive in scope to claim 1 of the ’319 Patent, and Bright Data there-
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`fore, unbeknownst to the Examiner of the ’433 Application, previously represented
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`that it invented the subject matter of claim 1 of the ’319 Patent four years before
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`the alleged priority date of the ’433 Application. Rather than traverse the Exam-
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`iner’s rejections, Bright Data amended claim 1 to include the limitations of Claim
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`29. Because Bright Data intentionally withheld the ’319 Patent from the Examiner,
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`he allowed Claim 1 of the ’433 Application, as amended, to issue.
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`Case 2:19-cv-00395-JRG Document 490 Filed 09/17/21 Page 15 of 32 PageID #: 25378
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`f. Oxylabs specifically contends that certain claims of the Patents-in-Suit are invalid
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`for indefiniteness.7 Oxylabs asserts that the following claim terms are indefinite for
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`the reasons explained in Oxylabs’ claim construction briefing, arguments and
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`presentations made at the Claim construction Hearing, and its Objections to the
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`Claim Construction Order:
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`i. Claim 1 of the ’510 Patent: “in response to the receiving of the first content
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`identifier.”
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`3. Oxylabs contends that it is entitled to a declaratory judgment of non-infringement of the Pa-
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`tents-in-Suit.
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`4. Oxylabs contends that it is entitled to a declaratory judgment of invalidity of the Patents-in-
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`Suit.
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`5. Oxylabs contends that it is entitled to a declaratory judgment that the ’614 Patent is unenforce-
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`able due to inequitable conduct.
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`6. Oxylabs contends that Bright Data’s claims for relief are limited by 35 U.S.C. §§ 286-287
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`and/or 28 U.S.C. § 1498.
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`7. Oxylabs contends that Bright Data’s patent claims for relief are barred by prosecution-history
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`estoppel, extraterritoriality principles, and/or the disclosure-dedication doctrine.
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`8. Oxylabs contends that the Court should declare that Bright Data is not entitled to any relief,
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`whether in law or equity or otherwise, from its suit against Oxylabs.
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`9. Oxylabs contends that the Court should declare that Oxylabs does not infringe and has not
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`infringed the Patents-in-Suit.
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`7 Bright Data objects to Defendants’ contentions of indefiniteness as the Court has already ruled
`Defendants’ indefiniteness arguments in the Court’s Claim Construction Order (ECF 191).
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`10. Oxylabs contends that the Court should declare that the claims of the Patents-in-Suit are inva-
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`lid.
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`11. Oxylabs contends that the Court should declare that the claims of the ’614 patent are unen-
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`forceable.
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`12. Oxylabs contends that the Court should permanently enjoin Bright Data, its successors and
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`assigns, and anyone acting in concert therewith or on its behalf, from attempting to enforce the
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`Patents-in-Suit against Oxylabs or any parents, affiliates, or subsidiaries of Oxylabs or any of
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`their respective officers, agents, employees, successors, and assigns.
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`13. Oxylabs contends that the Court should declare that this is an exceptional case in Oxylabs’
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`favor pursuant to 35 U.S.C. § 285.
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`14. Oxylabs contends that the Court should award Oxylabs its costs, expenses, and reasonable
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`attorney’s fees, whether pursuant to 35 U.S.C. § 285 or otherwise.
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`15. Oxylabs contends that the Court should dismiss Bright Data’s Complaint in its entirety, with
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`prejudice.
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`16. Oxylabs contends that the Court should enter an Order that Oxylabs shall have and recover
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`from Bright Data any and all such other and further relief, general and special, at law or in
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`equity, to which Oxylabs may be justly entitled.
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`17. Oxylabs contends that Bright Data has not suffered any damages on account of its claims
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`against Oxylabs.
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`18. Oxylabs contends that Bright Data is not entitled to lost profits or a reasonable royalty, as
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`Bright Data cannot establish its entitlement to such relief.
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`19. Oxylabs contends that Bright Data is not entitled to enhanced damages.
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`16
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`20. Oxylabs contends that Bright Data cannot establish that this an “exceptional case” in Bright
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`Data’s favor.
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`21. Oxylabs contends that Bright Data is not entitled to recover its attorney’s fees.
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`22. Oxylabs contends that Bright Data is not entitled to recover its costs.
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`23. Oxylabs contends that Bright Data has not suffered an irreparable injury.
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`24. Oxylabs contends that, if Bright Data has suffered any injury, Bright Data has an adequate
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`remedy at law.
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`25. Oxylabs contends that Bright Data is not entitled to injunctive relief.
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`26. Oxylabs contends that its declaratory judgment counterclaims are properly brought before this
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`Court, including but not limited to because the Court has personal jurisdiction over Bright
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`Data, and that subject-matter jurisdiction and venue are appropriate.
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`E. STIPULATIONS AND UNCONTESTED FACTS
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`1. Stipulations
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`1. Subject-matter jurisdiction is proper in this Court for Bright Data’s claims and Oxylabs’ de-
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`claratory judgment counterclaims.
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`2. Defendants and Bright Data do not contest that the Court has personal jurisdiction over the
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`parties solely for the limited purpose of this action only.
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`3. Defendants and Bright Data do not contest that venue is proper for this action in the United
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`States District Court for the Eastern District of Texas, Marshall Division.
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`4. The Parties will continue to meet and confer to attempt to resolve their objections to deposition
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`designations and exhibits and to identify additional potential stipulations, including stipula-
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`tions related to the admissibility of exhibits, and will supplement these stipulations to the extent
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`that stipulations are agreed by the parties.
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`17
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`5. With respect to deposition designations, no objections or exchanges between counsel will be
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`played or read at trial. If a party designates deposition testimony, and the other party counter-
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`designates, both the designation and counter-designation will be read or played together. The
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`time allotted by the Court for each side’s presentation (if so specified) shall be reduced by the
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`length of its designations or counter-designations, as measured by the total time that it takes
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`for each designation and counter-designation to be played.
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`6. Nothing in the foregoing procedures shall preclude a party from using deposition testimony at
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`trial for