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`U.S. Pat. No. 10,257,319
`Inter Partes Review
`Petitioner’s Motion for Joinder
`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CODE200, UAB; TESO LT, UAB; METACLUSTER LT, UAB;
`OXYSALES, UAB; AND CORETECH LT, UAB,
`Petitioners,
`
`v.
`
`BRIGHT DATA LTD.,
`Patent Owner.
`____________
`
`Inter Partes Review No. IPR2022-00861
`Patent No. 10,257,319
`____________
`
`MOTION FOR JOINDER TO INTER PARTES
`REVIEW IPR2021-01492
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`
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`TABLE OF CONTENTS
`
`
`I. STATEMENT OF PRECISE RELIEF REQUESTED ........................................ 1
`II. STATEMENT OF MATERIAL FACTS .......................................................... 2
`III. STATEMENT OF REASONS FOR RELIEF REQUESTED .......................... 6
`A.
`Joinder is Timely ..................................................................................... 6
`B. All Applicable Factors Support Joinder .................................................. 6
`1. Joinder is appropriate (factor 1). ........................................................ 6
`a. The Action concerned different claims, different prior art, a
`different burden of proof, and, in any event, remains open and
`stayed. ............................................................................................ 6
`b. The previously filed ’319 EPR is stayed pending the outcome
`of the NetNut IPR. ....................................................................... 10
`c. The previously filed Code200 Petition challenging the ’319
`patent was timely filed and not considered on the merits. .......... 10
`d. The PTAB’s discretionary denials of Petitioners’
`IPR2021-01502 and IPR2021-01503 do not render joinder
`inappropriate here. ....................................................................... 12
`2. Petitioners propose no new grounds of unpatentability
`(factor 2). .......................................................................................... 13
`3. Joinder will not impact the trial schedule or cost of the joined
`proceeding (factor 3). ....................................................................... 14
`4. Joinder will not add to the complexity of briefing and discovery
`(factor 4). .......................................................................................... 15
`IV. CONCLUSION ............................................................................................. 15
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`
`
`i
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`TABLE OF AUTHORITIES
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`Page(s)
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`
`
`CASES
`Bright Data Ltd. v. Teso LT, UAB et al.,
`2:19-cv-00395-JRG (E.D. Tex.) filed ..............................................................................2
`Microsoft Corp. v. i4i Ltd. Partnership,
`564 U.S. 91 (2011) ................................................................................................................8
`Novartis AG v. Noven Pharm. Inc.,
`853 F.3d 1289 (Fed. Cir. 2017) .....................................................................................8, 9
`Personal Audio LLC v. CBS Corp.,
`946 F.3d 1348 (Fed. Cir. 2020) .........................................................................................8
`STATUTES
`35 U.S.C. § 314(b) ......................................................................................................................5
`35 U.S.C. § 315(c) ......................................................................................................................6
`35 U.S.C. § 316(e) ......................................................................................................................8
`OTHER AUTHORITIES
`37 C.F.R. § 42.1(b) ...............................................................................................................9, 10
`37 C.F.R. § 42.122(b) ................................................................................................................6
`SUSPECTS
`NetNut Ltd. v. Bright Data Ltd., IPR2021-01492 (the “NetNut IPR”) ..........................1
`
`Code200, UAB, et al. v. Luminati Networks LTD ...............................................................3
`The Data Company Technologies Inc. v. Bright Data LTD., IPR2022-00135
`(the “Data Co. IPR”) ............................................................................................................6
`Biotronik, Inc. v. Atlas IP LLC, IPR2015-00534 ................................................................6
`HTC v. Parthenon Unified Memory Architecture LLC, IPR2017-00512 ...........6, 9, 13
`
`
`
`ii
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`
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`Kyocera Corp. v. Softview LLC, IPR2013-00004 ...............................................................6
`Apple Inc. v. Uniloc 2017 LLC, IPR2020-00224 ................................................................9
`Apple Inc. v. INVT SPE LLC, IPR2019-00958 ..................................................................10
`Celltrion, Inc. v. Genentech, Inc., IPR2018-01019 ..........................................................10
`Huawei Device Co., Ltd. v. Uniloc Luxembourg S.A., IPR2017-02090......................10
`Pfizer, Inc. v. Genentech, Inc., IPR2017-02063 ................................................................10
`Sawai USA, Sawai USA, Inc. et al. v. Biogen MA Inc., IPR2019-00789 ....................11
`Samsung Elecs. Co. v. Raytheon Co., IPR2016-00962 ...................................................13
`STMicroelectronics, Inc. v. Lone Star Silicon Innovations, LLC, IPR2018-
`00436 ................................................................................................................................13, 14
`Garmin Int’l, Inc. v. Philips North Am. LLC, IPR2020-00910 .....................................14
`Mylan Pharms. Inc. v. Novartis AG, IPR2014-00550 .....................................................14
`NetNut Ltd. v. Bright Data Ltd., IPR2021-01492 ...................................................1, 14, 15
`
`
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`iii
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`STATEMENT OF PRECISE RELIEF REQUESTED
`
`I.
`
`Petitioners Code200, UAB; Teso LT, UAB; Metacluster LT, UAB; Oxysales, UAB;
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`and coretech LT UAB (collectively, “Petitioners”) move for joinder of their
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`contemporaneously filed Petition for Inter Partes Review IPR2022-00861 (the “Petition”)
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`of claims 1, 2, 12, 14, 15, 17-19, and 21-29 of U.S. Patent No. 10,257,319 (the “’319
`
`patent”) with a pending IPR styled NetNut Ltd. v. Bright Data Ltd., IPR2021-01492 (the
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`“NetNut IPR”), which the Board instituted on March 21, 2022.
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`In addition to the present Petition, third parties have previously sought review of the
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`validity of certain claims of the ’319 patent in federal court, the Central Reexam Unit, and
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`the PTAB. As discussed below, only the NetNut IPR has been instituted and is not
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`currently stayed.
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`The NetNut IPR concerns the same patent and the same claims as the present
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`Petition. The present Petition and supporting expert declaration are substantively identical
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`to the petition and expert declaration submitted in the NetNut IPR. In sum, Petitioners
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`here assert that the same claims are anticipated and/or obvious over the same prior art
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`based on the same substantive arguments that are supported by the same expert as in the
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`NetNut IPR.
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`Petitioners agree to take an “understudy” role if joined. Joinder will not cause any
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`delay in the resolution of the NetNut IPR. Joinder, therefore, is appropriate because it will
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`promote the efficient and consistent resolution of the same patentability issues of the same
`1
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`
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`patent, it will not delay the schedule that the Board has issued in the NetNut IPR, and the
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`parties in the NetNut IPR will not be prejudiced.
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`II. STATEMENT OF MATERIAL FACTS
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`1.
`
`2.
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`Bright Data Ltd. (“Patent Owner”) purports to own the ’319 patent.
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`Patent Owner asserted the ’319 patent and U.S. Patent Nos. 10,484,510 and
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`10,469,614 (collectively, the “Asserted Patents”) against Teso LT, UAB, Metacluster LT,
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`UAB, Oxysales, UAB, and Coretech LT, UAB (collectively, “Oxylabs”) in a lawsuit styled
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`Bright Data Ltd. v. Teso LT, UAB et al., 2:19-cv-00395-JRG (E.D. Tex.) filed on
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`December 6, 2019 (the “Action”).
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`3.
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`The Action proceeded to trial before a jury beginning on November 1, 2021
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`where Oxylabs argued, among other things, that claims 1 and 26 of the ’319 patent were
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`invalid in view of Crowds. The jury returned a verdict answering “no” to the question
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`“Did Oxylabs prove by clear and convincing evidence any of the following Asserted
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`Claims are invalid,” which included two claims—claims 1 and 26—of the ’319 Patent. See
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`Ex. 1023, the Action, Jury Verdict Form, ECF No. 516 at 5. At trial, Patent Owner heavily
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`emphasized the “clear and convincing” burden and actively encouraged the jury to defer
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`to the prior prosecution, arguing: “That’s why their burden is so much higher. It's really -
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`- once that's happened, do you really want to second-guess the work that those people did?”
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`Nov. 5 Trial Tr. at 65:2-4; see also id. at 65:5-10 (“You would need a firm belief or
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`conviction or, as Your Honor said, an abiding belief or conviction, that this absolutely is
`2
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`
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`not valid, that the Patent Office messed up twice. Somehow in the 1200 pages of
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`communications, those patent examiners were clueless. And if you don't find that, you
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`have to say no to invalidity in this case.”).
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`4.
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`On December 15, 2021, the Court stayed the Action to allow for mediation.
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`Id., ECF No. 543. On March 16, 2022, the Court denied Patent Owner’s subsequent Motion
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`to Lift the Stay, to allow for further mediation. Id., ECF No. 580. Consequently, the Action
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`remains stayed pending mediation.
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`5.
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`If and when the stay is lifted and final judgment entered, Oxylabs intends to
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`file post-judgment motions asserting that Oxylabs is entitled to Judgment as a Matter of
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`Law, or, at a minimum, a new trial, on its anticipation defense where the jury did not
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`consider the prior art in view of the “correct” construction of “server,” and Patent Owner
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`did not distinguish the prior art on that basis. See Ex. 1024 at 7.
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`6.
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`In addition to the present Petition, Petitioners timely filed a separate petition
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`(the “Code200 Petition”) styled Code200, UAB, et al. v. Luminati Networks LTD [now
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`Bright Data Ltd.], IPR2020-01266 (the “Code200 IPR”) on July 14, 2020, which argued
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`that the certain claims of the ’319 patent are anticipated and/or obvious. See Code200 IPR,
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`Paper 5.
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`7.
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`On December 23, 2020, the Board denied the Code200 Petition based on
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`discretionary grounds in view of the pending Action. See id., Paper 18 (citing Apple Inc.
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`v. Fintiv Inc., IPR2020-00019).
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`3
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`8.
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`On September 3, 2021, NetNut filed the NetNut IPR, requesting cancellation
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`of certain claims of the ’319 patent. See NetNut IPR, Paper 2.
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`9.
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`Patent Owner filed a Preliminary Response. Id., Paper 9. With authorization
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`of the Panel, NetNut filed a Reply and Patent Owner filed a Sur-reply. Id., Papers 10 and
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`11.
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`10. On March 21, 2022, the Board instituted the NetNut IPR as to all challenged
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`claims and entered a Scheduling Order. Id., Papers 12 and 13.
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`11. Along with this Motion for Joinder, Petitioners simultaneously filed the
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`present Petition, which argues, among other things, that the same claims of the ’319 patent
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`are anticipated and/or obvious based on the same grounds and for the same reasons as set
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`forth in the NetNut IPR petition. The Petition is supported by the same expert declaration
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`of Keith D. Teruya submitted in support of the NetNut IPR petition.
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`12. The grounds proposed in the Petition are the same as those proposed in the
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`NetNut IPR petition—i.e., the Petition does not contain any additional arguments or
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`evidence in support of the unpatentability of claims 1, 2, 12, 14, 15, 17-19, and 21-29 of
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`the ’319 patent. Ex. 1022 to the Petition provides a comparison between the present
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`Petition and the NetNut IPR petition, showing the minimal, non-substantive changes
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`related to formalities of different parties filing the petition. Other than Exhibit 1022,
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`Petitioners’ exhibits—including the expert declaration—are the same as the exhibits filed
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`4
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`
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`with the NetNut IPR, differing only in the document control label at the bottom of the page
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`to acknowledge the filing with this IPR Petition.
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`13. On October 7, 2021, Teso LT, UAB requested Ex Parte Reexamination of the
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`’319 patent, No. 90/014,875 (the “’319 EPR”). On November 12, 2021, the Patent Office
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`found a substantial new question of patentability with respect to claims 1, 2, 12, 14, 15,
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`17-19, 21, 22, and 24-29 of the ’319 patent. On March 25, 2022, the Patent Office issued
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`a Non-Final Office Action rejecting the same claims of the ’319 patent. On April 7, 2022,
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`the PTAB stayed the ’319 EPR pending the termination or completion of the NetNut IPR.
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`See NetNut IPR, Paper 14.
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`14. On November 3, 2021, The Data Company Technologies Inc. filed a petition
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`for IPR challenging all claims of the ’319 patent. See The Data Company Technologies
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`Inc. v. Bright Data LTD., IPR2022-00135 (the “Data Co. IPR”), Paper 2.
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`15. On December 8, 2021, the Board accorded the Data Co. IPR the filing date of
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`November 3, 2021. Id., Paper 6. Patent Owner filed its Preliminary Response on March
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`8, 2022. Id., Paper 7. The Board will issue an institution decision on or before June 8,
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`2022 (i.e., three months from the date Patent Owner filed its Preliminary Response). See
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`35 U.S.C. § 314(b).
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`16. NetNut Ltd. does not oppose or join the present Motion for Joinder. Patent
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`Owner opposes this Motion.
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`5
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`III. STATEMENT OF REASONS FOR RELIEF REQUESTED
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`
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`A.
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`Joinder is Timely
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`Because this Motion is filed within one month of the Board’s decision instituting
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`trial in the NetNut IPR on March 21, 2022, it meets the requirements of § 42.122(b). See,
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`e.g., Biotronik, Inc. v. Atlas IP LLC, IPR2015-00534, Paper 10 (PTAB Feb. 25, 2015)
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`(granting motion for joinder filed concurrently with institution of IPR review).
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`
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`B. All Applicable Factors Support Joinder
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`The Board has discretion to join this IPR with the NetNut IPR. See 35 U.S.C.
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`§ 315(c); 37 C.F.R. § 42.122(b); HTC v. Parthenon Unified Memory Architecture LLC,
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`IPR2017-00512, Paper 12 at 6 (PTAB June 1, 2017). In considering a motion for joinder,
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`the Board considers the following factors: (1) the reasons why joinder is appropriate; (2)
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`whether the petition raises any new grounds of unpatentability; (3) any impact joinder
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`would have on the cost and trial schedule for the existing review; and (4) whether joinder
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`will add to the complexity of briefing or discovery. Kyocera Corp. v. Softview LLC,
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`IPR2013-00004, Paper 15 at 4 (PTAB Apr. 24, 2013); Consolidated Trial Practice Guide
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`76 (Nov. 2019) (https://go.usa.gov/xpvPF). All relevant factors weigh in favor of joinder.
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`As a result, the Board should exercise its discretion to allow joinder here.
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`
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`1.
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`Joinder is appropriate (factor 1).
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`a.
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`The Action concerned different claims, different prior art, a
`different burden of proof, and, in any event, remains open
`and stayed.
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`6
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`
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`The Action proceeded to trial before a jury beginning on November 1, 2021 where
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`Oxylabs argued, among other things, that claims 1 and 26 of the ’319 patent were invalid
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`as anticipated in view of a single reference: Crowds. At the conclusion of the trial, the jury
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`returned a verdict and found that Oxylabs had not shown, under a clear-and-convincing
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`evidentiary standard, that either of the two asserted claims of the ’319 patent was invalid.
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`See Exhibit ___, Jury Verdict Form, ECF No. 516 at 5..
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`
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`The present Petition, however, requests review of the patentability of many more
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`claims than considered by the jury in the Action. Petitioners request here cancellation by
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`the Board of claims 1, 2, 12, 14, 15, 17-19, and 21-29 in view of prior art not considered
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`by the jury. The following chart summarizes the claims and grounds of cancellation
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`requested in the present Petition:
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`Claims Challenged
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`1, 19, 21-29
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`1, 2, 14, 15, 17-19, 21-29
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`1, 12, 14, 21, 22, 24, 25, 27-29
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`35 U.S.C. §
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`102(b)
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`103(a)
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`102(b)
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`1, 12, 14, 15, 17-19, 21, 22, 24, 25, 27-29 103(a)
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`1, 17, 19, 21-29
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`1, 2, 14, 15, 17-19, 21-29
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`
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`102(b)
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`103(a)
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`7
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`Reference(s)
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`Crowds
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`Crowds, RFC 2616
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`Border
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`Border, RFC 2616
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`MorphMix
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`MorphMix, RFC 2616
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`
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`Consequently, at the Action is relevant to the validity of only two claims of the ’319
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`patent in view of a single anticipatory reference: Crowds. On the other hand, the outcome
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`of the present Petition implicates the validity of 17 claims of the ’319 patent in view of six
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`combinations of four separate prior-art references. The Federal Circuit has affirmed
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`invalidity decisions from the PTAB in which the Board held that the claims were obvious
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`over several different combinations of cited art not considered by the district court.
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`Personal Audio LLC v. CBS Corp., 946 F.3d 1348, 1350-51 (Fed. Cir. 2020) (affirming
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`district court’s termination of proceedings because PTAB had determined the asserted
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`claims were unpatentable, despite PTAB’s determination issuing after jury had entered
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`verdict of “not invalid” and “infringed” and before entry of final judgment); Novartis AG
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`v. Noven Pharm. Inc., 853 F.3d 1289, 1294 (Fed. Cir. 2017) (“It is unsurprising that
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`different records may lead to different findings and conclusions”).
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`Moreover, in the Action the jury considered invalidity of the two claims of the ’319
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`patent under the clear-and-convincing evidentiary standard—and Patent Owner heavily
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`relied on that standard. Action, ECF No. 516 at 5; see also Microsoft Corp. v. i4i Ltd.
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`Partnership, 564 U.S. 91, 95 (2011). Here, the Board considers validity of the 17
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`challenged claims under the preponderance-of-the-evidence standard. See 35 U.S.C. §
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`316(e). Such a difference in burdens of proof often requires a different conclusion based
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`on the same evidence. See Novartis at 1293-4 (explaining that the different burdens of
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`proof—“preponderance of the evidence” at the PTAB and “clear and convincing” at the
`8
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`
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`district court—permitted different conclusions by the PTAB and district court). In
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`Novartis, the Federal Circuit reasoned:
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`Nevertheless, even if the record were the same, [Patent Owner’s]
`argument would fail as a matter of law. The PTAB determined
`that a “petitioner in an inter partes review proves unpatentability
`by a preponderance of the evidence [] rather than by clear and
`convincing evidence[] as required in district court litigation,”
`meaning that the PTAB properly may reach a different
`conclusion based on the same evidence.
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`Id. at 1294 (internal citations omitted). Further, unlike the Institution Decision here, the
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`jury was not provided the Court’s Supplemental Claim Construction Order, which the
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`Board found persuasive and adopted in rejecting Patent Owner’s attempts to distinguish
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`the art. In any event, a final judgment in the Action has not been entered and remains
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`stayed. See Action, ECF Nos. 543 and 580. Thus, this request for joinder is consistent with
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`the policy surrounding inter partes reviews, as it is the most expedient way “to secure the
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`just, speedy, and inexpensive resolution of every proceeding.” See 37 C.F.R. § 42.1(b);
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`HTC v. Parthenon Unified Memory Architecture LLC, IPR2017-00512, Paper No. 12 at 5-
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`6 (June 1, 2017) (emphasis added).
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`Indeed, the PTAB often grants motions for joinder in view of pending litigations
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`involving the same patent and the same parties. See, e.g., Apple Inc. v. Uniloc 2017 LLC,
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`IPR2020-00224, Paper 10 at 2-7 (PTAB April 6, 2020) (PTAB granting motion for joinder
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`of “me-too” petition in view of co-pending lawsuit and previously denied IPR involving
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`the same real parties in interest and the same patent); Apple Inc. v. INVT SPE LLC,
`9
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`
`
`
`
`
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`IPR2019-00958, Paper 9 at 2-13 (PTAB May 30, 2019) (same); Celltrion, Inc. v.
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`Genentech, Inc., IPR2018-01019, Paper 11 at 2-15 (PTAB Oct. 30, 2018) (same); Huawei
`
`Device Co., Ltd. v. Uniloc Luxembourg S.A., IPR2017-02090, Paper 9 at 2-12 (PTAB
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`March 6, 2018) (same); Pfizer, Inc. v. Genentech, Inc., IPR2017-02063, Paper 25 at 4-8
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`(PTAB Feb. 21, 2018) (same).
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`b.
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`The previously filed ’319 EPR is stayed pending the outcome
`of the NetNut IPR.
`One of the parties to the present Petition, Teso LT, UAB, requested Ex Parte
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`Reexamination of certain claims of the ’319 patent. See ’319 EPR. The Patent Office found
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`a substantial new question of patentability affecting claims 1, 2, 12, 14, 15, 17-19, 21, 22,
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`and 24-29 of the ’319 patent and, on March 25, 2022, issued a Non-Final Office Action
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`rejecting those claims. Ex. 1025. On April 7, 2022, however, the PTAB stayed the ’319
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`EPR pending the termination or completion of the NetNut IPR. See NetNut IPR, Paper 14.
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`Again, like the stayed Action, because the ’319 EPR is stayed pending the resolution of
`
`the NetNut IPR, granting this request for joinder is the most expedient way “to secure the
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`just, speedy, and inexpensive resolution of every proceeding.” See 37 C.F.R. § 42.1(b)
`
`(emphasis added).
`
`c.
`
`The previously filed Code200 Petition challenging the ’319
`patent was timely filed and not considered on the merits.
`
`Petitioners previously sought IPR review of the ’319 patent in a timely fashion.
`
`
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`More specifically, Petitioners filed the Code200 IPR on July 14, 2020 (i.e., within one year
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`10
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`
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`of the Action’s filing on December 6, 2019), which challenged the validity of certain
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`claims of the ’319 patent as anticipated and/or obvious in view of the same prior-art
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`references cited in the NetNut IPR. See Code200 IPR, Paper 5. The Board denied the
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`Code200 Petition based on discretionary grounds in view of the pending Action. See id.,
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`Paper 18 at 6-12 (citing Apple Inc. v. Fintiv Inc., IPR2020-00019). The Board reasoned
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`that trial in the Action was set to occur “at least seven months before a Final Written
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`Decision would be issued here.” Id. at 12. The Board did not make any substantive
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`determination concerning the merit of the Code200 IPR. Id.
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`On November 1, 2021, the Court convened a jury trial and on December 15, 2021,
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`the Court stayed deadlines in the Action (ECF No. 543) and has declined to lift the stay
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`pending mediation. ECF No. 580. Consequently, as of today, the Action remains stayed.
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`Further, the Board in the NetNut IPR determined that the Fintiv factors and General Plastic
`
`factors did not preclude institution of the NetNut IPR. See NetNut IPR, Paper 12 at 15-16.
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`Indeed, the NetNut IPR has been instituted, such that the Board need not consider
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`Petitioner’s previously filed IPR petition in connection with the present “me-too” Petition.
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`See Sawai USA, Sawai USA, Inc. et al. v. Biogen MA Inc., IPR2019-00789, Paper 17 at 9-
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`10 (PTAB Sept. 12, 2019).
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`11
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`d.
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`The PTAB’s discretionary denials of Petitioners’ IPR2021-
`01502 and
`IPR2021-01503 do not render
`joinder
`inappropriate here.
`
`Petitioners previously filed two IPRs challenging different Bright Data patents and
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`sought to join those IPRs with NetNut’s IPRs IPR2021-00458 and IPR2021-00465. See
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`IPR2021-01502, Paper 7 and IPR2021-01503, Paper 7, respectively. The PTAB denied
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`Petitioners’ joinder requests, holding joinder “would be unduly prejudicial and not in the
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`interest of justice” because (i) Petitioners had settled litigation with Bright Data concerning
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`the subject patents and (ii) Petitioners had not challenged the subject patents within
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`Petitioners’ one-year bar date. See IPR2021-01502, Paper 13 and IPR2021-01503, Paper
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`13. Neither fact exists here. First, unlike in IPR2021-01502 and -01503, here Petitioners
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`have repeatedly sought to challenge the ’319 patent in the patent office, first via an IPR
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`prior to their one-year bar deadline and then via ex parte review when the IPR was denied
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`on discretionary grounds. See Code200 IPR, Paper 5 (filed on July 14, 2020 within one
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`year of the filing of the Action on December 6, 2019). In this case, where Petitioner’s ex
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`parte review is now stayed in view of the NetNut IPR, it would be prejudicial and against
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`the interest of justice to deny joinder. Second, Petitioners have not settled the Action
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`concerning the ’319 patent with Bright Data. Consequently, the present Petition and
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`Motion for Joinder are plainly distinguishable from the denied motions for joinder in
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`IPR2021-01502 and IPR2021-01503.
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`12
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`2.
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`Petitioners propose no new grounds of unpatentability (factor 2).
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`The Board “routinely grants motions for joinder where the party seeking joinder
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`introduces identical arguments and the same grounds raised in the existing proceeding.”
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`Samsung Elecs. Co. v. Raytheon Co., IPR2016-00962, Paper 12 at 9 (PTAB Aug. 24, 2016)
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`(internal quotations and citations omitted) (emphasis original). Joinder is appropriate here
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`because the Petition was timely filed and asserts the same grounds and relies on the same
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`evidence for unpatentability presented in the NetNut IPR. See Ex. 1022 (showing the
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`minimal, non-substantive differences between the present Petition and the NetNut IPR
`
`petition). The present Petition and the NetNut IPR petition rely on the same prior-art
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`references, alone and/or in the same combinations. Id. The Petition and the NetNut IPR
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`petition also rely on the same declaration of Keith D. Teruya. There are no new grounds
`
`of unpatentability asserted in the present Petition. Accordingly, the Petition will not add
`
`any additional issues to the substantive issues in the NetNut IPR.
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`Joinder, therefore, is the most efficient and economical manner to proceed in this
`
`case. See, e.g., HTC, IPR2017-00512, Paper 12 at 7 (granting motion for joinder where
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`the second petition involved “the same claims, the same patent, the same prior art
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`references, the same expert declaration, and the same arguments and rationales”);
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`STMicroelectronics, Inc. v. Lone Star Silicon Innovations, LLC, IPR2018-00436, Paper 7
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`at 5 (PTAB May 4, 2018) (granting joinder and reasoning, “[w]e rely in particular, on
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`13
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`Petitioner’s representation that its Petition is ‘substantially identical’ . . . challenges the
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`same claims based on the same prior art and the same grounds of unpatentability . . . .”).
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`3.
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`Joinder will not impact the trial schedule or cost of the joined
`proceeding (factor 3).
`
`Joinder will not prejudice the parties to the NetNut IPR. Petitioners will not request
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`any alterations to the trial schedule that the Board issued in the NetNut IPR (IPR2021-
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`01492, Paper 13), therefore leaving that schedule unchanged.
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`Petitioners also agree to adopt a secondary, “understudy” role in the NetNut IPR, if
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`joined. See, e.g., Garmin Int’l, Inc. v. Philips North Am. LLC, IPR2020-00910, Paper 8 at
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`45, 47-50 (PTAB Nov. 19, 2020) (granting joinder where petitioners agreed to accept an
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`“understudy” role); STMicroelectronics, IPR2018-00436, Paper 7 at 5 (similar).
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`Petitioners will assume a primary role only if the NetNut IPR petitioner ceases its
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`participation in the proceeding. Petitioners will abide by any conditions the Board deems
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`appropriate for an “understudy” role.
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`Petitioners’ agreement to take an “understudy” role removes any potential
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`complication or delay caused by joinder, while providing the parties an opportunity to
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`address all issues that may arise. See, e.g., Mylan Pharms. Inc. v. Novartis AG, IPR2014-
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`00550, Paper 38 at 5-6 (PTAB Apr. 10, 2015). In sum, joinder will not affect the cost or
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`complexity of the NetNut IPR for Patent Owner, the NetNut IPR petitioner, and/or the
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`Board.
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`14
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`4.
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`Joinder will not add to the complexity of briefing and discovery
`(factor 4).
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`Petitioners and the NetNut IPR petitioner rely on the same prior art and the same
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`
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`expert to support identical arguments regarding the unpatentability of the patent at issue.
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`Briefing and discovery therefore will be the same, and granting joinder will not add to the
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`complexity of briefing and discovery.
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`IV. CONCLUSION
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`For these reasons, Petitioners respectfully request that the Board institute their
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`Petition for Inter Partes Review of U.S. Patent No. 10,257,319 and join this proceeding
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`with NetNut Ltd. v. Bright Data Ltd., IPR2021-01492.
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`
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`
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`Respectfully submitted,
`
`CHARHON CALLAHAN ROBSON & GARZA,
`PLLC
`
`
`/George “Jorde” Scott /
`
`George “Jorde” Scott (Reg. No. 62,859)
`(Lead Attorney for Petitioner)
`Craig Tolliver (Reg. No. 45,975)
`John C. Heuton (Reg. No. 62,467)
`
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`15
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`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that the above Motion was served on April 18,
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`2022 via Priority Mail Express International (or by means at least as fast and reliable as
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`Priority Mail Express), on the following:
`
`May Patents Ltd. ℅ Dorit Shem-Tov
`P.O.B. 7230
`Ramat-Gan 5217102
`ISRAEL
`
`(PAIR Correspondence Address for U.S. Patent No. 10,257,319)
`
`The above Motion was also served via e-mail and FedEx on April 18, 2022 on Patent
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`Owner’s U.S. counsel in pending litigation concerning patents in the family of the ’319
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`patent, as follows:
`
`Korula T. Cherian
`Ruyak Cherian, LLP
`1936 University Avenue, Suite 350
`Berkeley, CA 94704
`sunny@ruyakcherian.com
`(via FedEx and email)
`
`
`Ronald Wielkopolski
`Ruyak Cherian, LLP
`1700 K St NW, Suite 810 Washington, DC 20006
`ronw@ruyakcherian.com
`(via email)
`
`
`
`
`
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`16
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`The above Motion was also served via e-mail and FedEx on April 18, 2022 on Patent
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`Owner’s counsel in pending NetNut Ltd. v. Bright Data Ltd., IPR2021-01492:
`
`Ronald Abramson
`Mord Lewis
`Ari Jaffess
`Liston Abramson LLP
`405 Lexington Avenue, 46th Floor
`New York, New York 10174
`Ron.abramson@listonabramson.com
`Michael.lewis@listonabramson.com
`Ari.jaffess@listonabramson.com
`(via FedEx and email)
`
`
`CHARHON CALLAHAN ROBSON &
`GARZA, PLLC
`
`/George “Jorde” Scott/
`
`George “Jorde” Scott (Reg. No. 62,859)
`(Lead Attorney for Petitioner)
`Craig Tolliver (Reg. No. 45,975)
`John C. Heuton (Reg. No. 62,467)
`
`
`
`
`
`
`Date: April 18, 2022
`
`
`3333 Lee Parkway
`Suite 460
`Dallas, TX 75219
`(214) 521-6400
`
`
`17
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`
`
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