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
`
`_________________________
`
`
`
`
`
`Case IPR2022-00861
`
`Patent No. 10,257,319
`
`_________________________
`
`PATENT OWNER’S OPPOSITION TO
`PETITIONERS’ MOTION FOR JOINDER
`
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`_________________________
`
`
`
`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
`
`_________________________
`
`
`
`
`
`Case IPR2022-00861
`
`Patent No. 10,257,319
`
`_________________________
`
`PATENT OWNER’S OPPOSITION TO
`PETITIONERS’ MOTION FOR JOINDER
`
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`
`
`
`IPR2022-00861 of Patent No. 10,257,319
`
`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION ............................................................................................... 1
`
`II. RESPONSE TO PETITIONERS’ STATEMENT OF MATERIAL FACTS
`(“SMF”)...................................................................................................................... 2
`
`III. ADDITIONAL STATEMENT OF MATERIAL FACTS (“AMF”) ............... 6
`
`IV. LEGAL STANDARD ...................................................................................... 7
`
`V. THE BOARD SHOULD EXERCISE ITS DISCRETION TO DENY
`INSTITUTION ........................................................................................................... 8
`
`VI. THE BOARD SHOULD EXERCISE ITS DISCRETION TO DENY
`JOINDER .................................................................................................................11
`
`A. WITHOUT JOINDER, THE PETITION IS TIME-BARRED ......................11
`
`B. PREJUDICE TO PATENT OWNER IF GRANTED ....................................11
`
`C. NO PREJUDICE TO PETITIONERS IF DENIED .......................................12
`
`D. NO PREJUDICE TO THE PATENT SYSTEM IF DENIED .......................14
`
`E. PETITIONERS FAIL TO MEET THEIR BURDEN ....................................15
`
`VII. CONCLUSION ..............................................................................................15
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`
`ii
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`
`
`EX. 2001
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`EX. 2002
`
`EX. 2003
`
`EX. 2004
`
`EX. 2005
`
`EX. 2006
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`EX. 2007
`
`Ex. 2008
`
`EX. 2009
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`EX. 2010
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`
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`IPR2022-00861 of Patent No. 10,257,319
`
`PATENT OWNER’S LIST OF EXHIBITS
`
`Unopposed Motion to Extend Deadline to Answer or Otherwise
`Respond to Complaint and Set Briefing Schedule on Motion to
`Dismiss, Bright Data Ltd. v. Teso LT, UAB, et al., Case No.
`2:19-cv-00395, Dkt. 13 (E.D. Tex. Mar. 5, 2020)
`
`Defendants' Disclosure Pursuant to 35 U.S.C. § 282, Bright
`Data Ltd. v. Teso LT, UAB, et al., Case No. 2:19-cv-00395,
`Dkt. 450 (E.D. Tex. July 16, 2021)
`
`Order, Bright Data Ltd. v. Teso LT, UAB, et al., Case No. 2:19-
`cv-00395, Dkt. 543 (E.D. Tex. Mar. 5, 2020)
`
`Order, Bright Data Ltd. v. Teso LT, UAB, et al., Case No. 2:19-
`cv-00395, Dkt. 567 (E.D. Tex. Jan. 7, 2022)
`
`Minute Entry, Bright Data Ltd. v. Teso LT, UAB, et al., Case
`No. 2:19-cv-00395, Dkt. 573 (E.D. Tex. Feb. 4, 2022)
`
`Order, Bright Data Ltd. v. Teso LT, UAB, et al., Case No. 2:19-
`cv-00395, Dkt. 575 (E.D. Tex. Feb. 10, 2022)
`
`Order, Bright Data Ltd. v. Teso LT, UAB, et al., Case No. 2:19-
`cv-00395, Dkt. 580 (E.D. Tex. Mar. 16, 2022)
`
`Order, Bright Data Ltd. v. NetNut Ltd., Case No. 2:21-cv-
`00225, Dkt. 153 (E.D. Tex. May 17, 2022)
`
`Email from Petitioners to the Board, dated May 17, 2022
`
`Complaint, Bright Data Ltd. v. Teso LT, UAB, et al., Case No.
`2:19-cv-00395, Dkt. 1 (E.D. Tex. Dec. 6, 2019)
`
`
`iii
`
`
`
`
`
`I.
`
`INTRODUCTION
`
`IPR2022-00861 of Patent No. 10,257,319
`
`Petitioners in IPR2022-00861 are seeking joinder to IPR2021-01492 (the
`
`“NetNut IPR”). The burden is on Petitioners to justify that joinder should be
`
`granted. 37 C.F.R. § 42.20(c). Petitioners have failed to meet their burden in these
`
`proceedings, as will be further discussed herein.1
`
`Without joinder, the petition is time-barred under 35 U.S.C. § 315(b)
`
`because Patent Owner sued Petitioners for infringement of U.S. Patent No.
`
`10,257,319 (the “‘319 Patent”) in December 2019 in Case No. 2:19-cv-00395
`
`(E.D. Tex.)(the “Tex. Litigation”). The Tex. Litigation went to trial in November
`
`2021 where a jury entered a verdict finding the ‘319 Patent was not invalid.
`
`Since being sued in December 2019, Petitioners admit they have “repeatedly
`
`sought to challenge the ‘319 patent” (Motion at 12) and this petition represents
`
`their fourth bite at the invalidity apple as to the ‘319 Patent. Petitioners have now
`
`filed two IPRs, requested 1 reexamination, and conducted 1 jury trial as to the ‘319
`
`Patent involving the exact same prior art references.
`
`As discussed below, the Board should exercise its discretion based on the
`
`
`1 A similar opposition has been filed in the related proceeding IPR2022-00862.
`
`
`
`1
`
`
`
`
`General Plastic2 factors to deny institution of the petition.
`
`IPR2022-00861 of Patent No. 10,257,319
`
`As discussed below, Patent Owner respectfully submits that joinder is not
`
`appropriate at least because Patent Owner has settled its disputes with NetNut and
`
`requested authorization to file papers related to termination. Petitioners should not
`
`be allowed to continue a proceeding that would otherwise be terminated. See
`
`Uniloc3 at 4. In effect, it would be as if the joinder petitioners had brought the
`
`fourth challenge to the patent in the first instance. See id.
`
`II. RESPONSE TO PETITIONERS’ STATEMENT OF MATERIAL
`FACTS (“SMF”)
`
`Response to SMF No. 2: This SMF is incorrect. Bright Data filed a
`
`complaint against Teso LT, UAB; Oxysales, UAB, and Metacluster LT, UAB in
`
`Case No. 2:19-cv-395 (E.D. Tex)(“Tex. Litigation”) on 12/6/19.4 This SMF is also
`
`incomplete regarding executed service. Defendants confirmed the Lithuanian
`
`Central Authority delivered a copy of the Complaint to Metacluster LT, UAB on
`
`
`2 General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357,
`
`Paper 19 (PTAB Sept. 6, 2017)(precedential).
`
`3 Apple Inc. v. Uniloc 2017 LLC, IPR2020-00854, Paper 9 at 12 (PTAB Oct. 28,
`
`2020)(precedential).
`
`4 Not Coretech LT, UAB, though it was identified as a sister company, believed to
`
`be under common ownership and control. See EX. 2010 at ¶ 2.
`
`
`
`2
`
`
`
`IPR2022-00861 of Patent No. 10,257,319
`
`
`
`2/18/20, to Teso LT, UAB on 2/21/20, and to Oxysales, UAB on 3/3/20. EX. 2001.
`
`Regardless, Petitioners concede that the time-bar under 35 U.S.C. § 315(b) applies
`
`to the petition.
`
`Response to SMF No. 3: This SMF is misleading. The ‘319 Patent includes
`
`29 claims, with only claim 1 being independent. The Tex. Litigation involved
`
`invalidity challenges of anticipation/obviousness based on Crowds, Border, and
`
`MorphMix. EX. 2002. At trial, Defendants made the strategic decision to proceed
`
`with only alleged invalidity of claims 1 and 26 of the ‘319 Patent based on
`
`anticipation by Crowds. The jury verdict was entered on 11/5/21 finding no
`
`anticipation by Crowds. EX. 1023 at 5. The quotes from the 11/5/21 trial transcript
`
`are taken out of context and Petitioners’ characterization of Bright Data’s
`
`arguments at trial should be disregarded. See Motion at 2. Petitioners did not
`
`include the trial transcript as an exhibit to the motion. Regardless, the Court
`
`properly instructed the jury as to the burden for invalidity in district court trials.
`
`Response to SMF No. 4: Petitioners’ statement is incorrect and incomplete.
`
`On 11/5/21, the Tex. Litigation reached a final jury verdict. On 12/15/21, the Court
`
`entered a stay as to post-trial motions. EX. 2003. At that time, there were pending
`
`motions for injunctive relief (Dkt. 529), for summary judgment of no inequitable
`
`conduct (Dkt. 530), and for enhanced damages and exceptional case status (Dkt.
`
`541). Mediation was scheduled to occur on 1/6/22. The mediation was
`
`
`
`3
`
`
`
`
`
`unsuccessful. On 1/7/22, the Court lifted the stay with respect to the pending
`
`IPR2022-00861 of Patent No. 10,257,319
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`motion for injunctive relief (Dkt. 529) and ordered Defendants to complete
`
`briefing. EX. 2004. On 2/4/22, the Court held a hearing on the motion for
`
`injunctive relief. EX. 2005. On 2/10/22, the Court denied the motion for injunctive
`
`relief. EX. 2006. On 3/7/22, Bright Data filed an opposed motion to lift the stay
`
`order (Dkt 576) and complete post-trial briefing. On 3/16/22, the Court denied
`
`Bright Data’s motion (Dkt. 576) and ordered additional mediation. EX. 2007.
`
`Response to SMF No. 5: Bright Data can neither admit nor deny this SMF.
`
`Petitioners cite only to Defendants’ Opposition (Dkt. 570) to Plaintiff’s Motion for
`
`injunctive relief which essentially argues dueling expert testimony and makes no
`
`reference to Defendants’ intent to file post-trial motions. Accordingly, Petitioners’
`
`allegations in SMF No. 5 should be disregarded.
`
`Response to SMF No. 6: This SMF is incomplete because it does not
`
`identify the grounds/prior art in the first Code200 IPR Petition in IPR2020-01266,
`
`which set forth the following challenges (Table 1).
`
`Table 1
`
`Challenge
`Claims
`Anticipated by Crowds (§102)
`1-2, 21-22, 24-27
`1-2, 14-15, 17-18, 21-22, 24-27 Obvious in view of Crowds +
`Knowledge of POSA + Request for
`Comments (“RFC”) 2616 (§103)
`Anticipated by Border (§102)
`Obvious in view of Border +
`Knowledge of POSA + RFC 2616
`(§103)
`
`1, 12, 14, 21-22, 24-25, 27-29
`1, 12, 14-15, 17-18, 21-22, 24-
`29
`
`4
`
`Ground
`1
`2
`
`3
`4
`
`
`
`
`
`IPR2022-00861 of Patent No. 10,257,319
`
`Anticipated by MorphMix (§102)
`1-2, 17, 19, 21-22, 24-27
`1-2, 14-15, 17-19, 21-22, 24-27 Obvious in view of MorphMix +
`Knowledge of POSA + RFC 2616
`(§103)
`
`5
`6
`
`
`
`
`
`Response to SMF No. 8: This SMF is incomplete because it does not
`
`identify the grounds/prior art in the NetNut IPR Petition, which set forth the
`
`following challenges (Table 2). Compared to the first Code 200 IPR Petition,
`
`Ground 1 removes claims 2 and adds claims 19, 23, and 28-29; Ground 2 adds
`
`claims 19, 23, and 28-29; Ground 3 is exactly the same; Ground 4 removes claim
`
`26 and adds claim 19; Ground 5 removes claim 2 and adds claims 23 and 28-29;
`
`and Ground 6 adds claims 23 and 28-29. Compare Table 1 and Table 2.
`
`Ground
`1
`2
`
`Claims
`1, 19, 21-22, 23, 24-29
`1-2, 14-15, 17-19, 21-29
`
`Table 2
`
`1, 12, 14, 21-22, 24-25, 27-29
`1, 12, 14-15, 17-18, 19, 21-22,
`24-25, 27-29
`
`1, 17, 19, 21-29
`1-2, 14-15, 17-19, 21-29
`
`3
`4
`
`5
`6
`
`
`
`Challenge
`Anticipated by Crowds (§102)
`Obvious in view of Crowds +
`Knowledge of POSA + Request for
`Comments (“RFC”) 2616 (§103)
`Anticipated by Border (§102)
`Obvious in view of Border +
`Knowledge of POSA + RFC 2616
`(§103)
`Anticipated by MorphMix (§102)
`Obvious in view of MorphMix +
`Knowledge of POSA + RFC 2616
`(§103)
`
`Response to SMF No. 13: This SMF is incomplete because it does not
`
`identify the grounds/prior art in the Teso EPR Request in Control No. 90/014,875,
`
`which makes the exact same challenges as the first Code200 IPR Petition. See
`
`
`
`5
`
`
`
`
`
`Table 1.
`
`IPR2022-00861 of Patent No. 10,257,319
`
`Response to SMF No. 14: This SMF is incomplete because it does not
`
`identify the grounds/prior art in the TDCT IPR Petition in IPR2022-00135, which
`
`is based on a different primary prior art reference.
`
`Response to SMF No. 16: Bright Data can neither admit nor deny this SMF
`
`because Petitioners did not copy Bright Data on its communications with NetNut.
`
`III. ADDITIONAL STATEMENT OF MATERIAL FACTS (“AMF”)
`
`AMF No. 1: Petitioners have filed 18 administrative proceedings
`
`challenging Bright Data patents. There are 6 pending IPRs. There are 7 closed
`
`IPRs. There are 4 pending EPRs. There is 1 closed EPR. There are also two district
`
`court proceedings involving Bright Data patents, one being the Tex. Litigation and
`
`the other involving two different Bright Data patents.
`
`AMF No. 2: Another joinder petitioner, Major Data UAB, filed IPR2022-
`
`00915 on 4/21/2022 and is also seeking joinder to the NetNut IPR.
`
`AMF No. 3: Patent Owner reached settlement with NetNut, the petitioner in
`
`the NetNut IPR. The parties filed a joint motion to dismiss with prejudice in their
`
`district court case, which was granted on 5/17/2022. EX. 2008.
`
`AMF No. 4: Patent Owner and NetNut requested authorization from the
`
`PTAB to file papers related to termination of pending IPRs on 5/13/2022.
`
`AMF No. 5: Petitioners sent an email to the Board on 5/17/2022 requesting
`
`
`
`6
`
`
`
`
`
`that the Board decline to terminate the NetNut IPR with respect to Patent Owner,
`
`IPR2022-00861 of Patent No. 10,257,319
`
`“vacate the existing scheduling orders,” and “revisit scheduling for these
`
`proceedings.” EX. 2009.
`
`IV. LEGAL STANDARD
`
`Under the precedential decision in Uniloc, deciding to grant joinder first
`
`involves considering whether to exercise discretion under § 314(a). See id. at 5
`
`(“[B]efore determining whether to join Apple as a party to the 023 IPR, even
`
`though the Petition is a ‘me-too petition,’ we first determine whether application of
`
`the General Plastic factors warrants the exercise of discretion to deny the Petition
`
`under § 314(a).”); see also Facebook, Inc. v. Windy City Innov., LLC, 973 F.3d
`
`1321, 1332 (Fed. Cir. 2020).
`
`Joinder may be authorized when warranted, but the decision to grant joinder
`
`is discretionary. See 35 U.S.C. § 315(c); 37 C.F.R. § 42.122. The Board determines
`
`whether to grant joinder on a case-by-case basis, taking into account the particular
`
`facts of each case, substantive and procedural issues, and other considerations. See
`
`157 CONG. REC. S1376 (daily ed. Mar. 8, 2011) (statement of Sen. Kyl).
`
`A motion for joinder should: (1) set forth the reasons why joinder is
`
`appropriate; (2) identify any new grounds of unpatentability asserted in the
`
`petition; (3) explain what impact (if any) joinder would have on the trial schedule
`
`for the existing review; and (4) address specifically how briefing and discovery
`
`
`
`7
`
`
`
`
`
`may be simplified. See, e.g., Kyocera Corp. v. SoftView LLC, IPR2013-00004,
`
`IPR2022-00861 of Patent No. 10,257,319
`
`Paper 15 at 4 (PTAB April 24, 2013).
`
`V. THE BOARD SHOULD EXERCISE ITS DISCRETION TO DENY
`INSTITUTION
`
`Based on the General Plastic factors, the Board should exercise its
`
`discretion to deny institution under § 314. Below, Patent Owner analyzes the
`
`General Plastic factors with respect to the first Code200 IPR Petition in IPR2020-
`
`01266 and the instant petition.
`
`Factor 1: In IPR2020-01266, the same petitioners5 challenged the same
`
`‘319 Patent based on the same prior art. See Response to SMF No. 6. The ‘319
`
`Patent includes only one independent claim. Substantially similar claims were
`
`challenged in the Code200 IPR Petition as in the NetNut IPR Petition, which is
`
`identical to the instant petition. See Response to SMF No. 8.
`
`Factor 2: The Code200 IPR Petition was filed on 7/14/20. Based on the
`
`invalidity contentions submitted in the Tex. Litigation, the petitioners were aware
`
`of the prior art at least as early as 6/29/20. Specifically, Defendants alleged
`
`anticipation and/or obviousness of claims 1-2, 14-15, 17-18, 21-22, and 24-27 of
`
`the ‘319 Patent, based on primary references Crowds, Border, and MorphMix.
`
`Factor 3: Petitioners received Patent Owner’s preliminary responses and the
`
`
`5 Excluding Coretech LT, UAB.
`
`
`
`8
`
`
`
`
`
`Board’s institution decisions in IPR2020-01266 and IPR2021-01492 before filing
`
`IPR2022-00861 of Patent No. 10,257,319
`
`the instant petition. Petitioners also conducted an entire jury trial involving the
`
`‘319 Patent before filing the instant petition.
`
`Factor 4: The instant petition was filed nearly 22 months after the
`
`petitioners had actual knowledge of the prior art references in June 2020.
`
`Factor 5: Petitioners filed the Code200 IPR Petition, the Teso EPR Request,
`
`conducted the jury trial, and awaited institution of the NetNut IPR in order to
`
`circumvent the time-bar. Although the instant petition was filed within one month
`
`of institution (see 37 CFR § 42.122(b)), Petitioners waited until 4/18/2022, three
`
`days before the deadline on 4/21/2022. Petitioners provide no explanation for the
`
`delay between 3/21/2022 when institution was granted in the NetNut IPR and
`
`4/18/2022 when the instant petition was filed.
`
`Factor 6: The Board should not expend its finite resources to give the
`
`Petitioners a fourth bite at the invalidity apple. Patent Owner respectfully submits
`
`that it is most economical to lift the stay in the Teso EPR and allow reexamination
`
`to continue based on the same prior art. For example, it is more economical to use
`
`one examiner rather than three judges. There will be no prejudice to the patent
`
`system because the validity of the ‘319 Patent will still be evaluated based on the
`
`same prior art. See Response to SMF No. 13. There are also other administrative
`
`proceedings involving the ‘319 Patent. See Response to SMF No. 14 and AMF No.
`
`
`
`9
`
`
`
`IPR2022-00861 of Patent No. 10,257,319
`
`
`
`2. Therefore, the validity of the ‘319 Patent will be thoroughly evaluated by the
`
`Patent Office. Additionally, the Tex. Litigation already determined there was no
`
`anticipation by Crowds of the ‘319 Patent. See Response to SMF No. 3.
`
`Factor 7: Petitioners requested that the Board “vacate the existing
`
`scheduling orders” (see AMF No. 5) which negatively impacts the trial schedule
`
`and adds complexity to the proceeding, as discussed further below. Petitioners’
`
`request prejudices patent owner and does not serve judicial efficiency.
`
`On balance, Patent Owner respectfully submits that the General Plastic
`
`factors overwhelmingly favor denial of institution.
`
`Petitioners argue that “the NetNut IPR has been instituted, such that the
`
`Board need not consider Petitioner’s previously filed [Code200] IPR petition in
`
`connection with the present “me-too” Petition.” Motion at 11. However, Petitioners
`
`rely on a case that is wholly inapplicable. In Sawai USA, Inc. et al. v. Biogen MA
`
`Inc., there were two earlier IPR petitions filed by different parties, but there was no
`
`earlier petition filed by Sawai itself. See IPR2019-00789, Paper 17 at 2-3 (PTAB
`
`Sept. 12, 2019). This case may show that the Board need not expend significant
`
`resources comparing the NetNut IPR petition and the instant petition given the
`
`inherent nature of a “me-too” petition. However, Patent Owner respectfully
`
`submits that the Board should absolutely consider the earlier Code200 IPR petition
`
`and the instant petition in the context of the General Plastic factors.
`
`
`
`10
`
`
`
`IPR2022-00861 of Patent No. 10,257,319
`
`
`
`VI. THE BOARD SHOULD EXERCISE ITS DISCRETION TO DENY
`JOINDER
`
`A. WITHOUT JOINDER, THE PETITION IS TIME-BARRED
`Petitioners concede that that without joinder, the petition is time-barred under §
`
`315(b). See Response to SMF No. 2. A time-bar under 35 U.S.C. § 315(b) exists
`
`and thus, this factor weighs against granting joinder.
`
`B. PREJUDICE TO PATENT OWNER IF GRANTED
`Patent Owner has expended significant costs to defend its patents against
`
`Petitioners. See AMF No. 1. Patent Owner would be significantly prejudiced if
`
`joinder is granted for at least two reasons.
`
`First, Petitioners’ actions undermine the integrity of the judicial process.
`
`Patent Owner should be able to rely on the jury verdict against Petitioners in the
`
`Tex. Litigation. Although there are different burdens in district court and
`
`administrative proceedings (see Motion at 8), the same issues were litigated in the
`
`Tex. Litigation, the issues were actually litigated and reached a final jury verdict,
`
`the validity determination was essential to the jury verdict, and Defendants had a
`
`full and fair opportunity to litigate the issues.
`
`Second, Petitioners’ actions show potential abuse of the review process. See
`
`Responses to SMF Nos. 3, 6, 8, and 13, as well as AMF No. 1. The Board has
`
`“recognize[d] the potential for abuse of the review process by repeated attacks on
`
`patents.” General Plastic, Paper 19 at 16–17. Petitioners seem to be establishing a
`
`pattern of behavior where Petitioners are/will be attempting to join any instituted
`
`
`
`11
`
`
`
`
`
`proceeding against any Bright Data patent without regard to justice. For example,
`
`IPR2022-00861 of Patent No. 10,257,319
`
`in each of IPR2021-01502 and IPR2021-01503 involving Petitioners, the Board
`
`denied joinder because it would be unduly prejudicial and not in the interest of
`
`justice, particularly given that Petitioners had previously dismissed its
`
`counterclaims of invalidity with prejudice. See, e.g., IPR2021-01502, Paper 13 at
`
`8-9 (PTAB March 14, 2022). If Petitioners continue this pattern of behavior in
`
`future IPRs, Patent Owner respectfully requests the aid of the Board to discourage
`
`harassment of Patent Owner. Congress has instructed that IPR proceedings are “not
`
`to be used as [a] tool[] for harassment.” 35 U.S.C. § 316(a)(6).
`
`C. NO PREJUDICE TO PETITIONERS IF DENIED
`As discussed above, this petition represents Petitioners’ fourth bite at the
`
`invalidity apple given (1) the Code200 IPR petition, (2) the Teso EPR Request, and
`
`(3) the Tex. Litigation and (4) the instant petition, all which involve(d) the same
`
`prior art. See Responses to SMF Nos. 3, 6, 8, and 13.
`
`Regarding the Code200 IPR Petition: Petitioners argue that joinder should
`
`be granted in this case despite the earlier Code200 IPR petition (Motion at 9-10),
`
`but Petitioners rely on five cases that are all easily distinguishable. As discussed
`
`below, unlike those cases, the first Code200 IPR petition relies on the exact same
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`prior art references as the instant petition. See Response to SMF Nos. 6 and 8.
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`First, in Apple Inc. v. Uniloc 2017 LLC, there was only one secondary
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`reference in common between the earlier and later petitions. Compare IPR2020-
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`IPR2022-00861 of Patent No. 10,257,319
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`00224, Paper 1, at 3 (PTAB Dec. 18, 2019) to IPR2019-00259, Paper 1 at 5 (PTAB
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`Nov. 12, 2018). Second, in Apple Inc. v. INVT SPE LLC, there were different
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`claims/art/grounds at issue in the earlier versus later petitions. See IPR2019-00958,
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`Paper 9 at 3 (PTAB May 30, 2019). Third, in Celltrion, Inc. v. Genentech, Inc.,
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`there were 3 overlapping references and 3 new references at issue in the earlier
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`versus later petitions. See IPR2018-01019, Paper 7 at 7 (PTAB June 4, 2018).
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`Fourth, in Huawei Device Co., Ltd. v. Uniloc Luxembourg S.A., there were
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`different claims/grounds at issue in the earlier versus later petitions, with only one
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`overlapping reference with the petition in IPR2017-02080 which listed Huawei as
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`a real party-in-interest. See IPR2017-02090, Paper 9 at 8 (PTAB March 6, 2018).
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`Also, joinder was unopposed. See id. at 10. Fifth, in Pfizer, Inc. v. Genentech, Inc.,
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`there was only one overlapping reference between the earlier and later petitions.
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`See IPR2017-02063, Paper 8 at 6 (PTAB Oct. 6, 2017).
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`Regarding the Teso EPR Request: The stay in the Teso EPR may be lifted
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`if the NetNut IPR is terminated. Petitioners identify no prejudice in conducting
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`reexamination rather than inter partes review. See Motion at 10.
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`Regarding the Tex. Litigation: As discussed above with respect to General
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`Plastic Factor 2, Petitioners were fully aware of the prior art references at least as
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`early as June 2020. Petitioners already had a full and fair opportunity to litigate the
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`13
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`validity of the ‘319 Patent based on the exact same prior art. In the Tex. Litigation,
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`IPR2022-00861 of Patent No. 10,257,319
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`Petitioners chose to proceed only on Crowds at trial, but had every opportunity to
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`present expert testimony on Border and MorphMix as well. See Response to SMF
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`No. 3.
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`Petitioners argue that “the jury was not provided the Court’s Supplemental
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`Claim Construction Order” (Motion at 9), but this argument is a red herring. A jury
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`is never provided the Orders, only the final claim constructions and the testifying
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`experts may only offer opinions in accordance with the guidance in the Orders.
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`D. NO PREJUDICE TO THE PATENT SYSTEM IF DENIED
`Given the settlement between Patent Owner and NetNut (see AMF Nos. 3
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`and 4), the Board should not expend its finite resources to continue the proceedings
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`involving the ‘319 Patent. Uniloc at 12. As discussed above with respect to
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`General Plastic Factor 6, Patent Owner respectfully submits that reexamination is
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`the most efficient use of resources. The quality of the patent will be evaluated
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`based on the exact same prior art. See Response to SMF No. 13.
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`Petitioners argue that joinder is “the most efficient and economical manner
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`to proceed in this case”. Motion at 13. However, Petitioners rely on two cases that
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`are both easily distinguishable. In HTC v. Parthenon Unified Memory Architecture
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`LLC, joinder was unopposed. See IPR2017-00512, Paper 12 at 7 (June 1, 2017).
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`Also, the joinder petitioner agreed to consolidate all filings with the primary
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`14
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`petitioner and coordinate discovery according to the existing trial schedule. See id.
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`IPR2022-00861 of Patent No. 10,257,319
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`In STMicroelectroincs, Inc. v. Lone Star Silicon Innovations, LLC, joinder was
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`unopposed. See IPR2018-00436, Paper 7 at 2 (PTAB May 4, 2018). The joinder
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`petitioner also agreed to adhere to the existing schedule. See id. at 5. Here, joinder
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`is opposed and Petitioners requested to vacate the existing trial schedule. See AMF
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`No. 5. Also, there is no representation that the additional joinder petitioner (Major
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`Data UAB) would cooperate with Petitioners. See AMF No. 2.
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`E. PETITIONERS FAIL TO MEET THEIR BURDEN
`Petitioners fail to meet their burden for at least two additional reasons. First,
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`Petitioners’ request to vacate the existing trial schedule (see AMF No. 5) would
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`inevitably add cost and complexity to the trial. Petitioners’ request does not serve
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`judicial efficiency. Second, the instant motion was filed on 4/18/22 and therefore
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`did not address the other joinder petitioner (Major Data UAB). See AMF No. 2.
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`Petitioners must now address how granting one or more joinder motions would
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`affect the cost and complexity of the NetNut IPR. The instant petitions also must
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`address coordination and cooperation in the event one or both joinder motions are
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`granted.
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`VII. CONCLUSION
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`In view of the foregoing, Patent Owner respectfully requests that institution
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`and joinder be denied.
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`IPR2022-00861 of Patent No. 10,257,319
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`Date: May 18, 2022
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`Respectfully submitted,
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`By: /s/ Thomas M. Dunham
`Thomas M. Dunham
`Reg. No. 39,965
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`RuyakCherian LLP
`1901 L Street NW, Suite 700
`Washington, D.C. 20036
`(202) 838-1567
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`ATTORNEY FOR PATENT OWNER,
`BRIGHT DATA LTD.
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`16
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`CERTIFICATE OF COMPLIANCE
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`IPR2022-00861 of Patent No. 10,257,319
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`Pursuant to 37 C.F.R. § 42.24(d), the undersigned hereby certifies that
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`PATENT OWNER’S OPPOSITION TO PETITIONERS’ MOTION FOR
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`JOINDER complies with the 15-page-limit under 37 C.F.R. § 42.24(b)(3). This
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`paper contains fewer than the limit of 15 pages, excluding the parts of this paper
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`exempted by 37 C.F.R. § 42.24(a)(1). This paper also complies with the format
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`requirements of 37 C.F.R. § 42.6(a).
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`Date: May 18, 2022
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`Respectfully submitted,
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`By: /s/ Thomas M. Dunham
`Thomas M. Dunham
`Reg. No. 39,965
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`RuyakCherian LLP
`1901 L Street NW, Suite 700
`Washington, D.C. 20036
`(202) 838-1567
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`ATTORNEY FOR PATENT OWNER,
`BRIGHT DATA LTD.
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`17
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`CERTIFICATE OF SERVICE
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`IPR2022-00861 of Patent No. 10,257,319
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`Pursuant to 37 C.F.R. § 42.6(e), the undersigned hereby certifies the
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`PATENT OWNER’S OPPOSITION TO PETITIONERS’ MOTION FOR
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`JOINDER and accompanying exhibits thereto, were served on the undersigned
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`date via email, as authorized by Petitioners, at the following email addresses:
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`jscott@ccrglaw.com
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`jheuton@ccrglaw.com
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`ctolliver@ccrglaw.com
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`Date: May 18, 2022
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`Respectfully submitted,
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`By: /s/ Thomas M. Dunham
`Thomas M. Dunham
`Reg. No. 39,965
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`RuyakCherian LLP
`1901 L Street NW, Suite 700
`Washington, D.C. 20036
`(202) 838-1567
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`ATTORNEY FOR PATENT OWNER,
`BRIGHT DATA LTD.
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`18
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