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`U.S. Patent No. 10,257,319
`Inter Partes Review
`Petitioners’ Reply in Support of Motion for Joinder
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`CODE200, UAB; TESO LT, UAB; METACLUSTER LT, UAB; OXYSALES,
`UAB; AND CORETECH LT, UAB,
`Petitioners,
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`v.
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`BRIGHT DATA LTD.,
`Patent Owner.
`____________
`
`Inter Partes Review No. IPR2022-00861
`Patent No. 10,257,319
`____________
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`PETITIONERS’ REPLY IN SUPPORT OF MOTION FOR
`JOINDER TO INTER PARTES REVIEW IPR2021-01492
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`I.
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`INTRODUCTION
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`In two separate proceedings, the Board has determined that petitioners have
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`“demonstrated a reasonable likelihood of prevailing” in showing that four different
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`primary references each independently read on the ’319 patent claims. See IPR2021-
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`01492, Paper 12 (Crowds, Border, Morphmix); IPR2022-00135, Paper 12 (Plamon-
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`don). Petitioners seek to join each proceeding to prevent Patent Owner from avoid-
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`ing trial before the Board by settling with the original petitioners. Petitioners’ con-
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`cern is real as NetNut has settled and subsequently terminated from IPR2021-01492.
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`Petitioners’ joinder motion is routine, and “[a]llowing Petitioner[s] the opportunity
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`to pursue a decision on the merits from the Board at this time” is in the interests of
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`justice, particularly “the desires to improve patent quality and patent-system effi-
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`ciency.” Intel Corp. v. VLSI Tech. LLC, IPR2022-00366, Paper 14 at 9 (PTAB June
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`8, 2022) (“Intel”). Patent Owner’s arguments to the contrary are founded on mis-
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`characterizations of prior proceedings and citations to inapplicable case law.
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`II.
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`JOINDER IS PROCEDURALLY PROPER AND NEUTRAL TO THE
`COMPLEXITY AND SCHEDULE OF THE NETNUT IPR
`Patent Owner neither disputes that Petitioners’ IPR filing and joinder motion
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`were timely, nor does it identify any complexities in granting joiner. See Paper 11.
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`In fact, the Board has already entered an Order Modifying Scheduling Orders to
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`accommodate Petitioners stepping in and continuing the NetNut IPR if the Board
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`grants this joinder motion. See IPR2021-01492, Paper 19.
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`1
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`III. THIS PROCEEDING IS PETITIONERS’ FIRST OPPORTUNITY TO
`PRESENT MERITS ARGUMENTS TO THE BOARD
`Patent Owner argues repeatedly that the present Motion for Joinder represents
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`a “fourth bite at the invalidity apple.” Paper 11 at 1, 9, 12. This is not true. If the
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`Board grants joinder, it would represent Petitioners’ first opportunity before the
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`Board to obtain a merits-based decision regarding the validity of the ’319 patent.
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`None of the Board precedent Patent Owner cites supports denying joinder here.
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`A. The Board Did Not Reach the Merits of Petitioners’ Prior IPR and
`Has Stayed Ex Parte Reexamination
`Patent Owner argues that, under the General Plastic factors, Petitioners’ prior
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`IPR challenge warrants discretionary denial, citing Apple Inc. v. Uniloc 2017 LLC,
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`IPR2020-00854, Paper 9 (PTAB Oct. 28, 2020) (“Uniloc”). Paper 11 at 7-10. But
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`the Board dismissed Petitioners’ prior IPR challenge to the ’319 patent based on
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`Fintiv. Code200, UAB et al v. Luminati Networks Ltd., IPR2020-01266, Paper 18
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`(PTAB Dec. 23, 2020) (citing 35 U.S.C. § 314(a)) (“Code200 IPR”).
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`As the Board explained in Intel, General Plastics and Uniloc are distinguish-
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`able from the situation here because they each addressed a situation after denial of
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`an earlier petition on the merits. See Intel at 9; Uniloc at 6. Uniloc is further distin-
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`guishable because, unlike here, that petitioner sought to join an IPR based on entirely
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`different prior art and grounds, and offered no supporting evidence or argument to
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`“explain the timing of its second petition and its knowledge of the asserted prior art.”
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`2
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`Uniloc at 5-11. And, as the Board explained in Intel, even where “Petitioner has
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`directed this Petition to the same claims and relies on the same art” as earlier peti-
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`tions, “that the Board did not substantively address the merits of the prior [] petitions,
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`in our view, weighs against discretionary denial here.” Intel at 9.
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`As to Ex Parte Reexamination No. 90/014,875 (the “’319 EPR”), Patent
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`Owner does not dispute that the Board has stayed that proceeding, but argues that
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`Petitioners are not prejudiced because the ’319 EPR could be restarted if the Board
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`terminates the NetNut IPR. Paper 11 at 13. Patent Owner’s argument constitutes
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`speculation and, given that The Data Company IPR has also been instituted, it is not
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`clear that the Board would lift the stay. Regardless, this does not address the funda-
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`mental point that, due to the prior Fintiv denial, Petitioners have yet to have any
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`opportunity to present their merits-based position to the Board. As the Board’s de-
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`cision ordering stay of the ’319 EPR notes, IPR proceedings are “subject to a statu-
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`tory deadline that requires a final decision within one year of institution” whereas ex
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`parte reexaminations are “not subject to a specific deadline.” IPR2021-01492, Paper
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`14 at 4. Petitioners respectfully request the opportunity to proceed with their meri-
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`torious challenge.
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`B.
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`The Texas Action Does Not Warrant Denial
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`Patent Owner argues that the Texas Action was “a full and fair opportunity to
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`litigate the validity of the ’319 Patent based on the exact same prior art” and
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`3
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`mandates discretionary denial. Paper 11 at 13-14. Patent Owner’s argument is fac-
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`tually incorrect and cites no case law. The NetNut IPR includes independent grounds
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`(asserting Morphmix and Border) that were not presented to the jury (Petitioners
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`presented only Crowds as an anticipatory reference).1 Patent Owner dismisses this
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`by arguing Petitioners could have presented additional art to the jury. Paper 11 at
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`13-14. The Board in Intel addressed a nearly identical fact pattern and rejected the
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`same argument. The Board’s reasoning in Intel applies with equal force here. The
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`Board first “acknowledge[d] that [petitioner] had the opportunity to present its inva-
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`lidity contentions to the jury at trial and chose not to present the grounds raised be-
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`fore the Board,” but declined to find that fact dispositive, stating “we will not sec-
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`ond-guess [petitioner’s] trial strategy.” Intel at 13 (emphasis added). Instead, the
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`Board explained that the proper “focus” was “on the fact that [petitioner’s] first pe-
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`tition was denied under § 314(a), and the [] litigation did not resolve issues presented
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`by this proceeding.” Id. The same is true here. The jury trial “did not resolve the
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`challenges presented here” at least as to Border and Morphmix and with respect to
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`patent claims not asserted at trial. Id. at 9. “Allowing Petitioner the opportunity to
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`pursue a decision on the merits from the Board at this time . . . best balances the
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`1 The NetNut IPR also challenges many more claims than the two asserted claims
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`presented to the jury during the Texas Action.
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`4
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`desires to improve patent quality and patent-system efficiency against the potential
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`for abuse of the review process by repeated attacks on patents.” Id.
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`C.
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`Patent Owner Fails to Rebut Petitioners’ Distinguishing of the
`Board’s Denial of Joinder in IPR2021-01502 and IPR2021-01503
`Patent Owner argues that the Board’s previous decisions in IPR2021-01502
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`and IPR2021-01503 denying Petitioners’ motions for joinder somehow creates a
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`“pattern of behavior” that warrants denial here. Paper 11 at 11-12. But Petitioners’
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`Motion for Joinder addressed and distinguished those decisions. Paper 7 at 12. In
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`particular, Petitioners explained that the two facts the Board found relevant in that
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`case (i.e., that Petitioners had not previously challenged those patents via IPRs and
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`had settled litigation involving those patents) do not exist here. See id. Patent Owner
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`failed to address Petitioners’ arguments. See Paper 11 at 11-12. On the contrary,
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`Patent Owner specifically notes that the prior decision relied on the fact that “Peti-
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`tioners had previously dismissed its counterclaims of invalidity with prejudice.” Id.
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`at 12 (emphasis in original). Of course, that is not true here where Petitioners have
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`actively sought to challenge the ’319 patent, first by timely filing a petition that the
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`Board denied on Fintiv grounds, then filing a petition for ex parte reexamination that
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`was granted and subsequently stayed in view of the NetNut IPR.
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`IV. CONCLUSION
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`For these reasons, the Board should grant joinder.
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`5
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`Respectfully submitted,
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`CHARHON CALLAHAN ROBSON
`& GARZA, PLLC
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`/George “Jorde” Scott /
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`George “Jorde” Scott (Reg. No. 62,859)
`(Lead Attorney for Petitioner)
`Craig Tolliver (Reg. No. 45,975)
`John C. Heuton (Reg. No. 62,467)
`3333 Lee Parkway
`Suite 460
`Dallas, TX 75219
`(214) 521-6400
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`6
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), the undersigned hereby certifies that the
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`above Reply was served on counsel for Patent Owner via e-mail, as authorized by
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`Patent Owner, at the following e-mail addresses:
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`Thomas Dunham tomd@ruyakcherian.com
`Elizabeth O’Brien elizabetho@ruyakcherian.com
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`The above Reply was also served via e-mail on June 20, 2022 on Petitioners’
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`counsel in pending The Data Company Technologies Inc. v. Bright Data Ltd.,
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`IPR2022-00138:
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`Michael Rader MRader-PTAB@wolfgreenfield.com
`Adam Wichman AWichman-PTAB@wolfgreenfield.com
`Gregory Nieberg GNieberg-PTAB@wolfgreenfield.com
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`CHARHON CALLAHAN ROBSON &
`GARZA, PLLC
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`/George “Jorde” Scott/
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`George “Jorde” Scott (Reg. No. 62,859)
`(Lead Attorney for Petitioner)
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`Dated: June 20, 2022
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`7
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