UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`NETNUT LTD.,
`Petitioner,
`
`v.
`
`BRIGHT DATA LTD.,
`Patent Owner.
`
`IPR2021-01493
`Patent 10,484,510 B2
`
`
`
`Before THOMAS L. GIANNETTI, SHEILA F. McSHANE, and
`RUSSELL E. CASS, Administrative Patent Judges.
`
`McSHANE, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`Code200, UAB, et al. v. Bright Data Ltd.
`IPR2022-00861, EX. 2034
`1 of 43
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`NETNUT LTD.,
`Petitioner,
`
`v.
`
`BRIGHT DATA LTD.,
`Patent Owner.
`
`IPR2021-01493
`Patent 10,484,510 B2
`
`
`
`Before THOMAS L. GIANNETTI, SHEILA F. McSHANE, and
`RUSSELL E. CASS, Administrative Patent Judges.
`
`McSHANE, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`Code200, UAB, et al. v. Bright Data Ltd.
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`I. INTRODUCTION
`NetNut Ltd. (“Petitioner”) filed a Petition (Paper 2, “Pet.”) requesting
`inter partes review of claims 1, 2, 6–11, 13, and 15–24 (the “challenged
`claims”) of U.S. Patent No. 10,484,510 B2 (Ex. 1001, “the ’510 patent”).
`
`Patent Owner, Bright Data Ltd., filed a Preliminary Response (Paper 8,
`
`“Prelim. Resp.”). With authorization, Petitioner filed a Reply (Paper 9, “Pet.
`
`Reply”), and Patent Owner filed a Sur-reply (Paper 10, “PO Sur-reply”).
`
`The Board has authority to determine whether to institute an inter
`
`partes review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C.
`
`§ 314(a), we may not authorize an inter partes review unless the information
`
`in the petition and the preliminary response “shows that there is a reasonable
`
`likelihood that the petitioner would prevail with respect to at least 1 of the
`
`claims challenged in the petition.”
`
`For the reasons stated below, we determine that Petitioner has
`
`established a reasonable likelihood that it would prevail with respect to at
`
`least one claim. We therefore institute inter partes review as to all of the
`
`challenged claims of the ’510 patent and all of the asserted grounds of
`
`unpatentability in the Petition.
`
`II. BACKGROUND
`
`
`
`A. Related Matters
`The parties identify four district court proceedings involving the ’510
`
`patent and a related patent (U.S. Patent No. 10,257,319 (“the ’319 patent”)):
`
`Bright Data Ltd. v. NetNut Ltd., No. 2:21-cv-225 (E.D. Tex.)
`
`(pending);
`
`Luminati Networks Ltd. v. Teso LT, UAB, et al., No. 2:19-cv-
`
`395 (E.D. Tex.) (pending);
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`Luminati Networks Ltd. v. BI Science (2009) Ltd., No. 2:19-cv-
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`397 (E.D. Tex.) (dismissed, but pending Rule 60 motion); and
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`Luminati Networks Ltd. v. Tefincom S.A., No. 2:19-cv-414
`
`(E.D. Tex.) (pending).
`
`Pet. 2–3; Paper 4, 1–2.
`
`The ’510 patent was previously before the Board in IPR2020-01358,
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`where institution was denied. Pet. 4; Paper 4, 1. The related ’319 patent is
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`involved in IPR2021-01492, and was previously before the Board in
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`IPR2020-01266, where institution was denied. Pet. 5; Paper 4, 1. Petitioner
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`also identifies a number of other Board proceedings involving patents
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`related to the ’510 patent, as well as a number of other district court actions
`
`involving patents related to the ’510 patent, including an action between
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`Patent Owner (then known as Luminati Networks Ltd.) and Petitioner
`
`involving patents other that the ’510 patent and ’319 patent. See Pet. 3–5.
`
`In addition, Patent Owner identifies ex parte reexaminations ordered
`
`for the ’319 and ’510 patents, respectively, Control No. 90/014,875 and
`
`Control No. 90/014,876. Prelim. Resp. 16.
`
`
`
`B. The ’510 Patent
`The ’510 patent is titled “System Providing Faster And More Efficient
`
`Data Communication” and issued on November 19, 2019 from an
`
`application filed on February 17, 2019. Ex. 1001, codes (22), (45), (54).
`
`The patent is subject to a terminal disclaimer. Id. at code (*). The
`
`application for the ’866 patent claims priority to several applications,
`
`including U.S. Provisional Application No. 61/249,624, filed October 8,
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`2009. Id. at code (60).
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`The ’510 patent is directed to addressing the “need for a new method
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`of data transfer that is fast for the consumer, cheap for the content distributor
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`and does not require infrastructure investment for ISPs.” Ex. 1001, 1:57–59.
`
`The ‘’510 patent states that other “attempts at making the Internet faster for
`
`the consumer and cheaper for the broadcaster,” such as proxy servers and
`
`peer-to-peer file sharing, have various shortcomings. Id. at 1:61–3:6. The
`
`’510 patent provides a system and method “for faster and more efficient data
`
`communication within a communication network,” such as in the network
`
`illustrated in Figure 3, reproduced below. Id. at 3:16–18, 4:5–7.
`
`
`Figure 3 is a schematic diagram depicting communication network 100
`
`including a number of communication devices. Ex. 1001, 4:56–48. Client
`
`102 is capable of communicating with peers 112, 114, and 116, as well as
`
`with one or more agents 122. Id. at 4:58–60. Web server 152 may be “a
`
`typical HTTP server, such as those being used to deliver content on any of
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`the many such servers on the Internet.” Id. at 4:65–5:2. Acceleration server
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`162 includes an acceleration server storage device 164 with an acceleration
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`server database, which “stores Internet Protocol (IP) addresses of
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`communication devices within the communication network 100 having
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`acceleration software stored therein.” Id. at 5:14–17.
`
`
`
`In operation, a client may request a resource on the network, for
`
`example, through the use of an Internet browser. Ex. 1001, 12:62–13:3. If
`
`server 152 is the target of the request, the client sends the IP address of
`
`server 152 to acceleration server 162. Id. at 13:8–15. Acceleration server
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`162 then prepares a list of agents that can handle the request, which includes
`
`communication devices “that are currently online, and whose IP address is
`
`numerically close to the IP of the destination Web server 152.” Id. at
`
`13:19–29. The client then sends the original request to the agents in the list
`
`to find out which “is best suited to be the one agent that will assist with this
`
`request.” Id. at 13:31–36. The connection established between the agent
`
`and client may be a Transmission Control Protocol [TCP] connection. Id. at
`
`17:61–64.
`
`Each agent responds to the client with information as to “whether the
`
`agent has seen a previous request for this resource that has been fulfilled,”
`
`and “which can help the client to download the request information from
`
`peers in the network.” Ex. 1001, 13:51–57. The client selects an agent
`
`based on a number of factors, and the selected agent determines whether
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`data stored in its memory or the memory of the peers “still mirrors the
`
`information that would have been received from the server itself for this
`
`request.” Id. at 13:62–14:1, 14:35–38. If the selected agent does not have
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`the necessary information to service a request, it may “load the information
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`directly from the server in order to be able to provide an answer to the
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`requesting client.” Id. at 14:62–67.
`
`
`
`
`
`C. Illustrative Claim
`The ’510 patent has 24 claims. Claim 1, the only independent claim
`
`in the ’510 patent, is illustrative of the claimed subject matter and is
`
`reproduced below, with bracketed designations added to the limitations for
`
`reference purposes.
`
`1. [pre] A method for use with a web server that responds to
`Hypertext Transfer Protocol (HTTP) requests and stores a first content
`identified by a first content identifier, the method by a first client
`device comprising:
`[a] establishing a Transmission Control Protocol (TCP)
`connection with a second server;
`[b] sending, to the web server over an Internet, the first content
`identifier;
`[c] receiving, the first content from the web server over the
`Internet in response to the sending of the first content identifier;
`and
`[d] sending the received first content, to the second server over
`the established TCP connection, in response to the receiving of
`the first content identifier.
`Ex. 1001, 19:18–31.
`
` D. Asserted Grounds of Unpatentability
`Petitioner challenges the patentability of claims of the ’510 patent on
`
`the following grounds:
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`Claims Challenged|35 U.S.C. §! Reference(s)
`
`18-24
`
`1, 2, 6-11,13, 15, 16,
`
`18-24
`
`103(a)
`
`Crowds, RFC 2616¢
`
`
`
`24
`1, 6, 8-11, 13, 15-20,
`22-24
`1, 6-8, 13, 15, 16,
`12
`oe113,19. 16.
`
`103(a)
`
`1020
`103(a)
`
`Border, RFC 2616
`6
`
`MorphMix, RFC 2616
`
`Pet. 9.
`
`‘ The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 287-88 (2011), amended 35 U.S.C. §§ 102 and 103, effective
`March 16, 2013. Because the 510 patent claimspriority to a provisional
`application that wasfiled before this date, with Petitioner not contesting that
`priority, the pre-AIA versions of §§ 102 and 103 apply. See Ex. 1001, code
`(60); Pet. 17.
`* The Petition includesassertions for claim 13 under the Crowdsanticipation
`ground. Pet. 33. Accordingly, we includethis claim in the summary table,
`although notincludedin the Petition’s summary table. Jd. at 9.
`> Michael K. Reiter, Crowds: Anonymityfor Web Transactions, ACM
`Transactions on Information and System Security, Vol. 1, No. 1, November
`1998, at 66-92 (Ex. 1006).
`4 Hypertext Transfer Protocol—HTTP/1.1, Network Working Group, RFC
`2616, The Internet Society, 1999 (Ex. 1013).
`> U.S. Patent No. 6,795,848, issued September 21, 2004 (Ex. 1012).
`° Marc Rennhard, MorphMix—APeer-to-Peer-based System for
`AnonymousInternet Access (2004) (Ph.D. dissertation, Swiss Federal
`Institute of Technology) (Ex. 1008).
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`III. DISCRETIONARY DENIAL
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`
`
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`A. Fintiv
`Patent Owner requests that we exercise our discretion under 35 U.S.C.
`
`§ 314(a) to deny institution in view of the parallel district court proceedings,
`
`Bright Data Ltd. v. NetNut Ltd., No. 2:21-cv-225 (E.D. Tex.) (“the district
`
`court litigation”). Prelim. Resp. 16–40; PO Sur-reply 1–5.
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`Under Section 314(a), the Director has discretion to deny institution.
`
`See 35 U.S.C. § 314(a) (stating “[t]he Director may not authorize an inter
`
`partes review to be instituted unless the Director determines that the
`
`information presented in the petition . . . shows that there is a reasonable
`
`likelihood that the petitioner would prevail with respect to at least 1 of the
`
`claims challenged in the petition”) (emphasis added); 37 C.F.R. § 42.108(a)
`
`(stating “the Board will authorize the review to proceed”); cf. Cuozzo Speed
`
`Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016) (“[T]he agency’s decision
`
`to deny a petition is a matter committed to the Patent Office’s discretion.”);
`
`Harmonic Inc. v. Avid Tech, Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016)
`
`(“[T]he PTO is permitted, but never compelled, to institute an IPR
`
`proceeding.”).
`
`
`
`The Board’s precedential decision in Apple Inc. v. Fintiv, Inc.,
`
`IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”)
`
`sets forth six factors that we consider as part of this balanced assessment
`
`when determining whether to use our discretion to deny institution:
`
`1. whether the court granted a stay or evidence exists that one
`may be granted if a proceeding is instituted;
`2. proximity of the court’s trial date to the Board's projected
`statutory deadline for a final written decision;
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`3. investment in the parallel proceeding by the court and the
`parties;
`4. overlap between issues raised in the petition and in the
`parallel proceeding;
`5. whether the petitioner and the defendant in the parallel
`proceeding are the same party; and
`6. other circumstances that impact the Board’s exercise of
`discretion, including the merits.
`Fintiv at 6. Recognizing that “there is some overlap among these factors”
`
`and that “[s]ome facts may be relevant to more than one factor,” the Board
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`“takes a holistic view of whether efficiency and integrity of the system are
`
`best served by denying or instituting review.” Id. We now apply these six
`
`factors to the facts and circumstances present here.
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`
`
`
`
`
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`1. Factor 1—Stay of Related Litigation Proceeding
`
`Under the first Fintiv factor, we consider “whether the court granted a
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`stay or evidence exists that one may be granted if a proceeding is instituted.”
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`Fintiv at 6. There has been no stay request made in the district court
`
`litigation. Prelim. Resp. 18. Patent Owner contends that this factor weighs
`
`in favor of denial because if Petitioner were to move for a stay, it would be
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`denied in view of Judge Gilstrap’s order where he stated “this Court has a
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`consistent practice of denying motions to stay when the PTAB has yet to
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`institute post-grant proceedings.” Id. (citing Ex. 2008, 2). Patent Owner
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`further contends that, even if the Board grants institution on or about March
`
`27, 2022, it is unlikely that Judge Gilstrap will grant a stay in view of the
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`advanced stage of the case at that time. Id. at 18–19.
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`
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`Petitioner argues that it is not known if the district court would grant a
`
`request for a stay, so this factor should be considered to be neutral. Pet. 10.
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`Petitioner asserts that this district court “has demonstrated a willingness to
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`stay proceedings where an IPR has actually been instituted.” Pet. Reply 1
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`(citing Uniloc USA, Inc. v. Ringcentral, Inc., No. 17-cv-0354 (JRG) (Feb.
`
`12, 2018) (“Uniloc”)). Petitioner also contends that, contrary to Patent
`
`Owner’s assertions, the district court litigation is in its early stages. Id.
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`(citing Ex. 2003).
`
`
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`In its Sur-reply, Patent Owner asserts that in Uniloc the district court
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`had previously granted an unopposed motion to stay, and the Board
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`instituted review of all asserted claims and no claims terms had been
`
`construed. PO Sur-reply 1. Patent Owner distinguishes Uniloc from the
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`circumstances before us because here the Board will not resolve every
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`asserted claim and the district court has already construed the claim terms.
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`Id.
`
`
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`Although we decline to speculate whether the district court would
`
`grant a stay in the parallel litigation pending this proceeding, we note that
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`we do not find that the district court litigation is at an advanced stage, as
`
`discussed further below. In any event, “[a] judge determines whether to
`
`grant a stay based on the facts of each specific case as presented in the briefs
`
`by the parties.” See Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 15 at
`
`12 (PTAB May 13, 2020) (informative) (“Fintiv II”). “We decline to infer,
`
`based on actions taken in different cases with different facts, how the
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`[d]istrict [c]ourt would rule should a stay be requested by the parties in the
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`parallel case here.” Id. Accordingly, we determine that this factor is neutral.
`
`
`
`
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`
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`2. Factor 2—Proximity of Court’s Trial Date
`
`Under the second Fintiv factor, we consider the “proximity of the
`
`court’s trial date to the Board’s projected statutory deadline for a final
`
`written decision.” Fintiv at 6. The date set for jury selection in the district
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`court litigation is September 12, 2022. Ex. 2003, 1. The estimated date of
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`the Board’s final written decision, if trial is instituted, is March 27, 2022.
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`See Prelim. Resp. 20. Accordingly, the jury selection in the district court
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`litigation would occur approximately six months before the final written
`
`decision would issue.
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`
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`Patent Owner asserts that Petitioner know or should have known of
`
`the Eastern District of Texas’ usual timeframe from the outset of the lawsuit.
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`Prelim. Resp. 20. Patent Owner argues that this Petition should be denied in
`
`view of the trial occurring prior to the issuance of any final written decision,
`
`as the timing is similar to that of Code200/Teso petition (IPR2020-01266),
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`where inter partes review was denied. Id. at 20–21. Patent Owner further
`
`contends that the Board has declined to speculate about whether there may
`
`be further delays in a district court schedule. Id. at 22 (citing Canon Inc. v.
`
`Optimum Imaging Technologies LLC, IPR2020-01321, Paper 10 at 6 (PTAB
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`March 1, 2021)).
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`
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`Petitioner asserts that trial dates for this Patent Owner have previously
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`slipped. Pet. Reply 2 (citing Ex. 1101). Petitioner also contends that Patent
`
`Owner has already sought two extensions in the related court proceeding.
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`Id. (citing Ex. 1102). Petitioner argues that “this factor does not favor
`
`discretionary denial nearly as strongly as Patent Owner argues.” Id.
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`
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`Patent Owner argues that Petitioner’s assertions about schedule
`
`extensions is misleading because the requested extensions were made to
`
`address mediation/expert coordination, however, “[n]either of these
`
`requested extensions suggests Patent Owner intends to delay the 9/12/2022
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`trial date in the NetNut Litigation.” PO Sur-reply 2.
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`Here, if trial was conducted as scheduled, it would occur
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`approximately six months prior to the date of the final written decision
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`issuing in this case. We note, however, that a trial date for this Patent
`
`Owner slipped by six months in a case in the Eastern District of Texas (see
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`Ex. 1101, docket entries 65, 509), and, further, that Patent Owner sought
`
`extensions in a related court proceeding (Ex. 1102). The presently-
`
`scheduled trial date is six months off. Factoring in the potential for changed
`
`circumstances, we determine that this factor weighs only slightly in favor of
`
`exercising our discretion to deny institution.
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`
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`
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`3. Factor 3—Investment in the Parallel Proceeding
`
`Under the third Fintiv factor, we consider the “investment in the
`
`parallel proceeding by the court and the parties.” Fintiv, 6. Petitioner
`
`asserts that there has been only limited work completed in the district court
`
`litigation consisting of the exchange of infringement and invalidity
`
`contentions and claim constructions. Pet. Reply 2. Petitioner contends that
`
`the majority of fact discovery work remains ahead, as well as “expert
`
`discovery, summary judgment proceedings, pretrial proceedings, and a jury
`
`trial.” Id. Petitioner argues that it diligently acted, filing the petition in this
`
`case ten months before the deadline. Id. at 3. Petitioner contends that the
`
`facts here “strongly weighs against exercising discretion to deny institution.”
`
`Id.
`
`
`
`Patent Owner asserts that “[b]y the 3/27/2023 deadline for a final
`
`written decision in this proceeding, the parties will have completed trial in
`
`the NetNut Litigation.” Prelim. Resp. 21. Patent Owner refers to the
`
`scheduled dates in the district court litigation order, arguing that none of
`
`these dates are likely to change. Id. at 21–22. Patent Owner also contends
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`that Petitioner fails to sufficiently address the delay in filing the petition
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`because Petitioner “started its invalidity campaign at the USPTO” against
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`other patents of Patent Owner in December 2020, and fails to explain why
`
`the petition against the ’510 patent was not filed until September 2021. Id.
`
`at 23–25. Patent Owner asserts that Petitioner had knowledge of the main
`
`prior art, Crowds and MorphMix, from related litigations and Board
`
`proceedings, and Petitioner could have earlier filed a petition. Id. at 25–27.
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`Further, Patent Owner argues that Petitioner received the benefit of the
`
`preliminary response in IPR2020-01266, that addressed technical
`
`deficiencies in the petition prior to filing this Petition. Id. at 27.
`
`
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`We determine that the third Fintiv factor favors not exercising our
`
`discretion to deny institution. In the district court litigation, a claim
`
`construction hearing is set for April 6, 2022, fact discovery is not set to close
`
`until April 13, 2022, expert discovery is not set to close until May 31, 2022,
`
`dispositive motions are due on June 6, 2022, and a pretrial order is due by
`
`August 1, 2022. Ex. 2003. Although Patent Owner argues that substantial
`
`progress will have been made by the time of a final written decision in
`
`March 2023, there is still a substantial amount of work to be completed by
`
`both the parties and the district court at this time. Further, although Patent
`
`Owner argues that Petitioner could have filed a petition earlier, we agree that
`
`Petitioner has acted diligently in filing the Petition approximately three
`
`months after service of the complaint in the related litigation.
`
`
`
`Accordingly, we determine that this factor weighs strongly against the
`
`exercise of our discretion to deny institution.
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`4. Factor 4—Overlap With Issues Raised in Parallel
`Proceeding
`
`
`
`Under the fourth Fintiv factor, we consider the “overlap between
`
`issues raised in the petition and in the parallel proceeding.” Fintiv, 6. Patent
`
`Owner contends this factor favors denial of institution because there is
`
`substantial overlap of claims and references in the Petition and in the district
`
`court litigation. Prelim. Resp. 28. Patent Owner argues that the challenged
`
`claims here are the same as those in the district court litigation, except for
`
`dependent claims 6, 7, 17, 21, and 24. Id. Patent Owner also asserts that the
`
`same primary references, Crowds, Border, and MorphMix, are asserted in
`
`both this proceeding and the district court litigation. Id. at 28. As such,
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`Patent Owner argues that institution will lead to duplicative efforts. Id.
`
`
`
`Petitioner argues that, as Patent Owner notes, there are five dependent
`
`claims in this proceeding which are not at issue in the district court
`
`litigation. Pet. Reply 3. Petitioner also asserts that there are additional
`
`grounds of invalidity, as well as unenforceability for inequitable conduct, at
`
`issue in the district court litigation. Id. (citing Ex. 1104). Petitioner
`
`contends that “[t]here is overlap, but the overlap is not nearly complete” in
`
`the two proceedings. Id. at 4.
`
`
`
`Given the partial overlap of issues in the respective proceedings, we
`
`determine that this factor weighs at least moderately in favor of exercising
`
`discretionary denial. Id.
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`
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`
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`5. Factor 5—Commonality of Parties in Parallel Proceedings
`
`Under the fifth Fintiv factor, we consider “whether the petitioner and
`
`the defendant in the parallel proceeding are the same party.” Fintiv, 6.
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`Here, Petitioner is the defendant in the district court proceeding. Prelim.
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`Resp. 29; Pet. Reply 4. We determine that this factor favors discretionary
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`denial.
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`6. Factor 6—Other Circumstances
`
`Under the sixth Fintiv factor, we consider “other circumstances that
`
`impact the Board’s exercise of discretion, including the merits.” Fintiv, 6.
`
`Petitioner argues that the Petition has strong merits in view of the district
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`court’s broad construction of “client device.” Pet. 11. Petitioner asserts that
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`Patent Owner’s arguments on claim construction have been rejected by the
`
`district court and the Board. Pet. Reply 4–5.
`
`
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`Patent Owner contends that the merits are weak and do not outweigh
`
`the other Fintiv factors. Prelim Resp. 32. More specifically, Patent Owner
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`asserts that Petitioner’s expert employs hindsight analysis. Id at 32–35.
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`Patent Owner contends that, contrary to Petitioner’s assertions, under the
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`district court’s construction, a “second server” was construed as a server,
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`and it differs from a “client device.” Id. at 35–37. Patent Owner also
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`submits that it is not an efficient use of the Board’s resources to analyze
`
`alleged invalidity of claims based on the same primary references as other
`
`proceedings, for example, in view of the recent Teso jury verdict. Id. at 37.
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`Additionally, Patent Owner argues that the Patent Office is already
`
`conducting ex parte reexamination of the ’510 patent, so there is no need to
`
`expend additional resources. Id. at 38.
`
`
`
`As discussed below, we have reviewed Petitioner’s arguments against
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`patentability and Patent Owner’s preliminary responses, and based on the
`
`record before us, we disagree with Patent Owner on issues of claim
`
`constructions, as well as the assertion that the merits of the Petition are
`
`weak. Rather, at this stage of the proceeding, we find that Petitioner has
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`shown at least a reasonable likelihood of success on the merits. This is
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`based on the determination that the evidence on this record favors
`
`Petitioner’s proposed claim construction based on the district court’s broad
`
`interpretation of some claim terms. See infra Section IV.B. Moreover,
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`because we are persuaded that the disclosures of three separate references
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`anticipate claim 1, the only independent claim of the ’510 patent, we
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`determine that Petitioner’s showing on the teaching of the prior art is strong
`
`so as to weigh against exercising discretion to deny under factor 6. See
`
`Fintiv
`
`merits of a ground raised in the petition seem particularly strong.”).
`
`
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`Accordingly, we determine that this factor weighs substantially in
`
`favor of not exercising discretionary denial.
`
`
`
`
`
`
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`7. Conclusion
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`On this record, after weighing all of the factors and taking a holistic
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`view, we determine that the facts in this case weighing against exercising
`
`discretion outweigh the facts that favor exercising discretion. Thus, based
`
`on our assessment of the Fintiv factors, we decline to exercise our discretion
`
`under 35 U.S.C. § 314(a) to deny inter partes review.
`
`
`
`B. General Plastic
`In General Plastic Indus. Co. v. Canon Kabushiki Kaisha, IPR2016-
`
`01357, Paper 19 (PTAB Sept. 6, 2017) (precedential) (“General Plastic”),
`
`the Board set out a list of seven factors to consider when asked to exercise
`
`its discretion to deny review of follow-on petitions. Here, Patent Owner
`
`states that it relies on Fintiv, which it believes is dispositive, and does not
`
`rely on General Plastic. Prelim. Resp. 40, n.28. Nevertheless, Patent
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`Owner addresses certain of the General Plastic factors. For factor 1, Patent
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`Owner asserts that as to Code200 and Teso, who were prior petitioners in
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`IPR2021-01358, Patent Owner “is not presently aware of a significant
`
`relationship between NetNut and either Code200 or Teso.” Id. at 40. But
`
`Patent Owner disagrees that this factor strongly favors institution. Id. at 40–
`
`41. For General Plastic factors 2–5, Patent Owner relies on the arguments
`
`presented for factor 3 of Fintiv, and for General Plastic factor 6, Patent
`
`Owner relies on its arguments presented for Fintiv factor 6. Id. at 41.
`
`On this record, we determine that, based on the facts of this case, the
`
`General Plastic factors weighing against exercising discretion outweigh the
`
`facts that favor exercising discretion. For General Plastic factors 2–6, we
`
`do not find Patent Owner’s arguments persuasive for the reasons discussed
`
`above for Fintiv factors 3 and 6. Additionally, Petitioner was not a
`
`petitioner in previous proceedings, nor is there any evidence in the record
`
`that Petitioner has a significant relationship with petitioners in an earlier
`
`case, as acknowledged by Patent Owner. See Valve Corp. v. Elec. Scripting
`
`Prods., Inc., IPR2019–00062, Paper 11 at 9–10 (PTAB April 2, 2019)
`
`(precedential) (existence of a “significant relationship” between the different
`
`petitioners would weigh in favor of discretionary denial); Prelim. Resp. 40.
`
`Accordingly, factor 1 of General Plastic also weighs against the exercise of
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`discretionary denial. Thus, we decline to exercise our discretion under 35
`
`U.S.C. § 314(a) to deny inter partes review.
`
`IV. ANALYSIS
`A. Level of Ordinary Skill in the Art
`
`
`
` According to Petitioner, a person of ordinary skill in the art “would have
`
`at least a bachelor’s degree in Computer Science or related field (or
`
`equivalent experience), and two or more years’ experience working with and
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`programming networked computer systems as of the Priority Date.” Pet. 18.
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`Petitioner further asserts that a person of ordinary skill would be familiar
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`with “the underlying principles of Web, Internet, or network
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`communication, data transfer, and content sharing across networks,
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`including the HTTP and TCP/IP protocols.” Id. (citing Ex. 1005 ¶¶ 25–27).
`
`
`
`Patent Owner submits that a person of ordinary skill in the art “had a
`
`Master’s Degree or higher in the field of Electrical Engineering, Computer
`
`Engineering, or Computer Science or as of that time had a Bachelor’s
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`Degree in the same fields and two or more years of experience in Internet
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`Communications.” Prelim. Resp. 46 (citing Ex. 2006 ¶ 19). But Patent
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`Owner acknowledges that the parties’ respective proposed qualifications
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`“are not materially different, at least in terms of affecting an institution
`
`decision in this IPR.” Id.
`
`
`
`For the purposes of this Decision, we adopt the assessment offered by
`
`Petitioner as it is consistent with the ’510 patent and the prior art before us. 7
`
`See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We note
`
`that, at this juncture, we agree with Patent Owner that the proposed
`
`qualifications are not materially different and our assessment of the merits of
`
`the Petition, as discussed below, would remain the same under either parties’
`
`proposed qualifications.
`
`
`
`B. Claim Construction
`
`In this inter partes review, claims are construed using the same claim
`
`construction standard that would be used to construe the claims in a civil
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`7 The parties are encouraged to address the impact, if any, of differences in
`the level of qualifications on the anticipation and obviousness analyses in
`any subsequent briefing.
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`Code200, UAB, et al. v. Bright Data Ltd.
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`action under 35 U.S.C. § 282(b). 37 C.F.R. § 42.100(b) (2021). Under the
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`principles set forth by our reviewing court, the “words of a claim ‘are
`
`generally given their ordinary and customary meaning,’” as would be
`
`understood by a person of ordinary skill in the art in question at the time of
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`the invention. Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005)
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`(en banc) (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582
`
`(Fed. Cir. 1996)). “In determining the meaning of the disputed claim
`
`limitation, we look principally to the intrinsic evidence of record, examining
`
`the claim language itself, the written description, and the prosecution
`
`history, if in evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek,
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`Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at
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`1312–17).
`
`Petitioner asserts that the district court’s constructions in Luminati
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`Networks Ltd. v. Teso LT, UAB, et al., No. 2:19-cv-395 (E.D. Tex.) should
`
`apply in this case. Pet. 18. In particular, Petitioner points to two claim
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`construction orders in that case—an original order (Ex. 1017) and a
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`supplemental order (Ex. 1020)—in which the court construed the preamble
`
`of claim 1 to be limiting, and construed all other terms to have their plain
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`and ordinary meanings, except for “client device” and “second server.” Pet.
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`18–19. The district court construed “client device” as “communication
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`device that is operating in the role of a client.” Ex. 1017, 12. The District
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`Court construed “second server” as “server that is not the client device” (id.
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`at 14), and later agreed with the defendants’ clarification as to the scope of
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`this construction that a “second server” is “a device that is operating in the
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`role of a server and that is not the requesting client device or the first web
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`server” (Ex. 1020, 8, 11).
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`More specifically, Petitioner refers to the district court’s supplemental
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`order which indicates that “a component can be configured to operate in
`
`
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