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
`
`_________________________
`
`CORRECTED PATENT OWNER PRELIMINARY RESPONSE1
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`1 As authorized by the Board via email on June 21, 2022.
`
`Code200, UAB, et al. v. Bright Data Ltd.
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`IPR2022-00861 of Patent No. 10,257,319
`
`Table of Contents
`
`INTRODUCTION ...............................................................................................1
`I.
`II. BACKGROUND TO THE INSTANT PROCEEDINGS ...................................2
`III. UPDATE TO IPRs FILED BY PETITIONERS..............................................2
`IV. PETITIONERS HAVE PRESENTED FOUR CHALLENGES AGAINST
`
`REFERENCES...........................................................................................................4
`A. THE GENERAL PLASTIC FACTORS ............................................................4
`1. PETITIONERS MISPLACE THEIR RELIANCE ON THE INTEL IPR
`(IPR2022-00366) .................................................................................................5
`a.
`In the Intel IPR, the Board granted institution and joinder to the OpenSky
`IPR (IPR2021-1064).........................................................................................5
`b. The OpenSky IPR is being reviewed by Director Vidal because of policy
`issues related to harassment of patent owners..................................................6
`c. Comparison of the Intel/OpenSky IPRs to the instant proceedings...........7
`i. Lack of stipulation regarding overlapping invalidity arguments............7
`ii.
`Invalidity arguments presented to the jury at trial ..................................9
`iii. Role of an understudy ...........................................................................12
`iv. Lack of retention of testifying expert....................................................13
`v. Suspicious motives of OpenSky and Major Data .................................14
`B. THE FINTIV FACTORS................................................................................15
`1. FINTIV FACTOR 1 IS NEUTRAL............................................................16
`2. FINTIV FACTOR 2 FAVORS DENIAL ...................................................17
`3. FINTIV FACTOR 3 FAVORS DENIAL ...................................................18
`4. FINTIV FACTOR 4 FAVORS DENIAL ...................................................18
`5. FINTIV FACTOR 5 FAVORS DENIAL ...................................................20
`6. FINTIV FACTOR 6 FAVORS DENIAL ...................................................20
`7. BALANCING THE FINTIV FACTORS ...................................................24
`
`ii
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`IPR2022-00861 of Patent No. 10,257,319
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`V. INTRODUCTION TO THE MERITS ..............................................................25
`VI. OVERVIEW OF THE SPECIFICATION .....................................................29
`A. BACKGROUND ............................................................................................30
`B. DETAILED DESCRIPTION .........................................................................33
`VII.
`INTRODUCTION TO CLAIM CONSTRUCTION......................................35
`A.
`.......................35
`B.
`
`....................................................36
`C. A CLIENT DEVICE IS A CONSUMER COMPUTER, OR
`ALTERNATIVELY, A CONSUMER COMMUNICATION DEVICE .............37
`D. A CLIENT DEVICE IS NOT A SERVER ....................................................43
`1. Figure 1 (prior art) versus Figure 3 (exemplary embodiment) ...................46
`2. Prosecution History of Parent Patent No. 10,069,936 ................................50
`3.
`.......................................................53
`4.
`.......................................................55
`E. ROLE-BASED CONSTRUCTIONS ARE NOT APPROPRIATE...............55
`F. A SERVER IS NOT A CLIENT DEVICE ....................................................61
`VIII. CROWDS DOES NOT TEACH THE CLAIMED METHODS ...............6564
`IX. BORDER DOES NOT TEACH THE CLAIMED METHODS ....................66
`X. MORPHMIX DOES NOT TEACH THE CLAIMED METHODS..............6968
`XI. CONCLUSION ..............................................................................................70
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`iii
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`IPR2022-00861 ofPatent No. 10,257,319
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`PATENT OWNER’S LIST OF EXHIBITS
`
`EX.2904203|Institution Decision regarding Patent No. 10,257,319, NetNut
`Ltd. v. Bright Data Ltd. , 1PR2021-01492, Paper 12 (PTAB March
`21, 2022)
`
`Institution Decision regarding Patent No. 10,484,510, NetNut
`Ltd. v. Bright Data Ltd., 1PR2021-01493, Paper 11 (PTAB March
`21, 2022)
`
`Claim Construction Order, Bright Data Ltd. v. NetNut Ltd, No.
`2:21-cv-225, Dkt. 146 (E.D. Tex. May 10, 2022)
`
`Definition “Consumer”, Cambridge English Dictionary; accessed
`at
`https://dictionary.cambridge.org/us/dictionary/english/consumer
`on June 10, 2022
`
`redacted version of Dkt. 277
`
`EX.2905203|Definition “Consumer”, Collins English Dictionary; accessed at
`7
`https://www.collinsdictionary.com/us/dictionary/english/consum
`er on June 10, 2022
`
`EX.2906203|Prosecution History of Patent No. 10,069,936
`
`8 E
`
`X.2907203|Network Fundamentals Study Guide, published February 17,
`9
`2015; accessed at
`https://www.webopedia.com/reference/network-fundamentals-
`studyguide/#topologies on June 14, 2022
`
`EX.2008204|Patent No. 10,069,936
`
`0 E
`
`X.2909204|Alice Order, Bright Data Ltd. v. Teso LT, UAB, et al., No. 2:19-
`]
`cv-395, Dkt. 303 (E.D. Tex. Feb. 12, 2021)
`
`EX.2010204|Motion for Summary Judgment, Bright Data Ltd. v. Teso LT,
`2
`UAB,et al., No. 2:19-cv-395, Dkt. 282 (E.D. Tex. Feb. 8, 2021)
`
`1V
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`EX.2014204|Order, Bright Data Ltd. v. Teso LT, UAB,et al., No. 2:19-cv-395,
`3
`Dkt. 476 (E.D. Tex. Sept. 9, 2021)
`
`EX.2042204|Jury Verdict, Bright Data Ltd. v. Teso LT, UAB,et al., No. 2:19-
`4
`cv-395, Dkt. 516 (E.D. Tex. Nov. 5, 2021)
`
`EX.2043204|Website, Company information regarding “Major Data, UAB”;
`5
`accessedat https://rekvizitai.vz.lt/en/company/major_data/ on
`June 16, 2022
`
`EX2014204|Website, “The Story of Tesonet” published on October 30, 2017;
`accessedat https://tesonet.com/culture/the-story-of-tesonet/ on
`June 16, 2022
`
`Nov.4, 2021)
`
`Select Portions of Trial Transcript, Day 3 in the case of Bright
`Data Ltd. v. Teso LT, UAB,et al., No. 2:19-cv-395 (E.D. Tex.
`Nov. 3, 2021)
`
`Website, “Who Owns NordVPN? Can You Really Trust This
`VPN?”; accessedat https://www.technadu.com/who-owns-
`nordvpn/295187/ on June 16, 2022
`
`Order, Bright Data Ltd. v. Tefincom S.A., No. 2:19-cv-414, Dkt.
`176 (E.D. Tex. Nov. 17, 2021)
`
`Docket Control Order, Bright Data Ltd. v. Tefincom S.A., No.
`2:19-cv-414, Dkt. 31 (E.D. Tex. Feb. 9, 2021)
`
`Select Portions of Trial Transcript, Day 4 in the case of Bright
`Data Ltd. v. Teso LT, UAB,et al., No. 2:19-cv-395 (E.D. Tex.
`
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`EX.2022205|Corrected Declaration of Dr. Tim A. Williams
`
`IPR2022-00861 ofPatent No. 10,257,319
`
`4 E
`
`X.2055
`
`Redline-version of Corrected Declaration of Dr. Tim A. Williams
`
`Response EX.2056
`
`Redline-version of Corrected Patent Owner Preliminary
`
`Vil
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`IPR2022-00861 of Patent No. 10,257,319
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`I.
`
`INTRODUCTION
`
`Patent Owner previously submitted an Opposition (Paper 11) explaining
`
`certain reasons for denying institution of IPR2022-00861 and denying joinder to
`
`IPR2021-01492.
`
`respectfully submits additional reasons for why the Board should exercise its
`
`discretion under 35 U.S.C. § 314 to deny institution of the petition in IPR2022-
`
`00861 based on the General Plastic2 factors and/or the Fintiv3 factors.
`
`Patent Owner additionally, respectfully submits that the Board should deny
`
`institution of the petition based on the merits. Patent Owner respectfully submits
`
`that IPR2021-01492 should never have been instituted in the first place. Patent
`
`Owner provides a detailed claim construction analysis herein with a supporting
`
`expert declaration from Dr. Tim A. Williams (EX.20222054).
`
`
`2 General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357,
`
`Paper 19 (PTAB Sept. 6, 2017).
`
`3 Apple Inc. v. Fintiv Inc., IPR2020-00019, Paper 11 (PTAB March 20, 2020).
`
`1
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`IPR2022-00861 of Patent No. 10,257,319
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`II. BACKGROUND TO THE INSTANT PROCEEDINGS
`
`NetNut
`
`filed IPR2021-01492 and IPR2021-01493 (the
`
`, respectively. The NetNut IPRs were instituted on
`
`and
`
`March 21, 2022. EX.2001 2033 and EX.20022034. Following institution, NetNut
`
`and Patent Owner reached settlement. On May 27, 2022 NetNut was terminated
`
`from the NetNut IPRs.
`
`Following institution in the NetNut IPRs, the instant petitioners
`
`filed copycat petitions and motions to join the NetNut IPRs in
`
`IPR2022-00861 and IPR2022-
`
`Major Data UAB
`
`IPR2022-00915 and IPR2022-
`
`III. UPDATE TO IPRs FILED BY PETITIONERS
`
`Since Patent Owner filed its Opposition (Paper 11) to the joinder motions,
`
`Petitioners have now
`
`in
`
`IPR2022-01109 and IPR2022-01110, seeking joinder to IPR2022-00135 and
`
`IPR2022-00138
`
`.4 These new filings further support Patent
`
`
`4 All grounds in the TDCT IPRs are based on a different primary prior art
`
`reference, U.S. Pub. No. 2008/0228938 to Plamondon.
`
`2
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`Petitioners are establishing a pattern of behavior where
`
`Petitioners are/will be attempting to join any instituted proceeding against any
`
`Bright Data patent without regard to justice. See Paper 11 at 11-12. Patent Owner
`
`respectfully repeats its request for the aid of the Board to discourage continued
`
`harassment of Patent Owner by Petitioners. Id.
`
`Petitioners were likely aware of their intent to file the additional set of IPRs
`
`filed on May 18th and before the conference call was held with the Board on May
`
`24th. For example, IPR2022-00138 was instituted on May 11, 2022 and Petitioners
`
`referenced the TDCT IPRs in its SMFs. See Paper 7 at 5 (SMF No. 14). During the
`
`May 24 conference call, Petitioners asked Patent Owner to waive filing this POPR,
`
`likely knowing they were going to file the new IPRs. However, Petitioners did not
`
`mention these new filings on the call with the Board and Petitioners did not, for
`
`example, rank the
`
`in
`
`their new motions to join the TDCT IPRs.
`
`As of now, Petitioners have filed three IPRs, requested 1 reexamination, and
`
`five challenges by Petitioners
`
`3
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`IPR2022-00861 of Patent No. 10,257,319
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`5 All but one of those five challenges (the new petition in
`
`IPR2022-01109) are based on the exact same prior art references, Crowds, Border,
`
`and MorphMix. See also Paper 11 at 6 (AMF No. 1).
`
`IV.
`
`PETITIONERS HAVE PRESENTED FOUR CHALLENGES
`BASED ON THE EXACT SAME
`
`PRIOR ART REFERENCES
`
`The Board has discretion to deny institution of an IPR. (See 35 U.S.C. §
`
`314(a); 37 C.F.R. § 42.108(a); Harmonic Inc. v. Avid Tech, Inc., 815 F.3d 1356,
`
`1367 (Fed. Cir. 2016); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140
`
`(2016).
`
`A. THE GENERAL PLASTIC FACTORS
`
`(Paper 11,) the instant petition
`
`represents the
`
`fourth bite at the invalidity apple based on the exact
`
`same prior art references. Patent Owner discussed the analysis of the General
`
`Plastic factors comparing the instant petition and the prior petition in IPR2020-
`
`01266 in detail in its Opposition at pages 8-10.
`
`
`5 Also, Petitioners have filed three IPRS, requested 1 reexamination, and conducted
`
`Petitioners against the
`
`4
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`1. PETITIONERS MISPLACE THEIR RELIANCE ON THE
`INTEL IPR (IPR2022-00366)
`
`Based on the new filing by Petitioners in IPR2022-011096, Patent Owner
`
`believes that Petitioners seek to challenge the application of Uniloc7 to the instant
`
`petition, given that the prior petition in IPR2020-01266 was denied based on the
`
`than the merits. See Motion, IPR2022-01109, Paper 7 at
`
`7, note 1 (citing Intel Corp. v. VLSI Tech. LLC, IPR2022-00366, Paper 14 at 7-10
`
`(PTAB June 8, 2022)).
`
`a. In the Intel IPR, the Board granted institution and joinder
`to the OpenSky IPR (IPR2021-1064)
`
`In the Intel IPR, the Board granted institution and joinder to the OpenSky
`
`IPR (IPR2021-01064). The Board explained that:
`
`relies on the same art as in its first two petitions, that the Board did
`not substantively address the merits of the prior Intel petitions, in our
`view, weighs against discretionary denial here. The district-court trial
`that led to the denial of its initial petitions is over and did not resolve
`the
`
`IPR2022-00366, Paper 14 at 9-10. The Board further explained that:
`
`
`6 Petitioners made a similar argument in IPR2022-01110, but did not cite any
`
`supporting caselaw. See Motion, IPR2022-01110, Paper 7 at 7, note 1.
`
`7 Apple Inc. v. Uniloc 2017 LLC, IPR2020-00854, Paper 9 (PTAB Oct. 28, 2020).
`
`5
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`IPR2022-00861 of Patent No. 10,257,319
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`invalidity contentions to the jury at trial and chose not to present the
`grounds raised before the Board[8], instead raising a separate
`invalidity argument (see Ex. 1027[, Jury Verdict9], 5); however, we
`will not second-
`
`IPR2022-00366, Paper 14 at 13 (emphasis added).
`
`b. The OpenSky IPR is being reviewed by Director Vidal
`because of policy issues related to harassment of patent
`owners
`
`The OpenSky IPR was instituted on December 23, 2021. IPR2021-01064,
`
`Paper 17. Following the institution decision in the OpenSky IPR, the patent owner
`
`anuary 6, 2022. IPR2021-01064, Paper 20. The patent owner VLSI
`
`[i]f
`
`f J
`
`the [Institution Decision] is permitted to stand, it will spur a flood of abusive IPR
`
`petitions attacking patent owners who have prevailed at trial.
`
`IPR2021-01064,
`
`Paper 20 at 1. The patent owner VLSI also argued:
`
`damaged, if opportunists are encouraged to harass patent owners and
`transform IPR proceedings into betting games against Article III jury
`verdicts. As recognized by Congress, the Federal Circuit, and the
`
`
`8 In the Intel IPR, the grounds alleged obviousness based on primary references
`
`Shaffer and Chen. IPR2022099366, Paper 14 at 3.
`
`9 The jury verdict form asked if the defendant proved anticipation by the Yonah
`
`Processor. IPR2022-00366, EX.1027 at 5.
`
`6
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`IPR2022-00861 of Patent No. 10,257,319
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`Office, the patent system is best served by rejecting petitions filed for
`
`IPR2021-01064, Paper 20 at 1. The patent owner VLSI further argued:
`
`Because Intel chose not to submit a stipulation foreclosing
`duplicative litigation, it was free to and did raise the same IPR
`grounds from its rejected petitions in the district court. Exs. 2009-
`2012; 2026, 5-7. Yet on the eve of trial, Intel abandoned its validity
`
`IPR2021-01064, Paper 20 at 3 (emphasis added).
`
`On June 7, 2022, Director Katherine Vidal ordered sua sponte director
`
`review of the institution decision, concurrently dismissing the request for rehearing
`
`and POP review. IPR2021-01064, Papers 41 and 42.
`
`c. Comparison of the Intel/OpenSky IPRs to the instant
`proceedings
`
`i. Lack of stipulation regarding overlapping
`invalidity arguments
`
`In the Intel/OpenSky IPRs, the patent owner VLSI had sued the joinder
`
`petitioner Intel for infringement of the challenged patent. Intel filed an earlier
`
`petition which was denied institution based on the Fintiv factors. During that
`
`earlier IPR, Intel did not file a stipulation to minimize the possibility of duplicative
`
`efforts between the IPR and the related litigation. However, the Board noted that
`
`the earlier petition was filed before any precedential or informative decisions
`
`regarding stipulations were decided. IPR2022-00366, Paper 14 at 13.
`
`7
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`IPR2022-00861 of Patent No. 10,257,319
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`In the instant proceedings, Patent Owner sued Petitioners10 for infringement
`
`in December 2019. Petitioners filed an earlier petition
`
`in IPR2020-01266 that was denied institution based on the Fintiv factors, at least
`
`because the trial in the Tex. Litigation was set to occur 7 months before a final
`
`written decision and there was almost complete overlap of issues and parties.
`
`IPR2020-01266, Paper 18 at 12.11
`
`merits outweigh[ed] the other Fintiv
`
`Id. at
`
`11.
`
`During that earlier IPR, Petitioners did not file a stipulation to minimize the
`
`possibility of duplicative efforts between the IPR and the related litigation. See
`
`Sand Revolution12 at 12.
`
`July 14, 2020.
`
`filed on
`
`2020. Both of the earlier petitions were filed after Sand Revolution was entered on
`
`June 16, 2020 and designated informative on July 13, 2020.
`
`
`10 Excluding Code200, UAB and Coretech LT, UAB.
`
`11
`
`Patent. IPR2020-01358, Paper 11 at 11.
`
`12 Sand Revolution II, LLC v. Continental Intermodal Group Trucking LLC,
`
`IPR2019-01393, Paper 24 (PTAB June 16, 2020).
`
`8
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`IPR2022-00861 of Patent No. 10,257,319
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`Here, Petitioner-defendants made the strategic choice to pursue the same
`
`invalidity arguments at trial. Petitioners should not be given another chance to
`
`pursue the same invalidity arguments in this IPR.
`
`Patent Owner additionally notes that the final written decisions in IPR2020-
`
`and IPR2020-
`
`have been after the trial occurred in the Tex. Litigation. Given the quick time to
`
`trial in E.D. Tex., Petitioner-defendants made the strategic decision to pursue
`
`invalidity in district court and, after being unsuccessful, should not get another bite
`
`at the apple in this IPR.
`
`ii.
`
`Invalidity arguments presented to the jury at trial
`
`In the Intel/OpenSky IPRs, the joinder petitioner Intel and the patent owner
`
`VLSI conducted a jury trial involving the challenged patent. The joinder petitioner
`
`Intel did not present the grounds or art raised in the petition to the jury. However,
`
`Intel had litigated the invalidity positions in the petition throughout the case,
`
`including for example, dispositive motions and expert reports. See IPR2021-01064,
`
`overlooks that these petitions raise defenses Intel, after voluminous expert
`
`-resourced defendant facing
`
`enormous infringement liability, Intel was best situated and highly motivated to
`
`9
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`IPR2022-00861 of Patent No. 10,257,319
`
`see also
`
`id. at 10.
`
`In the instant proceedings, Petitioner-defendants and Patent Owner
`
`Petitioner-defendants
`
`did present anticipation by Crowds to the jury. Petitioner-defendants had litigated
`
`the same invalidity positions in the petition throughout the case, including for
`
`example, dispositive motions and expert reports. Indeed, Petitioner-defendants
`
`filed invalidity contentions alleging anticipation/obviousness of claims 1-2, 14-15,
`
`17-18, 21-22, and 24-
`
`20, and 22-
`
`-2, 8-11, 13, 15-16, 18-
`
`Petitioner-defendants had a full and fair opportunity to present these invalidity
`
`positions to the jury.
`
`Petitioner-defendants filed a motion for summary judgment of invalidity of
`
`claims 1-2, 14-15, 17-18, 21-22, and 24-
`
`-2, 8-
`
`11, 13, 15-16, 18-20, and 22-
`
`Crowds. See generally EX.20102042. The motion for summary judgment of
`
`invalidity was rejected by the Court. EX.2011 2043 at 2. As discussed below,
`
`MorphMix is cumulative of Crowds
`
`they both disclose peer-to-peer networks
`
`comprising client devices. Crowds was presented to the jury. As further discussed
`
`10
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`IPR2022-00861 of Patent No. 10,257,319
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`below, Border cannot properly
`
`constructions a server is not a client device.
`
`Petitioner-defendants chose to proceed only on anticipation by Crowds of
`
`at the
`
`trial. The jury agreed with Patent Owner and found that the patents were NOT
`
`invalid. EX.2012 2044 at 5.
`
`During trial, Petitioner-defendants
`
`2042 at 20 and 24) and cannot now make contradictory arguments that resolution
`
`as to certain dependent claims in this IPR is of paramount importance. For
`
`(see, e.g., EX.2010
`
`-transitory computer readable medium containing computer instructions
`
`that, when executed by a computer processor, cause the processor to perform the
`
`met
`
`the same validity issues related to claim 1 also relate to these dependent claims.
`
`Overall, Patent Owner respectfully submits there is not a significant
`
`difference between the claims at issue in this IPR compared to the claims at issue
`
`11
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`IPR2022-00861 of Patent No. 10,257,319
`
`in the Tex. Litigation. 13 Also, Petitioners have not explained any benefit to
`
`resolving the validity of the additionally challenged dependent claims when they
`
`are not being asserted in any litigation. There is a high possibility of duplicative
`
`efforts and conflicting decisions in the instant proceedings.
`
`iii. Role of an understudy
`
`-00366, Paper 14 at
`
`16.
`
`In the instant proceedings, because NetNut has been terminated from the
`
`NetNut IPRs, it is as if Code200 and Major Data had each brought their petitions in
`
`NetNut.
`
`Petitioners have already used their involvement in the Tex. Litigation as a
`
`sword and shield. For example, Petitioners are making claim construction
`
`arguments, threatening appeal, and citing the trial transcript (see e.g., Paper 7 at 2-
`
`
`13 Compared to the Tex. Litigation, this IPR adds dependent claims 12, 19, 23, 28,
`
`the related IPR adds dependent claims 6, 7, 17, 21,
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`12
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`3 (SMF Nos. 3-5)); while at the same time, arguing that the case remains open and
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`stayed (see, e.g., Paper 7 at 6-9). If the Code200 petitioners were to step into the
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`shoes of NetNut, Code200 will absolutely use the litigation history surrounding
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`these patents as a roadmap for curing deficiencies in other proceedings.
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`Moreover, Code200 has not addressed coordination or consolidation of
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`filings with Major Data, and Patent Owner does not have an opportunity to respond
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`to any new arguments raised in the Replies (which are due the same day as this
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`POPR).
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`iv. Lack of retention of testifying expert
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`In the Intel IPR, the patent owner VLSI argued that OpenSky did not retain a
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`thus inadmissible hearsay. See, e.g., IPR2021-01064, Paper 20 at 11.
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`In the instant proceedings, Major Data did retain the testifying expert, Mr.
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`Teruya, but the Code200 petitioners did not. Code200 refiled photocopies of prior
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`See FED.
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`R. EVID. § 801(c).
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`13
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`v.
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`Suspicious motives of OpenSky and Major Data
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`motives for filing the IPR
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`were disingenuous. See IPR2021-01064, Paper 20 at 6-7.
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`In the instant proceedings, Major Data was formed just over 4 months ago,
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`after the jury verdict in the Tex. Litigation. EX.20132045. Patent Owner has
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`repeatedly sought discovery information from Major Data to no avail. Patent
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`-
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`motion for joinder is denied, which it should be. Like OpenSky, Major Data is not
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`involved in any infringement litigation with Patent Owner.
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`Also, in the Intel/OpenSky IPRs, the patent owner VLSI argued that
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`OpenSky has not been accused of infringement and therefore lacks standing to
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`appeal a final decision in the IPR. By contrast, Intel had been accused of
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`infringement and has standing to appeal. Therefore, allowing Intel to join the
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`-
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`See IPR2022-00366,
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`Paper 14 at 14.
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`In the instant proceedings, Major Data has not been accused of infringement
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`and lacks standing to appeal a final decision in this IPR. If the Code200 petitioners
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`-
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`14
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`t to appeal a factor in assessing
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`see IPR2022-00366, Paper 14 at 14-
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`15), Patent Owner respectfully submits this is relevant in consideration of the
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`finite resources.
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`B. THE FINTIV FACTORS
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`Petitioners
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`Fintiv factors and General Plastic factors did not preclude institution of the NetNut
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`Paper 7
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`Fintiv analysis in the NetNut IPR was
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`applied to the then-pending NetNut Litigation, not the Tex. Litigation involving
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`Petitioners14
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`Fintiv factor 3, the Board
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`found that because a Markman hearing had not been held, fact and expert
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`discovery had not ended, and filing of dispositive motions were not due for another
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`had not yet been devoted to the invalidity
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`EX. 2001 2033 at 11-12. The same analysis of the
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`NetNut Litigation cannot be applied to the Tex. Litigation.
`
`
`14 Excluding Code200, UAB and Coretech LT, UAB.
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`15
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`In the instant proceedings, there is a significant risk of the Board redoing the
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`work of another tribunal. The parties and the Court invested substantial resources
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`atents.
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`The Tex. Litigation between Petitioners15 and Patent Owner has already
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`reached a final jury verdict. EX.20122044. The Board has applied the Fintiv
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`factors to parallel proceedings even after a jury trial has already occurred. E.g.,
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`Amazon.com, Inc. v. Vocalife LLC, IPR2020-00864, Paper 22 at 19 (PTAB
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`October 28, 2020). In the discussion that follows, Patent Owner will apply the six
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`Fintiv factors to the Tex. Litigation.
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`On balance, Patent Owner respectfully submits that the Fintiv factors
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`overwhelmingly favor denial of institution.
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`1. FINTIV FACTOR 1 IS NEUTRAL
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`The first Fintiv factor is whether the court has granted a stay or evidence
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`exists that one may be granted if a proceeding is instituted.
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`As discussed in the Opposition, the Court stayed post-trial briefing in the
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`Tex. Litigation for additional mediation. See Paper 11 at 3-4 (Response to SMF
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`No. 4). That mediation also involves other cases in addition to Case No. 2:19-cv-
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`15 Excluding Code200, UAB and Coretech LT, UAB.
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`16
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`395 (the Tex. Litigation). Nonetheless, the jury already found that the
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`EX.2012 2044 at 5. Patent Owner is not aware of
`
`any cases in which Judge Gilstrap has reversed a jury verdict of no
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`anticipation/obviousness.16 Any appeal of the jury verdict by Petitioner-defendants
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`is speculative.
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`Even though there is a stay for post-trial briefing, because the Tex.
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`Litigation has already reached a jury verdict, this factor is neutral.
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`2. FINTIV FACTOR 2 FAVORS DENIAL
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`The second Fintiv
`
`decision.
`
`
`16 In one case Alfonso Cioffi et al. v. Google LLC, No. 2:13-cv-103, Dkt. 319 (E.D.
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`Tex. March 29, 2018), the Court preserved the jury verdict in all respects except as
`
`to the issue of invalidity pursuant to § 251, properly decided by the Court alone
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`and not the jury. In another case Metaswitch Networks Ltd. v. Genband US LLC et
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`al., No. 2:14-cv-744, Dkt. 369 (E.D. Tex. April 14, 2016), the Court granted a
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`Motion for relief from judgment under Rule 60 and the Court corrected a
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`mistakenly listed claim 18 instead of claim 6.
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`17
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`Because the trial in the Tex. Litigation has already occurred, this factor
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`favors denial.
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`3. FINTIV FACTOR 3 FAVORS DENIAL
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`The third Fintiv factor is the investment in the parallel district court
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`proceeding by the Court and the parties.
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`The parties and the Court have made substantial investments litigating
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`invalidity all the way through trial. Additional investment is still being made in
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`mediation efforts and regarding post-trial briefing. Patent Owner should not have
`
`to expend more resources defen
`
`would be contrary to the purpose of an inter partes review proceeding. See General
`
`Plastic at 17.
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`Given this substantial investment in the Tex. Litigation, this factor favors
`
`denial.
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`4. FINTIV FACTOR 4 FAVORS DENIAL
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`The fourth Fintiv factor is the overlap between issues raised in the Petition
`
`and in the parallel district court proceeding.
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`Patent Owner refers to its earlier discussion in section IV.A.1.C.i. (Lack of
`
`stipulation regarding overlapping invalidity arguments). As discussed, Petitioners
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`18
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`chose not to file a stipulation in IPR2020-01266 regarding the overlapping
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`invalidity arguments.
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`Patent Owner also refers to its earlier discussion in section IV.A.1.C.ii.
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`(Invalidity arguments presented to the jury at trial). As discussed, the independent
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`MorphMix are cumulative art and Border cannot be applied
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`claim construction.
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`There is a high risk of duplicative efforts and conflicting decisions with
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`respect to substantially similar claim sets and the exact same references.
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`Patent Owner respectfully submits it i
`
`Software, Inc. v. SAP Am., Inc., Case No. 2:07-cv-153, Dkt. 617 at 2 (E.D. Tex.
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`Apr. 21, 2014) (refusing to vacate a final judgment of validity in view of a covered
`
`See also Versata
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`proceeding before the PTAB can render nugatory that entire process, and the time
`
`and effort of all of the judges and jurors who have evaluated the evidence and
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`arguments would do a great disservice to the Seventh Amendment and the entire
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`5. FINTIV FACTOR 5 FAVORS DENIAL
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`Fintiv factor 5 is whether the petitioner and the defendant in the parallel
`
`proceedings are the same party.
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`Both parties acknowledge that the Petitioners17 were the defendants in the
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`Tex. Litigation. As previously mentioned, Petitioner-defendants therefore had
`
`every opportunity to present the exact same grounds in the district court
`
`proceeding. Accordingly, this factor favors denial.
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`Moreover, institution will lead to duplicative efforts and risks conflicting
`
`decisions with respect to these same claims. Furthermore, the District Court and
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`the parties invested substantial resources in preparing for and conducting the jury
`
`trial in the Tex. Litigation.
`
`6. FINTIV FACTOR 6 FAVORS DENIAL
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`The sixth Fintiv
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`exercise of discretion, including the merits.
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`Patent Owner submits four other circumstances that might impact the
`
`of discretion in this IPR.
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`17 Excluding Code200, UAB and Coretech LT, UAB.
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`20
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`First, as discussed in the Opposition, Patent Owner believes lifting the stay
`
`in the reexaminations and terminating these proceedings would be the most
`
`efficient use of resources. See Paper 11 at 14-15. All but dependent claim 23 of the
`
`reexaminations are based on the exact same prior art references, Crowds, Border,
`
`The
`
`and MorphMix.
`
`Second, there is another set of
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`including IPR2022-00135 and IPR2022-00138 (and IPR2022-01109 and IPR2022-
`
`01110 seeking joinder thereto), which are based on a different primary prior art
`
`reference, Plamondon.
`
`There is also another district court case
`
`9
`
`Bright Data Ltd. v. Tefincom S.A. (d/b/a NordVPN), No. 2:19-cv-414 (E.D.
`
`owner/founder (Tomas Okmanas) and the same litigation counsel as the Petitioner-
`
`defendants. EXS. 2014 20172046-2049. Defendant Tefincom served its invalidity
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`contentions, alleging anticipation and/or obviousness of claims 1-2, 14-15, 17-18,
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`21-22, and 24-
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`22-23 of th
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`MorphMix.
`
`-2, 8-11, 13, 15-16, 18-20, and
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`21
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`Code200, UAB, et al. v. Bright D