`
`
`
`
`U.S. Pat. No. 10,484,510
`Inter Partes Review
`Petitioner’s Motion for Joinder
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CODE200, UAB; TESO LT, UAB; METACLUSTER LT, UAB;
`OXYSALES, UAB; AND CORETECH LT, UAB,
`Petitioners,
`
`v.
`
`BRIGHT DATA LTD.,
`Patent Owner.
`____________
`
`Inter Partes Review No. IPR2022-00862
`Patent No. 10,484,510
`____________
`
`MOTION FOR JOINDER TO INTER PARTES
`REVIEW IPR2021-01493
`
`
`
`
`
`
`
`

`

`TABLE OF CONTENTS
`
`I. STATEMENT OF PRECISE RELIEF REQUESTED ........................................ 1
`II.
`STATEMENT OF MATERIAL FACTS .......................................................... 2
`III. STATEMENT OF REASONS FOR RELIEF REQUESTED .......................... 6
`A.
`Joinder is Timely ..................................................................................... 6
`B. All Applicable Factors Support Joinder .................................................. 6
`1. Joinder is appropriate (factor 1). ........................................................ 6
`a. The Action concerned different claims, different prior art, a
`different burden of proof, and, in any event, remains open and
`stayed. ............................................................................................ 6
`b. The previously filed ’510 EPR is stayed pending the outcome
`of the NetNut IPR. ....................................................................... 10
`c. The previously filed Code200 Petition challenging the ’510
`patent was timely filed and not considered on the merits. .......... 10
`d. The PTAB’s discretionary denials of Petitioners’
`IPR2021-01502 and IPR2021-01503 do not render joinder
`inappropriate here. ....................................................................... 12
`2. Petitioners propose no new grounds of unpatentability (factor 2). .. 13
`3. Joinder will not impact the trial schedule or cost of the joined
`proceeding (factor 3). ....................................................................... 14
`4. Joinder will not add to the complexity of briefing and discovery
`(factor 4). .......................................................................................... 15
`CONCLUSION ............................................................................................. 15
`
`IV.
`
`
`
`i
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`

`

`TABLE OF AUTHORITIES
`
`Page(s)
`
`
`CASES
`Bright Data Ltd. v. Teso LT, UAB et al.,
`2:19-cv-00395-JRG (E.D. Tex.) filed ..............................................................................2
`Microsoft Corp. v. i4i Ltd. Partnership,
`564 U.S. 91 (2011) ................................................................................................................8
`Novartis AG v. Noven Pharm. Inc.,
`853 F.3d 1289 (Fed. Cir. 2017) .....................................................................................8, 9
`Personal Audio LLC v. CBS Corp.,
`946 F.3d 1348 (Fed. Cir. 2020) .........................................................................................8
`STATUTES
`35 U.S.C. § 314(b) ......................................................................................................................5
`35 U.S.C. § 315(c) ......................................................................................................................6
`35 U.S.C. § 316(e) ......................................................................................................................8
`OTHER AUTHORITIES
`37 C.F.R. § 42.1(b) ...............................................................................................................9, 10
`37 C.F.R. § 42.122(b) ................................................................................................................6
`SUSPECTS
`NetNut Ltd. v. Bright Data Ltd., IPR2021-01493 (the “NetNut IPR”) ..........................1
`Code200, UAB, et al. v. Luminati Networks LTD, IPR2020-01358 (the
`“Code200 IPR”) .....................................................................................................................3
`The Data Company Technologies Inc. v. Bright Data LTD., IPR2022-00138
`(the “Data Co. IPR”) ............................................................................................................5
`Biotronik, Inc. v. Atlas IP LLC, IPR2015-00534 ................................................................6
`HTC v. Parthenon Unified Memory Architecture LLC, IPR2017-00512 ...........6, 9, 13
`
`
`
`ii
`
`

`

`
`
`
`Kyocera Corp. v. Softview LLC, IPR2013-00004 ...............................................................6
`Apple Inc. v. Uniloc 2017 LLC, IPR2020-00224 ................................................................9
`Apple Inc. v. INVT SPE LLC, IPR2019-00958 ..................................................................10
`Celltrion, Inc. v. Genentech, Inc., IPR2018-01019 ..........................................................10
`Huawei Device Co., Ltd. v. Uniloc Luxembourg S.A., IPR2017-02090......................10
`Pfizer, Inc. v. Genentech, Inc., IPR2017-02063 ................................................................10
`Sawai USA, Sawai USA, Inc. et al. v. Biogen MA Inc., IPR2019-00789 ....................11
`Samsung Elecs. Co. v. Raytheon Co., IPR2016-00962 ...................................................13
`STMicroelectronics, Inc. v. Lone Star Silicon Innovations, LLC, IPR2018-
`00436 ................................................................................................................................13, 14
`Garmin Int’l, Inc. v. Philips North Am. LLC, IPR2020-00910 .....................................14
`Mylan Pharms. Inc. v. Novartis AG, IPR2014-00550 .....................................................14
`NetNut Ltd. v. Bright Data Ltd., IPR2021-01493 ...................................................1, 14, 15
`
`
`
`iii
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`

`

`
`
`
`STATEMENT OF PRECISE RELIEF REQUESTED
`
`I.
`
`Petitioners Code200, UAB; Teso LT, UAB; Metacluster LT, UAB; Oxysales,
`
`UAB; and coretech LT UAB (collectively, “Petitioners”) move for joinder of their
`
`contemporaneously filed Petition for Inter Partes Review IPR2022-00861 (the
`
`“Petition”) of claims 1, 2, 6-11, 13, and 15-24 of U.S. Patent No. 10,484,510 (the “’510
`
`patent”) with a pending IPR styled NetNut Ltd. v. Bright Data Ltd., IPR2021-01493 (the
`
`“NetNut IPR”), which the Board instituted on March 21, 2022.
`
`In addition to the present Petition, third parties have previously sought review of
`
`the validity of certain claims of the ’510 patent in federal court, the Central Reexam
`
`Unit, and the PTAB. As discussed below, only the NetNut IPR has been instituted and is
`
`not currently stayed.
`
`The NetNut IPR concerns the same patent and the same claims as the present
`
`Petition. The present Petition and supporting expert declaration are substantively
`
`identical to the petition and expert declaration submitted in the NetNut IPR. In sum,
`
`Petitioners here assert that the same claims are anticipated and/or obvious over the same
`
`prior art based on the same substantive arguments that are supported by the same expert
`
`as in the NetNut IPR.
`
`Petitioners agree to take an “understudy” role if joined. Joinder will not cause any
`
`delay in the resolution of the NetNut IPR. Joinder, therefore, is appropriate because it
`
`will promote the efficient and consistent resolution of the same patentability issues of the
`1
`
`
`

`

`
`
`
`same patent, it will not delay the schedule that the Board has issued in the NetNut IPR,
`
`and the parties in the NetNut IPR will not be prejudiced.
`
`II.
`
`STATEMENT OF MATERIAL FACTS
`
`1.
`
`2.
`
`Bright Data Ltd. (“Patent Owner”) purports to own the ’510 patent.
`
`Patent Owner asserted the ’510 patent and U.S. Patent Nos. 10,257,319, and
`
`10,469,614 (collectively, the “Asserted Patents”) against Teso LT, UAB, Metacluster
`
`LT, UAB, Oxysales, UAB, and Coretech LT, UAB (collectively, “Oxylabs”) in a lawsuit
`
`styled Bright Data Ltd. v. Teso LT, UAB et al., 2:19-cv-00395-JRG (E.D. Tex.) filed on
`
`December 6, 2019 (the “Action”).
`
`3.
`
`The Action proceeded to trial before a jury beginning on November 1, 2021
`
`where Oxylabs argued, among other things, that claims 1 and 22 of the ’510 patent were
`
`invalid in view of Crowds. The jury returned a verdict answering “no” to the question
`
`“Did Oxylabs prove by clear and convincing evidence any of the following Asserted
`
`Claims are invalid,” which included two claims—Claims 1 and 22—of the ’510 Patent.
`
`See Ex. 1024, the Action, Jury Verdict Form, ECF No. 516 at 5. At trial, Patent Owner
`
`heavily emphasized the “clear and convincing” burden and actively encouraged the jury
`
`to defer to the prior prosecution, arguing: “That’s why their burden is so much higher.
`
`It's really -- once that's happened, do you really want to second-guess the work that those
`
`people did?” Nov. 5 Trial Tr. at 65:2-4; see also id. at 65:5-10 (“You would need a firm
`
`belief or conviction or, as Your Honor said, an abiding belief or conviction, that this
`2
`
`
`

`

`
`
`
`absolutely is not valid, that the Patent Office messed up twice. Somehow in the 1200
`
`pages of communications, those patent examiners were clueless. And if you don't find
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`that, you have to say no to invalidity in this case.”).
`
`4.
`
`On December 15, 2021, the Court stayed the Action to allow for mediation.
`
`Id., ECF No. 543. On March 16, 2022, the Court denied Patent Owner’s subsequent
`
`Motion to Lift the Stay, to allow for further mediation. Id., ECF No. 580. Consequently,
`
`the Action remains stayed pending mediation.
`
`5.
`
`If and when the stay is lifted and final judgment entered, Oxylabs intends to
`
`file post-judgment motions asserting that Oxylabs is entitled to Judgment as a Matter of
`
`Law, or, at a minimum, a new trial, on its anticipation defense where the jury did not
`
`consider the prior art in view of the “correct” construction of “server,” and Patent Owner
`
`did not distinguish the prior art on that basis. See Ex. 1025 at 7.
`
`6.
`
`In addition to the present Petition, Petitioners timely filed a separate petition
`
`(the “Code200 Petition”) styled Code200, UAB, et al. v. Luminati Networks LTD [now
`
`Bright Data Ltd.], IPR2020-01358 (the “Code200 IPR”) on July 28, 2020, which argued
`
`that certain claims of the ’510 patent are anticipated and/or obvious. See Code200 IPR,
`
`Paper 5.
`
`7.
`
`On February 2, 2021, the Board denied the Code200 Petition based on
`
`discretionary grounds in view of the pending Action. See id., Paper 11 (citing Apple Inc.
`
`v. Fintiv Inc., IPR2020-00019).
`
`3
`
`
`

`

`
`
`
`8.
`
`On September 3, 2021, NetNut filed
`
`the NetNut IPR, requesting
`
`cancellation of certain claims of the ’510 patent. See NetNut IPR, Paper 2.
`
`9.
`
`Patent Owner filed a Preliminary Response. Id., Paper 8. With
`
`authorization of the Panel, NetNut filed a Reply and Patent Owner filed a Sur-reply. Id.,
`
`Papers 9 and 10.
`
`10. On March 21, 2022, the Board instituted the NetNut IPR as to all challenged
`
`claims and entered a Scheduling Order. Id., Papers 11 and 12.
`
`11. Along with this Motion for Joinder, Petitioners simultaneously filed the
`
`present Petition, which argues, among other things, that the same claims of the ’510
`
`patent are anticipated and/or obvious based on the same grounds and for the same
`
`reasons as set forth in the NetNut IPR petition. The Petition is supported by the same
`
`expert declaration of Keith D. Teruya submitted in support of the NetNut IPR petition.
`
`12. The grounds proposed in the Petition are the same as those proposed in the
`
`NetNut IPR petition—i.e., the Petition does not contain any additional arguments or
`
`evidence in support of the unpatentability of claims 1, 2, 6-11, 13, and 15-24 of the ’510
`
`patent. Exhibit 1023 to the Petition provides a comparison between the present Petition
`
`and the NetNut IPR petition, showing the minimal, non-substantive changes related to
`
`formalities of different parties filing the petition. Other than Exhibit 1023, Petitioners’
`
`exhibits—including the expert declaration—are the same as the exhibits filed with the
`
`4
`
`
`

`

`
`
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`NetNut IPR, differing only in the document control label at the bottom of the page to
`
`acknowledge the filing with this IPR Petition.
`
`13. On October 5, 2021, Teso LT, UAB requested Ex Parte Reexamination of
`
`the ’510 patent, No. 90/014,876 (the “’510 EPR”). On November 12, 2021, the Patent
`
`Office found a substantial new question of patentability with respect to claims 1, 2, 6-11,
`
`13, 15-24 of the ’510 patent. On March 23, 2022, the Patent Office issued a Non-Final
`
`Office Action rejecting the same claims of the ’510 patent. On April 7, 2022, the PTAB
`
`stayed the ’510 EPR pending the termination or completion of the NetNut IPR. See
`
`NetNut IPR, Paper 13.
`
`14. On November 4, 2021, The Data Company Technologies Inc. filed a
`
`petition for IPR challenging all claims of the ’510 patent. See The Data Company
`
`Technologies Inc. v. Bright Data LTD., IPR2022-00138 (the “Data Co. IPR”), Paper 2.
`
`15. On November 16, 2021, the Board accorded the Data Co. IPR the filing date
`
`of November 4, 2021. Id., Paper 3. Patent Owner filed its Preliminary Response on
`
`February 16, 2022. Id., Paper 6. The Board will issue an institution decision on or before
`
`May 16, 2022 (i.e., three months from the date Patent Owner filed its Preliminary
`
`Response). See 35 U.S.C. § 314(b).
`
`16. NetNut Ltd. does not oppose or join the present Motion for Joinder. Patent
`
`Owner opposes this Motion.
`
`5
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`
`

`

`
`
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`III. STATEMENT OF REASONS FOR RELIEF REQUESTED
`
`
`
`A.
`
`Joinder is Timely
`
`Because this Motion is filed within one month of the Board’s decision instituting
`
`trial in the NetNut IPR on March 21, 2022, it meets the requirements of § 42.122(b). See,
`
`e.g., Biotronik, Inc. v. Atlas IP LLC, IPR2015-00534, Paper 10 (PTAB Feb. 25, 2015)
`
`(granting motion for joinder filed concurrently with institution of IPR review).
`
`
`
`B. All Applicable Factors Support Joinder
`
`The Board has discretion to join this IPR with the NetNut IPR. See 35 U.S.C.
`
`§ 315(c); 37 C.F.R. § 42.122(b); HTC v. Parthenon Unified Memory Architecture LLC,
`
`IPR2017-00512, Paper 12 at 6 (PTAB June 1, 2017). In considering a motion for joinder,
`
`the Board considers the following factors: (1) the reasons why joinder is appropriate; (2)
`
`whether the petition raises any new grounds of unpatentability; (3) any impact joinder
`
`would have on the cost and trial schedule for the existing review; and (4) whether joinder
`
`will add to the complexity of briefing or discovery. Kyocera Corp. v. Softview LLC,
`
`IPR2013-00004, Paper 15 at 4 (PTAB Apr. 24, 2013); Consolidated Trial Practice Guide
`
`76 (Nov. 2019) (https://go.usa.gov/xpvPF). All relevant factors weigh in favor of
`
`joinder. As a result, the Board should exercise its discretion to allow joinder here.
`
`
`
`1.
`
`Joinder is appropriate (factor 1).
`
`a.
`
`The Action concerned different claims, different prior art, a
`different burden of proof, and, in any event, remains open
`and stayed.
`
`6
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`
`

`

`
`
`
`
`
`The Action proceeded to trial before a jury beginning on November 1, 2021 where
`
`Oxylabs argued, among other things, that claims 1 and 22 of the ’510 patent were invalid
`
`as anticipated in view of a single reference: Crowds. At the conclusion of the trial, the
`
`jury returned a verdict and found that Oxylabs had not shown, under a clear-and-
`
`convincing evidentiary standard, that either of the two asserted claims of the ’510 patent
`
`was invalid. See Ex. 1024, Jury Verdict Form, ECF No. 516 at 5.
`
`
`
`The present Petition, however, requests review of the patentability of many more
`
`claims than considered by the jury in the Action. Petitioners request here cancellation by
`
`the Board of claims 1, 2, 6-11, 13, and 15-24 in view of prior art not considered by the
`
`jury. The following chart summarizes the claims and grounds of cancellation requested
`
`in the present Petition:
`
`Claims Challenged
`
`35 U.S.C. §
`
`
`1, 6, 7, 13, 15, 16, 18-24
`
`1, 2, 6-11, 13, 15, 16, 18-24
`
`1, 6, 10, 15-20, 23, 24
`
`1, 6, 8-11, 13, 15-20, 22-24
`
`1, 6-8, 13, 15, 16, 18-24
`
`1, 2, 6-11, 13, 15, 16, 18-24
`
`
`
`102(b)
`
`103(a)
`
`102(b)
`
`103(a)
`
`102(b)
`
`103(a)
`
`7
`
`
`Reference(s)
`
`
`
`Crowds
`
`Crowds, RFC 2616
`
`Border
`
`Border, RFC 2616
`
`MorphMix
`
`MorphMix, RFC 2616
`
`
`

`

`
`
`
`Consequently, at the Action is relevant to the validity of only two claims of the
`
`’510 patent in view of a single anticipatory reference: Crowds. On the other hand, the
`
`outcome of the present Petition implicates the validity of 19 claims of the ’510 patent in
`
`view of six combinations of four separate prior-art references. The Federal Circuit has
`
`affirmed invalidity decisions from the PTAB in which the Board held that the claims
`
`were obvious over several different combinations of cited art not considered by the
`
`district court. Personal Audio LLC v. CBS Corp., 946 F.3d 1348, 1350-51 (Fed. Cir.
`
`2020) (affirming district court’s termination of proceedings because PTAB had
`
`determined the asserted claims were unpatentable, despite PTAB’s determination issuing
`
`after jury had entered verdict of “not invalid” and “infringed” and before entry of final
`
`judgment); Novartis AG v. Noven Pharm. Inc., 853 F.3d 1289, 1294 (Fed. Cir. 2017) (“It
`
`is unsurprising that different records may lead to different findings and conclusions”).
`
`Moreover, in the Action the jury considered invalidity of the two claims of the
`
`’510 patent under the clear-and-convincing evidentiary standard—and Patent Owner
`
`heavily relied on that standard. Action, ECF No. 516 at 5; see also Microsoft Corp. v. i4i
`
`Ltd. Partnership, 564 U.S. 91, 95 (2011). Here, the Board considers validity of the 19
`
`challenged claims under the preponderance-of-the-evidence standard. See 35 U.S.C.
`
`§ 316(e). Such a difference in burdens of proof often requires a different conclusion
`
`based on the same evidence. See Novartis at 1293-4 (explaining that the different
`
`burdens of proof—“preponderance of the evidence” at the PTAB and “clear and
`8
`
`
`

`

`
`
`
`convincing” at the district court—permitted different conclusions by the PTAB and
`
`district court). In Novartis, the Federal Circuit reasoned:
`
`Nevertheless, even if the record were the same, [Patent
`Owner’s] argument would fail as a matter of law. The PTAB
`determined that a “petitioner in an inter partes review proves
`unpatentability by a preponderance of the evidence [] rather
`than by clear and convincing evidence[] as required in district
`court litigation,” meaning that the PTAB properly may reach a
`different conclusion based on the same evidence.
`
`Id. at 1294 (internal citations omitted). Further, unlike the Institution Decision here, the
`
`jury was not provided the Court’s Supplemental Claim Construction Order, which the
`
`Board found persuasive and adopted in rejecting Patent Owner’s attempts to distinguish
`
`the art. In any event, a final judgment in the Action has not been entered and remains
`
`stayed. See Action, ECF Nos. 543 and 580. Thus, this request for joinder is consistent
`
`with the policy surrounding inter partes reviews, as it is the most expedient way “to
`
`secure the just, speedy, and inexpensive resolution of every proceeding.” See 37 C.F.R. §
`
`42.1(b); HTC v. Parthenon Unified Memory Architecture LLC, IPR2017-00512, Paper
`
`No. 12 at 5-6 (June 1, 2017) (emphasis added).
`
`Indeed, the PTAB often grants motions for joinder in view of pending litigations
`
`involving the same patent and the same parties. See, e.g., Apple Inc. v. Uniloc 2017 LLC,
`
`IPR2020-00224, Paper 10 at 2-7 (PTAB April 6, 2020) (PTAB granting motion for
`
`joinder of “me-too” petition in view of co-pending lawsuit and previously denied IPR
`
`involving the same real parties in interest and the same patent); Apple Inc. v. INVT SPE
`9
`
`
`

`

`
`
`
`LLC, IPR2019-00958, Paper 9 at 2-13 (PTAB May 30, 2019) (same); Celltrion, Inc. v.
`
`Genentech, Inc., IPR2018-01019, Paper 11 at 2-15 (PTAB Oct. 30, 2018) (same);
`
`Huawei Device Co., Ltd. v. Uniloc Luxembourg S.A., IPR2017-02090, Paper 9 at 2-12
`
`(PTAB March 6, 2018) (same); Pfizer, Inc. v. Genentech, Inc., IPR2017-02063, Paper 25
`
`at 4-8 (PTAB Feb. 21, 2018) (same).
`
`b.
`
`The previously filed ’510 EPR is stayed pending the
`outcome of the NetNut IPR.
`One of the parties to the present Petition, Teso LT, UAB, requested Ex Parte
`
`Reexamination of certain claims of the ’510 patent. See ’510 EPR. The Patent Office
`
`found a substantial new question of patentability affecting claims 1, 2, 6-11, 13, and 15-
`
`24 of the ’510 patent and, on March 25, 2022, issued a Non-Final Office Action rejecting
`
`those claims. Ex. 1026. On April 7, 2022, however, the PTAB stayed the ’510 EPR
`
`pending the termination or completion of the NetNut IPR. See NetNut IPR, Paper 13.
`
`Again, like the stayed Action, because the ’510 EPR is stayed pending the resolution of
`
`the NetNut IPR, granting this request for joinder is the most expedient way “to secure the
`
`just, speedy, and inexpensive resolution of every proceeding.” See 37 C.F.R. § 42.1(b)
`
`(emphasis added).
`
`c.
`
`The previously filed Code200 Petition challenging the ’510
`patent was timely filed and not considered on the merits.
`
`Petitioners previously sought IPR review of the ’510 patent in a timely fashion.
`
`
`
`More specifically, Petitioners filed the Code200 IPR on July 28, 2020 (i.e., within one
`
`10
`
`
`

`

`
`
`
`year of the Action’s filing on December 6, 2019), which challenged the validity of
`
`certain claims of the ’510 patent as anticipated and/or obvious in view of the same prior-
`
`art references cited in the NetNut IPR. See Code200 IPR, Paper 5. The Board denied the
`
`Code200 Petition based on discretionary grounds in view of the pending Action. See id.,
`
`Paper 11 at 5-11 (citing Apple Inc. v. Fintiv Inc., IPR2020-00019). The Board reasoned
`
`that trial in the Action “is currently scheduled to occur approximately nine months before
`
`a final determination would issue in this case.” Id. at 12. The Board did not make any
`
`substantive determination concerning the merit of the Code200 IPR. Id.
`
`On November 1, 2021, the Court convened a jury trial and on December 15, 2021,
`
`the Court stayed deadlines in the Action (ECF No. 543) and has declined to lift the stay
`
`pending mediation. ECF No. 580. Consequently, as of today, the Action remains stayed.
`
`Further, the Board in the NetNut IPR determined that the Fintiv factors and General
`
`Plastic factors did not preclude institution of the NetNut IPR. See NetNut IPR, Paper 12
`
`at 15-16. Indeed, the NetNut IPR has been instituted, such that the Board need not
`
`consider Petitioner’s previously filed IPR petition in connection with the present “me-
`
`too” Petition. See Sawai USA, Sawai USA, Inc. et al. v. Biogen MA Inc., IPR2019-00789,
`
`Paper 17 at 9-10 (PTAB Sept. 12, 2019).
`
`
`
`
`
`11
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`
`

`

`
`
`
`
`d.
`
`The PTAB’s discretionary denials of Petitioners’ IPR2021-
`01502 and
`IPR2021-01503 do not render
`joinder
`inappropriate here.
`
`Petitioners previously filed two IPRs challenging different Bright Data patents and
`
`sought to join those IPRs with NetNut’s IPRs IPR2021-00458 and IPR2021-00465. See
`
`IPR2021-01502, Paper 7 and IPR2021-01503, Paper 7, respectively. The PTAB denied
`
`Petitioners’ joinder requests, holding joinder “would be unduly prejudicial and not in the
`
`interest of justice” because (i) Petitioners had settled litigation with Bright Data
`
`concerning the subject patents and (ii) Petitioners had not challenged the subject patents
`
`within Petitioners’ one-year bar date. See IPR2021-01502, Paper 13 and IPR2021-
`
`01503, Paper 13. Neither fact exists here. First, unlike in IPR2021-01502 and -01503,
`
`here Petitioners have repeatedly sought to challenge the ’510 patent in the patent office,
`
`first via an IPR prior to their one-year bar deadline and then via ex parte review when the
`
`IPR was denied on discretionary grounds. See Code200 IPR, Paper 5 (filed on July 14,
`
`2020 within one year of the filing of the Action on December 6, 2019). In this case,
`
`where Petitioner’s ex parte review is now stayed in view of the NetNut IPR, it would be
`
`prejudicial and against the interest of justice to deny joinder. Second, Petitioners have
`
`not settled the Action concerning the ’510 patent with Bright Data. Consequently, the
`
`present Petition and Motion for Joinder are plainly distinguishable from the denied
`
`motions for joinder in IPR2021-01502 and IPR2021-01503.
`
`12
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`

`

`
`
`
`
`2.
`
`Petitioners propose no new grounds of unpatentability (factor 2).
`
`The Board “routinely grants motions for joinder where the party seeking joinder
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`introduces identical arguments and the same grounds raised in the existing proceeding.”
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`Samsung Elecs. Co. v. Raytheon Co., IPR2016-00962, Paper 12 at 9 (PTAB Aug. 24,
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`2016) (internal quotations and citations omitted) (emphasis original). Joinder is
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`appropriate here because the Petition was timely filed and asserts the same grounds and
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`relies on the same evidence for unpatentability presented in the NetNut IPR. See Ex.
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`1023 (showing the minimal, non-substantive differences between the present Petition and
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`the NetNut IPR petition). The present Petition and the NetNut IPR petition rely on the
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`same prior-art references, alone and/or in the same combinations. Id. The Petition and the
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`NetNut IPR petition also rely on the same declaration of Keith D. Teruya. There are no
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`new grounds of unpatentability asserted in the present Petition. Accordingly, the Petition
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`will not add any additional issues to the substantive issues in the NetNut IPR.
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`Joinder, therefore, is the most efficient and economical manner to proceed in this
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`case. See, e.g., HTC, IPR2017-00512, Paper 12 at 7 (granting motion for joinder where
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`the second petition involved “the same claims, the same patent, the same prior art
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`references, the same expert declaration, and the same arguments and rationales”);
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`STMicroelectronics, Inc. v. Lone Star Silicon Innovations, LLC, IPR2018-00436, Paper 7
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`at 5 (PTAB May 4, 2018) (granting joinder and reasoning, “[w]e rely in particular, on
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`Petitioner’s representation that its Petition is ‘substantially identical’ . . . challenges the
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`same claims based on the same prior art and the same grounds of unpatentability . . . .”).
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`3.
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`Joinder will not impact the trial schedule or cost of the joined
`proceeding (factor 3).
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`Joinder will not prejudice the parties to the NetNut IPR. Petitioners will not
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`request any alterations to the trial schedule that the Board issued in the NetNut IPR
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`(IPR2021-01493, Paper 12), therefore leaving that schedule unchanged.
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`Petitioners also agree to adopt a secondary, “understudy” role in the NetNut IPR,
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`if joined. See, e.g., Garmin Int’l, Inc. v. Philips North Am. LLC, IPR2020-00910, Paper 8
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`at 45, 47-50 (PTAB Nov. 19, 2020) (granting joinder where petitioners agreed to accept
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`an “understudy” role); STMicroelectronics, IPR2018-00436, Paper 7 at 5 (similar).
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`Petitioners will assume a primary role only if the NetNut IPR petitioner ceases its
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`participation in the proceeding. Petitioners will abide by any conditions the Board deems
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`appropriate for an “understudy” role.
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`Petitioners’ agreement to take an “understudy” role removes any potential
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`complication or delay caused by joinder, while providing the parties an opportunity to
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`address all issues that may arise. See, e.g., Mylan Pharms. Inc. v. Novartis AG, IPR2014-
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`00550, Paper 38 at 5-6 (PTAB Apr. 10, 2015). In sum, joinder will not affect the cost or
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`complexity of the NetNut IPR for Patent Owner, the NetNut IPR petitioner, and/or the
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`Board.
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`4.
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`Joinder will not add to the complexity of briefing and discovery
`(factor 4).
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`Petitioners and the NetNut IPR petitioner rely on the same prior art and the same
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`
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`expert to support identical arguments regarding the unpatentability of the patent at issue.
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`Briefing and discovery therefore will be the same, and granting joinder will not add to
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`the complexity of briefing and discovery.
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`IV. CONCLUSION
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`For these reasons, Petitioners respectfully request that the Board institute their
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`Petition for Inter Partes Review of U.S. Patent No. 10,484,510 and join this proceeding
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`with NetNut Ltd. v. Bright Data Ltd., IPR2021-01493.
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`Respectfully submitted,
`CHARHON CALLAHAN ROBSON &
`GARZA, PLLC
`
`/George “Jorde” Scott /
`
`George “Jorde” Scott (Reg. No. 62,859)
`(Lead Attorney for Petitioner)
`Craig Tolliver (Reg. No. 45,975)
`John C. Heuton (Reg. No. 62,467)
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that the above Motion was served on April 18,
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`2022 via Priority Mail Express International (or by means at least as fast and reliable as
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`Priority Mail Express), on the following:
`
`May Patents Ltd. ℅ Dorit Shem-Tov
`P.O.B. 7230
`Ramat-Gan 5217102
`ISRAEL
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`(PAIR Correspondence Address for U.S. Patent No. 10,484,510)
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`The above Motion was also served via e-mail and FedEx on April 18, 2022 on
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`Patent Owner’s U.S. counsel in pending litigation concerning patents in the family of the
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`’510 patent, as follows:
`
`Korula T. Cherian
`Ruyak Cherian, LLP
`1936 University Avenue, Suite 350
`Berkeley, CA 94704
`sunny@ruyakcherian.com
`(via FedEx and email)
`
`
`Ronald Wielkopolski
`Ruyak Cherian, LLP
`1700 K St NW, Suite 810 Washington, DC 20006
`ronw@ruyakcherian.com
`(via email)
`
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`The above Motion was also served via e-mail and FedEx on April 18, 2022 on
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`Patent Owner’s counsel in pending NetNut Ltd. v. Bright Data Ltd., IPR2021-01493:
`
`Ronald Abramson
`Mord Lewis
`Ari Jaffess
`Liston Abramson LLP
`405 Lexington Avenue, 46th Floor
`New York, New York 10174
`Ron.abramson@listonabramson.com
`Michael.lewis@listonabramson.com
`Ari.jaffess@listonabramson.com
`(via FedEx and email)
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`Date: April 18, 2022
`
`
`3333 Lee Parkway
`Suite 460
`Dallas, TX 75219
`(214) 521-6400
`
`
`CHARHON CALLAHAN ROBSON &
`GARZA, PLLC
`
`/George “Jorde” Scott/
`
` George “Jorde” Scott (Reg. No. 62,859)
`(Lead Attorney for Petitioner)
`Craig Tolliver (Reg. No. 45,975)
`John C. Heuton (Reg. No. 62,467)
`
`
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