Paper 12
`Trials@uspto.gov
`Entered: May 11, 2022
`Tel: 571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`THE DATA COMPANY TECHNOLOGIES INC.,
`Petitioner,
`v.
`BRIGHT DATA LTD.,
`Patent Owner.
`
`IPR2022-00138
`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
`
`
`
`
`
`
`Major Data Ex. 1117
`Major Data UAB v. Bright Data Ltd.
`IPR2022-00915
`Page 1 of 40
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`
`Trials@uspto.gov
`Entered: May 11, 2022
`Tel: 571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`THE DATA COMPANY TECHNOLOGIES INC.,
`Petitioner,
`v.
`BRIGHT DATA LTD.,
`Patent Owner.
`
`IPR2022-00138
`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
`
`
`
`
`
`
`Major Data Ex. 1117
`Major Data UAB v. Bright Data Ltd.
`IPR2022-00915
`Page 1 of 40
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`Patent 10,484,510 B2
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`
`I. INTRODUCTION
`The Data Company Technologies Inc.1 (“Petitioner”) filed a Petition
`(Paper 2, “Pet.”) requesting inter partes review of claims 1–12 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 6, “Prelim. Resp.”). With authorization, Petitioner filed a Reply
`(Paper 8, “Pet. Reply”), and Patent Owner filed a Sur-reply (Paper 9, “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”)):
`
`
`1 Without conceding that these parties are real parties in interest, Petitioner
`also identifies Avantis Team Technologies Ltd. and Cytronix Ltd. Pet. xiii.
`
`2
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`
`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);
`Luminati Networks Ltd. v. BI Science (2009) Ltd., No. 2:19-cv-
`397 (E.D. Tex.) (dismissed); and
`Luminati Networks Ltd. v. Tefincom S.A., No. 2:19-cv-414
`(E.D. Tex.) (pending).
`Pet. xiv; Paper 5, 2.
`The ’510 patent was previously before the Board in IPR2020-01358,
`in which institution was denied, and in IPR2021-01493 (“the NetNut IPR”),
`which has been instituted. Paper 5, 1. The related ’319 patent is involved in
`IPR2021-01492, which has been instituted, and also was previously before
`the Board in IPR2020-01266, in which institution was denied. Id. Patent
`Owner also identifies other district court actions involving the ’510 patent
`and ’319 patent. Id. at 2.
`In addition, Patent Owner identifies ex parte reexaminations, Control
`No. 90/014,875 and Control No. 90/014,876, that have been ordered for the
`’319 and ’510 patents, respectively. Paper 5, 2. Those reexaminations have
`been stayed. See NetNut Ltd. v. Bright Data Ltd., IPR2021-01492, Paper 14
`(PTAB Apr. 7, 2022); NetNut Ltd. v. Bright Data Ltd., IPR2021-01493,
`Paper 13 (PTAB Apr. 7, 2022).
`
`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).
`
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`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,
`2009. Id. at code (60).
`The ’510 patent is directed to addressing the “need for a new method
`of data transfer that is fast for the consumer, cheap for the content distributor
`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, 4:56–58. Client
`
`4
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`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
`the many such servers on the Internet.” Id. at 4:65–5:2. Acceleration server
`162 includes acceleration server storage device 164 with an acceleration
`server database, which “stores Internet Protocol (IP) addresses of
`communication devices within the communication network 100 having
`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
`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
`data stored in its memory or the memory of the peers “still mirrors the
`
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`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
`the necessary information to service a request, it may “load the information
`directly from the server in order to be able to provide an answer to the
`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 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
`1, 10, 12, 15–23
`24
`8, 11
`8, 9
`2
`2–5
`6, 7
`Pet. 2.
`
`35 U.S.C. §2
`102(b)
`103(a)
`103(a)
`103(a)
`103(a)
`103(a)
`103(a)
`
`Reference(s)
`Plamondon3
`Plamondon
`Plamondon, RFC 26164
`Plamondon, RFC 11225
`Plamondon, IEEE 802.11-20076
`Plamondon, Price7
`Plamondon, Kozat8
`
`
`2 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 claims priority to a provisional
`application that was filed before this date, pre-AIA versions of §§ 102 and
`103 apply. See Ex. 1001, code (60).
`3 U.S. Patent Application Publication US 2008/0228938 A1, published
`September 18, 2008 (Ex. 1010).
`4 Hypertext Transfer Protocol—HTTP/1.1, Network Working Group, RFC
`2616, The Internet Society, 1999 (Ex. 1018).
`5 Requirements for Internet Hosts–Communication Layers, Network
`Working Group, RFC 1122, Internet Engineering Task Force, 1989
`(Ex. 1014).
`6 802.11-2007–IEEE Standard for Information Technology–
`Telecommunications and Information Exchange Between Systems - Local
`and Metropolitan Area Networks–Specific Requirements–Part 11: Wireless
`LAN Medium Access Control (MAC) and Physical Layer (PHY)
`Specifications, IEEE Standards, June 12, 2007 (Ex. 1022).
`7 U. S. Patent Application Publication US 2006/0026304 A1, published
`February 2, 2006 (Ex. 1023).
`8 U. S. Patent Application Publication US 2009/0055471 A1, published
`February 26, 2009 (Ex. 1024).
`
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`III. DISCRETIONARY DENIAL
`
`A. Fintiv
`
`Patent Owner requests that we exercise our discretion under 35 U.S.C.
`
`§ 314(a) to deny institution. Prelim. Resp. 4–9; PO Sur-reply 1–5.
`Although Patent Owner acknowledges that Petitioner is not a defendant in
`any pending district court litigation involving the ’510 patent, Patent Owner
`asserts that institution should be denied, particularly in view of the parallel
`district court proceedings, Bright Data Ltd. v. NetNut Ltd., No. 2:21-cv-225
`(E.D. Tex.) (“the NetNut district court litigation”). Prelim. Resp. 4–9; PO
`Sur-reply 2–3.
`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:
`
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`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;
`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
`“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.
`
`Petitioner argues that because it is not involved in the litigation and
`this inter partes review relies on different art than the art involved in the
`litigation, there is no reason for discretionary denial. Pet. 68. Patent Owner
`asserts that there is a meaningful overlap in the issues and refers to Fintiv’s
`direction regarding petitioners who are unrelated to litigation defendants.
`Prelim. Resp. 7–8.
`Fintiv states that “[e]ven when a petitioner is unrelated to a
`
`defendant” “other circumstances weigh against redoing the work of another
`tribunal, [and] the Board may, nonetheless, exercise the authority to deny
`institution.” Fintiv, 14. Fintiv states that “[a]n unrelated petitioner should,
`therefore, address any other district court or Federal Circuit proceedings
`involving the challenged patent to discuss why addressing the same or
`
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`substantially the same issues would not be duplicative of the prior case.” Id.
`Here, in view of Fintiv’s discussion on unrelated petitioners, we will address
`its factors, including whether there are substantially the same issues raised in
`this Petition that are duplicative of those in other proceedings.
`
`1. Factor 1—Stay of Related Litigation Proceeding
`
`
`Under the first Fintiv factor, we consider “whether the court granted a
`
`stay or evidence exists that one may be granted if a proceeding is instituted.”
`Fintiv at 6. Here, because Petitioner is not a party in another proceeding,
`Patent Owner’s arguments are based upon parallel proceedings, which are
`predominantly related to the NetNut district court litigation. Prelim. Resp.
`4–9; PO Sur-reply 2–3.
`
`Petitioner asserts that it is not clear how the district court would rule
`on a stay motion in the NetNut case, and this factor should be considered
`neutral. Pet. 71. Patent Owner presents no argument on this factor. See
`generally Prelim. Resp.; PO Sur-reply.
`
`“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 [d]istrict [c]ourt would rule
`should a stay be requested by the parties in the parallel case here.” Id.
`Accordingly, we determine that this factor is neutral.
`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. Patent Owner asserts that because the jury
`
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`trial is scheduled for September 12, 2022 in the NetNut district court
`litigation, the district court will resolve invalidity issues involving
`Plamondon “long before a final written decision is due in this proceeding in
`May 2023.” Prelim. Resp. 5. Patent Owner further argues that this case is
`different than the NetNut IPR because the NetNut trial date is eight months
`before the final written decision would issue in this IPR. PO Sur-reply 3.
`
`Patent Owner also argues that Plamondon is a reference that will be
`considered in the pending reexamination. Prelim. Resp. 5. Patent Owner
`asserts that the examiner will have considered Plamondon before a final
`written decision issues in this case. Id. Patent Owner further asserts that in
`a litigation with Teso, a jury found that the claims of U.S. Patent No.
`10,469,614 were not invalid over Mithyantha, where Mithyantha has the
`same architecture as Plamondon. Id. at 5–6 (citing Ex. 2001 ¶ 85; Ex. 2002;
`Ex. 2006); referring to Bright Data Ltd. v. Teso LT, Case No. 2:19-cv-
`00395-JRG (E.D. Tex.).
`
`The reexamination of the ’510 patent in Reexamination Control No.
`90/014,876 has been stayed pending the termination or completion of
`IPR2021-01493. NetNut Ltd. v. BrightData Ltd., IPR2021-01493, Paper 13
`(PTAB April 7, 2022). Because the reexamination of the ’510 patent would
`not be resumed until approximately March, 2023, if at all, it is not likely that
`reexamination of the patent claims would be completed by the time the final
`written decision issues in this case. As to the Teso district court litigation
`jury decision, Patent Owner’s arguments are based on alleged similarities of
`the prior art in the litigation and the Plamondon reference asserted here that
`are premised on Patent Owner’s proposed construction of the term “client
`device.” Prelim. Resp. 5–7. However, as discussed infra Sections IV.B.1
`
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`and IV.D, we do not agree with Patent Owner’s interpretation of the term
`“client device,” and we also determine that Petitioner has provided sufficient
`evidence that Plamondon discloses the limitations of claim 1.
`
`The estimated date of the Board’s final written decision in this case is
`early May, 2023. The NetNut jury selection is set for September, 2022.
`Thus, under the current schedule, the jury selection in the NetNut district
`court litigation would occur approximately eight months before the final
`written decision would issue in this case. As noted in the NetNut IPR, a trial
`date for this Patent Owner slipped by six months in a case in the Eastern
`District of Texas, and Patent Owner sought extensions in a related court
`proceeding. NetNut Ltd. v. BrightData Ltd., IPR2021-01493, Paper 11 at 12,
`Ex. 1101 (docket entries 65, 509), Ex. 1102 (PTAB April 7, 2022). Further,
`in the NetNut district court litigation, the date for the Markman hearing and
`several other case deadlines, such as fact and expert discovery close, have
`been rescheduled several times. See Bright Data Ltd. v. NetNut Ltd., No.
`2:21-cv-225 (E.D. Tex.), Dkt. Entries 56, 132, March 10, 2022 Notice,
`March 29, 2022 Notice. Considering these circumstances, we determine that
`this factor weighs only slightly in favor of exercising our discretion to deny
`institution.
`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 in view of the lack of the overlap of the issues between this
`proceeding and the NetNut litigation, this factor weighs against discretionary
`denial. Pet. 70 (citing MED-EL Elektromedizinische Geräte v. Adv. Bionics,
`IPR2021-00044, Paper 14, 27–28 (Apr. 6, 2021)). Patent Owner argues that
`
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`in the NetNut litigation, the Markman hearing and the fact discovery close
`are set to occur before the institution deadline in this IPR, so much of the
`work for invalidity is going to be completed in that litigation before
`institution of this IPR. PO Sur-reply 3.
`
`Petitioner notes that at the time of the Petition’s filing (November 4,
`2021) none of the defendants in other litigations had relied upon Plamondon
`as prior art. Pet. 69. Patent Owner argues that Plamondon was included in
`NetNut’s district court invalidity contentions. PO Sur-reply 2 (citing NetNut
`Ltd. v. Bright Data Ltd., IPR2021-01493, Ex. 1104 at 34 (PTAB Jan. 18,
`2022)). We note that the invalidity contentions in the NetNut district court
`litigation were filed on December 17, 2021, which is after the filing of the
`Petition. Further, Petitioner filed the Petition approximately five months
`after the June, 2021 filing of the complaint in the NetNut district court
`litigation. In view of the record, Petitioner acted diligently in filing the
`Petition with Plamondon as the primary prior art.
`
`Accordingly, when weighing the status of the NetNut district court
`litigation in view of Petitioner’s diligence, we determine that this factor does
`not favor discretionary denial.
`
`
`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 Plamondon is
`part of the invalidity contentions in the NetNut district court litigation.
`Prelim. Resp. 5; PO Sur-reply 2. Petitioner argues that inclusion of a
`reference in invalidity contentions does not make overlap at trial likely
`
`
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`enough to favor discretionary denial. Pet. Reply 2 (citing Bose v. Koss,
`IPR2021-00680, Paper 15 (Oct. 13, 2021)). Petitioner further asserts that the
`Board has found that invalidity theories in litigation are subject to narrowing
`and may not be relied upon at trial. Id. In response, Patent Owner contends
`that although NetNut may narrow its invalidity theories for trial, “the risk of
`duplicating work or inconsistency between the Board and the court is
`indeterminable.” PO Sur-reply 2 (citing Lab Corp. Am. Holdings v. Ravgen,
`IPR2021-01026, Paper 11 at 24 (PTAB Dec. 14, 2021)).
`
`The invalidity contentions filed in the NetNut district court litigation
`include several other prior art references that NetNut contends anticipate
`claims of the ’510 patent, including MorphMix, Border, Squid, Crowds, and
`Aoki, as well as including assertions of obviousness over these primary
`references in combination with several other prior art references. See
`NetNut Ltd. v. Bright Data Ltd., IPR2021-01493, Ex. 1104 at 34–37 (PTAB
`Jan. 18, 2022). Under these circumstances, it is fair to say that these
`contentions will be narrowed for trial. As such, the possibility that
`Plamondon will be addressed at trial does not favor discretionary denial.
`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.
`Petitioner is not a named party in any of the district court litigations that
`involve the ’510 patent. Patent Owner asserts that it is not aware of any
`relationship that would result in denial of institution, such as a time bar.
`Prelim. Resp. 7; PO Sur-Reply 1.
`
`At this juncture, Petitioner is not a party in any of the district court
`proceedings and there is no evidence in the record that another entity is a
`
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`real party in interest. We regard this as a strong reason not to exercise
`discretion to deny institution. Accordingly, we determine that this factor
`does not favor discretionary denial
`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 makes a strong showing on the merits.
`Pet. 71. Petitioner asserts that Patent Owner’s arguments on claim
`construction have been rejected by the Board based on the district court’s
`construction. Pet. Reply 4.
`
`Patent Owner contends that Petitioner only relies upon Plamondon as
`an anticipatory reference, but Plamondon fails to disclose a “client device”
`as that term was construed because the appliance in Plamondon would be
`understood to be a server. PO Sur-reply 3. Patent Owner argues that the
`examiner during prosecution, as well as the Teso defendants, interpreted
`Plamondon’s appliance to be a server. Id.
`
`As discussed below, we have reviewed Petitioner’s arguments against
`patentability and Patent Owner’s preliminary responses, and based on the
`record before us, we disagree with Patent Owner on issues of claim
`construction, as well as Patent Owner’s assertions that the merits of the
`Petition are weak. Rather, at this stage of the proceeding, we find that
`Petitioner has shown at least a reasonable likelihood of success on the
`merits. This is 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.1.
`Moreover, we determine that Petitioner’s showing on the disclosures of the
`
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`prior art is strong and weighs against exercising discretion to deny under
`factor 6. See Fintiv, at 14‒15 (noting that the merits favor institution under
`factor 6 “if the merits of a ground raised in the petition seem particularly
`strong.”).
`
`Accordingly, we determine that this factor weighs in favor of not
`exercising discretionary denial.
`7. Conclusion
`
`
`
`On this record, after weighing all of the factors and taking a holistic
`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
`asserts that it “is not presently aware of a significant relationship between
`Petitioner and NetNut, Code200, or Teso,” who are petitioners in other
`Board proceedings and defendants in district court litigations. Prelim. Resp.
`9. Patent Owner argues, however, that Petitioner had access to the
`preliminary response to the Code200/Teso petition against the ’510 patent as
`of December 2020, as well as other entries in district court litigations. Id.
`Patent Owner contends that Petitioner received the benefit of having had the
`opportunity to study Patent Owner’s arguments on the ’510 patent. Id.
`
`16
`
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`
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`IPR2022-00138
`Patent 10,484,510 B2
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`
`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. General Plastic addressed the
`situation where the same petitioner filed “follow-on petitions” against the
`same patents, after a first set of petitions was denied on the merits. General
`Plastic, Paper 19 at 2–3. There have been circumstances where General
`Plastic has not been limited to instances where multiple petitions are filed by
`the same petitioner. 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). But here, 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. Prelim. Resp. 7. Thus, we decline to
`exercise our discretion under 35 U.S.C. § 314(a) to deny inter partes review.
`
`C. Section 325(d)
`
`Under 35 U.S.C. § 325(d), when determining whether to institute an
`inter partes review, “the Director may take into account whether, and reject
`the petition or request because, the same or substantially the same prior art
`or arguments previously were presented to the Office.” In evaluating
`arguments under § 325(d), we use
`[a] two-part framework: (1) whether the same or substantially the
`same art previously was presented to the Office or whether the
`same or substantially the same arguments previously were
`presented to the Office; and (2) if either condition of first part of
`the framework
`is satisfied, whether
`the petitioner has
`demonstrated that the Office erred in a manner material to the
`patentability of challenged claims.
`
`17
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`Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH,
`IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential)
`(“Advanced Bionics”); see also Becton, Dickinson & Co. v. B. Braun
`Melsungen AG, IPR2017-01586, Paper 8 at 17–18 (PTAB Dec. 15, 2017)
`(precedential as to Section III.C.5, first paragraph) (listing factors to
`consider in evaluating the applicability of § 325(d)) (“Becton Dickinson”).
`
`Patent Owner contends that we should deny the Petition under
`§ 325(d) because Samuels, which shares overlapping material with
`Plamondon, was before the examiner during the prosecution of the ’510
`patent. Prelim. Resp. 10–11. Patent Owner asserts that Samuels was cited
`on an IDS during the prosecution of the ’510 patent, and was part of the
`prosecution record for related patent applications, which all had the same
`examiner. Id. at 10–11 (citing Pet. 74–75). Patent Owner argues that
`Petitioner admits that Samuels shares overlapping material with Plamondon,
`including Figures 1A–1E, 2A–2B, 3 and paragraphs 202 to 362 of
`Plamondon. Id. at 10 (citing Pet. 74).
`
`Patent Owner additionally asserts that although Petitioner contends
`that Plamondon has additional disclosures that anticipate claim 1, which the
`Patent Office never considered, Samuels and Plamondon disclose the same
`network architecture. Prelim. Resp. 11. Patent Owner contends that
`Petitioner does not identify any error by the examiner based on the
`examiner’s interpretation of the network architecture in both Samuels and
`Plamondon. Id. Patent Owner asserts that the examiner did not understand
`appliance 200 of Samuels/Plamondon to be a client device, but rather a type
`of server, and Petitioner takes a contradictory position to this. Id. at 11–12.
`Patent Owner argues that the Board need not expend resources to conduct an
`
`18
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`Page 18 of 40
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`
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`IPR2022-00138
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`entire trial to conclude that the appliance of Samuels and Plamondon do not
`disclose a “first client device.” Id. at 12.
`
`Under Advanced Bionics, Becton Dickinson factors (a), (b), and (d)
`are considered in the evaluation of whether the same or substantially the
`same art or arguments were previously presented to the Office. Advanced
`Bionics, Paper 6 at 10. Becton, Dickinson identifies these factors as (a) the
`similarities and material differences between the asserted art and the prior art
`involved during examination; (b) the cumulative nature of the asserted art
`and the prior art evaluated during examination; and (d) the extent of the
`overlap between
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