Paper 19
`Trials@uspto.gov
`571-272-7822 Entered: October 19, 2022
`
`
`
`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,
`Petitioner,
`
`v.
`
`BRIGHT DATA LTD.,
`Patent Owner.
`____________
`
`IPR2022-00862
`Patent 10,484,510 B2
`____________
`
`
`
`Before THOMAS L. GIANNETTI, SHEILA F. McSHANE, and
`RUSSELL E. CASS, Administrative Patent Judges
`
`McSHANE, Administrative Patent Judge.
`
`
`
`DECISION
`Rehearing on Director Remand
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`Granting Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. § 42.122
`
`Major Data Ex. 1120
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`IPR2022-00915
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`Trials@uspto.gov
`571-272-7822 Entered: October 19, 2022
`
`
`
`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,
`Petitioner,
`
`v.
`
`BRIGHT DATA LTD.,
`Patent Owner.
`____________
`
`IPR2022-00862
`Patent 10,484,510 B2
`____________
`
`
`
`Before THOMAS L. GIANNETTI, SHEILA F. McSHANE, and
`RUSSELL E. CASS, Administrative Patent Judges
`
`McSHANE, Administrative Patent Judge.
`
`
`
`DECISION
`Rehearing on Director Remand
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`Granting Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. § 42.122
`
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`
`I. INTRODUCTION
`We address this case after a decision by the Under Secretary of
`
`Commerce for Intellectual Property and Director of the United States Patent
`and Trademark Office vacating our previous decision denying institution,
`remanding for further proceedings, and ordering us to reconsider joinder
`after reconsidering the decision denying institution. Paper 18 (“Remand
`Dec.”).
`
`II. BACKGROUND
`
`A. Background of Proceeding
`Code200, UAB, Teso LT, UAB, Metacluster LT, UAB, Oxysales,
`
`UAB, and Coretech LT, UAB (“Petitioner” or “Code200”) filed a Petition
`for inter partes review of claims 1, 2, 6–11, 13, and 15–24 of U.S. Patent
`No. 10,484,510 B2 (Ex. 1001, “the ’510 patent”). Paper 1 (“Pet.”). Bright
`Data Ltd. (“Patent Owner”) filed a Preliminary Response. Paper 15
`(“Prelim. Resp.”). With the Petition, Petitioner also filed a Motion for
`Joinder with NetNut Ltd. v. Bright Data Ltd., IPR2021-01493 (“the 1493
`IPR” ). Paper 7 (“Mot.”). Patent Owner filed an Opposition to the Motion
`for Joinder. Paper 11 (“Opp.”). Petitioner filed a Reply to Patent Owner’s
`Opposition. Paper 13 (“Reply”).
`
`The Petition in this proceeding asserts the same grounds of
`unpatentability as those upon which we instituted review in the 1493 IPR.
`Compare Pet. 10, with NetNut Ltd. v. Bright Data Ltd., IPR2021-01493,
`Paper 11 at 7, 42 (PTAB Mar. 21, 2022) (“1493 Decision” or “1493 Dec.”).
`Consistent with this, Petitioner contends that the Petition is “is substantially
`identical to the petition in the NetNut IPR [1493 IPR] and contains the same
`grounds (based on the same prior art and supporting evidence) against the
`
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`same claims, and differs only as necessary to reflect the fact that it is filed by
`a different petitioner.” Pet. 2 (citing Ex. 1024).
`
`On July 25, 2022, we issued a Decision in this case exercising
`discretion to deny institution based on an assessment of factors set forth in
`General Plastic Industrial Co. Ltd. v. Canon Kabushiki Kaisha, IPR2016-
`01357, Paper 19 (PTAB Sept. 6, 2017) (precedential as to § II.B.4.i)
`(General Plastic). Paper 17 (“Dec.”). Our Decision also denied joinder of
`this case with the 1493 IPR. Id. at 17. The Director reviewed our Decision
`sua sponte, vacated the Decision, and remanded the case to the panel, with
`orders that our Decision denying institution and joinder be reconsidered
`consistent with the Remand Decision. Remand Dec. 7.
`
`B. Director Decision and Scope of Remand
`
`The Director considered our discretionary denial of institution under
`General Plastic, and clarified General Plastic by stating that, “[w]here the
`first-filed petition . . . was discretionarily denied or otherwise was not
`evaluated on the merits,” a finding favoring discretionary denial under
`General Plastic’s factors 1–3 is limited to “when there are ‘road-mapping’
`concerns under factor 3 or other concerns under factor 2.” Remand Dec. 5.
`The Director noted that in this case, the panel had found “no evidence of
`road-mapping.” Id. at 5 (citing Dec. 13). The Director added that “‘road-
`mapping’ concerns are minimized when, as in this case, a petitioner files a
`later petition that raises unpatentability challenges substantially overlapping
`with those in the previously-filed petition and the later petition is not refined
`based on lessons learned from later developments.” Id. at 5. The Director
`agreed with the Board’s finding that General Plastic’s factors 2, 4, and 5 “
`have limited relevance.” Id. at 6. The Director similarly found factor 7 to
`
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`“have limited relevance” because the one-year statutory time period may be
`adjusted for a joined case under 35 U.S.C. § 316(a)(11). Id. (citing Dec. 16).
`Further, the Director disagreed with the panel’s determination on factor 6 in
`view of potential inefficiencies, with the Director determining that “the
`Board’s mission ‘to improve patent quality and restore confidence in the
`presumption of validity that comes with issued patents’ outweighs the
`impact on Board resources needed to evaluate the merits of a petition.” Id.
`In accordance with the evaluation of the factors, the Director found that “the
`Patent Owner’s concerns of fairness are outweighed by the benefits to the
`patent system of improving patent quality by reviewing the merits of the
`challenges raised in the petitions, which have not been addressed to date.”
`Id.
`The Director remanded the case to the panel for further proceedings,
`
`with direction to reconsider the institution decision and joinder. Remand
`Dec. 7. The Director directed that the panel “consider the Patent Owner’s
`remaining arguments, including those for discretionary denial under Fintiv
`and against the merits of the Petitioner’s patentability challenges.” Id.
`
`C. Related Proceedings
`The ’510 patent has been the subject of numerous proceedings in
`district court and the Board. We summarized several related proceedings in
`the previous decision denying institution in this case. Dec. 3–5. The
`proceedings of most interest are the 1493 IPR, IPR2020-01358 (“the
`previously-filed 1358 IPR”), and Bright Data Ltd. v. Teso LT, UAB, 2:19-
`cv-00395-JRG (E.D. Tex.) (“the Teso litigation”).
`
`4
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`
`In the 1493 IPR, the case to which Petitioner is seeking joinder, we
`instituted an inter partes review of claims 1, 2, 6–11, 13, and 15–24 of the
`’510 patent on the following grounds:
`
`Claims Challenged
`1, 6, 7, 132, 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
`
`35 U.S.C. §1
`102(b)
`
`Reference(s)/Basis
`Crowds3
`
`103(a)
`
`102(b)
`
`103(a)
`
`102(b)
`
`103(a)
`
`Crowds, RFC 26164
`
`Border5
`
`Border, RFC 2616
`
`MorphMix6
`
`MorphMix, RFC 2616
`
`
`1 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, with Petitioner not contesting that
`priority, the pre-AIA versions of §§ 102 and 103 apply. See Ex. 1001, code
`(60); Pet. 17.
`2 The Petition includes assertions for claim 13 under the Crowds anticipation
`ground. Pet. 33. Accordingly, we include this claim in the summary table,
`although not included in the Petition’s summary table. Id. at 10.
`3 Michael K. Reiter, Crowds: Anonymity for Web Transactions, ACM
`Transactions on Information and System Security, Vol. 1, No. 1, November
`1998, at 66–92 (Ex. 1006).
`4 Hypertext Transfer Protocol—HTTP/1.1, Network Working Group, RFC
`2616, The Internet Society, 1999 (Ex. 1013).
`5 U. S. Patent No. 6,795,848, issued September 21, 2004 (Ex. 1012).
`6 Marc Rennhard, MorphMix—A Peer-to-Peer-based System for
`Anonymous Internet Access (2004) (Ph.D. dissertation, Swiss Federal
`Institute of Technology) (Ex. 1008).
`
`5
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`NetNut Ltd. v. Bright Data Ltd., IPR2021-01493, Paper 11 at 7, 42 (PTAB
`Mar. 21, 2022).
`
`Patent Owner settled with NetNut in the 1493 IPR, and NetNut has
`
`been terminated as Petitioner in that action. 1493 IPR, Paper 19.
`
`In the previously-filed 1358 IPR, Petitioner challenged claims of the
`’510 patent, and Crowds, Border, and MorphMix were the primary prior art
`asserted. Code200, UAB v. Luminati Networks Ltd.,7 IPR2020-01358, Paper
`5. The previously-filed 1358 IPR was denied on discretionary grounds. Id.,
`Paper 11 (Feb. 2, 2021).
`
`In the Teso litigation, Bright Data Ltd., the Patent Owner here, sued
`defendants Teso LT, UAB, Metacluster LT, UAB, Oxysales, UAB, and
`Coretech LT, UAB, some of the petitioner group here, for infringement of
`the ’510 patent, as well as for infringement of U.S. Patent Nos. 10,257,319
`and 10,469,614. Mot. 2. The litigation was filed on December 6, 2019. Id.
`A jury trial was conducted in November, 2021, and the issue of whether
`claims 1 and 26 of the ’510 patent were invalid in view of the Crowds
`reference asserted here was presented by the defendants. Id. The jury found
`that the defendants did not prove that these claims were invalid by clear and
`convincing evidence. Id. (citing Ex. 1024, 5).
`Additionally, the parties indicate that the ’510 patent is the subject of
`an ex parte reexamination, Control No. 90/014,876, which has been stayed.
`Mot. 5; Paper 16, 2.
`
`
`7 Bright Data Ltd. was formerly known as Luminati Networks Ltd. See
`Paper 10, 2.
`
`
`6
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`D. The ’510 Patent (Ex. 1001)
`
`The ’510 patent is titled “System Providing Faster and More Efficient
`
`Data Communication” and issued on November 19, 2019 from an
`application filed on February 17, 2019. Ex. 1001, codes (22), (45), (54).
`The patent is subject to a terminal disclaimer. Id. at code (*). The
`application for the ’866 patent claims priority to several applications,
`including U.S. Provisional Application No. 61/249,624, filed October 8,
`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.
`
`7
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`Figure 3 is a schematic diagram depicting communication network 100
`including a number of communication devices. Ex. 1001, 4:56–48. Client
`102 is capable of communicating with peers 112, 114, and 116, as well as
`with one or more agents 122. Id. at 4:58–60. Web server 152 may be “a
`typical HTTP server, such as those being used to deliver content on any of
`the many such servers on the Internet.” Id. at 4:65–5:2. Acceleration server
`162 includes an 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
`
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`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
`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.
`
`The ’510 patent has twenty four claims. Claim 1, the only
`independent claim in the ’510 patent, is illustrative of the claimed subject
`matter and is reproduced below, with bracketed designations added to the
`limitations for reference purposes.
`1. [pre] A method for use with a web server that responds to
`Hypertext Transfer Protocol (HTTP) requests and stores a first content
`identified by a first content identifier, the method by a first client
`device comprising:
`[a] establishing a Transmission Control Protocol (TCP)
`connection with a second server;
`
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`[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.
`
`
`
`
`E. Asserted Grounds
`Petitioner asserts the following grounds of unpatentability. Pet. 10.
`
`Claim(s) Challenged 35 U.S.C. §
`1, 6, 7, 13,8 15, 16,
`18–24
`1, 2, 6–11, 13, 15. 16,
`18–24
`1, 6, 10, 15–20, 22–
`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
`
`103
`
`102
`
`103
`
`102
`
`103
`
`References/Basis
`
`Crowds
`
`Crowds, RFC 26169
`
`Border
`
`Border, RFC 2616
`
`MorphMix
`
`MorphMix, RFC 2616
`
`
`8 The Petition includes assertions for claim 13 under the Crowds anticipation
`ground. Pet. 32. Accordingly, we include this claim in the summary table,
`although not included in the Petition’s summary table. Id. at 10.
`9 For the obviousness challenges under Crowds, Border, and MorpMix,
`Petitioner additionally refers to the basis in view of the “knowledge of a
`POSITA.” Pet. 10. We understand this to refer to a person of ordinary skill
`in the art’s understanding of the applied references and not to supplying
`missing limitations or incorporating an unspecified disclosure by reference
`to supply missing claim limitations.
`10
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`III. DISCRETIONARY DENIAL
`In accordance with the Remand Decision, we consider discretionary
`
`denial under Fintiv. Remand Dec. 7. Patent Owner contends the Board
`should deny the Petition under 35 U.S.C. § 314(a) because “the Fintiv
`factors overwhelmingly favor denial of institution.” Prelim. Resp. 16.
`
`The Board’s precedential decision in Apple Inc. v. Fintiv Inc.,
`IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”),
`identifies a non-exclusive list of factors parties may consider addressing
`where there is a related, parallel district court action to determine whether
`such action provides any basis for discretionary denial. Fintiv, Paper 11 at
`5–16. Those factors include:
`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.
`Id. at 5–6.
`
`On June 21, 2022, the Director of the United States Patent and
`Trademark Office issued an Interim Procedure for Discretionary Denials in
`AIA Post-Grant Proceedings with Parallel District Court Litigation
`
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`(“Memorandum”)10 to clarify “the [Board’s] current application of Fintiv to
`discretionary institutions when there is parallel litigation” and to “confirm[]
`that the precedential import of Fintiv is limited to the facts of that case.”
`Memorandum 2. In particular, the Memorandum states that the Board
`will not deny institution of an IPR or PGR under Fintiv (i) when
`a petition presents compelling evidence of unpatentability;
`(ii) when a request for denial under Fintiv is based on a parallel
`ITC proceeding; or (iii) where a petitioner stipulates not to
`pursue in a parallel district court proceeding the same grounds as
`in the petition or any grounds that could have reasonably been
`raised in the petition.
`Id. at 9.
`Patent Owner asserts that the status of the Teso litigation, where a jury
`verdict has been reached, should be considered in the Fintiv evaluation.
`Prelim. Resp. 16. Patent Owner contends that factors 2–6 of Fintiv favor
`denial and factor 1 is neutral. Id. at 16–24. Patent Owner argues that
`Crowds was the reference before the jury, and MorphMix is cumulative to
`Crowds. Id. at 19. Patent Owner also asserts that Border cannot apply as an
`invalidity reference because of the District’s Court’s claim construction. Id.
`Petitioner contends that the Teso litigation concerned different claims,
`different prior art, and a different burden of proof compared to the inter
`partes review sought to be joined. Mot. 6–9. Petitioner asserts that Crowds
`was the only reference before the jury in that litigation. Id. at 7. Petitioner
`also asserts that the jury in the Teso litigation did not have the benefit of the
`District Court’s Supplemental Claim Construction Order (Ex. 1020), which
`
`
`10 Available at: https://www.uspto.gov/sites/default/files/documents/interim
`_proc_discretionary_denials_aia_parallel_district_court_litigation_memo_2
`0220621_.pdf
`
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`is available here and which “the Board found persuasive” in the 1493 IPR.
`Id. at 9. Petitioner contends further that the Teso litigation has been stayed
`and, if and when the stay is lifted, the defendants intend to file post-
`judgment motions. Id. at 3.
`
`We consider the Director’s Memorandum, which directs that “the
`PTAB will not rely on the Fintiv factors to discretionarily deny institution in
`view of parallel district court litigation where a petition presents compelling
`evidence of unpatentability.” Memorandum 2. The Memorandum explains
`that “where the PTAB determines that the information presented at the
`institution stage presents a compelling unpatentability challenge, that
`determination alone demonstrates that the PTAB should not discretionarily
`deny institution under Fintiv.” Id. at 4–5 (emphasis added). The
`Memorandum further explains that “[c]ompelling, meritorious challenges
`are those in which the evidence, if unrebutted in trial, would plainly lead to a
`conclusion that one or more claims are unpatentable by a preponderance of
`the evidence.” Id. at 4.
`On the current record, we determine that Petitioner’s invalidity
`grounds present compelling unpatentability challenges. See infra Sections
`IV, D–I. In particular, in our view at this stage of the proceeding, the
`Petition presents compelling evidence that three prior art references,
`including Border, which was not before the jury in the Teso litigation,
`anticipate many of the claims of the ’510 patent. We determine that
`instituting inter partes review under these circumstances “strikes a balance
`among the competing concerns of avoiding potentially conflicting outcomes,
`avoiding overburdening patent owners, and strengthening the patent system
`by eliminating patents that are not robust and reliable.” Memorandum 5.
`
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`Accordingly, based upon our consideration of the evidence and
`arguments presented in the Petition, and pursuant to the directive in the
`Memorandum concerning compelling, meritorious challenges, we decline to
`exercise our discretion under § 314(a) to deny institution of inter partes
`review as Patent Owner requests.
`IV. ANALYSIS
`A. Level of Ordinary Skill in the Art
`
`
`According to Petitioner, a person of ordinary skill in the pertinent art
`“would have at least a bachelor’s degree in Computer Science or related
`field (or equivalent experience), and two or more years’ experience working
`with and programming networked computer systems as of the Priority Date.”
`Pet. 15 (citing Ex. 1005 ¶¶ 25–27). Petitioner further states that “[s]uch a
`person would be familiar with the underlying principles of Web, Internet, or
`network communication, data transfer, and content sharing across networks,
`including the HTTP and TCP/IP protocols.” Id.
`
`Patent Owner submits that a person of ordinary skill in the art “had a
`Master’s Degree or higher in the field of Electrical Engineering, Computer
`Engineering, or Computer Science or as of that time had a Bachelor’s
`Degree in the same fields and two or more years of experience in Internet
`Communications.” Prelim. Resp. 35 (citing Ex. 2054 ¶ 18). Patent Owner
`states that this definition and Petitioner’s definition of a person of ordinary
`skill in the art “are not materially different, at least in terms of affecting an
`institution decision in this IPR.” Id. at 36 (citing Ex. 2033, 18; Ex. 2034,
`18).
`For the purposes of this Decision, we adopt Petitioner’s proposed
`
`level of qualifications because it is consistent with the ’510 patent and the
`
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`prior art at issue. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir.
`2001) (prior art itself may reflect an appropriate level of skill).
`
`B. Claim Construction
`In this inter partes review, claims are construed using the same claim
`construction standard that would be used to construe the claims in a civil
`action under 35 U.S.C. § 282(b). 37 C.F.R. § 42.100(b) (2022). Under the
`principles set forth by our reviewing court, the “words of a claim ‘are
`generally given their ordinary and customary meaning,’” as would be
`understood by a person of ordinary skill in the art in question at the time of
`the invention. Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005)
`(en banc) (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582
`(Fed. Cir. 1996)). “In determining the meaning of the disputed claim
`limitation, we look principally to the intrinsic evidence of record, examining
`the claim language itself, the written description, and the prosecution
`history, if in evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek,
`Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at
`1312–17).
`
`Petitioner asserts that the district court’s constructions in Luminati
`Networks Ltd. v. Teso LT, UAB, et al., No. 2:19-cv-395 (E.D. Tex.) (Teso
`Litigation), are appropriate in this case. Pet. 15. In particular, Petitioner
`points to two claim construction orders in that case—the “Teso Order” (Ex.
`1017) and the “Teso Supplemental Order” (Ex. 1020). Id. at 15–20. In the
`Teso litigation, the parties agreed to certain constructions adopted by the
`district court. Ex. 1017, 9. Accordingly, the district court construed the
`preamble of claim 1 of the ’510 patent to be limiting, and construed certain
`other terms to have their “plain and ordinary meaning.” Id. In addition, the
`
`15
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`district court construed certain disputed terms, including “client device” and
`“second server.” Id. at 12–14. The district court construed “client device”
`as “communication device that is operating in the role of a client.” Id. at 12.
`The district court initially construed “second server” as “server that is not
`the client device.” Id. at 14. Later, the court granted the defendants’ request
`for clarification as to the scope of this construction, and determined that a
`“second server” is “a device that is operating in the role of a server and that
`is not the first client device.” Ex. 1020, 8, 11.
`Patent Owner proposes that “the correct construction for ‘second
`server’ is a ‘server that is not [] a client device.’” Prelim. Resp. 36 (citing
`Ex. 2054 ¶ 71). Patent Owner argues that the district court was incorrect and
`a person of ordinary skill would understand that a client device is not a
`server. Id. at 43–64.
`Patent Owner also asserts that in the Teso litigation the term “client
`device” was construed as an “communication device operating in the role of
`a client,” and asserts that a “‘communication device’ in the context of the
`specification is not simply any device that communicates over the Internet”
`Prelim. Resp. 38 (citing Ex. 2054 ¶ 38). Patent Owner argues that “the
`Court has repeatedly emphasized that a client device is not merely a general-
`purpose computer.” Id. Patent Owner contends that “in the context of the
`specification, a client device would be understood to be, more specifically, a
`consumer computer like a smartphone, tablet, laptop, or personal computer.”
`Id. at 40. Patent Owner presents further arguments on this issue, noting
`disagreements with the district court, and referring to the prosecution history
`and extrinsic evidence. Id. at 40–43.
`
`16
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`
`For the purposes of this decision, we adopt the district court’s
`construction for the “second server” as clarified in the Teso Supplemental
`Order. Ex. 1020, 11. Thus, we adopt the district court’s original
`construction, with the clarification that the second server is “a device that is
`operating in the role of a server and that is not the first client device.” Id. at
`8. Specifically, we adopt the district court’s clarification that “a component
`can be configured to operate in different roles—so long as it does not
`simultaneously serve as more than one of: the client device, the first
`server/second server, and the web server.” Id. at 10 (internal quotation
`marks omitted). Additionally, we adopt the district court construction of
`“client device” as “communication device that is operating in the role of a
`client.” Ex. 1017, 12.
`We only construe terms that are necessary to resolve disputes. See
`Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013,
`1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d
`795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in
`controversy, and only to the extent necessary to resolve the controversy.”).
`At this stage, no other terms require explicit construction. To the extent we
`need to interpret any other terms, we will do so in the context of the analysis
`of the prior art that follows.
`
`
`
`C. Principles of Law
`A claim is unpatentable under 35 U.S.C. § 102 if a prior art reference
`discloses each and every limitation of the claimed invention, either explicitly
`or inherently. Glaxo Inc. v. Novopharm Ltd., 52 F.3d 1043, 1047 (Fed. Cir.
`1995); see MEHL/Biophile Int’l Corp. v. Milgraum, 192 F.3d 1362, 1365
`(Fed. Cir. 1999) (“To anticipate, a claim a prior art reference must disclose
`
`17
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`every limitation of the claimed invention . . .”, any limitation not explicitly
`taught must be inherently taught and would be so understood by a person
`experienced in the field); In re Baxter Travenol Labs., 952 F.2d 388, 390
`(Fed. Cir. 1991) (the dispositive question is “whether one skilled in the art
`would reasonably understand or infer” that a reference teaches or discloses
`all of the limitations of the claimed invention).
`A patent claim is unpatentable under 35 U.S.C. § 103 if “the
`differences between the claimed invention and the prior art are such that the
`claimed invention as a whole would have been obvious before the effective
`date of the claimed invention to a person having ordinary skill in the art to
`which said subject matter pertains.” 35 U.S.C. § 103 (2011); see also KSR
`Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
`obviousness is resolved on the basis of underlying factual determinations
`including: (1) the scope and content of the prior art; (2) any differences
`between the claimed subject matter and the prior art; (3) the level of ordinary
`skill in the art; and (4) when in evidence, objective indicia of
`nonobviousness.11 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`
`D. Description of the Principal Prior Art References
`
`1. Crowds (Ex. 1006)
`Crowds is an article that “introduce[s] a new approach for increasing
`the privacy of web transactions.” Ex. 1006, 2.12 In this approach, a user
`joins a “crowd” of other users, wherein the user’s request to a web server is
`
`
`11 No evidence relating to objective indicia of nonobviousness is presented
`by the parties.
`12 Unless otherwise stated, citations to exhibits use the page numbers
`assigned by the parties and not the original page numbers.
`18
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`passed to a random member of the crowd, and possibly forwarded to one or
`more other members, prior to being submitted to the end server. Id. In this
`way, “[w]hen the request is eventually submitted, it is submitted by a
`random member, thus preventing the end server from identifying its true
`initiator.” Id. In Crowds, “[a] user is represented by a process on her
`computer called a jondo (pronounced ‘John Doe’ and meant to convey the
`image of a faceless participant).” Id. at 8. “When the jondo is started, it
`contacts a server called the blender to request admittance to the crowd.” Id.
`Exemplary paths for web requests from crowd users are shown in Figure 2
`(id. at 9), reproduced below:
`
`In Figure 2 of Crowds, above, when a jondo receives a user request from a
`browser, it “initiates the establishment of a random path of jondos that
`carries its users’ transactions to and from their intended web servers.” Ex.
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