`
`
`
`
`U.S. Patent No. 10,257,319
`Inter Partes Review
`Petitioners’ 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. IPR2022-01109
`Patent No. 10,257,319
`____________
`
`MOTION FOR JOINDER TO INTER PARTES
`REVIEW IPR2022-00135
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`
`I.
`II.
`III.
`
`IV.
`
`STATEMENT OF PRECISE RELIEF REQUESTED ................................ 1
`STATEMENT OF MATERIAL FACTS ..................................................... 2
`STATEMENT OF REASONS FOR RELIEF REQUESTED ...................... 6
`A.
`Joinder is Timely.................................................................................. 6
`B. All Applicable Factors Support Joinder .......................................... 7
`1. Joinder is appropriate (factor 1). ..................................................... 8
`a. The District Court Action concerned different claims, different
`prior art, a different burden of proof, and remains unresolved and stayed. .. 8
`b. The previously filed ’319 EPR is stayed pending the outcome of
`the co-pending NetNut IPR. ...................................................................... 10
`c. The previously filed Code200 Petition challenging the ’319
`patent was timely filed and not considered on the merits. .......................... 11
`d. The PTAB’s discretionary denials of Petitioners’ IPR2021-
`01502 and IPR2021-01503, related to two different patents, 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
`
`i
`
`
`
`TABLE OF AUTHORITIES
`
`
`CASES
`Novartis AG v. Noven Pharm. Inc.,
`853 F.3d 1289 (Fed. Cir. 2017) .......................................................................... 9
`Personal Audio LLC v. CBS Corp.,
`946 F.3d 1348 (Fed. Cir. 2020) .......................................................................... 9
`
`Page(s)
`
`
`IPRS
`Apple Inc. v. Fintiv Inc., IPR2020-00019 ....................................................... passim
`Apple Inc. v. INVT SPE LLC, IPR2019-00958 ...................................................... 10
`Apple Inc. v. Uniloc 2017 LLC, IPR2020-00854 ..................................................... 7
`Garmin Int’l, Inc. v. Philips North Am. LLC, IPR2020-00910 .............................. 14
`General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-
`01357 ........................................................................................................... 7, 12
`HTC v. Parthenon Unified Memory Architecture LLC, IPR2017-00512 ......... 10, 14
`Intel Corp. v. VLSI Tech. LLC, IPR2022-00366 .......................................... 7, 10, 12
`Kyocera Corp. v. Softview LLC, IPR2013-00004 .................................................... 7
`Qualcomm Inc. v. Bandspeed, Inc., IPR2015-00314 ............................................... 7
`Mylan Pharms. Inc. v. Novartis AG, IPR2014-00550 ............................................ 15
`Samsung Elecs. Co. v. Raytheon Co., IPR2016-00962 .......................................... 13
`STMicroelectronics, Inc. v. Lone Star Silicon Innv., LLC, IPR2018-00436 ........... 14
`
`
`
`ii
`
`
`
`I.
`
`STATEMENT OF PRECISE RELIEF REQUESTED
`
`Petitioners Code200, UAB; Teso LT, UAB; Metacluster LT, UAB; Ox-
`
`ysales, UAB; and coretech LT UAB (collectively, “Petitioners”) move for joinder
`
`of their contemporaneously filed Petition for Inter Partes Review IPR2022-01109
`
`(the “Petition”) of claims 1-29 of U.S. Patent No. 10,257,319 (the “’319 patent”)
`
`with The Data Company Technologies Inc. v. Bright Data Ltd., IPR2022-00135
`
`(the “Data IPR”), which the Board instituted on June 1, 2022. The Board also insti-
`
`tuted NetNut Ltd. v. Bright Data Ltd., IPR2021-01492 (the “NetNut IPR”) also
`
`challenging the ’319 patent, which Petitioners also seek to join in IPR2022-00861.
`
`In addition to the present Petition, Petitioners have previously sought review
`
`of the validity of certain claims of the ’319 patent in federal court, the Central
`
`Reexam Unit (in an ex parte review instituted and stayed in view of the NetNut
`
`IPR), and the PTAB (original petition denied on Fintiv grounds, and motion to join
`
`NetNut IPR pending). In each of the Data IPR and NetNut IPR, the Board found “a
`
`reasonable likelihood that [Petitioner] would prevail with respect to at least one
`
`claim.” NetNut IPR, Paper 12; Data IPR, Paper 12. Nevertheless, to date, no tribu-
`
`nal has issued a final decision regarding the validity of the ’319 patent. To obtain a
`
`final determination regarding the validity of the ’319 patent, Petitioners file the
`
`present petition and Motion for Joinder to the Data IPR.
`
`1
`
`
`
`The present Petition concerns the same patent and the same claims as the
`
`Data IPR. The present Petition and supporting expert declaration are substantively
`
`identical to the Data IPR petition and expert declaration. Thus, Petitioners here as-
`
`sert that the same claims are anticipated and/or obvious over the same prior art,
`
`based on the same substantive arguments supported by the same expert, as in the
`
`Data IPR.
`
`Petitioners agree to take an “understudy” role if joined. Joinder will not
`
`cause any delay in the resolution of the Data IPR. Thus, if the Board concludes
`
`joinder is appropriate because it will promote the efficient and consistent resolution
`
`of the same patentability issues of the same patent, joinder will not delay the
`
`schedule that the Board has issued in the Data IPR, and the parties in the Data IPR
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`will not suffer prejudice.
`
`II.
`
`STATEMENT OF MATERIAL FACTS
`
`1.
`
`2.
`
`Bright Data Ltd. (“Patent Owner”) purports to own the ’319 patent.
`
`Patent Owner asserts the ’319 patent against Teso LT, UAB; Meta-
`
`cluster LT, UAB; and Oxysales, UAB (collectively, “Oxylabs”) in a lawsuit styled
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`Bright Data Ltd. v. Teso LT, UAB et al., 2:19-cv-00395-JRG (E.D. Tex.) filed on
`
`December 6, 2019 (the “District Court Action”).
`
`3.
`
`Although the District Court Action originally included claims 1, 17,
`
`24, 25 and 27 of the ’319 patent, ultimately Patent Owner only proceeded to trial
`
`2
`
`
`
`on claims 1 and 26. At trial, Oxylabs argued, among other things, that claims 1 and
`
`26 of the ’319 patent—the only then asserted claims—were invalid as anticipated
`
`by a single prior-art reference known as “Crowds.” The jury returned a verdict an-
`
`swering “no” to the question “[d]id Oxylabs prove by clear and convincing evi-
`
`dence any of the following Asserted Claims are invalid?” (with “Asserted Claims”
`
`defined as only claims 1 and 26). See Ex. 1080, District Court 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 prosecu-
`
`tion, 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?” Ex.
`
`1081, 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
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`this absolutely is not valid, that the Patent Office messed up twice. Somehow in the
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`1200 pages of communications, those patent examiners were clueless. And if you
`
`don’t find that, you have to say no to invalidity in this case.”).
`
`4.
`
`On December 15, 2021, the district court stayed the District Court Ac-
`
`tion to allow for mediation. Ex. 1082, ECF No. 543. On March 16, 2022, the dis-
`
`trict court denied Patent Owner’s subsequent Motion to Lift the Stay to allow for
`
`further mediation. Ex. 1083, ECF No. 580. Consequently, the District Court Action
`
`remains stayed.
`
`3
`
`
`
`5.
`
`If and when the stay is lifted and final judgment is entered, Oxylabs
`
`intends to file post-judgment motions asserting that Oxylabs is entitled to Judg-
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`ment as a Matter of Law or, at a minimum, a new trial, based on (among other
`
`things) its anticipation defense because the jury did not consider the prior art in
`
`view of the correct construction of “server” (e.g., the jury did not receive instruc-
`
`tions concerning the District Court’s claim-construction decisions that were cited
`
`favorably by the Board in its Data IPR institution decision). See Ex. 1084, ECF
`
`570 at 7.
`
`6.
`
`Previously, Petitioners filed a separate petition (the “Code200 Peti-
`
`tion”) styled Code200, UAB, et al. v. Luminati Networks Ltd. [now Bright Data
`
`Ltd.], IPR2020-01266 (the “Code200 IPR”) on July 14, 2020, challenging certain
`
`claims of the ’319 patent. See Code200 IPR, Paper 5.
`
`7.
`
`On December 23, 2020, the Board denied the Code200 Petition solely
`
`based on discretionary grounds in view of the pending District Court Action. See
`
`id., Paper 18 (citing Apple Inc. v. Fintiv Inc., IPR2020-00019, Paper 11 (PTAB
`
`Mar. 20, 2020) (Fintiv)). At the time of this decision, Patent Owner asserted claims
`
`1, 2, 14, 15, 17-19, 21, 22, and 24-29 of the ’319 patent against Oxylabs in the Dis-
`
`trict Court Action. Id. at 9.
`
`8.
`
`Following the discretionary denial of the Code200 Petition, on Octo-
`
`ber 7, 2021, Teso LT, UAB requested Ex Parte Reexamination of the ’319 patent,
`
`4
`
`
`
`No. 90/014,875 (the “’319 EPR”). On November 12, 2021, the Patent Office found
`
`a substantial new question of patentability with respect to the challenged claims 1,
`
`2, 12, 14, 15, 17, 18, 19, 21, 22, 24, 25, 26, 27, 28, and 29 of the ’319 patent. On
`
`March 25, 2022, the Patent Office issued a Non-Final Office Action rejecting the
`
`same claims of the ’319 patent. However, on April 7, 2022, the PTAB stayed the
`
`’319 EPR pending the termination or completion of the NetNut IPR (discussed di-
`
`rectly below). See NetNut IPR, Paper 14.
`
`9.
`
`On September 3, 2021, NetNut filed the NetNut IPR, requesting can-
`
`cellation of certain claims of the ’319 patent. See NetNut IPR, Paper 2.
`
`10. On March 21, 2022, the Board instituted the NetNut IPR as to all
`
`challenged claims and entered a Scheduling Order. Id., Papers 12 and 13. Petition-
`
`ers in the present petition filed a Petition and Motion for Joinder to the NetNut
`
`IPR, which is currently pending. IPR2022-00861, Paper 7.
`
`11. On November 3, 2021, The Data Company Technologies Inc. filed a
`
`petition for IPR challenging claims 1-29 of the ’319 patent. See Data IPR, Paper 2.
`
`12. The Board instituted the Data IPR less than 30 days ago on June 1,
`
`2022. Id., Paper 12. Petitioners now seek to join the Data IPR via this Motion.
`
`13. Along with this Motion for Joinder, Petitioners simultaneously filed
`
`the present Petition, which argues, among other things, that the same claims of the
`
`’319 patent are anticipated and/or obvious based on the same grounds and for the
`
`5
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`
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`same reasons set forth in the Data IPR petition. The Petition is supported by the
`
`same expert declaration of Professor Dave Levin submitted in support of the Data
`
`IPR petition.
`
`14. The grounds proposed in the Petition are the same as those proposed
`
`in the Data IPR petition—i.e., the Petition does not contain any additional argu-
`
`ments or evidence in support of the unpatentability of claims 1-29 of the ’319 pa-
`
`tent. Exhibit 1079 to the Petition provides a comparison between the present Peti-
`
`tion and the Data IPR petition, showing the minimal, non-substantive changes re-
`
`lated to formalities of different parties filing different petitions. Other than Exhibit
`
`1079, Petitioners’ exhibits—including the expert declaration—are the same as the
`
`exhibits filed in the Data IPR, differing only in the document control label at the
`
`bottom of the page to indicate this IPR Petition.
`
`15. The Data Company takes no position on the present Motion for Join-
`
`der. Patent Owner opposes this Motion.
`
`III. STATEMENT OF REASONS FOR RELIEF REQUESTED
`
`
`
`A.
`
`Joinder is Timely
`
`Because this Motion was filed within one month of the Board’s June 1, 2022
`
`decision instituting trial in the Data IPR, it meets the requirements of § 42.122(b).
`
`
`
`
`
`6
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`
`
`
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`B. All Applicable Factors Support Joinder
`
`The Board has discretion to join this IPR with the Data IPR. See 35 U.S.C.
`
`§ 315(c); 37 C.F.R. § 42.122(b). 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); Consoli-
`
`dated Trial Practice Guide 76 (Nov. 2019) (https://go.usa.gov/xpvPF). 1 As dis-
`
`
`1 The General Plastic factors are inapplicable to the present Motion for Joinder be-
`
`cause the IPR is a “copycat” of an instituted IPR and Petitioners agree to an “un-
`
`derstudy” role. See, e.g., Qualcomm Inc. v. Bandspeed, Inc., IPR2015-00314, Pa-
`
`per 21 at 5 (PTAB Nov. 16, 2015). Similarly, Apple Inc. v. Uniloc 2017 LLC,
`
`IPR2020-00854, Paper 9 (PTAB Oct. 28, 2020), is inapplicable because Petition-
`
`ers’ prior IPR challenge was denied on non-substantive Fintiv factors. See
`
`Code200 IPR, Paper 18; see also Intel Corp. v. VLSI Tech. LLC, IPR2022-00366,
`
`Paper 14 at 7-10 (PTAB June 8, 2022) (“Intel”) (granting petitioner’s joinder to
`
`second IPR after Board denied petitioner’s first IPR based on non-substantive Fin-
`
`tiv factors). Here, the Board has already instituted the Data IPR based on the sub-
`
`7
`
`
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`cussed below, 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 District Court Action concerned different claims,
`different prior art, a different burden of proof, and
`remains unresolved and stayed.
`
`Factor 1 weighs in favor of joinder because the District Court Action only
`
`addressed the validity of two claims of the ʼ319 patent whereas this IPR is directed
`
`to the validity of claims 1-29. The District Court Action proceeded to trial before a
`
`jury beginning on November 1, 2021, where Oxylabs argued, among other things,
`
`that claims 1 and 26 of the ’319 patent were invalid as anticipated in view of a sin-
`
`gle reference: Crowds. The jury returned a verdict and found that Oxylabs had not
`
`shown, under the clear-and-convincing evidentiary standard, that either of the two
`
`asserted claims of the ’319 patent were invalid. See Ex. 1080, Jury Verdict Form,
`
`ECF No. 516 at 5.
`
`
`
`The present Petition, however, requests review of the patentability of many
`
`more claims than those considered by the jury in the District Court Action. The
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`present Petition requests cancellation by the PTAB of claims 1-29 in view of prior
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`art not considered by the jury.
`
`
`stantive merits of the cited prior art, and Petitioners simply seek to join that already
`
`instituted IPR in an understudy role.
`
`8
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`
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`The District Court Action only considered the validity of two claims of the
`
`’319 patent in view of the single allegedly anticipatory Crowds reference. The out-
`
`come of the present Petition, however, implicates the validity of twenty-nine
`
`claims of the ’319 patent in view of various combinations of six separate prior-art
`
`references (none of which were considered by the jury in the District Court Ac-
`
`tion). The Federal Circuit has affirmed invalidity decisions from the PTAB in
`
`which the Board held that the claims were obvious over several different combina-
`
`tions of cited art not considered by the district court. See, e.g., Personal Audio LLC
`
`v. CBS Corp., 946 F.3d 1348, 1350-51 (Fed. Cir. 2020) (affirming district court’s
`
`termination of proceedings after jury verdict of no invalidity because PTAB had
`
`determined that the asserted claims were unpatentable); Novartis AG v. Noven
`
`Pharm. Inc., 853 F.3d 1289, 1294 (Fed. Cir. 2017) (“It is unsurprising that differ-
`
`ent records may lead to different findings and conclusions.”).
`
`Additionally, the District Court Action jury considered invalidity under the
`
`clear-and-convincing evidentiary standard—and Patent Owner heavily relied on
`
`that standard. Ex. 1080, ECF No. 516 at 5. Here, the Board considers validity un-
`
`der the preponderance-of-the-evidence standard. See 35 U.S.C. § 316(e). This dif-
`
`ference in burdens of proof often demands a different conclusion, even when each
`
`conclusion is based on the same evidence. See Personal Audio, 946 F.3d at 1350-
`
`51; Novartis, 853 F.3d at 1293-94.
`
`9
`
`
`
`Further, unlike the institution decision here, the District Court Action jury
`
`was not provided the Court’s Supplemental Claim Construction Order (see Ex.
`
`1084, ECF No. 570 at 2), which the Board found persuasive and adopted in reject-
`
`ing Patent Owner’s attempts to distinguish the art. See Data IPR, Paper 12 at 22. In
`
`any event, a final judgment in the District Court Action has not been entered and
`
`the District Court Action remains stayed. See Exs. 1082 and 1083, ECF Nos. 543
`
`and 580. Thus, this request for joinder is consistent with the policy surrounding in-
`
`ter 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) (emphasis
`
`added); HTC, IPR2017-00512, Paper No. 12 at 5-6. Indeed, the PTAB often grants
`
`motions for joinder in view of pending litigation involving the same patent and the
`
`same parties but different prior art. See, e.g., Intel at 6-7 (granting petitioner’s op-
`
`posed motion for joinder after jury verdict of no invalidity because the “the un-
`
`patentability grounds were not presented to the jury”); Apple Inc. v. INVT SPE
`
`LLC, IPR2019-00958, Paper 9 at 2-13 (PTAB May 30, 2019).
`
`b.
`
`The previously filed ’319 EPR is stayed pending the
`outcome of the co-pending NetNut IPR.
`One of the parties to the present Petition, Teso LT, UAB, requested Ex Parte
`
`Reexamination of certain claims of the ’319 patent following the discretionary de-
`
`nial of the Code200 Petition. See ’319 EPR. The Patent Office found a substantial
`
`new question of patentability affecting claims 1, 2, 12, 14, 15, 17-19, 21, 22, and
`
`10
`
`
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`24-29 of the ’319 patent and, on March 25, 2022, issued a Non-Final Office Action
`
`rejecting those claims. Ex. 1085. On April 7, 2022, however, the PTAB stayed the
`
`’319 EPR pending the termination or completion of the NetNut IPR. See NetNut
`
`IPR, Paper 14. Again, like the stayed District Court Action, because the ’319 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.” 37 C.F.R. § 42.1(b) (emphasis added).
`
`c.
`
`The previously filed Code200 Petition challenging the
`’319 patent was timely filed and not considered on the
`merits.
`
`Petitioners previously sought IPR review of the ’319 patent in a timely fash-
`
`
`
`ion. Petitioners filed the Code200 Petition on July 14, 2020 (i.e., within one year of
`
`the District Court Action’s filing on December 6, 2019), which challenged the va-
`
`lidity of certain claims of the ’319 patent as anticipated and/or obvious. See
`
`Code200 IPR, Paper 5. The Board denied the Code200 Petition based on discre-
`
`tionary grounds in view of the pending District Court Action. See id., Paper 18 at
`
`6-12 (citing Fintiv). The Board reasoned that trial in the District Court Action “is
`
`set to occur at least seven months before a Final Written Decision would be issued
`
`here.” Id. at 12. Importantly, at the time, fourteen claims remained pending in the
`
`District Court Action. Ultimately, the District Court Action jury only considered
`
`11
`
`
`
`two claims and one reference. The Board did not make any substantive determina-
`
`tion concerning the merits of the Code200 IPR. Id.
`
`Concerning the District Court Action, on November 1, 2021, the district
`
`court convened a jury trial and, on December 15, 2021, stayed deadlines in the Dis-
`
`trict Court Action. Ex. 1082, ECF No. 543. The district court thereafter declined to
`
`lift the stay pending mediation. Ex. 1083, ECF No. 580. Consequently, as of the
`
`filing of this Motion, the District Court Action remains stayed. Further, the Board
`
`in the Data IPR determined that the Fintiv factors and General Plastic factors did
`
`not preclude the institution of the Data IPR. See Data IPR, Paper 12 at 12-14. In-
`
`deed, the Data IPR has been instituted, such that the Board need not consider Peti-
`
`tioners’ previously filed IPR petition in connection with the present “me-too” Peti-
`
`tion. See Intel at 7-10.
`
`d.
`
`The PTAB’s discretionary denials of Petitioners’
`IPR2021-01502 and IPR2021-01503, related to two
`different patents, do not render joinder inappropriate
`here.
`
`Petitioners previously filed two IPRs challenging different Bright Data pa-
`
`tents (specifically, U.S. Patent Nos. 9,241,044 and 9,742,866) and sought to join
`
`those IPRs with NetNut’s then pending IPR2021-00458 and -00465. See IPR2021-
`
`01502, Paper 7 and IPR2021-01503, Paper 7, respectively. The PTAB denied Peti-
`
`tioners’ joinder requests, holding joinder “would be unduly prejudicial and not in
`
`the interest of justice” because (i) Petitioners had settled litigation with Bright Data
`
`12
`
`
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`concerning the subject patents and (ii) Petitioners had not challenged the subject
`
`patents within Petitioners’ one-year bar date. See IPR2021-01502, Paper 13;
`
`IPR2021-01503, Paper 13. Neither fact exists here. First, unlike in IPR2021-01502
`
`and -01503, Petitioners sought to challenge the ’319 patent in the Patent Office,
`
`first via an IPR prior to their one-year bar deadline and then via ex parte reexami-
`
`nation when the IPR was denied on discretionary grounds. See Code200 IPR, Pa-
`
`per 5 (filed within one year of the filing of the District Court Action); the ’319
`
`EPR Request. In this instance, where Petitioners’ ex parte review is now stayed in
`
`view of the NetNut IPR, it would be prejudicial and against the interest of justice
`
`to deny Petitioners’ Petition and Motion for Joinder. Second, Petitioners have not
`
`settled the District Court Action concerning the ’319 patent with Bright Data. Con-
`
`sequently, the present Petition and Motion for Joinder are distinguishable from the
`
`denied motions for joinder in IPR2021-01502 and -01503.
`
`2.
`
`Petitioners propose no new grounds of unpatentability (factor 2).
`
`
`The Board “routinely grants motions for joinder where the party seeking
`
`joinder introduces identical arguments and the same grounds raised in the existing
`
`proceeding.” Samsung Elecs. Co. v. Raytheon Co., IPR2016-00962, Paper 12 at 9
`
`(PTAB Aug. 24, 2016) (internal quotations and citations omitted) (emphasis in
`
`original). Joinder is appropriate here because the Petition was timely filed, asserts
`
`the same grounds, and relies on the same evidence for unpatentability presented in
`
`13
`
`
`
`the Data IPR. See Ex. 1079 (showing the minimal, non-substantive differences be-
`
`tween the present Petition and the Data IPR petition). The two petitions rely on the
`
`same prior-art references, alone and/or in the same combinations. Id. The two peti-
`
`tions also rely on the same declaration of Professor Dave Levin. There are no new
`
`grounds of unpatentability asserted in the present Petition. Accordingly, the Peti-
`
`tion will not add any additional substantive issues to the Data IPR.
`
`Joinder is the most efficient and economical manner to proceed. See, e.g.,
`
`HTC, IPR2017-00512, Paper 12 at 7 (granting motion for joinder where the second
`
`petition involved “the same claims, the same patent, the same prior art references,
`
`the same expert declaration, and the same arguments and rationales”); STMicroe-
`
`lectronics, Inc. v. Lone Star Silicon Innv., LLC, IPR2018-00436, Paper 7 at 5
`
`(PTAB May 4, 2018) (granting joinder and reasoning, “[w]e rely in particular, on
`
`Petitioner’s representation that its Petition is ‘substantially identical’”).
`
`3.
`
`Joinder will not impact the trial schedule or cost of the
`joined proceeding (factor 3).
`
`Joinder will not prejudice the parties to the Data IPR. Petitioners do not and
`
`will not request any alterations to the trial schedule that the Board issued in the Da-
`
`ta IPR (Data IPR, Paper 13), therefore leaving that schedule unchanged.
`
`Petitioners also agree to adopt a secondary, “understudy” role in the Data
`
`IPR. See, e.g., Garmin Int’l, Inc. v. Philips North Am. LLC, IPR2020-00910, Paper
`
`8 at 45, 47-50 (PTAB Nov. 19, 2020) (granting joinder where petitioners agreed to
`
`14
`
`
`
`accept an “understudy” role); STMicroelectronics, IPR2018-00436, Paper 7 at 5
`
`(same). Petitioners will assume a primary role only if the Data IPR petitioner ceas-
`
`es its participation in the proceeding. Petitioners will abide by any conditions the
`
`Board deems appropriate for an “understudy” role.
`
`Petitioners’ agreement to take an “understudy” role removes any potential
`
`complication or delay caused by joinder, while providing the parties an opportunity
`
`to address all issues that may arise. See, e.g., Mylan Pharms. Inc. v. Novartis AG,
`
`IPR2014-00550, Paper 38 at 5-6 (PTAB Apr. 10, 2015). In sum, joinder will not
`
`affect the cost or complexity of the Data IPR for Patent Owner, the Data IPR peti-
`
`tioner, and/or the Board.
`
`4.
`
`Joinder will not add to the complexity of briefing and dis-
`covery (factor 4).
`
`Petitioners and the Data IPR petitioner rely on the same prior art, same com-
`
`
`
`binations of art, and the same expert declaration to support identical arguments re-
`
`garding the unpatentability of the claims at issue. Briefing and discovery will
`
`therefore be the same, and granting joinder will not add any complexity.
`
`IV. CONCLUSION
`
`For these reasons, Petitioners respectfully request that the Board institute
`
`their Petition for Inter Partes Review of U.S. Patent No. 10,257,319 and join this
`
`proceeding with The Data Company Technologies Inc. v. Bright Data Ltd.,
`
`IPR2022-00135.
`
`15
`
`
`
`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)
`3333 Lee Parkway
`Suite 460
`Dallas, TX 75219
`(214) 521-6400
`
`
`
`
`
`16
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that the above Motion was served on June
`
`13, 2022 via Priority Mail Express International (or by means at least as fast and
`
`reliable as Priority Mail Express), on the following:
`
`May Patents Ltd. ℅ Dorit Shem-Tov
`P.O.B. 7230
`Ramat-Gan 5217102
`ISRAEL
`
`(PAIR Correspondence Address for U.S. Patent No. 10,484,319)
`
`The above Motion was also served via e-mail and FedEx on June 13, 2022
`
`on Patent Owner’s U.S. counsel in pending litigation concerning patents in the
`
`family of the ’319 patent, as follows:
`
`Tom Dunham
`Elizabeth O’Brien
`1901 L Street NW, Suite 700
`Washington, DC 20036
`tomd@ruyakcherian.com
`elizabetho@ruyakcherian.com
`(via FedEx and email)
`
`The above Motion was also served via e-mail and FedEx on June 13, 2022
`
`
`
`on Petitioners’ counsel in pending The Data Company Technologies Inc. v. Bright
`
`Data Ltd., IPR2022-00138:
`
`Michael Rader
`Adam Wichman
`Gregory Nieberg
`Wolf, Greenfield & Sacks, P.C.
`
`17
`
`
`
`MRader-PTAB@wolfgreenfield.com
`AWichman-PTAB@wolfgreenfield.com
`GNieberg-PTAB@wolfgreenfield.com
`(via FedEx and email)
`
`
`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)
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Date: June 13, 2022
`
`
`
`
`18
`
`
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