UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_________________________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________________
`
` CODE200, UAB; TESO LT, UAB; METACLUSTER LT, UAB;
`OXYSALES, UAB; AND CORETECH LT, UAB,
`
`Petitioners
`
`v.
`
`BRIGHT DATA LTD.,
`
`Patent Owner
`
`_________________________
`
`
`
`
`
`Case IPR2022-01109
`
`Patent No. 10,257,319
`
`_________________________
`
`PATENT OWNER’S OPPOSITION TO
`PETITIONERS’ MOTION FOR JOINDER
`
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`_________________________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________________
`
` CODE200, UAB; TESO LT, UAB; METACLUSTER LT, UAB;
`OXYSALES, UAB; AND CORETECH LT, UAB,
`
`Petitioners
`
`v.
`
`BRIGHT DATA LTD.,
`
`Patent Owner
`
`_________________________
`
`
`
`
`
`Case IPR2022-01109
`
`Patent No. 10,257,319
`
`_________________________
`
`PATENT OWNER’S OPPOSITION TO
`PETITIONERS’ MOTION FOR JOINDER
`
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`
`IPR2022-01109 of Patent No. 10,257,319
`
`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION ............................................................................................... 1
`
`II. RESPONSE TO PETITIONERS’ STATEMENT OF MATERIAL FACTS
`(“SMF”)...................................................................................................................... 2
`
`III. ADDITIONAL STATEMENT OF MATERIAL FACTS (“AMF”) ............... 5
`
`IV. LEGAL STANDARD ...................................................................................... 7
`
`V. THE BOARD SHOULD EXERCISE ITS DISCRETION TO DENY
`JOINDER ................................................................................................................... 7
`
`A. WITHOUT JOINDER, THE PETITION IS TIME-BARRED ........................ 7
`
`B. PETITIONERS MISSED THEIR OPPORTUNITY TO CHALLENGE THE
`‘319 PATENT BASED ON PLAMONDON ......................................................... 7
`
`C. PETITIONERS TAKE INCONSISTENT POSITIONS ON APPLIANCE
`200 OF PLAMONDON .......................................................................................... 9
`
`D. PETITIONERS CONTINUE TO HARASS PATENT OWNER ..................10
`
`E. NO PREJUDICE TO PETITIONERS IF JOINDER IS DENIED.................11
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`F. PETITIONERS FAIL TO MEET THEIR BURDEN ....................................14
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`VI. CONCLUSION ..............................................................................................15
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`ii
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`
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`EX. 2001
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`EX. 2002
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`EX. 2003
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`EX. 2004
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`EX. 2005
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`EX. 2006
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`EX. 2007
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`Ex. 2008
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`EX. 2009
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`EX. 2010
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`EX. 2011
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`IPR2022-01109 of Patent No. 10,257,319
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`PATENT OWNER’S LIST OF EXHIBITS
`
`Unopposed Motion to Extend Deadline to Answer or Otherwise
`Respond to Complaint and Set Briefing Schedule on Motion to
`Dismiss, Bright Data Ltd. v. Teso LT, UAB, et al., Case No.
`2:19-cv-00395, Dkt. 13 (E.D. Tex. Mar. 5, 2020)
`
`Defendants' Disclosure Pursuant to 35 U.S.C. § 282, Bright
`Data Ltd. v. Teso LT, UAB, et al., Case No. 2:19-cv-00395,
`Dkt. 450 (E.D. Tex. July 16, 2021)
`
`Order, Bright Data Ltd. v. Teso LT, UAB, et al., Case No. 2:19-
`cv-00395, Dkt. 543 (E.D. Tex. Mar. 5, 2020)
`
`Order, Bright Data Ltd. v. Teso LT, UAB, et al., Case No. 2:19-
`cv-00395, Dkt. 567 (E.D. Tex. Jan. 7, 2022)
`
`Minute Entry, Bright Data Ltd. v. Teso LT, UAB, et al., Case
`No. 2:19-cv-00395, Dkt. 573 (E.D. Tex. Feb. 4, 2022)
`
`Order, Bright Data Ltd. v. Teso LT, UAB, et al., Case No. 2:19-
`cv-00395, Dkt. 575 (E.D. Tex. Feb. 10, 2022)
`
`Order, Bright Data Ltd. v. Teso LT, UAB, et al., Case No. 2:19-
`cv-00395, Dkt. 580 (E.D. Tex. Mar. 16, 2022)
`
`U.S. Patent No. 7,865,585
`
`U.S. Patent No. 8,972,602
`
`U.S. Patent No. 10,469,614
`
`Motion for Summary Judgment, Bright Data Ltd. v. Teso LT,
`UAB, et al., No. 2:19-cv-395, Dkt. 282 (E.D. Tex. Feb. 8,
`2021)(redacted version of Dkt. 277)
`
`
`iii
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`
`
`
`
`I.
`
`INTRODUCTION
`
`IPR2022-01109 of Patent No. 10,257,319
`
`Petitioners in IPR2022-01109 are seeking joinder to IPR2022-00135 (the
`
`“TDCT IPR”). Motion, Paper 7. The burden is on Petitioners to justify that joinder
`
`should be granted. 37 C.F.R. § 42.20(c). Petitioners have failed to meet their
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`burden, as will be further discussed herein.
`
`Without joinder, the petition is time-barred under 35 U.S.C. § 315(b)
`
`because Patent Owner sued Petitioners for infringement of U.S. Patent No.
`
`10,257,319 (the “‘319 Patent”) in December 2019 in Case No. 2:19-cv-00395
`
`(E.D. Tex.)(the “Tex. Litigation”). The Tex. Litigation went to trial in November
`
`2021 where a jury entered a verdict finding the ‘319 Patent was not invalid.
`
`Since being sued in December 2019, Petitioners admit they have repeatedly
`
`sought to challenge the ‘319 Patent in the USPTO, referencing the First Code200
`
`IPR Petition in IPR2020-01266 and the Ex Parte Reexamination (“EPR”) Request
`
`in Control No. 90/014,875. Motion at 13. However, Petitioners’ Motion fails to
`
`substantively address Petitioners’ Second Code200 IPR Petition in IPR2022-00861
`
`challenging the ‘319 Patent.1 The instant petition is the Third Code200 IPR
`
`Petition challenging the ‘319 Patent. Overall, this petition represents the
`
`petitioners’ fifth bite at the invalidity apple as to the ‘319 Patent. Petitioners have
`
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`1 Petitioners identify IPR2022-00861 in SMF No. 10. Motion at 5.
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`
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`1
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`
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`
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`now filed three IPRs, requested 1 reexamination, and conducted 1 jury trial as to
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`IPR2022-01109 of Patent No. 10,257,319
`
`the ‘319 Patent.
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`As discussed below, Patent Owner respectfully requests the Board exercise
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`its discretion and deny joinder of this petition for at least six reasons. First, the
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`petition is time-barred, which favors denial. Second, the petitioners should have
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`found the primary prior art reference much earlier, which favors denial. Third, the
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`petitioners take inconsistent positions regarding the network architecture of the
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`primary prior art reference, which favors denial. Fourth, the petitioners show
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`potential for abuse of IPR.2 Fifth, there is no prejudice to the petitioners if joinder
`
`is denied. Sixth, the petitioners’ actions are not commensurate with an
`
`“understudy” role.
`
`II. RESPONSE TO PETITIONERS’ STATEMENT OF MATERIAL
`FACTS (“SMF”)
`
`Response to SMF No. 2: This SMF is incomplete regarding executed
`
`service. Defendants confirmed the Lithuanian Central Authority delivered a copy
`
`of the Complaint to Metacluster LT, UAB on 2/18/20, to Teso LT, UAB on
`
`2/21/20, and to Oxysales, UAB on 3/3/20. EX. 2001. Regardless, Petitioners
`
`concede that the time-bar under 35 U.S.C. § 315(b) applies to the petition.
`
`
`2 Director Vidal is concerned about this issue. See OpenSky Industries, LLC, et al.
`
`v. VLSI Technology LLC, IPR2021-01064, Paper 47 at 7 (PTAB July 7, 2022).
`
`
`
`2
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`
`
`
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`Response to SMF No. 3: This SMF is misleading. The ‘319 Patent includes
`
`IPR2022-01109 of Patent No. 10,257,319
`
`29 claims, with only claim 1 being independent. The Tex. Litigation involved
`
`invalidity challenges of anticipation/obviousness against the ‘319 Patent based on
`
`Crowds, Border, and MorphMix. EX. 2002. At trial, Defendants made the
`
`strategic decision to proceed with only alleged invalidity of claims 1 and 26 of the
`
`‘319 Patent based on anticipation by Crowds. The jury verdict was entered on
`
`11/5/21 finding no anticipation by Crowds. EX. 1081 at 5. The quotes from the
`
`11/5/21 trial transcript are taken out of context and regardless, the Court properly
`
`instructed the jury as to the burden for invalidity in district court trials.
`
`Response to SMF No. 4: Petitioners’ statement is incorrect and incomplete.
`
`On 11/5/21, the Tex. Litigation reached a final jury verdict. On 12/15/21, the Court
`
`entered a stay as to post-trial motions. EX. 2003. At that time, there were pending
`
`motions for injunctive relief (Dkt. 529), for summary judgment of no inequitable
`
`conduct (Dkt. 530), and for enhanced damages and exceptional case status (Dkt.
`
`541). Mediation was scheduled to occur on 1/6/22. The mediation was
`
`unsuccessful. On 1/7/22, the Court lifted the stay with respect to the pending
`
`motion for injunctive relief (Dkt. 529) and ordered Defendants to complete
`
`briefing. EX. 2004. On 2/4/22, the Court held a hearing on the motion for
`
`injunctive relief. EX. 2005. On 2/10/22, the Court denied the motion for injunctive
`
`relief. EX. 2006. On 3/7/22, Bright Data filed an opposed motion to lift the stay
`
`
`
`3
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`
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`IPR2022-01109 of Patent No. 10,257,319
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`
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`order (Dkt 576) and complete post-trial briefing. On 3/16/22, the Court denied
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`Bright Data’s motion (Dkt. 576) and ordered additional mediation. EX. 2007.
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`Response to SMF No. 5: Patent Owner can neither admit nor deny this SMF
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`because it is speculative. Petitioners cite only to Defendants’ Opposition (Dkt. 570)
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`to Plaintiff’s Motion for injunctive relief which essentially argues dueling expert
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`testimony and makes no reference to Defendants’ intent to file post-trial motions.
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`Accordingly, Petitioners’ allegations in SMF No. 5 should be disregarded.
`
`Response to SMF No. 6: This SMF is incomplete because it does not
`
`identify the grounds/prior art in the First Code200 IPR Petition in IPR2020-01266,
`
`which alleged anticipation/obviousness based on primary prior art references
`
`Crowds, Border, and MorphMix.
`
`Response to SMF No. 8: This SMF is incomplete because it does not
`
`identify the grounds/prior art in the EPR Request in Control No. 90/014,875, which
`
`makes the exact same challenges as the First Code200 IPR Petition.
`
`Response to SMF No. 9: This SMF is incomplete because it does not
`
`identify the grounds/prior art in the NetNut IPR Petition in IPR2021-01492, filed
`
`by NetNut Ltd. (“NetNut”) which alleged anticipation/obviousness based on
`
`primary prior art references Crowds, Border, and MorphMix.
`
`Response to SMF No. 10: This SMF is incomplete because it does not
`
`identify the grounds/prior art in the Second Code200 IPR Petition in IPR2022-
`
`
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`4
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`
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`00861, which makes the exact same challenges as the NetNut IPR Petition.
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`IPR2022-01109 of Patent No. 10,257,319
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`Response to SMF No. 11: This SMF is incomplete because it does not
`
`identify the grounds/prior art in the TDCT IPR Petition in IPR2022-00135, filed by
`
`The Data Company Technologies Inc. (“TDCT”) which alleged
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`anticipation/obviousness based on a single, primary prior art reference, U.S. Pub.
`
`No. 2008/0228938 (“Plamondon,” EX. 1010).
`
`Response to SMF No. 13: Petitioners did not independently retain the
`
`testifying expert, Professor Dave Levin, and simply filed a photocopy of the
`
`declaration submitted by TDCT. EX. 1003.
`
`Response to SMF No. 15: Patent Owner can neither admit nor deny this
`
`SMF because Petitioners did not copy Patent Owner on their communications with
`
`TDCT.
`
`III. ADDITIONAL STATEMENT OF MATERIAL FACTS (“AMF”)
`
`AMF No. 1: Since the Court entered the stay in the Tex. Litigation on
`
`12/15/21, one or more of the instant petitioners have filed seven IPRs against
`
`Patent Owner. IPR2022-00353, IPR2022-00687, IPR2022-00861, IPR2022-00862,
`
`IPR2022-00936, IPR2022-01109 (this proceeding), and IPR2022-01110. In
`
`January 2022, Petitioner Metacluster LT, UAB also filed an infringement lawsuit
`
`against Patent Owner in Case No. 2:22-cv-00011 (E.D. Tex.). Patent Owner filed a
`
`Motion to Dismiss the Complaint (Dkt. 23) and Petitioner filed an Amended
`
`
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`5
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`
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`Complaint (Dkt. 26). Patent Owner has since filed a Motion to Dismiss the
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`IPR2022-01109 of Patent No. 10,257,319
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`Amended Complaint (Dkt. 32).
`
`AMF No. 2: Another petitioner, Major Data UAB (“Major Data”), filed
`
`IPR2022-00915 against the ‘319 Patent. Major Data is also seeking joinder to the
`
`NetNut IPR and relies on the same grounds/prior art as in the NetNut IPR Petition.
`
`AMF No. 3: Patent Owner reached settlement with NetNut, the sole
`
`petitioner in the NetNut IPR, and the Board has terminated NetNut from the
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`NetNut IPR. IPR2021-01492, Paper 20.
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`AMF No. 4: U.S. Patent No. 7,865,585 (“Samuels,” EX. 2008), Plamondon
`
`(EX. 1010), and U.S. Patent No. 8,972,602 (“Mithyantha,” EX. 2009) all have the
`
`same assignee, Citrix Systems Inc. Samuels and Plamondon also have an
`
`overlapping inventor, Robert Plamondon. Samuels, Plamondon, and Mithyantha
`
`are in the same international class, subclass and main group (G06F15) and the
`
`same U.S. class (709). The Board recognized that Samuels and Plamondon include
`
`an identical FIG. 1A. See IPR2022-00135, Paper 12 at 15-16.3 Additionally, FIG.
`
`1A of Samuels/Plamondon is identical to FIG. 1B of Mithyantha.
`
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`3 The original TDCT IPR Petition also admitted that FIG. 1A of Samuels/
`
`Plamondon is identical, but the instant petitioners deleted this discussion from the
`
`instant petition. EX. 1079 at 95.
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`6
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`
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`IV. LEGAL STANDARD
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`IPR2022-01109 of Patent No. 10,257,319
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`Joinder may be authorized when warranted, but the decision to grant joinder
`
`is discretionary. See 35 U.S.C. § 315(c); 37 C.F.R. § 42.122. The Board determines
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`whether to grant joinder on a case-by-case basis, taking into account the particular
`
`facts of each case, substantive and procedural issues, and other considerations. See
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`157 CONG. REC. S1376 (daily ed. Mar. 8, 2011) (statement of Sen. Kyl).
`
`A motion for joinder should: (1) set forth the reasons why joinder is
`
`appropriate; (2) identify any new grounds of unpatentability asserted in the
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`petition; (3) explain what impact (if any) joinder would have on the trial schedule
`
`for the existing review; and (4) address specifically how briefing and discovery
`
`may be simplified. See, e.g., Kyocera Corp. v. SoftView LLC, IPR2013-00004,
`
`Paper 15 at 4 (PTAB April 24, 2013).
`
`V. THE BOARD SHOULD EXERCISE ITS DISCRETION TO DENY
`JOINDER
`
`A. WITHOUT JOINDER, THE PETITION IS TIME-BARRED
`
`Petitioners concede that that without joinder, the petition is time-barred under §
`
`315(b). See Response to SMF No. 2. A time-bar under 35 U.S.C. § 315(b) exists
`
`and thus, this factor weighs against granting joinder.
`
`B. PETITIONERS MISSED THEIR OPPORTUNITY TO
`CHALLENGE THE ‘319 PATENT BASED ON PLAMONDON
`
`One of the reasons the Board granted institution in the TDCT IPR is because
`
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`7
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`TDCT is not a party in any of the district court proceedings involving the ‘319
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`IPR2022-01109 of Patent No. 10,257,319
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`Patent and there is no evidence in the record that another entity is a real party in
`
`interest. IPR2022-00135, Paper 12 at 10-11.
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`Unlike TDCT, the instant petitioners have, quite literally, already had their
`
`day in court. Petitioners should not be allowed to have a fifth bite at the invalidity
`
`apple and a third chance at IPR based on a new primary prior art reference that
`
`they should have found much earlier.
`
`Petitioners were aware of the Samuels reference, listed on the face of the
`
`‘319 Patent, at least as early as 2/18/20 when a copy of the Complaint and the ‘319
`
`Patent were served. See Response to SMF No. 2. Given that Samuels and
`
`Plamondon have the same assignee, and given that Samuels and Plamondon have
`
`an overlapping inventor, Petitioners should have been aware of Plamondon long
`
`before the instant petition was filed. A reasonably diligent search would have
`
`uncovered the Plamondon reference. See AMF No. 4; see also, e.g., Gen. Plastic
`
`Indus. Co. v. Canon Kabushiki Kaisha, IPR2016- 01357, Paper 19 (PTAB Sept. 6,
`
`2017).
`
`Additionally, Petitioners were aware of the Mithyantha reference at least as
`
`early as 6/29/20 when the district court invalidity contentions were served in the
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`Tex. Litigation. Petitioners were able to uncover the Mithyantha reference for the
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`Tex. Litigation possibly because of the same assignee. Given that Samuels and
`
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`8
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`
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`Mithyantha have the same assignee as Plamondon, Petitioners should have been
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`IPR2022-01109 of Patent No. 10,257,319
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`aware of Plamondon long before the instant petition was filed. A reasonably
`
`diligent search would have uncovered the Plamondon reference. See AMF No. 4;
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`see also, e.g., Gen. Plastic Indus. Co. v. Canon Kabushiki Kaisha, IPR2016-
`
`01357, Paper 19 (PTAB Sept. 6, 2017).
`
`In view of the above, Petitioners should have been aware of the Plamondon
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`reference before the First Code200 IPR Petition was filed on 7/14/20. Petitioners
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`should not be allowed to join this IPR based on Plamondon just because they chose
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`to rely on different prior art references in earlier proceedings. Petitioners provide
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`no explanation for why they could not have found Plamondon earlier. Also,
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`Petitioners do not argue in their Motion that Plamondon is more material to the
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`validity of the ‘319 Patent than, for example, Crowds, Border, or MorphMix.
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`C. PETITIONERS TAKE INCONSISTENT POSITIONS ON
`APPLIANCE 200 OF PLAMONDON
`
`Petitioners fail to acknowledge that they took a first position in the Tex.
`
`Litigation that is inconsistent with a second position they now take in the petition.
`
`Petitioners should not be allowed to argue the second position in this IPR just
`
`because their first position was unsuccessful in the Tex. Litigation.
`
`In the Tex. Litigation, Petitioner-defendants alleged invalidity of U.S. Patent
`
`
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`9
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`
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`No. 10,469,614 (the “’614 Patent,” EX. 2010) based on Mithyantha.4 The claimed
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`IPR2022-01109 of Patent No. 10,257,319
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`methods of both the ‘614 and ‘319 Patents operate within the same second server
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`↔ first client device ↔ web server architecture. IPR2022-00135, EX. 2001 at ¶ 84.
`
`FIG. 1B of Mithyantha is identical to FIG. 1A of Plamondon. Compare EX.
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`2009, FIG. 1B to EX. 1010, FIG. 1A. During the Tex. Litigation, Petitioner-
`
`defendants argued that appliance 200 corresponds to the “second server” in the
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`claimed second server ↔ first client device ↔ web server architecture. That
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`argument was unsuccessful in the Tex. Litigation. Now, Petitioners attempt to
`
`argue that appliance 200 corresponds to the “first client device” in the claimed
`
`second server ↔ first client device ↔ web server architecture. Petitioners should
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`not be allowed to take inconsistent positions with respect to the same architecture.
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`D. PETITIONERS CONTINUE TO HARASS PATENT OWNER
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`Petitioners’ actions show potential abuse of the review process for at least
`
`three reasons. See also Responses to SMF Nos. 3, 6, 8, and 10; and AMF No. 1.
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`First, Petitioner-defendants had a full and fair opportunity to litigate the
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`validity of the ‘319 Patent and Patent Owner should be able to rely on the jury
`
`verdict against Petitioners in the Tex. Litigation.
`
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`4 In the Tex. Litigation, the jury found that the asserted claims of the ‘614 Patent
`
`were NOT invalid based on Mithyantha. EX. 1081 at 5.
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`10
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`Second, Petitioners’ actions undermine the purpose of the stay in the Tex.
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`IPR2022-01109 of Patent No. 10,257,319
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`Litigation. Rather than devoting good faith efforts to mediation of all disputes with
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`Patent Owner, as ordered by the Court, Petitioners filed 7 IPRs and 1 lawsuit
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`against Patent Owner since 12/15/21. See AMF No. 1. Patent Owner has expended
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`and will continue to expend significant costs to defend its patents against
`
`Petitioners. See id.; see also IPR2022-00103 filed on 10/29/21.
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`Third, Petitioners seem to be establishing a pattern of behavior where they
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`are/will be attempting to join any instituted proceeding against any Bright Data
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`patent without regard to justice. For example, in each of IPR2021-01502 and
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`IPR2021-01503 involving Petitioners, the Board denied joinder because it would
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`be unduly prejudicial and not in the interest of justice, particularly given that
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`Petitioners had previously dismissed its counterclaims of invalidity with prejudice.
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`See, e.g., IPR2021-01502, Paper 13 at 8-9 (PTAB March 14, 2022). As Petitioners
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`continue this pattern of behavior, Patent Owner respectfully requests the aid of the
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`Board to discourage harassment of Patent Owner. See 35 U.S.C. § 316(a)(6).
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`E. NO PREJUDICE TO PETITIONERS IF JOINDER IS DENIED
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`As discussed above, this petition represents Petitioners’ fifth bite at the
`
`invalidity apple as to the ‘319 Patent given (1) the First Code200 IPR Petition, (2)
`
`the EPR Request, (3) the Tex. Litigation, (4) the Second Code200 IPR Petition,
`
`and (5) the instant petition.
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`11
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`
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`Regarding the earlier Code200 IPR Petitions: Petitioners argue that “the
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`IPR2022-01109 of Patent No. 10,257,319
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`[TDCT] IPR has been instituted, such that the Board need not consider Petitioner’s
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`previously filed IPR petition in connection with the present “me-too” Petition.”
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`Motion at 12. This argument fails for at least three reasons.
`
`First, Petitioners argue that joinder should be granted in this case despite the
`
`First Code200 IPR Petition in IPR2020-01266 (Motion at 11-12), but Petitioners
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`fail to substantively address the Second Code200 IPR Petition in IPR2022-00861.
`
`As of the filing of this Opposition, there has been no decision on institution/joinder
`
`in IPR2022-00861. Now, Petitioners have filed yet another petition challenging the
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`‘319 Patent. It seems to Patent Owner that Petitioner is abusing the IPR process,
`
`filing serial petitions against the same patent and forcing Patent Owner to expend
`
`resources to oppose institution/joinder in each case. Also, Petitioners did not rank
`
`the pending petitions in their Motion.
`
`Second, Petitioners misplace their reliance on Intel Corp. v. VLSI Tech. LLC,
`
`because although the First Code 200 IPR Petition was denied based on the
`
`discretionary factors, the Second Code200 IPR Petition remains pending. IPR2022-
`
`00366, Paper 14 at 7-10 (PTAB June 8, 2022); see also OpenSky Industries, LLC,
`
`et al. v. VLSI Technology LLC, IPR2021-01064, Paper 47 at 7 (PTAB July 7,
`
`2022). Patent Owner respectfully submits that the Board should absolutely
`
`consider the First and Second Code200 IPR Petitions when deciding whether
`
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`12
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`joinder is appropriate here.
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`IPR2022-01109 of Patent No. 10,257,319
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`Third, as discussed above, Petitioners should have found the Plamondon
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`reference prior to the filing of the First Code200 IPR Petition on 7/14/2020.
`
`Regarding the EPR Request: The stay in the EPR may be lifted if the
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`NetNut IPR is terminated. Regardless of what happens in the NetNut IPR, the
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`TDCT IPR will continue with or without joinder.
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`As discussed above, Petitioners should have found the Plamondon reference
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`prior to the filing of the EPR Request on 10/7/21. Instead of searching for new
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`references, Petitioner Teso LT, UAB chose to rely on the same references in the
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`EPR Request as in the First Code200 IPR Petition.
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`Nonethless, all of the references at issue in the TDCT IPR were submitted to
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`the examiner in the EPR for review on 12/20/21. The examiner has already
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`reviewed and considered these references (EX. 1085 at 4) and Plamondon was not
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`a basis for rejection in the Office Action dated 3/23/22 (EX. 1085).
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`Regarding the Tex. Litigation: As discussed above, Petitioners already had
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`a full and fair opportunity to litigate the validity of the ‘319 Patent in the Tex.
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`Litigation. Petitioners should not now get a fifth bite at the invalidity apple to try
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`to invalidate the ‘319 Patent based on a new primary prior art reference.
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`Petitioners’ arguments fail for at least two additional reasons.
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`First, Petitioners argument as to the overlap in claims at issue in the Tex.
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`13
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`Litigation and this IPR is misleading. See Motion at 8-9. Only claim 1 of the ‘319
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`IPR2022-01109 of Patent No. 10,257,319
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`Patent is independent. During the Tex. Litigation, Petitioner-defendants argued that
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`the dependent claims “recite the usage of standard Internet communications and
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`protocols” (see, e.g., EX. 2011 at 20) and Petitioners cannot now make
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`contradictory arguments that resolution as to certain dependent claims in this IPR
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`is of paramount importance. For example, claim 28 of the ‘319 Patent recites: “A
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`non-transitory computer readable medium containing computer instructions that,
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`when executed by a computer processor, cause the processor to perform the
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`method according to claim 1.” Therefore, Patent Owner respectfully submits that
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`many of the same validity issues related to claim 1 also relate to the dependent
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`claims.
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`Second, Petitioners argue that “the jury was not provided the Court’s
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`Supplemental Claim Construction Order” (Motion at 10), but this argument is a red
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`herring. A jury is never provided the Orders, only the final claim constructions and
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`the testifying experts may only offer opinions in accordance with the guidance in
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`the Orders.
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`F. PETITIONERS FAIL TO MEET THEIR BURDEN
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`Petitioners fail to meet their burden for at least two additional reasons.
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`First, there is no representation that the primary petitioner, TDCT, would
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`cooperate with the instant Petitioners. See Motion at 6, SMF No. 15.
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`14
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`Second, Petitioners argue that joinder is “the most efficient and economical
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`IPR2022-01109 of Patent No. 10,257,319
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`manner to proceed in this case”. Motion at 14. However, Petitioners rely on two
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`cases that are both easily distinguishable at least because in both cases, joinder was
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`unopposed. HTC v. Parthenon Unified Memory Architecture LLC, IPR2017-
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`00512, Paper 12 at 7 (June 1, 2017); STMicroelectronics, Inc. v. Lone Star Silicon
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`Innovations, LLC, IPR2018-00436, Paper 7 at 2 (PTAB May 4, 2018).
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`Additionally, in STMicroelectronics, the joinder petitioner agreed not to introduce
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`any argument or discovery not introduced by the primary petitioner. See id. at 4.
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`That is not the case here where the instant petitioners have already introduced
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`substantial arguments and evidence based on their involvement in the Tex.
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`Litigation and their familiarity with the ‘319 Patent. E.g., Motion at 2-3, SMF No.
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`3; Motion at 4, SMF No. 5; and EXS. 1080-1085.
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`VI. CONCLUSION
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`In view of the foregoing, Patent Owner respectfully requests that institution
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`and joinder be denied.
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`15
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`IPR2022-01109 of Patent No. 10,257,319
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`Date: July 14, 2022
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`Respectfully submitted,
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`By: /s/ Thomas M. Dunham
`Thomas M. Dunham
`Reg. No. 39,965
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`Cherian LLP
`1901 L Street NW, Suite 700
`Washington, D.C. 20036
`(202) 838-1567
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`ATTORNEY FOR PATENT OWNER,
`BRIGHT DATA LTD.
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`16
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`CERTIFICATE OF COMPLIANCE
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`IPR2022-01109 of Patent No. 10,257,319
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`Pursuant to 37 C.F.R. § 42.24(d), the undersigned hereby certifies that
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`PATENT OWNER’S OPPOSITION TO PETITIONERS’ MOTION FOR
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`JOINDER complies with the 15-page-limit under 37 C.F.R. § 42.24(b)(3). This
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`paper contains fewer than the limit of 15 pages, excluding the parts of this paper
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`exempted by 37 C.F.R. § 42.24(a)(1). This paper also complies with the format
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`requirements of 37 C.F.R. § 42.6(a).
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`Date: July 14, 2022
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`Respectfully submitted,
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`By: /s/ Thomas M. Dunham
`Thomas M. Dunham
`Reg. No. 39,965
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`Cherian LLP
`1901 L Street NW, Suite 700
`Washington, D.C. 20036
`(202) 838-1567
`
`ATTORNEY FOR PATENT OWNER,
`BRIGHT DATA LTD.
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`17
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`CERTIFICATE OF SERVICE
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`IPR2022-01109 of Patent No. 10,257,319
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`Pursuant to 37 C.F.R. § 42.6(e), the undersigned hereby certifies the
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`PATENT OWNER’S OPPOSITION TO PETITIONERS’ MOTION FOR
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`JOINDER and accompanying exhibits thereto, were served on the undersigned
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`date via email, as authorized by Petitioners, at the following email addresses:
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`jscott@ccrglaw.com
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`jheuton@ccrglaw.com
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`ctolliver@ccrglaw.com
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`Date: July 14, 2022
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`Respectfully submitted,
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`By: /s/ Thomas M. Dunham
`Thomas M. Dunham
`Reg. No. 39,965
`
`Cherian LLP
`1901 L Street NW, Suite 700
`Washington, D.C. 20036
`(202) 838-1567
`
`ATTORNEY FOR PATENT OWNER,
`BRIGHT DATA LTD.
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`18
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