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`U.S. Patent No. 10,257,319
`Inter Partes Review
`Petitioners’ Reply in Support of Motion for Joinder
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`CODE200, UAB; TESO LT, UAB; METACLUSTER LT, UAB; OXYSALES,
`UAB; AND CORETECH LT, UAB,
`Petitioners,
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` v.
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`BRIGHT DATA LTD.,
`Patent Owner.
`____________
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`Inter Partes Review No. IPR2022-01109
`Patent No. 10,257,319
`____________
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`PETITIONERS’ REPLY IN SUPPORT OF MOTION FOR
`JOINDER TO INTER PARTES REVIEW IPR2022-00135
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`I.
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`INTRODUCTION
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`The Board determined in two separate proceedings that petitioners “demon-
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`strated a reasonable likelihood of prevailing” with respect to four different primary
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`references invalidating the ’319 patent claims. See “TDC IPR,” IPR2022-00135, Pa-
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`per 12 (Plamondon); “NetNut IPR,” IPR2021-01492, Paper 11 (Crowds, Border,
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`Morphmix). The Board denied Petitioners’ motion to join the NetNut IPR because
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`(i) Petitioners asserted grounds previously asserted in Petitioners’ prior IPR2020-
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`1266 (“1266 IPR”) and failed to stipulate not to raise these same grounds at trial
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`(IPR2022-00861, Paper 17 at 11-12); (ii) Petitioners previously conducted a jury
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`trial challenging the validity of two of the challenged claims based on Crowds (id.
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`at 14-15); (iii) Petitioners sought to also join the present co-pending TDC IPR; and
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`(iv) the PTAB had terminated NetNut from the NetNut IPR (id. at 15-16).
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`None of these facts is present here. First, Petitioners seek to join the TDC IPR
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`based on the Plamondon reference, which was not included in the 1266 IPR. Peti-
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`tioners had no knowledge of Plamondon prior to TDC filing its IPR. Thus, Petition-
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`ers could not have stipulated not to use it at trial, which began before TDC filed its
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`IPR. In any event, Petitioners hereby stipulate not to rely on Plamondon in any future
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`trial concerning the ’319 patent. Second, Petitioners did not rely on the unknown
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`Plamondon reference in the Texas litigation. See Ex. 1086, Defendants’ Disclosure
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`Pursuant to 35 U.S.C. § 282 (ECF No. 450) (listing patents and publications relied
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`1
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`on in the Texas litigation for anticipation of the ’319 patent or as showing the state
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`of the art). Third, the Board denied Petitioners’ motion to join the NetNut IPR—
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`thus, the present petition is Petitioners’ first and only opportunity to challenge the
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`validity of the ’319 patent in view of Plamondon. Fourth, TDC remains a party to
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`the TDC IPR and Petitioners seek an understudy role.
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`Bright Data opposes joinder, arguing that Petitioners should have (i) known
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`of Plamondon in 2020; (ii) included Plamondon in the 1266 IPR; and (iii) made the
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`same arguments in the 1266 IPR and jury trial that TDC makes in its IPR. As shown
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`below, Bright Data’s arguments are unpersuasive, and the Board should exercise its
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`discretion and grant Petitioners’ Motion for Joinder.
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`II.
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`IF JOINDER IS GRANTED, THE PRESENT IPR WOULD BE
`PETITIONERS’ FIRST AND ONLY INSTITUTED IPR CHALLENGE
`TO THE ’319 PATENT
`Patent Owner argues that the present Petition represents a “fifth bite at the
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`invalidity apple” and that the Board should deny joinder because Petitioners should
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`have been aware of Plamondon before TDC filed its IPR. Paper 11 at 1, 8, 11, and
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`13 (citing General Plastic). But if the current IPR is instituted, it will represent Pe-
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`titioners’ first and only IPR directed to the ’319 patent that will have been instituted.
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`With respect to General Plastic, that decision sought to “take undue inequities
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`and prejudices to Patent Owner into account.” General Plastic at 17. The inequities
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`and prejudices considered “undue” involve situations typified by “[m]ultiple,
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`2
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`staggered petitions challenging the same patent and same claims,” in which petition-
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`ers could “strategically stage their prior art and arguments in multiple petitions, us-
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`ing our decisions as a roadmap, until a ground is found that results in the grant of
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`review.” Id.; see also Intel Corp. v. VLSI LLC, IPR2022-00366 at 11 n.8 (“Intel”).
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`Petitioners seek an understudy role in this case—no roadmap exists. See
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`IPR2022-00861, Paper 17 at 13 (no “road mapping” exists in copycat petition). Pe-
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`titioners did not use a prior decision to craft new arguments. Instead, TDC (a third
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`party) put forth its own arguments. Contrary to Patent Owner’s argument (Paper 11
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`at 15), the Petition does not introduce any new arguments or evidence. Moreover,
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`Petitioners could not have stipulated not to use Plamondon at trial because Petition-
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`ers were not aware of Plamondon, and could not have reasonably learned of its ex-
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`istence until the filing of the TDC IPR, which took place after trial began.
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`Patent Owner does not argue and provides no evidence that Petitioners had
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`actual knowledge of Plamondon before TDC filed its IPR. See Paper 11 at 9. Instead,
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`Patent Owner argues that Petitioners should have known of Plamondon because it
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`shares a named inventor and assignee with Samuels (id. at 8-9), which is one of over
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`200 prior-art references listed on the face of the ’319 patent. Ex. 1001.
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`Patent Owner further argues that Petitioners should have known of Plamon-
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`don because it shares an assignee, Citrix Systems, with Mithyantha. See Paper 11 at
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`8-9. Mithyantha, however, is not prior art to the ’319 patent and Petitioners used
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`3
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`Mithyantha as a prior-art reference to a different patent in a different patent family
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`(i.e., US Patent No. 10,469,614). Further, Mithyantha is one of thousands of patents
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`owned by Citrix Systems. Ex. 1087. Patent Owner’s attempt to impute knowledge
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`to Petitioners of thousands of patents, including Plamondon, because they are owned
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`by a common assignee is not supported. See OpenSky Indus., LLC v. VLSI Tech.
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`LLC, IPR2021-01064, Paper 17 at 11-12 (Dec. 23, 2021) (declining to impute
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`knowledge to petitioner of prior art used in a prior litigation).1
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`III. PETITIONERS’ CLAIM-CONSTRUCTION
`ALWAYS BEEN CONSISTENT
`If and when Petitioners become primary petitioners, Petitioners’ claim-con-
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`POSITION HAS
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`struction position will remain consistent with their prior position in prior IPR filings
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`and the Texas litigation. For example, Petitioners have always argued, and the Board
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`has repeatedly agreed, that a device—be it a jondo of Crowds, a proxy server of
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`Border, a node of MorphMix, or an appliance of Plamondon—can act as a “server”
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`or a “client” depending on the role played by the device. See, e.g., NetNut IPR, Paper
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`1 Further, whether Plamondon is more material to the validity of the ʼ319 patent than,
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`for example, Crowds, Morphmix, or Border, as Patent Owner argues, is irrelevant,
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`and Patent Owner cites no authority to the contrary. Paper 11 at 9. In fact, the Board
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`has instituted multiple IPR proceedings based on all four primary references. See
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`TDC IPR (Plamondon); NetNut IPR (Crowds, Border, Morphmix).
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`4
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`11 at 28-30, 35, 39-40; TDC IPR, Paper 12 at 34-35. Thus, Petitioners’ position has
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`been and will remain consistent.
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`IV. JOINDER WOULD NOT WASTE RESOURCES OR RISK
`INCONSISTENT OUTCOMES
`As noted above, if the Board grants joinder, it would represent Petitioners’
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`sole opportunity in the PTAB to obtain a merits-based decision regarding the validity
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`of the ’319 patent (whether in view of Plamondon or otherwise).2 Joinder does not
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`risk inconsistent outcomes because the TDC IPR shares no overlapping primary
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`prior art references with either Petitioners’ prior petitions or the Texas litigation.
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`Moreover, joinder would not waste resources because TDC remains a party and Pe-
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`titioners merely seek to join in an understudy role. None of the Board precedent
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`Patent Owner cites supports denying joinder here. Thus, “[a]llowing Petitioner[s]
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`the opportunity to pursue a decision on the merits from the Board at this time” is in
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`the interests of justice, particularly “the desires to improve patent quality and patent-
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`system efficiency.” See Intel, Paper 14 at 9.
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`For these reasons, the Board should grant joinder.
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`2 The Office ordered Petitioners’ EPR No. 90/014,875 pertaining to the ’319 patent
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`and issued a non-final office action March 25, 2022. SMF No. 8. The EPR, however,
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`is stayed (id.), which is a further justification for joinder to allow Petitioners to con-
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`tinue their challenge to the ’319 patent.
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`5
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`Respectfully submitted,
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`CHARHON CALLAHAN ROBSON
`& GARZA, PLLC
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`/George “Jorde” Scott /
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`George “Jorde” Scott (Reg. No. 62,859)
`(Lead Attorney for Petitioners)
`Craig Tolliver (Reg. No. 45,975)
`John C. Heuton (Reg. No. 62,467)
`3333 Lee Parkway
`Suite 460
`Dallas, TX 75219
`(214) 521-6400
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`6
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), the undersigned hereby certifies that the
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`above Reply was served on counsel for Patent Owner via email on August 12, 2022,
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`as authorized by Patent Owner, at the following email addresses:
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`Thomas Dunham tomd@ruyakcherian.com
`Elizabeth O’Brien elizabetho@ruyakcherian.com
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`The above Reply was also served via e-mail on August 12, 2022 on Petition-
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`ers’ counsel in pending The Data Company Technologies Inc. v. Bright Data Ltd.,
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`IPR2022-00135:
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`Michael Rader MRader-PTAB@wolfgreenfield.com
`Adam Wichman AWichman-PTAB@wolfgreenfield.com
`Gregory Nieberg GNieberg-PTAB@wolfgreenfield.com
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`CHARHON CALLAHAN ROBSON &
`GARZA, PLLC
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`/George “Jorde” Scott/
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` George “Jorde” Scott (Reg. No. 62,859)
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`(Lead Attorney for Petitioner)
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`Dated: August 12, 2022
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`7
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