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`HIGHLY CONFIDENTIAL - OUTSIDE ATTORNEYS' EYES ONLY
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________________
`
`THE DATA COMPANY TECHNOLOGIES INC.,
`
`Petitioner
`
`v.
`
`BRIGHT DATA LTD.,
`
`Patent Owner
`
`_________________________
`
`Case IPR2022-00135
`
`Patent No. 10,257,319
`
`_________________________
`
`DECLARATION OF DR. TIM A. WILLIAMS
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`Code200, UAB, et al. v. Bright Data Ltd.
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`I.
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`INTRODUCTION ...............................................................................................5
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`II. QUALIFICATIONS ............................................................................................8
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`III. LEGAL PRINCIPLES.......................................................................................10
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`A. ANTICIPATION .........................................................................................13
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`B. OBVIOUSNESS ..........................................................................................13
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`IV. BACKGROUND TO THE FIELD OF TECHNOLOGY.................................20
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`V.
`
`..22
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`VI. BACKGROUND OF THE COMMON SPECIFICATION..............................27
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`VII. .......................................................... REVIEW OF THE COMMON SPECIFICATION
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`28
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`VIII. ..................................................................................................... CLAIM CONSTRUCTION
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`33
`
`A.
`
`.............................34
`
`1. REVIEW OF FIGURES IN THE SPECIFICATION..............................40
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`a. REVIEW OF FIGURE 1.......................................................................41
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`b. REVIEW OF FIGURE 3.......................................................................43
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`c. COMPARISON OF FIGURES 1 AND 3.............................................45
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`2. REVIEW OF PROSECUTION HISTORIES ..........................................46
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`a. PROSECUTION HISTORY OF THE GRANDPARENT PATENT
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`NO. 10,069,936............................................................................................47
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`b.
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`c.
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`B.
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`.........................49
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`............51
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`...........................51
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`IX. BRIGHT DATA PRACTICES THE CHALLENGED CLAIMS.....................56
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`X. OVERVIEW OF PLAMONDON .....................................................................62
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`XI. GROUND 1 (ALLEGED ANTICIPATION BY PLAMONDON) FAILS ......65
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`A. NO DISCLOSURE OF CLAIM 1, STEP 1 UNDER ROLE-BASED
`
`CONSTRUCTIONS ............................................................................................66
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`B. NO DISCLOSURE OF CLAIM 1, STEP 4 UNDER ROLE-BASED
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`CONSTRUCTIONS ............................................................................................67
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`C. NO DISCLOSURE OF ARCHITECTURE OF CLAIM 1 UNDER
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`...................................69
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`1. CLIENT 102.............................................................................................71
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`2. APPLIANCE 200.....................................................................................76
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`D. NO DISCLOSURE OF DEPENDENT CLAIMS .......................................78
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`1. CLAIM 14 ................................................................................................78
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`2. CLAIM 24 ................................................................................................82
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`3
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`E.
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`EXPERT REPEATEDLY TAKES A FALLBACK
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`POSITION REGARDING PLAMONDON ........................................................86
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`XII. .... GROUNDS 2-7 (ALLEGED OBVIOUSNESS OF DEPENDENT CLAIMS)
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`87
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`A. GROUND 2 (ALLEGED OBVIOUSNESS OVER PLAMONDON) FAILS
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`88
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`B. GROUND 3 (ALLEGED OBVIOUSNESS OVER PLAMONDON AND
`
`RFC 2616) FAILS................................................................................................88
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`C. GROUND 4 (ALLEGED OBVIOUSNESS OVER PLAMONDON AND
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`RFC 1122) FAILS................................................................................................93
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`D. GROUND 5 (ALLEGED OBVIOUSNESS OVER PLAMONDON AND
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`IEEE 802.11-2007) FAILS ..................................................................................93
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`E. GROUND 6 (ALLEGED OBVIOUSNESS OVER PLAMONDON AND
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`PRICE) FAILS.....................................................................................................94
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`F. GROUND 7 (ALLEGED OBVIOUSNESS OVER PLAMONDON AND
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`KOZAT) FAILS...................................................................................................99
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`XIII. ......................... SECONDARY CONSIDERATIONS OF NON-OBVIOUSNESS
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`101
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`
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`I.
`
`INTRODUCTION
`
`I, Dr. Tim A. Williams, declare as follows:
`
`My full name is Tim Arthur Williams.
`
`I have been retained as an independent expert in this matter by
`
`1.
`
`2.
`
`3.
`
`counsel
`
`provide my opinions on certain references in the above-identified inter partes
`
`-00135, involving U.S. Patent No. 10,257,319
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`319
`
`4.
`
`In IPR2022-00138 (the related proceeding) of U.S. Patent No.
`
`: I reviewed the Petition (Paper 2) and the exhibits
`
`submitted with the Petition (EXS. 1001-1079); I reviewed the Patent Owner
`
`Preliminary Response (
`
`Paper 6) and the exhibits submitted with the
`
`POPR (EXS. 2001-2009);
`
`Reply to the POPR (Paper 8) and
`
`-reply to the POPR (Paper 9); and I reviewed the Institution
`
`Decision (Paper 12) dated May 11, 2022.
`
`5.
`
`In IPR2022-00135 (this proceeding): I reviewed the Petition (Paper 2)
`
`and the exhibits submitted with the Petition (EXS. 1001-1078); I reviewed the
`
`Patent Owner Preliminary Response (
`
`Paper 7) and the exhibits submitted
`
`with the POPR (EXS. 2001-2009); I rev
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`-reply to the POPR (Paper 9); and I reviewed the
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`Institution Decision (Paper 12) dated June 1, 2022.
`
`6.
`
`Levin (EX. 2010) dated July 22, 2022, which I understand covered both IPR2022-
`
`00135 and IPR2022-00138.
`
`7.
`
`I reviewed related patents, including U.S. Patent Nos. 8,560,604 (EX.
`
`2011) and U.S. Patent No. 10,069,936 (EX. 2012) and their file histories (EXS.
`
`1071 and 1072).
`
`8.
`
`In the case of Bright Data Ltd. v. NetNut Ltd., Case No. 2:21-cv-
`
`I reviewed related patents,
`
`, EX. 2004) and
`
`, EX. 2005
`
`their file histories.
`
`C.C. Order, EX. 1006), the Supplemental Claim Construction order (Dkt.
`
`, EX. 1009), the February 16, 2021
`
`, EX. 2007),
`
`the Declaration of Dr. Vernon Thomas Rhyne (Dkt. 126-5) and the Declaration of
`
`Dr. Michael J. Freedman (Dkt. 138-1) in the case of Bright Data Ltd. v. Teso LT,
`
`UAB et al., Case No. 2:19-cv-
`
`I
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`6
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`Constructions (Dkt. 106-7), the Declaration of Dr. Kimberly Claffy in support of
`
`-
`
`, EX. 2013) in the
`
`NetNut Litigation.
`
`9.
`
`As of the date of this declaration, I have reviewed the papers and
`
`exhibits submitted in related proceedings
`
`,
`
`including IPR2021-01492 and IPR2021-
`
`IPR2022-00861 and IPR2022-
`
`IPR2022-00915 and IPR2022-
`
`submitted prior declarations in support of the Patent Owner Preliminary Responses
`
`in each of the Code200 IPRs and the Major Data IPRs.
`
`10.
`
`I have reviewed other exhibits submitted concurrently with this
`
`declaration, as cited and discussed herein.
`
`11.
`
`In preparing this declaration, I also had telephone conversations with
`
`consulting source code reviewer from the various Texas litigations involving the
`
`, Mr. Matt McKune.
`
`12.
`
`I am being paid for my work preparing this declaration at my normal
`
`consulting rate plus reimbursement of direct expenses. My compensation is not
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`tied to the outcome of this matter and is not based on the substance of the opinions
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`that I provide.
`
`II. QUALIFICATIONS
`
`13.
`
`I am an industry professional with over 45 years of experience in
`
`wireless communications, computer networking and telecommunications
`
`technology. A copy of my CV is attached as Exhibit A.
`
`14.
`
`I am currently active currently active as Chief Executive Officer at
`
`Beach Technologies, LLC (Danville, CA) a company related to intellectual
`
`property consulting.
`
`15.
`
`I am also currently active as a Member at Calumet Venture
`
`Management (Madison, WI) a company related to the investment into start-up
`
`companies.
`
`16. Beginning in 2004, I was the Founder and Chairman at DoceoTech
`
`Inc. (Danville, CA) which provides training for engineers in wireless, computer
`
`networking, and telephony technologies.
`
`17.
`
`From 2008 to 2010, I was Founder and Board Member of BitRail
`
`Networks, Inc (Miami, FL). This company designed and produced computer
`
`networking equipment. One market the company served was edge devices for
`
`residential and community access.
`
`8
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`18.
`
`From 2006 to 2015, I was Founder and Board Member of BEEcube,
`
`Inc. (Freemont, CA). This company built high speed computing and computer
`
`networking equipment. One market the company served was networking
`
`equipment for backhaul networks used in 5G cellular networks.
`
`19.
`
`From 2004 to 2008, I was Founder and CEO of SiBEAM, Inc. This
`
`company designed and produced wireless networking IC and equipment.
`
`20.
`
`From 1999 to 2000, I was Interim CEO and Advisory Board Member
`
`of Atheros Communications, Inc. (Palo Alto, CA) . This company designed and
`
`produced wireless networking IC and equipment.
`
`21.
`
`From 1998 to 2000, I was CTO of Picazo Communications, Inc. (San
`
`Jose, CA). This company built computer networking equipment to provide VoIP
`
`PBX functionality.
`
`22.
`
`From 1991 to 1998, I was Co-Founder, CTO, VP Engineering of
`
`Wireless Access, Inc. (Santa Clara, CA). This company developed over the air
`
`communication protocols for communication between the subscriber device and
`
`the network.
`
`23.
`
`From 1979 to 1991, I was a Member of the Technical Staff at
`
`Motorola, Inc. (Schaumberg, IL and Austin, TX). In IL, I designed protocols for
`
`Digital voice communications. In TX, I designed ICs for communications
`
`including Telecom, Wireless, Cellular and Computer Networking.
`
`9
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`24.
`
`I have been engaged in over 200 patent related litigations since 1999.
`
`Many of these cases relate to computer networking technologies, including
`
`protocols for Internet communications and the architecture of computer networks.
`
`25.
`
`I hold degrees from Michigan Technological University (B.S.E.E.,
`
`1976) and the University of Texas at Austin (M.S.E.E., 1982 and Ph.D., Electrical
`
`Engineering, 1985 and M.B.A., 1991).
`
`26.
`
`I am the principal inventor on 28 U.S. Patents all of which relate to
`
`communications technologies.
`
`27.
`
`I have been a Registered Patent Agent since 2002.
`
`III. LEGAL PRINCIPLES
`
`28. When interpreting a patent, it is my understanding that it is important
`
`to view the disclosure and claims of that patent from the level of ordinary skill in
`
`that art at the time of the invention. My opinion of the level of ordinary skill in the
`
`art is based on my personal experience working and teaching in the technical field
`
`of Internet communications, my knowledge of colleagues and others working in
`
`that field, my study of the 319 Patent and its file history, and my knowledge of:
`
`a. The level of education and experience of persons actively working in
`
`the field at the time the subject matter at issue was developed;
`
`b. The types of problems encountered in the art at the time the subject
`
`matter was developed;
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`c. The relevant prior art patents and publications;
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`d. The activities of others working in that field;
`
`e. The prior art solutions to the problems addressed by the relevant art;
`
`and,
`
`f. The sophistication of the technology at issue in this case.
`
`29.
`
`In determining the level of ordinary skill in the art, I have also
`
`considered, among other things: (1) the sophistication of the relevant technology;
`
`(2) the rapidity with which innovations are made in that field; and (3) the
`
`educational level of active workers in that field. I also understand that these
`
`factors are not exhaustive and are merely a useful guide to determining the level of
`
`ordinary skill in the art.
`
`30.
`
`Taking the above factors into account, based on my experience in the
`
`art and my study of the Internet communication systems disclosed in the
`
`which share the same inventors of Derry Shribman and Ofer Vilenski
`
`and a common specification), in my opinion a person of ordinary skill in the art (a
`
`field of Electrical Engineering, Computer Engineering, or Computer Science or as
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`experience in Internet communications. I exceeded that level of skill in the relevant
`
`time frame.
`
`31.
`
`I understand that for purposes of this IPR, Petitioner and its expert
`
`have adopted this proposal for the level of ordinary skill in the art. Petition at 7;
`
`EX. 1003 at ¶ 34. 1 I understand that the Board applied this same definition in each
`
`of the Institution Decisions in IPR2022-00135 (Paper 12 at 17) and IPR2022-
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`00138 (Paper 12 at 21).
`
`32. Based on the foregoing, I believe that I am qualified to provide
`
`Patents, including
`
`regarding what a POSA would have understood from the specification, drawings,
`
`claims, and file histories, as well as from the prior art in the field at the time of the
`
`invention (October 8, 2009).
`
`33. When offering opinions about how a POSA would evaluate or
`
`understand a particular issue, I have placed myself in the mindset of such a POSA,
`
`basing my opinions on the relevant education and skillset of such a POSA.
`
`1 o
`
`rdinary skill in the art. EX. 1003 at ¶¶ 33-34. My analysis herein would not
`change even with these modifications.
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`A. ANTICIPATION
`
`34.
`
`alleged prior art reference discloses each and every limitation of the claim at issue,
`
`either expressly or inherently. In other words, every limitation of the claim must
`
`appear in a single prior art reference for the reference to anticipate that claim. I also
`
`understand that all limitations of the claim must be disclosed in the reference as
`
`they are arranged in the claim. I also understand that a requirement of a claim that
`
`is missing from a prior art reference may be disclosed inherently if that missing
`
`requirement is necessarily present in the prior art. I also understand that to be
`
`considered anticipatory, the prior art reference must be enabling and must describe
`
`possession of a POSA. I also understand that a POSA must be able to at once
`
`envisage the claimed invention based on the prior art reference without any need
`
`for picking, choosing, and combining various disclosures.
`
`B. OBVIOUSNESS
`
`35.
`
`alleged prior art reference or a combination of such references plus what a POSA
`
`would understand based on his or her knowledge and those references. I
`
`understand that a patent cannot be properly granted for subject matter that would
`
`have been obvious to a POSA at the time of the alleged invention. It is also my
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`understanding that in assessing the obviousness of claimed subject matter a POSA
`
`should evaluate obviousnessoverthe prior art from the perspective of one of
`
`ordinary skill in the art at the time the invention was made(and not from the
`
`perspective of either a layman or a geniusin thatart).
`
`36.
`
`Itis my further understanding that the question of obviousnessis to be
`
`determined based on:
`
`a. The scope and content of the priorart:
`
`b. The difference or differences between the subject matter of the claim
`
`and the prior art (wherebyin assessingthe possibility of obviousness
`
`one should consider the mannerin which a patentee and/or a Court
`
`has construed the scope of a claim);
`
`c. The level of ordinary skill in the art at the time ofthe alleged
`
`invention of the subject matter of the claim; and,
`
`d. Any relevant objective factors (the “secondary indicia”) indicating
`
`non-obviousnessasI discuss further below.
`
`37.
`
` Itis also my understanding that the United States Supreme Court
`
`clarified the law of obviousness in KSR Int’l Co. v. Teleflex Inc., 550 U.S. at 398
`
`and 419 (2007) case (“KSR”), which I have read and incorporate herein by
`
`reference. Based on KSR,it is my understanding that to determine whetherit
`
`would have been obvious to combine knownlimitations in a mannerclaimed in a
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`patent, one may consider such things as the interrelated teachings of multiple
`
`patents, the effects of demands known to the design community or present in the
`
`marketplace, and the background knowledge of a POSA.
`
`38.
`
`It is my further understanding that for a claim to be found invalid as
`
`obvious, it must be obvious to a POSA at the relevant time. I also understand that
`
`the existence of each and every limitation of the claimed invention in multiple
`
`prior art references/systems does not necessarily prove obviousness since most, if
`
`not all, inventions rely on building blocks of prior art. Obviousness may be found
`
`where, for example, the differences between the subject matter sought to be
`
`patented and the prior art are such that the subject matter as a whole would have
`
`been obvious at the time the invention was made to a person having ordinary skill
`
`in the art to which said subject matter pertains.
`
`39.
`
`It is my further understanding that I should consider whether there
`
`was a reason that would have prompted a POSA to combine the known limitations
`
`in a way the claimed invention does, taking into account such factors as: (1)
`
`whether the claimed invention was merely the predictable result of using prior art
`
`limitations according to their known function(s); (2) whether the claimed invention
`
`provides an obvious solution to a known problem in the relevant field; (3) whether
`
`the prior art teaches or suggests the desirability of combining limitations claimed
`
`in the invention; (4) whether the prior art teaches away from combining limitations
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`in the claimed invention; (5) whether it would have been obvious to try the
`
`combinations of limitations, such as when there is a design need or market pressure
`
`to solve a problem and there are a finite number of identified, predictable
`
`solutions; and (6) whether the change resulted more from design incentives or
`
`other market forces. I also understand that to render a claim obvious, the cited
`
`combination of prior art must provide a reasonable expectation of success for the
`
`proposed combination.
`
`40.
`
`It is also my understanding that in developing opinions as to whether
`
`or not certain claimed subject matter would have been obvious, each claim of a
`
`given patent should be considered in its entirety and separately from any other
`
`claims. In so doing, it is my understanding that while I should consider any
`
`differences between the claimed invention and the prior art, I should also assess the
`
`obviousness or non-obviousness of the entirety of a claim covering an alleged
`
`invention, not merely some portion of it.
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`41.
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`It is my further understanding that although the KSR decision I
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`for the purposes of an obviousness assertion, the use
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`is still inappropriate when making such an assertion. For example, § 2142 of the
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`sed upon
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`applicant's disclosure is often difficult to avoid due to the very nature of the
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`examination process. However, impermissible hindsight must be avoided and the
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`legal conclusion must be reached on the basis of the facts gleaned from the prior
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`In my opinion, this direction to Examiners is equally applicable to experts
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`who assert that the general knowledge of a POSA and/or a combination of
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`references invalidates a patent claim through obviousness.
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`42.
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`I have also been informed that in cases such as the decision In re
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`Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), the Court of Appeals for the Federal
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`reconstruction by using the patent in suit as a guide through the maze of prior art
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`references, combining the right references in the right way so as to achieve the
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`Supreme Court also stated in KSR at pp. 418-
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`elements is not proved obvious merely by demonstrating that each of its elements
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`was, independently, known in the prior art. Although common sense directs one to
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`look with care at a patent application that claims as innovation the combination of
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`two known devices according to their established functions, it can be important to
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`identify a reason that would have prompted a person of ordinary skill in the
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`relevant field to combine the elements in the way the claimed new invention does.
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`This is so because inventions in most, if not all, instances rely upon building
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`blocks long since uncovered, and claimed discoveries almost of necessity will be
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`43. Additionally, and also relevant to the above caution to avoid
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`hindsight, it is my understanding that it is not enough to find that prior art
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`references could be combined, and that to show obviousness one must prove that a
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`POSA would actually combine the multiple references to arrive at the claimed
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`invention, including showing that a POSA would be motivated to do so. For
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`example, in the case PersonalWeb Technologies, LLC v. Apple, Inc., 848 F.3d 987,
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`whether a skilled artisan not only could have made but would have been motivated
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`to make the combinations or modifications of prior art to arrive at the claimed
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`44.
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`It is also my understanding that I should consider any objective
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`at the time of the invention and afterwards that may shed light on the non-
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`obviousness of the claims, such as:
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`a. Whether the invention was commercially successful as a result of the
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`merits of the claimed invention (rather than the result of design needs
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`or market-pressure advertising or similar activities);
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`b. Whether the invention satisfied a long-felt need;
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`c. Whether others had tried and failed to make the invention;
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`d. Whether others invented the invention at roughly the same time;
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`e. Whether others copied the invention;
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`f. Whether there were changes or related technologies or market needs
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`contemporaneous with the invention;
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`g. Whether the invention achieved unexpected results;
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`h. Whether others in the field praised the invention;
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`i. Whether persons having ordinary skill in the art of the invention
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`expressed surprise or disbelief regarding the invention;
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`j. Whether others sought or obtained rights to the patent from the patent
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`holder; and,
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`k. Whether the inventor proceeded contrary to accepted wisdom in the
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`field.
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`45.
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`It is my further understanding the Board has designated a precedential
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`decision regarding the proper analysis of secondary considerations in the case of
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`Lectrosonics, Inc. v Zaxcom, Inc., IPR2018-01129, Paper 33 (PTAB Jan. 24,
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`2020)(designated April 14, 2020)
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`. I understand that for
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`secondary considerations of non-obviousness to be accorded substantial weight,
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`the patentee must establish a nexus between the evidence and the merits of the
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`claimed invention. Id. a
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`Id. I understand that a
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`asserted objective evidence is tied
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`Id.
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`feature that is claimed by a different patent and that materially impacts the
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`Id.
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`46.
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`Lectrosonics
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`still afforded an
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`opportunity to prove nexus by showing that the evidence of secondary
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`Id.
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`claim n
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`Id.
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`IV. BACKGROUND TO THE FIELD OF TECHNOLOGY
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`47.
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`In my opinion, a POSA would understand that network components,
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`such as client devices and web servers, communicating over the Internet are
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`component, typically stores content that may be identified by a uniform resource
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`mation that can be used to
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`geolocate the network component with a particular IP address.
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`48.
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`In my opinion, a POSA would understand that an IP packet sent over
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`the internet to, for example, a web server includes an IP header and payload. The
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`IP header includes the Source IP Address (the IP address of the sending network
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`component) and the Destination IP Address (the IP address of the receiving
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`network component, for example, the IP address of the web server). The payload
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`includes the data being transmitted, such as a request for a content stored on the
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`web server.
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`49.
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`In my opinion, a POSA would understand that, normally, a request for
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`content is sent from a client device (discussed in detail below) to a web server. For
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`example, a customer that is considering buying a product from a store may request
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`content associated with that particular product
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`. That same
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`customer may also request content associated with that same product at a different
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`As one example, a customer may request content to see if the
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`product is on sale. Therefore, in my opinion, a POSA would understand that the IP
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`device.
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`50.
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`In my opinion, a POSA would understand that, normally, the web
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`server responds to a request for content by sending the requested content back to
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`the Source IP Address. In some cases, the response to the request for content may
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`be blocked or spoofed due to, for example, the geographic location of the Source
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`IP Address. As another example, multiple requests having the same Source IP
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`Address may become suspicious and subsequently blocked by the web server.
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`51.
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`In my opinion, a POSA would understand that, at the time of
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`invention, a different type of network component known as a proxy server may be
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`used as an intermediary between the client device and the web server in order to
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`conceal the original Source IP Address for a request for content. See EX. 1001 at
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`Fig. 1. The IP packet will be sent from the original requestor to the proxy server
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`and from the proxy server to the web server. When sending the IP packet from the
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`proxy server to the web server, the proxy server will often replace the original
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`Source IP address of the original requestor with its own IP address. Thus, a POSA
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`would understand that the web server will
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`server. Instead of being blocked or spoofed, the requested content may be sent
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`back to the original requesting network component via the proxy server.
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`V.
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`INTRODUCTION TO THE
`PATENTS
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`52. All of the patents claiming priority to Provisional Application No.
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`61/249,624 filed on October 8, 2009 share the same specification. I agree with the
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`the first server stores a first content
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`client device comprising:
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`identified by a first content identifier,and
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`establishing a Transmission
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`for use with a second server, the method
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`ControlProtocol (TCP) connection with a
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`by the first client device comprising:
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`second server;
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`receiving, from the second server,
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`sending, to the web server over an
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`thefirst content identifier;
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`Internet, the first