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 PRELIMINARY RESPONSE
`
`
`
`
`
`
`
`
`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. BACKGROUND TO THIS PROCEEDING ...................................................... 3
`
`III. PETITIONERS HAVE PRESENTED FIVE CHALLENGES AGAINST THE
`‘319 PATENT ............................................................................................................ 4
`
`A. THE GENERAL PLASTIC FACTORS ............................................................ 5
`
`1. GENERAL PLASTIC FACTOR 1 FAVORS DENIAL .............................. 6
`
`2. GENERAL PLASTIC FACTOR 2 FAVORS DENIAL .............................. 7
`
`3. GENERAL PLASTIC FACTOR 3 IS NEUTRAL ....................................... 8
`
`4. GENERAL PLASTIC FACTOR 4 IS NEUTRAL ....................................... 9
`
`5. GENERAL PLASTIC FACTOR 5 IS NEUTRAL ....................................... 9
`
`6. GENERAL PLASTIC FACTOR 6 FAVORS DENIAL .............................. 9
`
`7. GENERAL PLASTIC FACTOR 7 IS NEUTRAL .....................................10
`
`8. BALANCING THE GENERAL PLASTIC FACTORS ............................10
`
`B. THE FINTIV FACTORS ................................................................................12
`
`1. FINTIV FACTOR 1 IS NEUTRAL ............................................................13
`
`2. FINTIV FACTOR 2 FAVORS DENIAL ...................................................13
`
`3. FINTIV FACTOR 3 FAVORS DENIAL ...................................................13
`
`4. FINTIV FACTOR 4 FAVORS DENIAL ...................................................14
`
`5. FINTIV FACTOR 5 FAVORS DENIAL ...................................................16
`
`6. FINTIV FACTOR 6 FAVORS DENIAL ...................................................17
`
`7. BALANCING THE FINTIV FACTORS ...................................................17
`
`IV. OVERVIEW OF THE ‘319 PATENT ..............................................................18
`
`A. PROBLEMS IDENTIFIED IN THE SPECIFICATION ...............................18
`
`B. DETAILED DESCRIPTION .........................................................................19
`
`C. PETITIONERS MISCHARACTERIZE THE ‘319 PATENT ......................23
`
`V. CLAIM CONSTRUCTION ..............................................................................24
`
`A. “CLIENT DEVICE” .......................................................................................25
`
`
`
`ii
`
`

`

`IPR2022-01109 of Patent No. 10,257,319
`
`
`
`1. FIGURES IN THE SPECIFICATION ........................................................33
`
`a. FIGURE 1 ................................................................................................34
`
`b. FIGURE 3 ................................................................................................35
`
`c. COMPARISON OF FIGURES 1 AND 3 ................................................36
`
`2. PROSECUTION HISTORIES ....................................................................37
`
`a. PROSECUTION HISTORY OF THE PARENT PATENT NO.
`10,069,936 ......................................................................................................38
`
`b. PROSECUTION HISTORY OF THE ‘319 PATENT ............................40
`
`c. PROSECUTION HISTORY OF THE CHILD ‘510 PATENT ...............42
`
`B. “SECOND SERVER” ....................................................................................42
`
`VI. OVERVIEW OF PLAMONDON .....................................................................47
`
`VII. GROUND 1 FAILS ..........................................................................................49
`
`A. NO DISCLOSURE OF CLAIM 1, STEP 1 UNDER ROLE-BASED
`CONSTRUCTIONS .............................................................................................49
`
`B. NO DISCLOSURE OF CLAIM 1, STEP 4 UNDER ROLE-BASED
`CONSTRUCTIONS .............................................................................................50
`
`C. NO DISCLOSURE OF ARCHITECTURE OF CLAIM 1 UNDER PATENT
`OWNER’S PROPOSED CONSTRUCTIONS ....................................................52
`
`1. CLIENT 102 ................................................................................................54
`
`2. APPLIANCE 200 ........................................................................................58
`
`3. PETITIONERS’ ARGUMENTS ARE HINDSIGHT BIASED .................59
`
`D. NO DISCLOSURE OF DEPENDENT CLAIMS ..........................................60
`
`1. CLAIM 14 ...................................................................................................60
`
`2. CLAIM 24 ...................................................................................................63
`
`VIII. GROUNDS 2-7 FAIL .....................................................................................65
`
`A. GROUND 6 (PLAMONDON + PRICE) .......................................................66
`
`B. GROUND 7 (PLAMONDON + KOZAT) .....................................................68
`
`IX. CONCLUSION ..................................................................................................69
`
`
`
`
`
`
`
`iii
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`

`

`
`
`
`
`PATENT OWNER’S LIST OF EXHIBITS
`
`IPR2022-01109 of Patent No. 10,257,319
`
`
`EX. 2001
`
`EX. 2002
`
`EX. 2003
`
`EX. 2004
`
`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)
`
`EX. 2005 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 (“Samuels”)
`
`U.S. Patent No. 8,972,602 (“Mithyantha”)
`
`U.S. Patent No. 10,469,614
`
`EX. 2011 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)
`
`Declaration of Dr. Tim A. Williams , Public Version, previously
`filed in IPR2022-00135 as Exhibit 2044 on August 24, 2022
`
`EX. 2006
`
`EX. 2007
`
`Ex. 2008
`
`EX. 2009
`
`EX. 2010
`
`EX. 2012
`
`
`
`iv
`
`

`

`
`
`EX. 2013
`
`EX. 2014
`
`EX. 2015
`
`EX. 2016
`
`EX. 2017
`
`EX. 2018
`
`EX. 2019
`
`EX. 2020
`
`IPR2022-01109 of Patent No. 10,257,319
`
`
`Claim Construction Order, Bright Data Ltd. v. NetNut Ltd., Case
`No. 2:21-cv-00225, Dkt. 146 (E.D. Tex. May 10, 2022),
`previously filed in IPR2022-00135 as Exhibit 2013 on August 24,
`2022
`
`U.S. Patent No. 10,491,713, previously filed in IPR2022-00135 as
`Exhibit 2004 on March 8, 2022
`
`Definition “Consumer”, Cambridge English Dictionary; accessed
`at https://dictionary.cambridge.org/us/dictionary/english/consumer
`on June 10, 2022, previously filed in IPR2022-00135 as Exhibit
`2015 on August 24, 2022
`
`Definition “Consumer”, Collins English Dictionary; accessed at
`https://www.collinsdictionary.com/us/dictionary/english/consumer
`on June 10, 2022, previously filed in IPR2022-00135 as Exhibit
`2016 on August 24, 2022
`
`Network Fundamentals Study Guide, published February 17,
`2015; accessed at https://www.webopedia.com/reference/network-
`fundamentals-studyguide/#topologies on June 14, 2022,
`previously filed in IPR2022-00135 as Exhibit 2017 on August 24,
`2022
`
`Order, Bright Data Ltd. f/k/a Luminati Networks Ltd. v. Teso LT,
`UAB a/k/a UAB Teso LT, et al., Case No. 2:19-cv-00395, Dkt. 303
`(E.D. Tex. Feb. 12, 2021), previously filed in IPR2022-00135 as
`Exhibit 2007 on March 8, 2022
`
`Patent Owner’s Sur-Reply, Bright Data Ltd. f/k/a Luminati
`Networks Ltd. v. Teso LT, UAB a/k/a UAB Teso LT, et al., Case
`No. 2:19-cv-00395, Dkt. 47 (E.D. Tex. May 5, 2020), previously
`filed in IPR2022-00135 as Exhibit 2008 on March 8, 2022
`
`Patent Owner’s Reply, Bright Data Ltd. f/k/a Luminati Networks
`Ltd. v. Teso LT, UAB a/k/a UAB Teso LT, et al., Case No. 2:19-cv-
`00395, Dkt. 145 (E.D. Tex. Oct. 20, 2020), previously filed in
`IPR2022-00135 as Exhibit 2009 on March 8, 2022
`
`
`
`v
`
`

`

`
`
`EX. 2021
`
`EX. 2022
`
`EX. 2023
`
`IPR2022-01109 of Patent No. 10,257,319
`
`
`Excerpts from Tanenbaum, A., et al., “Computer Networks – Fifth
`Edition”, copyright 2011, ISBN 0-13-212695-8, previously filed in
`IPR2022-00135 as Exhibit 2045 on August 24, 2022
`
`U.S. Patent No. 11,050,852, previously filed in IPR2022-00135 as
`Exhibit 2005 on March 8, 2022
`
`Deposition Transcript of Dave Levin, dated July 22, 2022
`regarding IPR2022-00135 and IPR2022-00138, previously filed in
`IPR2022-00135 as Exhibit 2010 on August 24, 2022
`
`
`
`
`vi
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`

`

`
`
`I.
`
`INTRODUCTION
`
`IPR2022-01109 of Patent No. 10,257,319
`
`Patent Owner previously submitted an Opposition (Paper 13) explaining
`
`certain reasons for denying institution of IPR2022-01109 and denying joinder to
`
`IPR2022-00135.
`
`In this Patent Owner Preliminary Response (“POPR”), Patent Owner
`
`respectfully submits additional reasons for why the Board should exercise its
`
`discretion under 35 U.S.C. § 314 to deny institution of the petition in IPR2022-
`
`01109 based on the General Plastic1 factors and/or the Fintiv2 factors.
`
`Patent Owner additionally, respectfully submits that the Board should deny
`
`institution of the petition based on the merits. The petition alleges anticipation of
`
`claim 1 of the ‘319 Patent, i.e., the only independent claim, based on Plamondon
`
`(EX.1010). The petition fails for at least three reasons.
`
`First, Plamondon does not anticipate steps 1 and 4 of claim 1 under the
`
`preliminary role-based constructions proposed by Petitioners and applied by the
`
`Board in the Institution Decision in IPR2022-00135. Moreover, Plamondon
`
`
`1 General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357,
`
`Paper 19 (PTAB Sept. 6, 2017).
`
`2 Apple Inc. v. Fintiv Inc., IPR2020-00019, Paper 11 (PTAB March 20, 2020).
`
`
`
`1
`
`

`

`
`
`likewise does not anticipate claim 1 under Patent Owner’s proposed constructions
`
`IPR2022-01109 of Patent No. 10,257,319
`
`because Plamondon does not disclose the unique second server ↔ first client
`
`device ↔ web server architecture in which the claimed methods of the ‘319 Patent
`
`operate. Because Plamondon does not anticipate independent claim 1, Plamondon
`
`does not anticipate dependent claims 12-14 and 21-27. Therefore, under either (a)
`
`the role-based constructions or (b) Patent Owner’s proposed constructions, Ground
`
`1 fails.
`
`Second, in Grounds 2-7, Petitioners allege obviousness of certain dependent
`
`claims, however, Petitioners provide no obviousness analysis of the steps of
`
`independent claim 1, which are necessarily incorporated into each and every
`
`dependent claim. Because Plamondon does not anticipate claim 1, and because
`
`Petitioners provided no obviousness analysis of claim 1, Grounds 2-7 also fail.
`
`Third, Grounds 6 and 7 additionally fail because Petitioners rely on expert
`
`testimony that is replete with hindsight bias. A POSA would not be motivated to
`
`make the alleged combinations at least because the problems are already solved by
`
`Plamondon.
`
`For at least these reasons, Patent Owner respectfully submits that IPR2022-
`
`00135 should never have been instituted in the first place.
`
`
`
`2
`
`

`

`
`
`II. BACKGROUND TO THIS PROCEEDING
`
`IPR2022-01109 of Patent No. 10,257,319
`
`Petitioners filed a petition in IPR2020-01266 (the “First Code200 Petition”)
`
`challenging the ‘319 Patent on 7/14/20. The First Code200 Petition was denied
`
`based on discretionary grounds.
`
`Petitioner Teso LT, UAB filed a third-party request for reexamination of the
`
`‘319 Patent in Control No. 90/014,875 (the “EPR Request”) on 10/7/21. The
`
`reexamination is currently stayed in view of IPR2021-01492 (the “NetNut IPR”).
`
`Petitioners3 conducted a jury trial involving the ‘319 Patent in Case No.
`
`2:19-cv-395 (E.D. Tex.)(the “Tex. Litigation”) during the week of November 1-5,
`
`2021. The jury found that the asserted claims of the ‘319 Patent were NOT invalid.
`
`EX.1080.
`
`Petitioners filed a petition in IPR2022-00861 (the “Second Code200
`
`Petition”) challenging the ’319 Patent and a motion for joinder to the NetNut IPR
`
`on 4/18/22. Institution and joinder were both denied on 7/25/22. Code200, UAB, et
`
`al. v. Bright Data Ltd., IPR2022-00861, Paper 17 (PTAB July 25, 2022)(the “July
`
`25 Decision”). Director Vidal sua sponte vacated/remanded the July 25 Decision
`
`and ordered the Board to further consider analysis of the Fintiv factors and the
`
`
`3 Excluding Code200, UAB and Coretech LT, UAB.
`
`
`
`3
`
`

`

`
`
`merits on 8/23/22. Code200, UAB, et al. v. Bright Data Ltd., IPR2022-00861,
`
`IPR2022-01109 of Patent No. 10,257,319
`
`Paper 18 at 7 (PTAB August 23, 2022)(the “August 23 Decision”).
`
`Petitioners filed a petition in IPR2022-01109 (the “Third Code200 Petition”)
`
`challenging the ‘319 Patent and a motion for joinder to IPR2022-00135 (the
`
`“TDCT IPR”) on 6/14/22.
`
`III. PETITIONERS HAVE PRESENTED FIVE CHALLENGES
`
`AGAINST THE ‘319 PATENT
`
`The Board has discretion to deny institution of an IPR. (See 35 U.S.C. §
`
`314(a); 37 C.F.R. § 42.108(a); Harmonic Inc. v. Avid Tech, Inc., 815 F.3d 1356,
`
`1367 (Fed. Cir. 2016); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140
`
`(2016).
`
`As discussed in the Opposition, the instant petition represents the
`
`petitioners’ fifth bite at the invalidity apple as to the ‘319 Patent. E.g., Paper 13 at
`
`11-14. Accordingly, there is no prejudice to Petitioners if institution is denied. Id.
`
`In the reply regarding joinder, Petitioners repeatedly state that this petition is their
`
`only opportunity to challenge the ‘319 Patent via IPR. Paper 14 at 2 (“…first and
`
`only opportunity…”); id. at 2 (“…first and only IPR…”); id. at 4 (“….sole
`
`opportunity…”). These statements are not true particularly in light of Director
`
`Vidal’s August 23 Decision. Petitioners have already made many attempts to
`
`
`
`4
`
`

`

`
`
`challenge the ‘319 Patent via IPR. Petitioners have also already conducted an
`
`IPR2022-01109 of Patent No. 10,257,319
`
`entire jury trial including alleged invalidity of the ‘319 Patent.
`
`In view of Petitioners’ repeated attacks against the ‘319 Patent, Patent
`
`Owner fails to understand how Petitioners’ conduct does not rise to the level of
`
`“abuse of the review process by repeated attacks on patents.” August 23 Decision
`
`at 5. The Consolidated Trial Practice Guide (November 2019)(“TPG”) states that
`
`“two petitions by a petitioner may be needed, although this should be rare.” TPG at
`
`59. The TPG further states that “[t]he Board finds it unlikely that circumstances
`
`will arise where three or more petitions by a petitioner with respect to a particular
`
`patent will be appropriate.” TPG at 59.
`
`Patent Owner respectfully requests the Board exercise its discretion to deny
`
`institution based on the General Plastic factors and/or the Fintiv factors, discussed
`
`below.
`
`A. THE GENERAL PLASTIC FACTORS
`
`The circumstances surrounding the earlier Code200 petitions are different
`
`from the circumstances surrounding the instant petition. In the August 23 Decision,
`
`Director Vidal only referenced the First Code200 Petition and the Second Code200
`
`Petition which were based on the same primary references. Director Vidal never
`
`referenced the Third Code200 Petition which is based on a different primary
`
`
`
`5
`
`

`

`IPR2022-01109 of Patent No. 10,257,319
`
`
`
`reference. Patent Owner respectfully submits that the General Plastic analysis is
`
`relevant to the Third Code200 Petition at least in consideration of efficiency and
`
`fairness.
`
`1. GENERAL PLASTIC FACTOR 1 FAVORS DENIAL
`
`Petitioners filed the First Code200 Petition challenging claims 1-2, 14-15,
`
`17-19, 21-22, and 24-29 of the ‘319 Patent. The First Code200 Petition was
`
`discretionarily denied, at least because the trial in the Tex. Litigation was set to
`
`occur 7 months before a final written decision and there was almost complete
`
`overlap of issues and parties. IPR2020-01266, Paper 18 at 8, 12.
`
`Petitioners filed the Second Code200 Petition challenging claims 1-2, 12,
`
`14-15, 17-19, and 21-29 of the ‘319 Patent. The Second Code200 Petition is
`
`pending.
`
`Petitioners filed the Third Code200 Petition challenging claims 1-29 of the
`
`‘319 Patent. The Third Code200 Petition is pending.
`
`The Board previously noted that “Petitioner challenges claims 1-29 of the
`
`‘319 patent based on Plamondon in the 1109 IPR… The claims challenged in the
`
`1109 IPR therefore also significantly overlap with the claims challenged here [in
`
`the 861 IPR] and those previously challenged in the 1266 IPR.” July 25 Decision at
`
`9.
`
`
`
`6
`
`

`

`
`
`Accordingly, this factor favors denial.
`
`IPR2022-01109 of Patent No. 10,257,319
`
`2. GENERAL PLASTIC FACTOR 2 FAVORS DENIAL
`
`As discussed in the Opposition, Petitioners should have known about the
`
`Plamondon reference before filing the First Code200 Petition. Paper 13 at 7-9.
`
`Petitioners argue that “Petitioners had no knowledge of Plamondon prior to
`
`TDC[T] filing its IPR.” Paper 14 at 1. Petitioners’ representations regarding actual
`
`knowledge are insufficient. See, e.g., Apple Inc. v. Zomm, LLC, IPR2019-01030,
`
`Paper 8 at 9 (PTAB Nov. 14, 2019).
`
`“The relevant issue under factor 2 is whether [the prior art reference] could
`
`have been found with reasonable diligence. . . . [A] petitioner is free to explain
`
`why a reasonably diligent search could not have uncovered the newly applied prior
`
`art.” General Plastic at 20. Petitioners do not sufficiently explain why a reasonably
`
`diligent search would not have uncovered Plamondon.
`
`Petitioners attempt to justify their failure to uncover Plamondon because
`
`there are “over 200 prior-art references listed on the face of the ‘319 patent” (Paper
`
`14 at 3) and the assignee owns “thousands of patents” (Paper 14 at 4). These
`
`arguments do not sufficiently address the reasonably diligent search standard as set
`
`forth in General Plastic.
`
`
`
`7
`
`

`

`IPR2022-01109 of Patent No. 10,257,319
`
`
`
`As discussed in the Opposition, Plamondon has the same assignee and same
`
`classification as Samuels (EX.2008, prior art to the ‘319 Patent and applied in
`
`rejections against related patent applications4) and as Mithyantha (EX.2009, relied
`
`on in the Tex. Litigation against Patent No. 10,469,614 (EX.2010)). Paper 13 at 7-
`
`9; see also id. at 6 . Petitioners fail to explain how they found Mithyantha, but not
`
`Plamondon before 6/29/20. E.g., Paper 13 at 8. Patent Owner suggests that
`
`Petitioners found Mithyantha because it has the same assignee and same
`
`classification as Samuels. Id. Plamondon also has the same assignee and same
`
`classification as Samuels and should have been uncovered following a reasonably
`
`diligent search. Id. at 7-9. Petitioners also fail to address the overlapping inventor
`
`between Plamondon and Samuels. Id.; see also id. at 6.
`
`Accordingly, this factor favors denial.
`
`3. GENERAL PLASTIC FACTOR 3 IS NEUTRAL
`
`This factor has limited relevance given the nature of a “copycat” petition.
`
`Accordingly, this factor is neutral.
`
`
`4 Application No. 12/836,059 issued as Patent No. 8,560,604 (grandparent to the
`
`‘319 Patent) and Application No. 14/025,109 issued as Patent No. 10,069,936
`
`(parent to the ‘319 Patent).
`
`
`
`8
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`

`

`
`
`4. GENERAL PLASTIC FACTOR 4 IS NEUTRAL
`
`IPR2022-01109 of Patent No. 10,257,319
`
`This factor has limited relevance given that the petition is time-barred and
`
`seeking joinder to an instituted proceeding. Accordingly, this factor is neutral.
`
`5. GENERAL PLASTIC FACTOR 5 IS NEUTRAL
`
`This factor has limited relevance given that the petition is time-barred and
`
`seeking joinder to an instituted proceeding. Accordingly, this factor is neutral.
`
`6. GENERAL PLASTIC FACTOR 6 FAVORS DENIAL
`
`Petitioners did not rank their serial petitions pending against the ‘319 Patent.
`
`Paper 13 at 12. Petitioners argue that “whether Plamondon [asserted in the Third
`
`Code200 Petition] is more material to the validity of the ‘319 Patent than, for
`
`example, Crowds, Morphmix, or Border [asserted in the First and Second Code200
`
`Petitions as well as in the Tex. Litigation], as Patent Owner argues, is irrelevant,
`
`and Patent Owner cites no authority to the contrary.” Paper 14 at 4, note 1.
`
`The TPG clearly states that, if a petitioner files multiple petitions
`
`challenging the same patent, then the petitioner should (a) rank the petitions in the
`
`order in which it wishes the Board to consider the merits and (b) explain the
`
`differences between the petitions and why the issues addressed by the differences
`
`are material. TPG at 59-60.
`
`
`
`9
`
`

`

`IPR2022-01109 of Patent No. 10,257,319
`
`
`
`In the July 25 Decision, the Board noted that “Petitioner has not provided a
`
`ranking or rationale to support the need for multiple petitions. Accordingly, we
`
`have no guidance as to why we should expend the Board’s resources to potentially
`
`institute multiple proceedings by joining and instituting this case.” July 25
`
`Decision at 15. Additionally, Patent Owner raises efficiency and fairness concerns
`
`in relation to the Tex. Litigation as discussed in the Opposition and further below.
`
`Accordingly, this factor favors denial.
`
`7. GENERAL PLASTIC FACTOR 7 IS NEUTRAL
`
`The one year statutory deadline may be extended for joined cases.
`
`Accordingly, this factor is neutral.
`
`8. BALANCING THE GENERAL PLASTIC FACTORS
`
`On balance, the General Plastic factors favor denial, particularly in light of
`
`factors 1, 2, and 6.
`
`Director Vidal stated that “factors 1-3 only weigh in favor of discretionary
`
`denial when there are “road-mapping” concerns under factor 3 or other concerns
`
`under factor 2.” August 23 Decision at 5 (emphasis added). Director Vidal
`
`specifically referenced “fairness” related to factor 2. Id at 6.
`
`
`
`10
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`

`

`
`
`In the July 25 Decision, the Board stated that, based on the circumstances,
`
`IPR2022-01109 of Patent No. 10,257,319
`
`factor 2 had limited relevance given that the grounds in the First Code200 Petition
`
`substantially overlap with the grounds in the Second Code200 Petition. Id. at 13.
`
`Director Vidal agreed that factor 2 therefore had limited relevance regarding
`
`whether the arguments should have been raised earlier. August 23 Decision at 6.
`
`Here, Petitioners should have known about the primary reference
`
`Plamondon before filing the First Code200 Petition; therefore, factor 2 has
`
`significant relevance. Paper 13 at 7-9. Petitioners also should have known about
`
`the primary reference Plamondon at least as early as 6/29/20. Paper 13 at 13-14.
`
`It is not fair for Petitioners to receive unlimited chances to challenge the
`
`‘319 Patent. Petitioners’ repeated attacks place a substantial and unnecessary
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`burden on the Board. TPG at 59. If Petitioners are unsuccessful in one proceeding,
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`they try again in another proceeding based on the same or different art.5
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`Meanwhile, Patent Owner must continue to expend resources to defend the validity
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`of the ‘319 Patent against Petitioners.
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`5 For example, based on Petitioners’ pattern of behavior, Petitioners will likely
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`attempt to join IPR2022-00915 challenging the ‘319 Patent.
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`For at least the foregoing reasons, Patent Owner respectfully requests the
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`IPR2022-01109 of Patent No. 10,257,319
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`Board exercise its discretion and deny institution.
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`B. THE FINTIV FACTORS
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`The parties and the Court invested substantial resources litigating validity
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`issues related to the ‘319 Patent in the Tex. Litigation.
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`Petitioners argue that this IPR would be their only opportunity to obtain a
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`merits-based decision on the validity of the ‘319 patent from the PTAB. Paper 14
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`at 5. Petitioners6 fail to acknowledge that they have already obtained a merits-
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`based decision on the validity of the ‘319 patent from a jury in the Tex. Litigation.
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`As discussed in the Opposition as well as above, Petitioner-defendants had their
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`opportunity to challenge the ‘319 Patent based on Plamondon, but neglected to do
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`so.
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`The Tex. Litigation between Petitioners7 and Patent Owner reached a jury
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`verdict on 11/5/21. EX.1080. The Board has applied the Fintiv factors to parallel
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`proceedings even after a jury trial has already occurred. E.g., Amazon.com, Inc. v.
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`Vocalife LLC, IPR2020-00864, Paper 22 at 19 (PTAB October 28, 2020). In the
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`6 Excluding Code200, UAB and Coretech LT, UAB.
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`7 Excluding Code200, UAB and Coretech LT, UAB.
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`discussion that follows, Patent Owner will apply the six Fintiv factors to the Tex.
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`IPR2022-01109 of Patent No. 10,257,319
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`Litigation.
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`1. FINTIV FACTOR 1 IS NEUTRAL
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`As discussed in the Opposition, the Court stayed post-trial briefing in the
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`Tex. Litigation for additional mediation. See Paper 13 at 3-4. That mediation has
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`now concluded and was unsuccessful. Nonetheless, the jury already found that the
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`‘319 Patent was not invalid. EX.1080 at 5. Patent Owner is not aware of any cases
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`in which Judge Gilstrap has reversed a jury verdict of no anticipation/obviousness.
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`Any appeal of the jury verdict by Petitioner-defendants is speculative.
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`Because the Tex. Litigation has already reached a jury verdict, this factor is
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`neutral.
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`2. FINTIV FACTOR 2 FAVORS DENIAL
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`Because the trial in the Tex. Litigation has already occurred, this factor
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`favors denial.
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`3. FINTIV FACTOR 3 FAVORS DENIAL
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`The parties and the Court have made substantial investments litigating
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`invalidity all the way through trial. Additional investment is still being made
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`regarding post-trial briefing. Patent Owner should not have to expend more
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`resources defending the validity of the ‘319 Patent against Petitioners given the
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`IPR2022-01109 of Patent No. 10,257,319
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`jury’s verdict in the Tex. Litigation.
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`Given this substantial investment in the Tex. Litigation, this factor favors
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`denial.
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`4. FINTIV FACTOR 4 FAVORS DENIAL
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`Claim 1 is the only independent claim of the ‘319 Patent. Petitioners
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`acknowledge the Tex. Litigation originally included claims 1, 17, 24, 25, and 27 of
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`the ‘319 Patent, though Petitioner-defendants only alleged invalidity of claims 1
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`and 26 at trial. Paper 7 at 2-3. Petitioner-defendants had a full and fair opportunity
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`to challenge the validity of claims of the ‘319 Patent at trial.
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`During trial, Petitioner-defendants argued that the dependent claims “recite
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`the usage of standard Internet communications and protocols” (see, e.g., EX.2011
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`20) and cannot now make contradictory arguments that resolution as to certain
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`dependent claims in this IPR is of paramount importance. Patent Owner
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`respectfully submits that the same validity issues related to claim 1 also relate to,
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`e.g., claim 28.
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`Plamondon was not included in the district court invalidity contentions.
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`However, as discussed above, Petitioners should have been aware of Plamondon
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`IPR2022-01109 of Patent No. 10,257,319
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`before serving invalidity contentions on 6/29/20 in the Tex. Litigation. Petitioner-
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`defendants had a full and fair opportunity to present the same grounds to the jury.
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`Notably, Petitioner-defendants did present Mithyantha at trial in the Tex.
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`Litigation. Mithyantha discloses the same network architecture as Plamondon.
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`Paper 13 at 6. As discussed herein, Petitioners make the same claim construction
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`arguments based on the role being performed at a given moment in time. 8 These
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`same arguments were unsuccessful in the Tex. Litigation. Neither Mithyantha nor
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`Plamondon disclose the second server ↔ first client device ↔ web server
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`architecture of the asserted patents as discussed below.
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`Also, in the First Code200 Petition filed on 7/14/20, Petitioners did not
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`include a stipulation to minimize the possibility of duplicative efforts between the
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`IPR and the related litigation. See Sand Revolution9 at 12. The First Code200
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`Petition was filed after Sand Revolution was entered on June 16, 2020 and
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`designated informative on July 13, 2020. Petitioners did not stipulate that they
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`8 In the reply regarding joinder, Petitioners reaffirm their position that a device can
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`act as a “server” or a “client” depending on the role played by the device. Paper 14
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`at 4.
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`9 Sand Revolution II, LLC v. Continental Intermodal Group – Trucking LLC,
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`IPR2019-01393, Paper 24 (PTAB June 16, 2020).
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`would not rely on any grounds that were raised or reasonably could have been
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`IPR2022-01109 of Patent No. 10,257,319
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`raised in the First Code200 Petition. Petitioners strategically chose to pursue their
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`invalidity arguments at trial.
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`In the reply regarding joinder, Petitioners stipulated “not to rely on
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`Plamondon in any future trial concerning the ‘319 Patent.” Paper 14 at 1. This
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`stipulation is meaningless as to the Tex. Litigation. Regarding any future litigation,
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`this stipulation is extremely narrow.
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`Given the significant overlap of claims, including claim 1, and given the
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`same invalidity issues regarding the unique second server ↔ first client device ↔
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`web server architecture in which the claimed methods operate, this factor favors
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`denial.
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`5. FINTIV FACTOR 5 FAVORS DENIAL
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`Petitioners10 acknowledge that they were the defendants in the Tex.
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`Litigation. E.g., Paper 7 at 2. Accordingly, this factor favors denial.
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`10 Excluding Code200, UAB and Coretech LT, UAB.
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`6. FINTIV FACTOR 6 FAVORS DENIAL
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`IPR2022-01109 of Patent No. 10,257,319
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`Patent Owner submits four other circumstances that might impact the
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`Board’s exercise of discretion in this IPR.
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`First, the Second Code200 Petition is still pending on remand. As discussed
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`above, the petitioners did not rank their serial petitions against the ‘319 Patent.
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`Second, there is another instituted proceeding challenging the ‘319 Patent in
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`IPR2022-00915 (the “Major Data IPR”).
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`Third, there are two stayed proceedings challenging the ‘319 Patent:
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`IPR2021-01492 and Control No. 90/014,875.
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`Fourth, Patent Owner has already deposed Petitioners’ expert, Dr. Levin,
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`whose testimony shows that Plamondon does not anticipate the challenged claims.
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`As such, IPR2022-00135 should never have been instituted in the first place.
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`7. BALANCING THE FINTIV FACTORS
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`Institution will lead to duplicative efforts with respect to the ‘319 Patent.
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`The parties and the Court have already invested substantial resources in preparing
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`for and conducting the jury trial in the Tex. Litigation. The Board should not use
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`its finite resources to give Petitioners another bite at the apple in this IPR. As
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`discussed above, on balance, the Fintiv factors favor denial.
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`IPR2022-01109 of Patent No. 10,257,319
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`IV. OVERVIEW OF THE ‘319 PATENT
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`The ‘319 Patent claims refer to a “first client device” serving as an
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`intermediary between a “second server” and a “web server”. EX.2012 at ¶52. The
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`method claims are performed by the “first client device” within a second server ↔
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`first client device ↔ web server architecture. EX.2012 at ¶54. Other patents in
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`the same family, e.g., U.S. Patent Nos. 110,491,713 (EX.2014) and 11,050,852
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`(EX.2022) which share the same specification as the ’319 Patent, claim methods
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`performed by the “requesting client device” within a similar requesting client
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`device ↔ second server ↔ first client device ↔ first/web server architecture.
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`EX.2012 at ¶55.
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`A. PROBLEMS IDENTIFIED IN THE SPECIFICATION
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`The specification distinguishes two prior art systems. EX.2012 at ¶57. The
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`first prio