UNITED STATES PATENT AND TRADEMARK OFFICE
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`_________________________
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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.
`
`BRIGHT DATA LTD.,
`
`Patent Owner
`
`_________________________
`
`Case IPR2022-01109
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`Patent No. 10,257,319
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`_________________________
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`PATENT OWNER’S PRELIMINARY SUR-REPLY1
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`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`1 Authorized via e-mail on September 28, 2022. EX. 3001.
`
`
`
`_________________________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________________
`
` CODE200, UAB; TESO LT, UAB; METACLUSTER LT, UAB;
`OXYSALES, UAB; AND CORETECH LT, UAB,
`
`Petitioners
`
`v.
`
`BRIGHT DATA LTD.,
`
`Patent Owner
`
`_________________________
`
`Case IPR2022-01109
`
`Patent No. 10,257,319
`
`_________________________
`
`
`
`
`
`PATENT OWNER’S PRELIMINARY SUR-REPLY1
`
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`1 Authorized via e-mail on September 28, 2022. EX. 3001.
`
`
`
`
`
`
`
`IPR2022-01109 of Patent No. 10,257,319
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`TABLE OF CONTENTS
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`I.
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`INTRODUCTION ............................................................................................... 1
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`II. GENERAL PLASTIC FACTORs 2 AND 6 ......................................................... 1
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`A. GUIDANCE IN TPG RELATED TO RANKING OF PETITIONS ............... 2
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`III. FINTIV FACTORS ........................................................................................... 3
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`A. FINTIV FACTOR 1 .......................................................................................... 5
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`B. THE JURY VERDICT IN THE TESO LITIGATION .................................... 5
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`ii
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`I.
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`INTRODUCTION
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`IPR2022-01109 of Patent No. 10,257,319
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`On June 14, Petitioners filed IPR2022-01109 against Patent No. 10,257,319
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`(“the ‘319 Patent”) and a motion to join IPR2022-00135. Papers 1 and 7. As of
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`June 14, Petitioners had already filed IPR2020-01266 and IPR2022-00861 against
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`the ‘319 Patent. Petitioners filing this IPR represents their third IPR challenge
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`against the ‘319 Patent. On October 14, Petitioners filed IPR2023-00038 which
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`represents their fourth IPR challenge against the ‘319 Patent.
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`As explained in Patent Owner’s Opposition (Paper 13), the Patent Owner
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`Preliminary Response (Paper 16)2, and this Sur-Reply, institution and joinder
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`should be denied in this IPR. As further discussed herein, the Board should
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`exercise its discretion based on the General Plastic and/or Fintiv factors.
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`II. GENERAL PLASTIC FACTORS 2 AND 6
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`Patent Owner addressed the “other concerns” under General Plastic Factor 2
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`in its preliminary response. Paper 16 at 7-8; see also Paper 13 at 7-9. Additionally,
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`Patent Owner addressed efficiency and fairness concerns under General Plastic
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`Factor 6 in its preliminary response. Paper 16 at 9-12; see also id. at 12-17.
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`2 Patent Owner addressed Director Vidal’s August 23 Decision vacating/remanding
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`the institution decision in the -861 IPR in its preliminary response. E.g., Paper 16
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`at 3-6 and 10-11.
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`1
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`IPR2022-01109 of Patent No. 10,257,319
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`Moreover, on October 19, the Board granted institution in the -861 IPR and
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`joinder to IPR2021-01492. Petitioners now assume the lead role in challenging the
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`‘319 Patent in the -1492 IPR. Many of Petitioners’ arguments in support of joinder
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`in this IPR are therefore moot. E.g., Paper 14 at 2-4. The Board previously noted
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`that the claims challenged in this IPR significantly overlap with the claims
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`challenged in the -861 IPR (and the -1492 IPR). See -861 IPR, Paper 17 at 9.
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`Petitioners fail to explain why the Board should expend its resources to institute
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`multiple IPRs by the same petitioners against the same patent.
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`A. GUIDANCE IN TPG RELATED TO RANKING OF PETITIONS
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`Petitioners unilaterally created their own exception to the guidance in the
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`TPG for joinder petitions. Petitioners failed to rank the concurrently-pending
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`petitions in the -861 IPR, the -1109 IPR, and the -038 IPR. Excusing Petitioners’
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`failure to rank the concurrently-pending petitions does not serve the interests of
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`efficiency or fairness.
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`Petitioners’ Reply (Paper 17) was filed on October 11, 2022. At that time,
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`the -861 IPR was on remand and therefore pending. Petitioners did not rank the
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`petitions in the -861 IPR and this IPR.
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`The -038 IPR was filed on October 14, 2022. At that time, the -861 IPR and
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`this IPR were still pending. Petitioners still did not rank the petitions in the -861
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`IPR, this IPR, and the -038 IPR. See -038 IPR, Paper 13.
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`2
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`IPR2022-01109 of Patent No. 10,257,319
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`Instead of ranking the concurrently-pending petitions, Petitioners attempt to
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`distinguish the guidance in the TPG. Paper 17 at 3-4. Petitioners’ arguments fail
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`for at least three reasons.
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`First, the petitions in the -861 IPR, the -1109 IPR, and the -038 IPR were
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`filed on April 18, June 14, and October 14 of 2022, respectively. Given the
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`concurrent pendency, Patent Owner respectfully submits that these petitions were
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`filed at about the same time and should have been ranked.
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`Second, the -1109 IPR places a substantial and unnecessary burden on the
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`Board and Patent Owner, at least because Petitioners should not be given multiple
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`bites at the invalidity apple. See Paper 13 at 1-2 and 7-14; Paper 16 at 9-17. The
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`Board continues to expend resources to evaluate institution and joinder in multiple
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`IPRs, including on remand. The Board is already evaluating the primary reference,
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`Plamondon, in the -135 IPR. Patent Owner continues to expend resources
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`defending the ‘319 Patent against the same petitioners, including, at minimum,
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`briefing oppositions and preliminary responses.
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`Third, the -1109 IPR raises efficiency and fairness concerns, as discussed
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`above. Also, as discussed under General Plastic Factor 2, Petitioners missed their
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`opportunity to challenge the ‘319 Patent based on Plamondon. Paper 16 at 7-8; see
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`also Paper 13 at 7-9.
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`III. FINTIV FACTORS
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`3
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`Petitioners mischaracterize Director Vidal’s Memorandum. Paper 17 at 4.
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`IPR2022-01109 of Patent No. 10,257,319
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`Petitioners argue that, because the petitioner in the -135 IPR satisfied the burden
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`for institution, “on this basis alone,” the Board should not discretionarily deny
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`institution. Id. However, Director Vidal clearly stated that “[w]here the information
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`presented at the institution stage is merely sufficient to meet the statutory
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`institution threshold, the PTAB has the authority, where warranted, to exercise
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`discretion to deny institution in view of the other Fintiv factors.” Vidal, “Interim
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`Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel
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`District Court Litigation”, June 21, 2022 (“Memorandum”) at 4.
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`In the -135 IPR, Patent Owner argued for discretionary denial based on the
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`NetNut Litigation. See -135 IPR, Papers 7 and 9. The Board stated that “[i]n light
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`of the settlement with NetNut and dismissal of the NetNut Litigation, Patent
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`Owner’s arguments for discretionary denial under Fintiv based on the trial in that
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`case are moot, and we do not consider them further.” See -135 IPR, Paper 12 at 11.
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`Further, in the -135 IPR, the Board considered the parties arguments in view
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`of the General Plastic factors and the Advanced Bionics factors. See -135 IPR,
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`Paper 12 at 12-17. No where did the Board state that the -135 IPR was instituted
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`based on evidence that satisfied the “compelling evidence test” identified by
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`Director Vidal. See generally -135 IPR, Paper 12; see also Memorandum at 5, n. 4.
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`Moreover, Patent Owner addressed the merits of the petition in detail in its
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`4
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`preliminary response in this IPR. E.g., Paper 16 at 17 and 24-69.
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`IPR2022-01109 of Patent No. 10,257,319
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`A. FINTIV FACTOR 1
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`The stay in the Teso Litigation was lifted on September 21, 2022 (Dkt. 601).
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`Thus, this factor is no longer neutral, and instead, favors denial. Paper 16 at 13.
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`B. THE JURY VERDICT IN THE TESO LITIGATION
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`Petitioners mischaracterize Patent Owner’s arguments and Personal Audio.
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`Paper 17 at 5 (citing Personal Audio, LLC v. CBS Corp., 946 F.3d 1348 (Fed. Cir.
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`2020)). Petitioners seem to emphasize that, despite the jury verdict, the Teso
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`Litigation “remains unresolved” because Judge Gilstrap has not yet entered a final
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`judgment. E.g., Paper 7 at 8-10. Patent Owner maintains that it is not aware of any
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`cases in which Judge Gilstrap has reversed a jury verdict in his final judgment
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`under the present circumstances. See Paper 16 at 13. The circumstances in
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`Personal Audio are different at least because there was an intervening, final
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`decision from the Board, affirmed by the Fed. Circuit, finding the asserted claims
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`unpatentable. Personal Audio at 1350. In that case, the parties agreed to stay the
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`district court case pending an appeal of the Board’s final decision. Id. The Fed.
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`Circuit affirmed the Board and following the Supreme Court’s denial of a writ
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`petition, the parties submitted a joint status report in which the patent owner agreed
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`to judgment against it. Id. In contrast, here, there is no district court stay, no final
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`written decision, and no appeal regarding the ‘319 Patent.
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`5
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`Date: October 25, 2022
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`IPR2022-01109 of Patent No. 10,257,319
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`Respectfully submitted,
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`By: /s/ Thomas M. Dunham
`Thomas M. Dunham
`Reg. No. 39,965
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`Cherian LLP
`1901 L Street NW, Suite 700
`Washington, D.C. 20036
`(202) 838-1567
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`ATTORNEY FOR PATENT OWNER,
`BRIGHT DATA LTD.
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`6
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`IPR2022-01109 of Patent No. 10,257,319
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`CERTIFICATE OF COMPLIANCE
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`Pursuant to 37 C.F.R. § 42.24(d), the undersigned hereby certifies that
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`PATENT OWNER’S PRELIMINARY SUR-REPLY complies with the 5-page-
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`limit authorized by the Board, excluding the parts of this paper exempted by 37
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`C.F.R. § 42.24(a)(1). This paper also complies with the format requirements of 37
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`C.F.R. § 42.6(a).
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`Date: October 25, 2022
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`Respectfully submitted,
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`By: /s/ Thomas M. Dunham
`Thomas M. Dunham
`Reg. No. 39,965
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`Cherian LLP
`1901 L Street NW, Suite 700
`Washington, D.C. 20036
`(202) 838-1567
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`ATTORNEY FOR PATENT OWNER,
`BRIGHT DATA LTD.
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`7
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`IPR2022-01109 of Patent No. 10,257,319
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), the undersigned hereby certifies the
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`PATENT OWNER’S PRELIMINARY SUR-REPLY and accompanying exhibits
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`thereto, were served on the undersigned date via email, as authorized by
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`Petitioners, at the following email addresses:
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`jscott@ccrglaw.com
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`jheuton@ccrglaw.com
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`ctolliver@ccrglaw.com
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`Date: October 25, 2022
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`Respectfully submitted,
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`By: /s/ Thomas M. Dunham
`Thomas M. Dunham
`Reg. No. 39,965
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`Cherian LLP
`1901 L Street NW, Suite 700
`Washington, D.C. 20036
`(202) 838-1567
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`ATTORNEY FOR PATENT OWNER,
`BRIGHT DATA LTD.
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`8
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