throbber
Case 2:21-cv-00434-JRG Document4 Filed 11/29/21 Page 1 of 1 PagelID #: 108
`
`TRADEMARK
`
`Mail Stop 8
`Director of the U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`REPORT ON THE
`FILING OR DETERMINATION OF AN
`ACTION REGARDING A PATENT OR
`
`In Compliance with 35 U.S.C. § 290 and/or 15 U.S.C. § 1116 you are hereby advised that a court action has been
`
`filed in the U.S. District Court
`Eastern District of Texas, Marshall Division
`on the following
`[1 Trademarksor
`Patents.
`( 1] the patent action involves 35 U.S.C. § 292.):
`
`DOCKETNO. 2:21-cv-434
`
`DATEFILED 11/29/21
`
`PLAINTIFF
`
`Bright Data Ltd.
`
`U.S. DISTRICT COURT
`Eastern District of Texas, Marshall Division
`DEFENDANT
`
`Ninja-Tech, SIA
`
`PATENT OR
`1 10,257,319 B2
`
`ne OF PATENTTe
`4/9/2019
`
`2 10,484,510 B2
`
`11/19/2019
`
`Bright Data Ltd.
`
`Bright Data Ltd.
`
` CLERK
`
`DATE INCLUDED
`
`In the above—entitled case, the following patent(s)/ trademark(s) have been included:
`INCLUDED BY
`
`PATENT OR
`TRADEMARK NO.
`
`11 Amendment
`ne OF PATENT
`TRADEMARK
`
`1 Answer
`
`1 Cross Bill
`
`(1 Other Pleading
`
`HOLDER OF PATENT OR TRADEMARK
`
`aB
`
`o
`
`In the above—entitled case, the following decision has been rendered or judgement issued:
`DECISION/JJUUDGEMENT
`
`(BY) DEPUTY CLERK
`
`DATE
`
`Copy 1—Uponinitiation of action, mail this copy to Director Copy 3—Upon terminationof action, mail this copy to Director
`Copy 2—Uponfiling document adding patent(s), mail this copy to Director Copy 4—Casefile copy
`
`Code200 Exhibit 1002
`Page 1 of 456
`
`Code200 Exhibit 1002
`Page 1 of 456
`
`

`

`ase 2:2]-cv-00225-JRG-RSP Document4 Filed O6/1G/21 Page lof l Pageib & 98
`
`AO 120 (Rev. 08/10)
`
`TO:
`
`Mail Stop 8
`Director of the U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`TRADEMARK
`
`REPORT ON THE
`FILING OR DETERMINATION OF AN
`ACTION REGARDING A PATENT OR
`
`In Compliance with 35 U.S.C. § 290 and/or 15 U.S.C. § 1116 you are hereby advised that a court action has been
`
`filed in the U.S. District Court
`Eastern District of Texas, Marshall Division
`on the following
`L] Trademarks or
`[MW Patents.
`( (] the patent action involves 35 U.S.C. § 292.):
`
`DOCKET NO.
`2:21-cv-225
`PLAINTIFF
`
`Bright Data Ltd
`
`DATE FILED
`6/18/2021
`
`U.S. DISTRICT COURT
`Eastern District of Texas, Marshall Division
`DEFENDANT
`
`NetNut Ltd.
`
`PATENT OR
`
`DATE OF PATENT
`
`1 10,257,319
`
`2 10,484,510
`
`4/9/2019
`
`BRIGHT DATA LTD.
`
`11/19/2019
`
`DATE INCLUDED
`
`In the above—entitled case, the following patent(s)/ trademark(s) have been included:
`INCLUDED BY
`
`PATENT OR
`TRADEMARKNO.
`
`L] Amendment
`DATE OF PATENT
`OR TRADEMARK
`
`L] Answer
`
`C] Cross Bill
`
`L] Other Pleading
`
`BRIGHT DATA LTD.
`HOLDER OF PATENT OR TRADEMARK
`(BY) DEPUTY CLERK
`
`In the above—entitled case, the following decision has been rendered or judgementissued:
`DECISION/JUDGEMENT
`
`Copy 1—Uponinitiation of action, mail this copy to Director©Copy 3—Upon termination of action, mail this copy to Director
`Copy 2—Uponfiling document adding patent(s), mail this copy to Director Copy 4—Casefile copy
`
`Code200 Exhibit 1002
`Page 2 of 456
`
`Code200 Exhibit 1002
`Page 2 of 456
`
`

`

`Case 2:2)-cv-00225-URG Document4 Filed Oo/18/21 Page lofi PagelD #:
`
`9&8
`
`AO 120 (Rev. 08/10)
`
`TO:
`
`Mail Stop 8
`Director of the U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`TRADEMARK
`
`REPORT ON THE
`FILING OR DETERMINATION OF AN
`ACTION REGARDING A PATENT OR
`
`In Compliance with 35 U.S.C. § 290 and/or 15 U.S.C. § 1116 you are hereby advised that a court action has been
`
`filed in the U.S. District Court
`Eastern District of Texas, Marshall Division
`on the following
`L] Trademarks or
`[MW Patents.
`( (] the patent action involves 35 U.S.C. § 292.):
`
`DOCKET NO.
`2:21-cv-225
`PLAINTIFF
`
`Bright Data Ltd
`
`DATE FILED
`6/18/2021
`
`U.S. DISTRICT COURT
`Eastern District of Texas, Marshall Division
`DEFENDANT
`
`NetNut Ltd.
`
`PATENT OR
`
`DATE OF PATENT
`
`1 10,257,319
`
`2 10,484,510
`
`4/9/2019
`
`BRIGHT DATA LTD.
`
`11/19/2019
`
`DATE INCLUDED
`
`In the above—entitled case, the following patent(s)/ trademark(s) have been included:
`INCLUDED BY
`
`PATENT OR
`TRADEMARKNO.
`
`L] Amendment
`DATE OF PATENT
`OR TRADEMARK
`
`L] Answer
`
`C] Cross Bill
`
`L] Other Pleading
`
`BRIGHT DATA LTD.
`HOLDER OF PATENT OR TRADEMARK
`(BY) DEPUTY CLERK
`
`In the above—entitled case, the following decision has been rendered or judgementissued:
`DECISION/JUDGEMENT
`
`Copy 1—Uponinitiation of action, mail this copy to Director©Copy 3—Upon termination of action, mail this copy to Director
`Copy 2—Uponfiling document adding patent(s), mail this copy to Director Copy 4—Casefile copy
`
`Code200 Exhibit 1002
`Page3 of 456
`
`Code200 Exhibit 1002
`Page 3 of 456
`
`

`

`Case 2:20-cv-00073-3RG Document 74 Filed 04/29/21 Page Loli PagelD #: 612
`
`AO 120 (Rev. 08/10)
`
`TO:
`
`MailStop 8
`Director of the U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`REPORT ON THE
`FILING OR DETERMINATIONOF AN
`ACTION REGARDING A PATENT OR
`TRADEMARK
`
`In Compliance with 35 U.S.C. § 290 and/or 15 U.S.C. § 1116 you are hereby advised that a court action has been
`
`filed in the U.S. District Court
`for the Eastern District of Texas
`on the following
`_] Trademarks or
`[7 Patents.
`( ( the patent action involves 35 U.S.C. § 292.):
`
`DOCKE
`
`2 30.ve00073-JRG
`
`DATEFILED
`
`3/5/2020
`
`PLAINTIFF
`
`U.S. DISTRICT COURT
`
`for the Eastern District of Texas
`
`DEFENDANT
`
`Teso LT, UAB, Metacluster LT, UAB, and Code200, UAB|Luminati Networks Ltd. and EMK Capital LLP
`
`DATE INCLUDED
`
`In the above—entitled case, the following patent(s)/ trademark(s) have been included:
`INCLUDED BY
`
`PATENT OR
`TRADEMARKNO.
`
`L] Amendment
`DATE OF PATENT
`OR TRADEMARK
`
`L] Answer
`
`C] Cross Bill
`
`L] Other Pleading
`
`HOLDER OF PATENT OR TRADEMARK
`
`
`
`Motion to Dismiss Casein its Entirety. Road A. OTscke
`
`In the above—entitled case, the following decision has been rendered or judgementissued:
`DECISION/JUDGEMENT
`
`Order dated April 20, 2021 dismissing all claims and counterclaims with prejudice pursuantto Joint Stipulation and
`
`Copy 1—Uponinitiation of action, mail this copy to Director Copy 3—Upon termination of action, mail this copy to Director
`Copy 2—Uponfiling document adding patent(s), mail this copy to Director Copy 4—Casefile copy
`
`Code200 Exhibit 1002
`
`
`
`Code200 Exhibit 1002
`Page 4 of 456
`
`

`

`Trials@uspto.gov
`571-272-7822
`
`Paper 18
`Entered: December 23, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`CODE200, UAB; TESO LT, UAB; METACLUSTERLT,
`UAB; AND OXYSALES, UAB,
`Petitioner,
`
`V.
`
`LUMINATI NETWORKSLTD.,
`Patent Owner.
`
`IPR2020-01266
`Patent 10,257,319 B2
`
`Before THOMASL. GIANNETTI, SHEILA F. MCSHANE,and
`RUSSELL E. CASS, Administrative Patent Judges.
`
`GIANNETTI, Administrative Patent Judge.
`
`DECISION
`DenyingInstitution of Inter Partes Review
`35 U.S.C. § 314
`
`Code200 Exhibit 1002
`Page 5 of 456
`
`Code200 Exhibit 1002
`Page 5 of 456
`
`

`

`IPR2020-01266
`Patent 10,257,319 B2
`
`I. INTRODUCTION
`
`Petitioner (collectively, Code200, UAB; Teso LT, UAB; Metacluster
`
`LT, UAB; and Oxysales, UAB)filed a Petition (Paper5, ‘“‘Pet.”) requesting
`
`an inter partes review ofclaims 1, 2, 14, 15, 17-19, 21, 22, and 24—29(“the
`
`challenged claims”) of U.S. Patent No. 10, 257,319 B2 (Ex. 1001, “the
`
`°319 patent”). Patent Owner, Luminati Networks, LTD,filed a Corrected
`
`Preliminary Response (Paper16, “Prelim. Resp.”).!
`
`The Board has authority to determine whetherto institute an inter
`
`partes review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C.
`
`§ 314(a), we may not authorize an inter partes review unless the information
`
`in the petition and the preliminary response “showsthat there is a reasonable
`
`likelihood that the petitioner would prevail with respectto at least 1 of the
`
`claims challengedin the petition.”
`
`The Board, however, has discretion to deny a petition even when a
`
`petitioner meets that threshold. Jd.; see, e.g., Cuozzo Speed Techs., LLC v.
`
`Lee, 136 S. Ct. 2131, 2140 (2016) (“[T]he agency’s decision to deny a
`
`petition is a matter committed to the Patent Office’s discretion.”); NHK
`
`Spring Co. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8 (PTAB Sept.
`
`12, 2018) (precedential).
`
`Both the Petition and Preliminary Response addressthe issue of
`
`discretionary denial under 35 U.S.C. § 314(a). Pet. 6-9; Prelim. Resp. 4-14.
`
`Forthe reasonsthat follow, we exercise our discretion under 35
`
`U.S.C. § 314(a) to denyinstitution of inter partes review.
`
`' The Board authorized a Corrected Preliminary Response providing
`citations to a stipulation entered after the original preliminary response was
`filed. Paper 15.
`
`Code200 Exhibit 1002
`Page 6 of 456
`
`Code200 Exhibit 1002
`Page 6 of 456
`
`

`

`IPR2020-01266
`Patent 10,257,319 B2
`
`II. BACKGROUND
`
`A. Real Parties-in-Interest
`
`Petitioner identifies the following as the real parties-in-interest:
`
`Code200, UAB; Teso LT, UAB; Metacluster LT, UAB; Oxysales, UAB;
`
`and coretech It, UAB. Pet. 2.
`
`Patent Owneridentifies Luminati Networks LTD asthe real party-in-
`
`interest. Paper7, 2.
`
`B. Related Proceedings
`
`The parties identify the followinglitigation in the Eastern District of
`
`Texas involving the 7319 patent: Luminati Networks Ltd. v. Teso LT, UAB et
`
`al., 2:19-cv-00395-JRG (E.D. Tex.) (“the Texas Litigation”). Pet. 2; Paper
`
`7,2. The parties identify other proceedings involving patents related to the
`
`"319 patent, including otherlitigations in the Eastern District of Texas, other
`
`petitions for inter partes review, and numerous pendingapplications. Pet. 3;
`
`Paper 7, 2-3.
`
`C. The ’319 Patent
`
`The ’319 patentis directed to a system for increasing network
`
`communication speed for users, while lowering network congestion for
`
`content owners andinternet service providers (ISPs). Ex. 1001, (57). The
`
`system employs network elements including an acceleration server,clients,
`
`agents, and peers, where communication requests generated by applications
`
`are intercepted by the client on the same machine. Jd. The IP addressofthe
`
`server in the communication requestis transmitted to the acceleration server,
`
`which providesa list of agents to use for this IP address. Id.
`
`Code200 Exhibit 1002
`Page7 of 456
`
`Code200 Exhibit 1002
`Page 7 of 456
`
`

`

`IPR2020-01266
`Patent 10,257,319 B2
`
`The communication request is sent to the agents. Onc or moreofthe
`
`agents respond with a list of peers that have previously seen someorall of
`
`the content whichis the responseto this request (after checking whetherthis
`
`data is still valid). Jd. The client then downloads the data from these peers
`
`in parts and in parallel, thereby speeding up the Webtransfer, releasing
`
`congestion from the Web byfetching the information from multiple sources,
`
`and relieving traffic from Webservers by offloading the data transfers from
`
`them to nearby peers. Jd.
`
`D. Illustrative Claim
`
`Claim 1 is the only independentclaim,andis illustrative of the
`
`challenged claims. Claim 1 recites:
`
`1. A method for use withafirst client device, for use with a
`
`first server that comprises a web serverthat is a Hypertext
`Transfer Protocol (HTTP)server that responds to HTTP
`requests, the first server stores a first content identified by a
`first content identifier, and for use with a second server, the
`method bythefirst client device comprising:
`receiving, from the second server,the first content
`identifier;
`
`sending,to the first server over the Internet, a Hypertext
`Transfer Protocol (HTTP) request that comprises the first
`content identifier;
`
`receiving, the first content from the first server over the
`Internet in responseto the sending ofthefirst content identifier;
`and
`
`sending, the first content by the first client device to the
`secondserver, in responseto the receiving ofthe first content
`identifier.
`
`Ex. 1001, 19:16—32.
`
`Code200 Exhibit 1002
`Page8 of 456
`
`Code200 Exhibit 1002
`Page 8 of 456
`
`

`

`IPR2020-01266
`Patent 10,257,319 B2
`
`E. Prior Art
`
`Petitioner relies on the followingprior art:
`
`1. Michael Reiter & Aviel Rubin, Crowds: Anonymityfor
`Web Transactions, ACM Transactions on Information and
`System Security, Vol. 1, No. 1, Nov. 1998, at 66-92 (Ex. 1011,
`“Crowds”);
`2. Marc Rennhard, MorphMix — A Peer-to-Peer-based
`System for Anonymous Internet Access (2004) (Doctoral Thesis)
`(Ex. 1013, “MorphMix”);
`
`3. Border et al. United States Patent No. 6,795,848 (Ex,
`1017, “Border’’);
`
`4. Network Working Group, RFC 2616 (Ex. 1018).
`
`F. The Asserted Grounds
`
`Petitioner challenges claims 1, 2, 14, 15, 17-19, 21, 22, and 24-29 of
`
`the °319 patent on the following grounds(Pet. 5—6):
`
`Claims Challenged
`
`1, 2, 21, 22, 24-27
`1, 2, 14, 15, 17, 18,
`21, 22, 24-27
`
`
`
`35 U.S.C. §
`
`102(b)
`103(a)?
`
` References
`
`Crowds
`Crowds, RFC 2616
`
`1, 12, 14,21, 22,24,|102(b) Border
`
`
`25, 27-29
`
`1,12, 14, 15, 17, 18,|103(a) Border, RFC 2616
`
`
`21, 22, 24-29
`
`1, 2, 17, 19, 21, 22,|102(b) MorphMix
`
`
`24-27
`
`
`
`
`
`
`
`
`
`
`* The2TheLeahy-SmithAmeriAmerica Invents Act (“AIA”), Pub. L. No. 112-29, 125
`
`Stat. 284, 287-88 (2011), amended 35 U.S.C. § 103. Because the
`°319 patent wasfiled before March 16, 2013 (the effective date of the
`relevant amendments), the pre-AIA version of § 103 applies.
`
`1, 2, 14, 15, 17-19,
`21, 22, 24-27
`
`103(a)
`
`MorphMix, RFC 2616
`
`Code200 Exhibit 1002
`Page 9 of 456
`
`Code200 Exhibit 1002
`Page 9 of 456
`
`

`

`IPR2020-01266
`Patent 10,257,319 B2
`
`Ill. ANALYSIS
`
`Patent Owner contends weshould exercise our discretion to deny
`
`institution under 35 U.S.C. § 314(a), relying on the Board’s precedential
`
`decision in Apple Inc. v. Fintiv Inc., IPR2020-00019, Paper 11 (PTAB
`
`March20, 2020) (“Fintiv’”). Prelim. Resp. 4-14. Patent Owner contends the
`
`parallel Texas Litigation, which asserts the samepriorart as the Petition,
`
`begins jury selection over seven monthsbefore a final determination would
`
`be expected in this proceeding. Prelim. Resp. 4. Anticipating Patent
`
`Owner’s challenge, Petitioner addresses the §314(a) issue in its Petition.
`
`Pet. 6-9.
`
`A, Fintiv Factors
`
`Fintiv identifies a non-exclusivelist of factors parties may consider
`
`addressing wherethereis a related, parallel district court action to determine
`
`whether such action provides any basis for discretionary denial. Fintiv,
`
`Paper 11 at 5-16. Those factors include:
`
`1. whether the court granted a stay or evidence exists that one
`maybe granted if a proceedingis instituted;
`
`2. proximity of the court’s trial date to the Board’s projected
`statutory deadline for a final written decision;
`
`3. investmentin the parallel proceeding by the court and the
`parties;
`
`4. overlap betweenissuesraised in the petition and in the
`parallel proceeding;
`
`5. whether the petitioner and the defendantin the parallel
`proceeding are the sameparty; and
`
`6. other circumstances that impact the Board’s exercise of
`discretion, including the merits.
`
`Id. at S—6.
`
`Code200 Exhibit 1002
`Page 10 of 456
`
`Code200 Exhibit 1002
`Page 10 of 456
`
`

`

`IPR2020-01266
`Patent 10,257,319 B2
`
`In evaluating the factors, we take a holistic view of whetherefficiency
`
`and integrity of the system are best served by denyingorinstituting review.
`
`Fintiv, Paper 11 at 6.
`
`B. The Texas Litigation
`
`The Texas Litigation is pending before District Judge Rodney
`
`Gilstrap, in the United States District Court for the Eastern District of Texas,
`
`Marshall Division. Judge Gilstrap has entered a Docket Control Order
`
`setting December14, 2020, as the deadline for completing fact discovery,
`
`January 21, 2021, as the deadline for completing expert discovery, and May
`
`3, 2021, for jury selection andtrial. Ex. 1004, 1,3. The parties have
`
`advised us that the date for jury selection has been moved to May 10, 2021.
`
`The Court has conducted a Markman hearing, and on December7,
`
`2020, issued a Claim Construction Opinion and Order. Paper 17; Ex. 2016.
`
`Petitioner advised us (and we have independently confirmed) that in
`
`other cases before him, Judge Gilstrap has continuedjury trial dates in cases
`
`scheduled fortrial from December 2020 through February 2021 dueto the
`
`COVID-19 pandemic. See. e.g., Ex. 3001. However, we have not been
`
`informed of any changein the May 10, 2021 jury selection date in the Texas
`
`Litigation.
`
`C. Analysis ofthe Fintiv Factors
`
`Both Petitioner and Patent Owner address the Fintiv factors in their
`
`submissions. We concludethat overall, the factors favor exercising our
`
`discretion to declineto institute a trial. Our reasoning follows.
`
`i. Stay in the Texas Litigation
`
`Neither party asserts that the Texas Litigation has been stayed. Pet. 7;
`
`Prelim, Resp. 5. In the Petition, Petitioner contendsthis factoris neutral
`
`Code200 Exhibit 1002
`Page 11 of 456
`
`Code200 Exhibit 1002
`Page 11 of 456
`
`

`

`IPR2020-01266
`Patent 10,257,319 B2
`
`because “No party has requested a stay of the Lawsuit pending the IPR.”
`
`Pet. 7. Patent Owner contends that on October 1, 2020, after the Petition
`
`was filed, “Petitioners filed a sealed opposed motion to stay the 395 District
`
`Court case pending the inter partes reviews in which they concede as a
`
`general rule that such stays are not granted.” Prelim. Resp. 5 (citing Ex.
`
`2001). Patent Owner contends Judge Gilstrap “would notlikely grant a stay
`
`given the lateness of the Petition.” Jd. at 6. The parties have not informed
`
`us of any ruling by Judge Gilstrap on Petitioner’s motionto stay.
`
`In the absence of any specific information from the parties about a
`
`stay by the district court, we decline to speculate on the likelihood ofa stay.
`
`See Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 15 at 12 (PTAB May
`
`13, 2020) (informative) (‘““We decline to infer, based on actions taken in
`
`different cases with different facts, how the District Court would rule should
`
`a stay be requested by the parties in the parallel case here.”). Thus, we find
`
`this factor is neutral.
`
`ii. Trial Date in the Texas Litigation
`
`Patent Ownernotesthat jury selection in the TexasLitigation is set to
`
`occur over seven monthsbefore the final written decision is due. Prelim.
`
`Resp. 6-7. According to Patent Owner, the possibility that the trial date
`
`will be delayed due to the COVID-19 pandemicis “sheer speculation.” Jd.
`
`at 7-8. Thus, Patent Owner contendsthat this factor “strongly favors denial
`
`of institution.” Jd. at 8. Petitioner contends that in previous lawsuits,
`
`“Luminati has previously sought to abandonits trial dates as the ‘day of
`
`reckoning’ approaches.” Pet. 7. Petitioner argues that “[i]n view of
`
`Luminati’s history and the potential for COVID-related delays (which are
`
`morelikely to affect a jury trial),”this factor “is neutral.” Jd. at 8.
`
`Code200 Exhibit 1002
`Page 12 of 456
`
`Code200 Exhibit 1002
`Page 12 of 456
`
`

`

`IPR2020-01266
`Patent 10,257,319 B2
`
`Thetrial in the Texas Litigation is currently set to occur at least seven
`
`monthsbefore a Final Written Decision in this case will issue if trialis
`
`instituted. Althoughdistrict court trial delays are always a possibility, we
`
`have no hard evidence before us that would indicate the likelihood ofa trial
`
`postponementin the Texas Litigation, due to COVID-19 or otherwise.
`
`Thus, based on the current record, this factor favors exercising discretion to
`
`deny institution of inter partes review.
`
`iii. Investment by the Court andthe Parties
`in the Texas Litigation
`
`Petitioner contends that the Texas Litigation “is at a very early stage.”
`
`Pet. 8. Patent Owner disagrees and points to the efforts of the parties and the
`
`Court in connection with the Markman proceedings. Prelim. Resp. 8-10.
`
`Asnoted supra, those efforts have now resulted in a Markman claim
`
`construction order. Ex. 2016. Moreover, according to the most recent
`
`Docket Control Order that the parties have submitted from the Texas
`
`Litigation, fact discovery closed on December 14, 2020, and expert
`
`discovery will close on January 21, 2021. Ex. 1004, 3. The parties have not
`
`informed us of any delays that impacted or would impact these dates.
`
`Based on the evidence of record, we agree with Patent Ownerthat the
`
`investmentof time and effort in the Texas Litigation has been substantial
`
`and that this factor favors denialof institution. Prelim. Resp. 10.
`
`iv. Overlap ofthe Issues
`
`Patent Ownercontendsthe overlap in issues between the Petition and
`
`the Texas Litigation “is substantial.” Prelim. Resp. 10. Petitioner identified
`
`all four references relied on in this proceeding (Crowds, Border, MorphMix,
`
`Code200 Exhibit 1002
`Page 13 of 456
`
`Code200 Exhibit 1002
`Page 13 of 456
`
`

`

`IPR2020-01266
`Patent 10,257,319 B2
`
`and RFC 2616)in its invalidity contentions in the Texas Litigation. Paper
`14, 7 1-2.
`
`In addition, the claims asserted in the Texas Litigation overlap with
`
`the claims challenged in this proceeding. Prelim. Resp. 11. Petitioner
`
`asserts that because the Petition challenges four claims that are not asserted
`
`in the Texas Litigation, this factor “weighs in favor ofinstitution.” Pet. 8.
`But Patent Ownerrespondsthat those claims depend from claim 1, the only
`
`independent claim in the ’319 patent. Prelim. Resp. 11. Patent Owner
`
`further contends that two of those dependent claims merely add a “non-
`
`transitory computer readable medium containing computerinstructionsthat,
`
`when executed by a computer processor, cause the processor to perform the
`
`method” of claim 1. Jd. Thus, Patent Ownerargues,“[t]his is not a
`
`significant difference.” Jd.
`
`Weagree with Patent Ownerandfind that the overlap of issues with
`
`the Texas Litigation is “substantial.” Prelim. Resp. 10. We find thatthis
`
`factor strongly favors exercising our discretion to denyinstitution.
`
`v. Whether Petitioner is Unrelated to the
`Defendants in the Texas Litigation
`
`“If a petitioner is unrelated to a defendantin an earlier court
`
`proceeding, the Board has weighedthis fact against exercising discretion.”
`
`Fintiv, Paper 11 at 13-14. Three of the four petitioners, namely, Teso LT,
`
`Metacluster LT, and Oxysales, are the defendants in the Texas Litigation.
`
`3 Petitioner and Patent Ownerhaveentereda stipulation acknowledging that
`these four references have been asserted in Petitioner’s invalidity
`contentions in the Texas Litigation. Paper 14. Petitioner excludes Code 200
`from this stipulation, as Code 200 is not a party to the Texas Litigation. Jd.
`72.
`
`10
`
`Code200 Exhibit 1002
`Page 14 of 456
`
`Code200 Exhibit 1002
`Page 14 of 456
`
`

`

`IPR2020-01266
`Patent 10,257,319 B2
`
`Prelim. Resp. 12; Ex. 1038. Petitioner argues that bccause the fourth
`
`petitioner, Code200,is not a party to the Texas Litigation, this factor
`
`“weighs in favor ofinstitution.” Pet. 9. Patent Owner respondsthatthis
`
`argument“fails to acknowledge the close corporate relationship between
`
`Code200 and the other defendants/petitioners.” Prelim. Resp. 12.
`
`After reviewing the corporate structure of the namedpetitioners,
`
`Patent Ownerconcludes: “Code200is related to the other petitioners andall
`
`of them are under the control of their common parent company.” Prelim.
`
`Resp. 13 (citing Exs. 2013, 2014). Petitioner does not challenge this
`
`assertion.
`
`Wefind that the overlap between the defendants in the Texas
`
`Litigation and petitioners this proceeding, even without considering the
`
`relationship of Code 200 to the otherpetitioners, is substantial, and favors
`
`denial ofinstitution.
`
`vi. Other Considerations
`
`The final Fintiv factor takes into account any other relevant
`circumstances. Petitioner contends the ’319 patent“is extraordinarily
`
`weak.” Pet. 9. Patent Owner responds “Petitioners’ reading of the claimsis
`
`unreasonable — anissue that will be resolved by the .
`
`.
`
`. District Court.”
`
`Prelim. Resp. 13-14.
`
`Having reviewedPetitioner’s unpatentability arguments and Patent
`
`Owner’s responses, and based onthe limited record before us, we do not
`
`find that the merits outweigh the other Fintiv factors favoring denial of
`
`institution.
`
`11
`
`Code200 Exhibit 1002
`Page 15 of 456
`
`Code200 Exhibit 1002
`Page 15 of 456
`
`

`

`IPR2020-01266
`Patent 10,257,319 B2
`
`D. Conclusion
`
`The decision whether to exercise discretion to deny institution under
`
`§ 314(a) is based on “a balanced assessmentofall relevant circumstances in
`
`the case, including the merits.” Patent Trial and Appeal Board Consolidated
`
`Trial Practice Guide 58 (Nov.2019), available at
`
`https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf.
`Patent Ownerhas established that (1) the trial in the Texas Litigation
`
`is set to occur at least seven monthsbefore a Final Written Decision would
`
`be issued here; (2) the court and the parties have invested substantial time
`
`and effort in the Texas Litigation; and (3) there is almost complete overlap
`—
`of issues and parties with this proceeding andthe Texas Litigation. Thus,
`based on the facts and circumstancesofthis case, we exercise our discretion
`under 35 U.S.C. § 314(a) to deny inter partes review.
`
`Accordingly,it is
`
`IV. ORDER
`
`ORDEREDthatthe Petition is deniedasto all groundsandall
`
`challenged claims of the ’319 patent.
`
`12
`
`Code200 Exhibit 1002
`Page 16 of 456
`
`Code200 Exhibit 1002
`Page 16 of 456
`
`

`

`IPR2020-01266
`Patent 10,257,319 B2
`
`PETITIONER:
`
`Craig Tolliver
`George Scott
`CHARHON, CALLAHAN, ROBSON & GARZA
`ctolliver@toliverlawfirm.com
`jscott@ccrglaw.com
`
`PATENT OWNER:
`
`Thomas M. Dunham
`Don F. Livornese
`RUYAKCHERIAN LLP
`tomd@dunham.cc
`donl@ruyakcherian.com
`
`Code200 Exhibit 1002
`Page 17 of 456
`
`Code200 Exhibit 1002
`Page 17 of 456
`
`

`

`x
`Case 2:19-cv-00397-JRG Document4 Filed i2/og/19 Page 1ofi PagelD a 396
`
`AO 120 (Rev. 08/10)
`
`TO:
`
`Mail Stop 8
`Director of the U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`TRADEMARK
`
`REPORT ON THE
`FILING OR DETERMINATION OF AN
`ACTION REGARDING A PATENT OR
`
`In Compliance with 35 U.S.C. § 290 and/or 15 U.S.C. § 1116 you are hereby advised that a court action has been
`
`filed in the U.S. District Court
`Eastern District of Texas, Marshall Division
`on the following
`_] Trademarks or
`[7 Patents.
`( (] the patent action involves 35 U.S.C. § 292.):
`
`DOCKET NO.
`2:19-cv-397
`PLAINTIFF
`
`DATEFILED
`12/6/2019
`
`U.S. DISTRICT COURT
`Eastern District of Texas, Marshall Division
`DEFENDANT
`
`Luminati Networks Ltd
`
`BI Science (2009) Ltd.
`HOLDER OF PATENT OR TRADEMARK
`DECISION/JUDGEMENT CLERK
`
`DATE INCLUDED
`
`In the above—entitled case, the following patent(s)/ trademark(s) have been included:
`INCLUDED BY
`
`PATENT OR
`TRADEMARKNO.
`
`L] Amendment
`DATE OF PATENT
`OR TRADEMARK
`
`L] Answer
`
`C] Cross Bill
`
`L] Other Pleading
`
`In the above—entitled case, the following decision has been rendered or judgementissued:
`
`(BY) DEPUTY CLERK
`
`DATE
`
`Copy 1—Uponinitiation of action, mail this copy to Director Copy 3—Upon termination of action, mail this copy to Director
`Copy 2—Uponfiling document adding patent(s), mail this copy to Director Copy 4—Casefile copy
`
`Code200 Exhibit 1002
`Page 18 of 456
`
`Code200 Exhibit 1002
`Page 18 of 456
`
`

`

`Case 2:19-cv-00395-JRG Document 4 Filed 12/06/19 Page 1 of 1 PagelD #: 379
`
`AO 120 (Rev. 08/10)
`
`TO:
`
`Mail Stop 8
`Director of the U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`TRADEMARK
`
`REPORT ON THE
`FILING OR DETERMINATION OF AN
`ACTION REGARDING A PATENT OR
`
`In Compliance with 35 U.S.C. § 290 and/or 15 U.S.C. § 1116 you are hereby advised that a court action has been
`
`filed in the U.S. District Court
`EASTERN DISTRICT OF TEXAS, MARSHALL DIVISION
`on the following
`_] Trademarks or
`[7 Patents.
`( (] the patent action involves 35 U.S.C. § 292.):
`
`DOCKETNO.
`2:19-cv-395
`PLAINTIFF
`
`DATEFILED
`12/06/2019
`
`U.S. DISTRICT COURT
`EASTERN DISTRICT OF TEXAS, MARSHALL DIVISION
`DEFENDANT
`
`
`HOLDER OF PATENT OR TRADEMARK
`
`DATE INCLUDED
`
`In the above—entitled case, the following patent(s)/ trademark(s) have been included:
`INCLUDED BY
`
`PATENT OR
`TRADEMARKNO.
`
`L] Amendment
`DATE OF PATENT
`OR TRADEMARK
`
`L] Answer
`
`C] Cross Bill
`
`L] Other Pleading
`
`In the above—entitled case, the following decision has been rendered or judgementissued:
`
`DECISION/JUDGEMENT
`
`CLERK
`
`(BY) DEPUTY CLERK
`
`DATE
`
`Copy 1—Uponinitiation of action, mail this copy to Director Copy 3—Upon termination of action, mail this copy to Director
`Copy 2—Uponfiling document adding patent(s), mail this copy to Director Copy 4—Casefile copy
`
`Code200 Exhibit 1002
`Page 19 of 456
`
`Code200 Exhibit 1002
`Page 19 of 456
`
`

`

`Case 2:19-cv-00397-JRG Document 4 Filed 12/06/19 Page 1 of 1 PagelD #: 398
`
`AO 120 (Rev. 08/10)
`
`TO:
`
`Mail Stop 8
`Director of the U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`TRADEMARK
`
`REPORT ON THE
`FILING OR DETERMINATION OF AN
`ACTION REGARDING A PATENT OR
`
`In Compliance with 35 U.S.C. § 290 and/or 15 U.S.C. § 1116 you are hereby advised that a court action has been
`
`filed in the U.S. District Court
`Eastern District of Texas, Marshall Division
`on the following
`_] Trademarks or
`[7 Patents.
`( (] the patent action involves 35 U.S.C. § 292.):
`
`DOCKET NO.
`2:19-cv-397
`PLAINTIFF
`
`DATEFILED
`12/6/2019
`
`U.S. DISTRICT COURT
`Eastern District of Texas, Marshall Division
`DEFENDANT
`
`Luminati Networks Ltd
`
`BI Science (2009) Ltd.
`HOLDER OF PATENT OR TRADEMARK
`DECISION/JUDGEMENT CLERK
`
`DATE INCLUDED
`
`In the above—entitled case, the following patent(s)/ trademark(s) have been included:
`INCLUDED BY
`
`PATENT OR
`TRADEMARKNO.
`
`L] Amendment
`DATE OF PATENT
`OR TRADEMARK
`
`L] Answer
`
`C] Cross Bill
`
`L] Other Pleading
`
`In the above—entitled case, the following decision has been rendered or judgementissued:
`
`(BY) DEPUTY CLERK
`
`DATE
`
`Copy 1—Uponinitiation of action, mail this copy to Director Copy 3—Upon termination of action, mail this copy to Director
`Copy 2—Uponfiling document adding patent(s), mail this copy to Director Copy 4—Casefile copy
`
`Code200 Exhibit 1002
`Page 20 of 456
`
`Code200 Exhibit 1002
`Page 20 of 456
`
`

`

`Case 2:19-cv-00414-JRG Document 4 Filed 12/31/19 Page 1of1PagelD#: 391
`
`AO 120 (Rev. 08/10)
`
`TO:
`
`Mail Stop 8
`Director of the U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`TRADEMARK
`
`REPORT ONTHE
`FILING OR DETERMINATION OF AN
`ACTION REGARDING A PATENT OR
`
`In Compliance with 35 U.S.C. f 290 and/or 15 U.S.C. i 1116 you are hereby advised that a court action has been
`
`filed in the U.S. District Court
`Eastern District of Texas, Marshall Division
`onthe following
`CJ Trademarksor
`LC Patents.
`( (J the patent action involves 35 U.S.C. i 292.):
`
`DOCKET NO.
`2:19-cv-414
`PLAINTIFF
`
`Luminati Networks Ltd.
`
`DATE FILED
`1231/2019
`
`U.S. DISTRICT COURT
`Eastern District of Texas, Marshall Division
`DEFENDANT
`
`Tefincom S.A. d/b/a NordVPN
`
`HOLDER OF PATENT OR TRADEMARK
`
`DATE INCLUDED
`
`INCLUDED BY
`
`PATENT OR
`TRADEMARK NO.
`
`O Amendment
`DATE OF PATENT
`OR TRADEMARK
`
`CJ Answer
`
`O CrossBill
`
`C1 Other Pleading
`
`In the above’ entitled case, the following decision has been rendered orjudgementissued:
`
`DECISION) UDGEMENT
`
`CLERK
`
`(BY) DEPUTY CLERK
`
`DATE
`
`Copy 1° Uponinitiation of action, mail this copy to Director Copy 3° Upon termination of action, mail this copy to Director
`Copy 2” Uponfiling document adding patent(s), mail this copy to Director
`Copy 4’ Case file copy
`
`Code200 Exhibit 1002
`Page 21 of 456
`
`Code200 Exhibit 1002
`Page 21 of 456
`
`

`

`
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`www.uspto.gov
`
`APPLICATION NO.
`
`15/957,945
`
`ISSUE DATE
`
`04/09/2019
`
`131926
`
`7590
`
`03/20/2019
`
`MayPatents Ltd. c/o Dorit Shem-Tov
`P.O.B 7230
`Ramat-Gan, 5217102
`ISRAEL
`
`PATENT NO.
`
`ATTORNEY DOCKETNO.
`
`CONFIRMATIONNO.
`
`10257319
`
`HOLA-005-US4
`
`7917
`
`ISSUE NOTIFICATION
`
`The projected patent numberandissue date are specified above.
`
`Determination of Patent Term Adjustment under 35 U.S.C. 154 (b)
`(application filed on or after May 29, 2000)
`
`The Patent Term Adjustment is 0 day(s). Any patent to issue from the above-identified application will include
`an indication of the adjustmenton the front page.
`
`If a Continued Prosecution Application (CPA) wasfiled in the above-identified application, the filing date that
`determines Patent Term Adjustmentis the filing date of the most recent CPA.
`
`Applicant will be able to obtain more detailed information by accessing the Patent Application Information
`Retrieval (PAIR) WEBsite (http://pair-uspto. gov).
`
`Any questions regarding the Patent Term Extension or Adjustment determination should be directed to the Office
`of Patent Legal Administration at (571)-272-7702. Questions relating to issue and publication fee payments
`should be directed to the Application Assistance Unit (AAU) of the Office of Data Management (ODM) at
`(571)-272-4200.
`
`APPLICANT(s) (Please see PAIR WEBsite http://pair.uspto.gov for additional applicants):
`
`WEB SPARK LTD., Netanya, ISRAEL;
`Derry Shribman, Tel Aviv, ISRAEL;
`Ofer Vilenski, Moshav Hadar Am, ISRAEL;
`
`The United States represents the largest, most dynamic marketplace in the world andis an unparalleled location
`for business investment, innovation, and commercialization of new technologies. The USA offers tremendous
`resources and advantages for those who invest and manufacture goods here. Thr

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

Still Working On It

This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.

Give it another minute or two to complete, and then try the refresh button.

throbber

A few More Minutes ... Still Working

It can take up to 5 minutes for us to download a document if the court servers are running slowly.

Thank you for your continued patience.

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket