`
`
`
`
`U.S. Patent No. 10,257,319
`Inter Partes Review
`Petitioners’ Motion for Joinder
`
`
`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.
`____________
`
`Inter Partes Review No. IPR2023-00038
`Patent No. 10,257,319
`____________
`
`MOTION FOR JOINDER TO INTER PARTES
`REVIEW IPR2022-00915
`
`
`
`
`
`

`

`TABLE OF CONTENTS
`
`I.
`II.
`III.
`
`IV.
`
`STATEMENT OF PRECISE RELIEF REQUESTED .................................. 1
`STATEMENT OF MATERIAL FACTS ....................................................... 2
`STATEMENT OF REASONS FOR RELIEF REQUESTED ....................... 7
`A.
`Joinder is Timely ..................................................................................... 7
`B. All Applicable Factors Support Institution and Joinder .......................... 8
`1. The General Plastic Factors weigh in favor of joinder. .................... 8
`2. The Fintiv Factors weigh in favor of joinder. ................................. 10
`3. Petitioners propose no new grounds of unpatentability. ................. 13
`4. Joinder will not impact the trial schedule or cost of the joined
`proceeding. ........................................................................................................ 14
`5. Joinder will not add to the complexity of briefing and discovery. . 15
`CONCLUSION ............................................................................................. 15
`
`i
`
`

`

`TABLE OF AUTHORITIES
`
`Cases
`
`Cuozzo Speed Techs., LLC v. Lee, 579 U.S. 261 (2016) ............................................ 9
`Novartis AG v. Noven Pharm. Inc., 853 F.3d 1289, 1294 (Fed. Cir. 2017) ...... 11, 12
`Personal Audio LLC v. CBS Corp., 946 F.3d 1348 (Fed. Cir. 2020) ................ 11, 12
`Statutes and Rules
`
`35 U.S.C. § 314(a) ..................................................................................................5, 8
`35 U.S.C. § 315(c) ...................................................................................................... 8
`35 U.S.C. § 316(e) .................................................................................................... 12
`37 C.F.R. § 42.1(b) ................................................................................................... 12
`37 C.F.R. § 42.122(b) ................................................................................................. 7
`IPRs
`
`Apple Inc. v. INVT SPE LLC, IPR2019-00958, Paper 9 (PTAB May 30,
`2019)...................................................................................................................... 13
`Apple Inc. v. Fintiv Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20,
` 2020) ............................................................................................... 4, 8, 10, 11, 13
`
`Avail Medsystems, Inc. v. Teladoc Health, Inc., IPR2022-00445, Paper 9
`(PTAB July 22, 2022) ........................................................................................... 10
`Cisco Sys., Inc. v. BillJCo LLC, IPR2022-00426, Paper 16 (PTAB July 12,
`2022)...................................................................................................................... 10
`Cisco Sys., Inc. v. BillJCo LLC, IPR2022-00427, Paper 16 (PTAB July 21,
`2022)...................................................................................................................... 10
`Garmin Int’l, Inc. v. Philips North Am. LLC, IPR2020-00910, Paper 8
`(PTAB Nov. 19, 2020) .......................................................................................... 15
`General Plastic Indus. Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-
`01357, Paper 19 (PTAB Sept. 6, 2017) .............................................................8, 9
`ii
`
`

`

`Hewlett Packard Enter. Co. v. BillJCo LLC, IPR2022-00420, Paper 17
`(PTAB July 12, 2022) ........................................................................................... 10
`HTC Corp. v. Parthenon Unified Memory Architecture LLC, IPR2017-
`00512, Paper 12 (PTAB June 1, 2017) .......................................................... 12, 14
`Intel Corp. v. VLSI Tech. LLC, IPR2022-00366, Paper 14 (PTAB June 8,
`2022)................................................................................................................ 12-13
`Kyocera Corp. v. Softview LLC, IPR2013-00004, Paper 15 (PTAB Apr. 24,
`2013)........................................................................................................................ 8
`Samsung Elecs. Co. v. MemoryWeb, LLC, IPR2022-00221, Paper 10 (PTAB
`Aug. 1, 2022) ......................................................................................................... 10
`Samsung Elecs. Co. v. Raytheon Co., IPR2016-00962, Paper 12 (PTAB Aug.
`24, 2016) ......................................................................................................... 13-14
`STMicroelectronics, Inc. v. Lone Star Silicon Innv., LLC, IPR2018-00436,
`Paper 7 (PTAB May 4, 2018) ........................................................................ 14, 15
`Other Sources
`
`Consolidated Trial Practice Guide (Nov. 2019) ......................................................... 8
`June 22, 2022 Interim Procedure for Discretionary Denials in AIA Post-
`Grant Proceedings with Parallel District Court Litigation.................................... 10
`
`
`
`iii
`
`

`

`I.
`
`STATEMENT OF PRECISE RELIEF REQUESTED
`
`Petitioners Code200, UAB; Teso LT, UAB; Metacluster LT, UAB; Oxysales,
`
`UAB; and coretech LT UAB (collectively, “Petitioners”) move for joinder of their
`
`contemporaneously filed Petition for Inter Partes Review IPR2023-00038 (the “Pe-
`
`tition”) of claims 1, 2, 12, 14, 15, 17-19, and 21-29 of U.S. Patent No. 10,257,319
`
`(the “’319 patent”) with Major Data UAB v. Bright Data Ltd., IPR2022-00915 (the
`
`“Major Data IPR”), which the Board instituted on September 15, 2022. The Board
`
`also instituted NetNut Ltd. v. Bright Data Ltd., IPR2021-01492 (“NetNut IPR”) and
`
`The Data Company Tech. Inc. v. Bright Data LTD., IPR2022-00135 (“TDC IPR”)
`
`challenging the validity of certain claims of the ’319 patent, both of which Petition-
`
`ers seek to join via IPR2022-00861 (“Second Code200 IPR”) and IPR2022-01109
`
`(“Third Code200 IPR”), respectively. Petitioners also filed IPR2020-01266 (“First
`
`Code200 IPR”) challenging certain claims of the ’319 Patent, which was denied
`
`solely on Fintiv grounds.
`
`In addition to the Petitions listed above, Petitioners have sought review of the
`
`validity of certain claims of the ’319 patent in federal court and the Central Reexam
`
`Unit in an ex parte reexamination, which was instituted and stayed in view of the
`
`NetNut IPR. In each of the NetNut IPR, TDC IPR, and Major Data IPR, the Board
`
`found “a reasonable likelihood that [Petitioner] would prevail with respect to at least
`
`one claim.” NetNut IPR, Paper 12; TDC IPR, Paper 12; Major Data IPR, Paper 18.
`
`1
`
`

`

`Nevertheless, to date, no tribunal has issued a final decision regarding the validity
`
`of the ’319 patent. To obtain a final determination regarding the validity of the ’319
`
`patent, Petitioners file the present Petition and Motion for Joinder to the Major Data
`
`IPR.
`
`The present Petition concerns the same patent and the same claims as the Ma-
`
`jor Data IPR. The present Petition and supporting expert declaration are substan-
`
`tively identical to the Major Data IPR petition and expert declaration. Thus, Peti-
`
`tioners here assert that the same claims are anticipated and/or obvious over the same
`
`prior art, based on the same substantive arguments supported by the same expert, as
`
`in the Major Data IPR.
`
`Petitioners agree to take an “understudy” role if joined. Joinder will not cause
`
`any delay in the resolution of the Major Data IPR. Thus, if the Board concludes
`
`joinder is appropriate because it will promote the efficient and consistent resolution
`
`of the same patentability issues of the same patent, joinder will not delay the sched-
`
`ule that the Board has issued in the Major Data IPR, and the parties in the Major
`
`Data IPR will not suffer prejudice.
`
`II.
`
`STATEMENT OF MATERIAL FACTS
`
`1.
`
`2.
`
`Bright Data Ltd. (“Patent Owner”) purports to own the ’319 patent.
`
`Patent Owner asserts the ’319 patent against Teso LT, UAB; Metaclus-
`
`ter LT, UAB; and Oxysales, UAB (collectively, “Oxylabs”) in a lawsuit styled
`
`2
`
`

`

`Bright Data Ltd. v. Teso LT, UAB et al., 2:19-cv-00395-JRG (E.D. Tex.) filed on
`
`December 6, 2019 (the “District Court Action”).
`
`3.
`
`Although the District Court Action originally included claims 1, 2, 14,
`
`15, 17, 18, 21, 22, and 24-27 of the ’319 patent, ultimately Patent Owner only pro-
`
`ceeded to trial on claims 1 and 26. At trial, Oxylabs argued, among other things, that
`
`claims 1 and 26 of the ’319 patent—the only then asserted claims—were invalid as
`
`anticipated by a single prior-art reference known as “Crowds.” The jury returned a
`
`verdict answering “no” to the question “[d]id Oxylabs prove by clear and convincing
`
`evidence any of the following Asserted Claims are invalid?” (with “Asserted
`
`Claims” for the ’319 patent defined as only claims 1 and 26). See Ex. 1024, District
`
`Court Action, Jury Verdict Form, ECF No. 516 at 5. At trial, Patent Owner heavily
`
`emphasized the “clear and convincing” burden and actively encouraged the jury to
`
`defer to the prior prosecution, arguing: “That’s why their burden is so much higher.
`
`It’s really—once that’s happened, do you really want to second-guess the work that
`
`those people did?” Ex. 1025, Nov. 5 Trial Tr. at 65:2-4; see also id. at 65:5-10 (“You
`
`would need a firm belief or conviction or, as Your Honor said, an abiding belief or
`
`conviction, that this absolutely is not valid, that the Patent Office messed up twice.
`
`Somehow in the 1200 pages of communications, those patent examiners were clue-
`
`less. And if you don’t find that, you have to say no to invalidity in this case.”).
`
`3
`
`

`

`4.
`
`On December 15, 2021, the district court stayed the District Court Ac-
`
`tion to allow for mediation. Ex. 1026, ECF No. 543. On September 21, 2022, the
`
`district court lifted the stay after mediations ended in an impasse. Ex. 1027, ECF No.
`
`601. The district court has not yet entered a post-verdict scheduling order.
`
`5.
`
`If and when the district court enters final judgment, Oxylabs intends to
`
`file post-judgment motions asserting that Oxylabs is entitled to judgment as a matter
`
`of law or, at a minimum, a new trial, based on (among other things) its anticipation
`
`defense because the jury did not consider the prior art in view of the correct con-
`
`struction of “server” (e.g., the jury did not receive instructions concerning the district
`
`court’s claim-construction decisions that were cited favorably by the Board in its
`
`Major Data IPR institution decision). See Ex. 1028, ECF No. 570 at 7.
`
`6.
`
`Previously, Petitioners filed a separate petition styled Code200, UAB,
`
`et al. v. Luminati Networks Ltd. [now Bright Data Ltd.], IPR2020-01266 (the “First
`
`Code200 IPR”) on July 14, 2020, challenging certain claims of the ’319 patent. See
`
`First Code200 IPR, Paper 5.
`
`7.
`
`On December 23, 2020, the Board denied the First Code200 Petition
`
`solely based on discretionary grounds in view of the pending District Court Action.
`
`See id., Paper 18 (citing Apple Inc. v. Fintiv Inc., IPR2020-00019, Paper 11 (PTAB
`
`Mar. 20, 2020)). At the time of that decision, Patent Owner asserted claims 1, 2, 14,
`
`4
`
`

`

`15, 17, 18, 21, 22, and 24-27 of the ’319 patent against Oxylabs in the District Court
`
`Action. Id. at 9.
`
`8.
`
`Following the discretionary denial of the First Code200 Petition, on
`
`October 7, 2021, Teso LT, UAB requested Ex Parte Reexamination of the ’319 pa-
`
`tent, EPR No. 90/014,875 (the “’319 EPR”). On November 12, 2021, the Patent Of-
`
`fice found a substantial new question of patentability with respect to challenged
`
`claims 1, 2, 12, 14, 15, 17-19, 21, 22, and 24-29. On March 25, 2022, the Patent
`
`Office issued a Non-Final Office Action rejecting those claims. Exhibit 1029. How-
`
`ever, on April 7, 2022, the PTAB stayed the ’319 EPR pending the termination or
`
`completion of the NetNut IPR (discussed directly below). See NetNut IPR, Paper
`
`14.
`
`9.
`
`On September 3, 2021, NetNut filed the NetNut IPR, requesting can-
`
`cellation of certain claims of the ’319 patent. See NetNut IPR, Paper 2.
`
`10. On March 21, 2022, the Board instituted the NetNut IPR as to all chal-
`
`lenged claims and entered a Scheduling Order. Id., Papers 12 and 13. Petitioners in
`
`the present Petition filed a Petition and Motion for Joinder to the NetNut IPR. Sec-
`
`ond Code200 IPR, Paper 7.
`
`11. On July 25, 2022, the Board denied institution of the Second Code200
`
`IPR and denied joinder with the NetNut IPR. Second Code200 IPR, Paper 16. The
`
`5
`
`

`

`Board determined that the factors articulated in General Plastic weighed in favor of
`
`exercising discretion to deny institution under 35 U.S.C. § 314(a). Id. at 10-11.
`
`12. On August 23, 2022, Director Vidal sua sponte vacated the Board’s
`
`decision denying institution of the Second Code200 IPR and remanded to the Board
`
`for further proceedings. NetNut IPR, Paper 18 (“Vidal Dec.”). To date, the Board
`
`has not decided whether to allow Petitioners to join the NetNut IPR.
`
`13. On November 3, 2021, The Data Company Technologies Inc. filed a
`
`petition for IPR challenging claims 1-29 of the ’319 patent. See TDC IPR, Paper 2.
`
`The Board instituted the TDC IPR on June 1, 2022. Id., Paper 12. Petitioners filed
`
`the Third Code200 IPR and motion for joinder to the TDC IPR, which are currently
`
`pending.
`
`14. On April 21, 2022, Major Data UAB filed a petition for IPR challenging
`
`claims 1, 2, 12, 14, 15, 17-19, and 21-29 of the ’319 patent. See Major Data IPR,
`
`Paper 1. Major Data also moved to join the NetNut IPR. Id., Paper 3. The Board
`
`denied Major Data’s Motion for Joinder (Paper 14), and instituted the Major Data
`
`IPR as to all challenged claims on all grounds because “there is a reasonable likeli-
`
`hood that Petitioner would prevail with respect to at least one of the claims chal-
`
`lenged in the Petition.” Id., Paper 18.
`
`15. Along with this Motion for Joinder, Petitioners simultaneously filed the
`
`present Petition, which argues, among other things, that the same claims of the ’319
`
`6
`
`

`

`patent are anticipated and/or obvious based on the same grounds and for the same
`
`reasons set forth in the Major Data IPR petition. The Petition is supported by the
`
`same expert declaration of Keith J. Teruya submitted in support of the Major Data
`
`IPR petition. Petitioners have retained Mr. Teruya as their expert.
`
`16. The grounds proposed in the Petition are the same as those proposed in
`
`the Major Data IPR petition—i.e., the Petition does not contain any additional argu-
`
`ments or evidence in support of the unpatentability of the challenged claims of the
`
`’319 patent. Exhibit 1023 to the Petition provides a comparison between the present
`
`Petition and the Major Data IPR petition, showing the minimal, non-substantive
`
`changes related to formalities of different parties filing different petitions. Other than
`
`Exhibit 1023, Petitioners’ exhibits—including the expert declaration—are the same
`
`as the exhibits filed in the Major Data IPR, differing only in the document control
`
`label at the bottom of the page to indicate this IPR Petition.
`
`17. Major Data takes no position on the present Motion for Joinder. Patent
`
`Owner opposes this Motion.
`
`III. STATEMENT OF REASONS FOR RELIEF REQUESTED
`
`
`
`A.
`
`Joinder is Timely
`
`Because this Motion was filed within one month of the Board’s September
`
`15, 2022 decision instituting trial in the Major Data IPR, it meets the requirements
`
`of 37 C.F.R. § 42.122(b).
`
`7
`
`

`

`
`
`B. All Applicable Factors Support Institution and Joinder
`
`The Board has discretion to institute the present IPR Petition and to join it
`
`with the Major Data IPR. See 35 U.S.C. §§ 314(a) and 315(c); Vidal Dec. at 3-4;
`
`Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5-6 (PTAB Mar. 20, 2020)
`
`(“Fintiv”); General Plastic Indus. Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-
`
`01357, Paper 19 at 9-10 (PTAB Sept. 6, 2017) (“General Plastic”); Kyocera Corp.
`
`v. Softview LLC, IPR2013-00004, Paper 15 at 4 (PTAB Apr. 24, 2013) (“Kyocera”);
`
`Consolidated Trial Practice Guide 76 (Nov. 2019) (“TPG”). As discussed below, all
`
`relevant factors weigh in favor of joinder. As a result, the Board should institute the
`
`present IPR and grant joinder.
`
`1.
`
`The General Plastic Factors weigh in favor of joinder.
`
`Petitioners filed one stand-alone IPR challenging the validity of the ’319 pa-
`
`tent, which the Board discretionarily denied under Fintiv without analyzing the
`
`IPR’s merits. See First Code200 IPR, Paper 18. Petitioners’ subsequent IPRs, in-
`
`cluding the present IPR, are “copycat” petitions with motions to join the underlying
`
`IPRs in an understudy role. See Second Code200 IPR; Third Code200 IPR. As such,
`
`many of the General Plastic factors either weigh against discretionary denial or do
`
`not apply here.
`
`“Where the first-filed petition under factor 1 was discretionarily denied or
`
`otherwise was not evaluated on the merits, factors 1-3 only weigh in favor of
`
`8
`
`

`

`discretionary denial when there are ‘road-mapping’ concerns under factor 3 or other
`
`concerns under factor 2.” Vidal Dec. at 5; General Plastic at 17. When conducting
`
`analysis under Factor 3, the Board found “no evidence of road mapping” in Petition-
`
`ers’ Second IPR because it is a “copycat” petition. See Second Code200 IPR, Paper
`
`17 at 12-13. The Board should conclude the same here. Moreover, Factor 3 has lim-
`
`ited relevance because the present Petition is a “copycat” petition—thus limiting
`
`Petitioners’ arguments to what is argued in the underlying instituted petition. Ac-
`
`cordingly, there is no “road-mapping” in the present Petition.1
`
`With respect to “efficiency” under Factor 6, Petitioners file the present IPR in
`
`order to help ensure final substantive review of the validity of claims of the ’319
`
`patent in order “to improve patent quality and restore confidence in the presumption
`
`of validity that comes with issued patents.” Vidal Dec. at 6 (quoting Cuozzo Speed
`
`Techs., LLC v. Lee, 579 U.S. 261, 272 (2016)). With the exception of First Code200
`
`IPR, which was discretionally denied, the Second Code200 IPR and Third Code200
`
`IPR remain pending.
`
`
`1 Director Vidal and the Board have found Factors 2, 4, and 5 to have limited rele-
`
`vance when it comes to a determination as to whether arguments should have been
`
`raised earlier in Petitioners’ prior copycat IPRs. See Vidal Dec. at 6; Second
`
`Code200 IPR, Paper 17.
`
`9
`
`

`

`2.
`
`The Fintiv Factors weigh in favor of joinder.
`
`The Petition presents compelling evidence of unpatentability. The Board has
`
`determined in three proceedings that petitioners “demonstrated a reasonable likeli-
`
`hood of prevailing” with respect to four different primary references invalidating the
`
`’319 patent claims. See Major Data IPR, Paper 18 (Crowds, Border, Morphmix);
`
`TDC IPR, Paper 12 (Plamondon); NetNut IPR, Paper 12 (Crowds, Border,
`
`Morphmix). On this basis alone, the Board should not discretionarily deny institu-
`
`tion. See Director Vidal’s June 22, 2022 Interim Procedure for Discretionary Denials
`
`in AIA Post-Grant Proceedings with Parallel District Court Litigation (“Guidance”)
`
`at 4-5.
`
`Since the Guidance issued, the Board has repeatedly declined to deny institu-
`
`tion based on compelling merits alone, without considering the other Fintiv Factors,
`
`and the Board may do so here. See Samsung Elecs. Co. v. MemoryWeb, LLC,
`
`IPR2022-00221, Paper 10 (PTAB Aug. 1, 2022); Avail Medsystems, Inc. v. Teladoc
`
`Health, Inc., IPR2022-00445, Paper 9 (PTAB July 22, 2022); Cisco Sys., Inc. v. Bill-
`
`JCo LLC, IPR2022-00427, Paper 16 (PTAB July 21, 2022); Hewlett Packard Enter.
`
`Co. v. BillJCo LLC, IPR2022-00420, Paper 17 (PTAB July 12, 2022); Cisco Sys.,
`
`Inc. v. BillJCo LLC, IPR2022-00426, Paper 16 (PTAB July 12, 2022). The Petition’s
`
`merits are “compelling,” and this “alone demonstrates that the PTAB should not
`
`discretionarily deny institution under Fintiv.” Guidance at 3-5. In view of the
`
`10
`
`

`

`compelling evidence of unpatentability in three separate Board decisions instituting
`
`inter partes review of the ’319 patent, Petitioners respectfully request that the Board
`
`institute the present IPR.
`
`If the Board analyzes additional Fintiv factors, the balance weighs against de-
`
`nial. The District Court Action, which remains pending, only addressed the validity
`
`of two claims of the ʼ319 patent in view of a single reference: Crowds. The jury
`
`returned a verdict and found that Oxylabs had not shown, under the clear-and-con-
`
`vincing evidentiary standard, that either of the two asserted claims of the ’319 patent
`
`were invalid. See Ex. 1024.
`
`
`
`The present Petition, however, requests review of the validity of seventeen
`
`claims of the ’319 patent in view of various combinations of Crowds, Border, and
`
`MorphMix. The Federal Circuit has affirmed invalidity decisions from the PTAB in
`
`which the Board held that the claims were obvious over several different combina-
`
`tions of cited art not considered by the district court. See, e.g., Personal Audio LLC
`
`v. CBS Corp., 946 F.3d 1348, 1350-51 (Fed. Cir. 2020) (affirming district court’s
`
`termination of proceedings after jury verdict of no invalidity because PTAB had de-
`
`termined that the asserted claims were unpatentable); Novartis AG v. Noven Pharm.
`
`Inc., 853 F.3d 1289, 1294 (Fed. Cir. 2017) (“It is unsurprising that different records
`
`may lead to different findings and conclusions.”).
`
`11
`
`

`

`Additionally, the District Court Action jury considered invalidity under the
`
`clear-and-convincing evidentiary standard—and Patent Owner heavily relied on that
`
`standard at trial. Ex. 1024, ECF No. 516 at 5; Ex. 1025, Nov. 5 Trial Tr. at 65:2-4.
`
`Here, the Board considers validity under the preponderance-of-the-evidence stand-
`
`ard. See 35 U.S.C. § 316(e). This difference in burdens of proof often results in a
`
`different conclusion, even when each conclusion is based on the same evidence. See
`
`Personal Audio, 946 F.3d at 1350-51; Novartis, 853 F.3d at 1293-94.
`
`Further, unlike the institution decision here, the District Court Action jury was
`
`not provided the Court’s Supplemental Claim Construction Order (see Ex. 1028,
`
`ECF No. 570 at 2), which the Board has repeatedly found persuasive and adopted in
`
`rejecting Patent Owner’s attempts to distinguish the art. See Major Data IPR, Paper
`
`12 at 22; TDC IPR, Paper 12 at 22; NetNut IPR, Paper 12 at 28-29.
`
`In any event, a final judgment in the District Court Action has not been en-
`
`tered. See Ex. 1027. Thus, this request for joinder is consistent with the policy sur-
`
`rounding inter partes reviews, as it is the most expedient way “to secure the just,
`
`speedy, and inexpensive resolution of every proceeding.” See 37 C.F.R. § 42.1(b)
`
`(emphasis added); HTC Corp. v. Parthenon Unified Memory Architecture LLC,
`
`IPR2017-00512, Paper 12 at 5-6 (PTAB June 1, 2017). Indeed, the PTAB often
`
`grants motions for joinder in view of pending litigation involving the same patent
`
`and the same parties but different prior art. See, e.g., Intel Corp. v. VLSI Tech. LLC,
`
`12
`
`

`

`IPR2022-00366, Paper 14 at 6-7 (PTAB June 8, 2022) (granting petitioner’s opposed
`
`motion for joinder after jury verdict of no invalidity because the “the unpatentability
`
`grounds were not presented to the jury”); Apple Inc. v. INVT SPE LLC, IPR2019-
`
`00958, Paper 9 at 2-13 (PTAB May 30, 2019).
`
`The First Code200 Petition was timely filed and not considered on the merits.
`
`Petitioners filed the First Code200 Petition on July 14, 2020 (i.e., within one year of
`
`the District Court Action’s filing on December 6, 2019), which challenged the va-
`
`lidity of certain claims of the ’319 patent as anticipated and/or obvious. See First
`
`Code200 IPR, Paper 5. The Board denied the First Code200 Petition based on dis-
`
`cretionary grounds in view of the pending District Court Action. See id., Paper 18 at
`
`6-12 (citing Fintiv). The Board reasoned that trial in the District Court Action “is set
`
`to occur at least seven months before a Final Written Decision would be issued here.”
`
`Id. at 12. Importantly, at the time, twelve claims remained pending in the District
`
`Court Action. Ultimately, the District Court Action jury only considered two claims
`
`and one reference. The Board did not make any substantive determination concern-
`
`ing the merits of the First Code200 IPR. Id.
`
`3.
`
`Petitioners propose no new grounds of unpatentability.
`
`The Board “routinely grants motions for joinder where the party seeking join-
`
`der introduces identical arguments and the same grounds raised in the existing pro-
`
`ceeding.” Samsung Elecs. Co. v. Raytheon Co., IPR2016-00962, Paper 12 at 9
`
`13
`
`

`

`(PTAB Aug. 24, 2016) (internal quotations and citations omitted) (emphasis in orig-
`
`inal). Joinder is appropriate here because the Petition was timely filed, asserts the
`
`same grounds, and relies on the same evidence for unpatentability presented in the
`
`Major Data IPR. See Ex. 1023 (showing the minimal, non-substantive differences
`
`between the present Petition and the Major Data IPR petition). The two petitions rely
`
`on the same prior-art references, alone or in the same combinations. Id. The two
`
`petitions also rely on the same declaration of Mr. Teruya, who Petitioners have re-
`
`tained as their expert. There are no new grounds of unpatentability asserted in the
`
`present Petition. Accordingly, the Petition will not add any additional substantive
`
`issues to the Major Data IPR.
`
`Joinder is the most efficient and economical manner to proceed. See, e.g.,
`
`HTC, IPR2017-00512, Paper 12 at 7 (granting motion for joinder where the second
`
`petition involved “the same claims, the same patent, the same prior art references,
`
`the same expert declaration, and the same arguments and rationales”); STMicroelec-
`
`tronics, Inc. v. Lone Star Silicon Innv., LLC, IPR2018-00436, Paper 7 at 5 (PTAB
`
`May 4, 2018) (granting joinder and reasoning, “[w]e rely in particular, on Peti-
`
`tioner’s representation that its Petition is ‘substantially identical’”).
`
`4.
`
`Joinder will not impact the trial schedule or cost of the joined
`proceeding.
`
`Joinder will not prejudice the parties to the Major Data IPR. Petitioners do not
`
`and will not request any alterations to the trial schedule that the Board issued in the
`
`14
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`

`

`Major Data IPR (Major Data IPR, Paper 19) in view of joinder, therefore leaving
`
`that schedule unchanged. Petitioners also agree to adopt a secondary, “understudy”
`
`role. See, e.g., Garmin Int’l, Inc. v. Philips North Am. LLC, IPR2020-00910, Paper
`
`8 at 45, 47-50 (PTAB Nov. 19, 2020) (granting joinder where petitioners agreed to
`
`accept an “understudy” role); STMicroelectronics, IPR2018-00436, Paper 7 at 5
`
`(same). Petitioners will assume a primary role only if Major Data ceases its partici-
`
`pation in the proceeding. Petitioners will abide by any conditions the Board deems
`
`appropriate for an “understudy” role. In sum, joinder will not affect the cost or com-
`
`plexity of the Major Data IPR for Patent Owner, Major Data, or the Board.
`
`5.
`
`Joinder will not add to the complexity of briefing and discov-
`ery.
`
`Petitioners and the Major Data IPR rely on the same prior art, same combina-
`
`
`
`tions of art, and the same expert declaration to support identical arguments regarding
`
`the unpatentability of the claims at issue. Briefing and discovery will therefore be
`
`the same, and granting joinder will not add any complexity.
`
`IV. CONCLUSION
`
`For these reasons, Petitioners respectfully request that the Board institute their
`
`Petition for Inter Partes Review of U.S. Patent No. 10,257,319 and join this pro-
`
`ceeding with Major Data UAB v. Bright Data Ltd., IPR2022-00915.
`
`
`
`15
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`

`

`Dated: October 14, 2022
`
`
`
`Respectfully submitted,
`
`CHARHON CALLAHAN ROBSON &
`GARZA, PLLC
`
`
`/John C. Heuton/
`
`George “Jorde” Scott (Reg. No. 62,859)
`(Lead Attorney for Petitioners)
`John C. Heuton (Reg. No. 62,467)
`Craig Tolliver (Reg. No. 45,975)
`3333 Lee Parkway, Suite 460
`Dallas, TX 75219
`(214) 521-6400
`
`
`
`
`
`16
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`

`

`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that the above Motion was served on October
`
`14, 2022 via Priority Mail Express International (or by means at least as fast and
`
`reliable as Priority Mail Express International), on the PAIR Correspondence Ad-
`
`dress for U.S. Patent No. 10,257,319:
`
`May Patents Ltd. ℅ Dorit Shem-Tov
`P.O.B. 7230
`Ramat-Gan 5217102
`ISRAEL
`
`The above Motion was also served via e-mail and FedEx on October 14, 2022
`
`on Patent Owner’s U.S. counsel in pending litigation concerning the ’319 patent as
`
`follows:
`
`Tom Dunham
`Cherian LLP
`901 L Street NW, Suite 700
`Washington, DC 20036
`tomd@cherianllp.com
`
`The above Motion was also served via e-mail and FedEx on October 14, 2022
`
`on Petitioners’ counsel in Major Data UAB v. Bright Data Ltd., IPR2022-00915:
`
`Liang Huang
`Mauriel, Kapouytian Woods LLP
`450 Sansome Street, Suite 1005
`San Francisco, California 94111
`rhuang@mkwllp.com
`
`
`
`
`17
`
`

`

`CHARHON CALLAHAN ROBSON &
`GARZA, PLLC
`
`
`
`/John C. Heuton/
`
`John C. Heuton (Reg. No. 62,467)
`
`
`
`
`
`
`Date: October 14, 2022
`
`
`
`18
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`