Trials@uspto.gov
`571-272-7822
`
`.
`
`|
`
`Paper 17
`Entered: July 25, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`CODE200, UAB; TESO LT, UAB; METACLUSTERLT,
`UAB;OXYSALES, UAB; AND CORETECHLT, UAB,
`Petitioner,
`
`V.
`
`BRIGHT DATA LTD.,
`Patent Owner.
`
`IPR2022-00861
`Patent 10,257,319 B2
`
`Before THOMASL. GIANNETTI, SHEILA F. McSHANE,and
`RUSSELL E. CASS, Administrative Patent Judges
`
`McSHANE, Administrative Patent Judge.
`
`DECISION
`DenyingInstitution of Inter Partes Review
`35 U.S.C. § 314
`
`Denying Motion for Jomnder
`SIS USC. § 315(c); 37 CFR. § 42.122
`
`|
`
`
`571-272-7822
`
`.
`
`|
`
`Paper 17
`Entered: July 25, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`CODE200, UAB; TESO LT, UAB; METACLUSTERLT,
`UAB;OXYSALES, UAB; AND CORETECHLT, UAB,
`Petitioner,
`
`V.
`
`BRIGHT DATA LTD.,
`Patent Owner.
`
`IPR2022-00861
`Patent 10,257,319 B2
`
`Before THOMASL. GIANNETTI, SHEILA F. McSHANE,and
`RUSSELL E. CASS, Administrative Patent Judges
`
`McSHANE, Administrative Patent Judge.
`
`DECISION
`DenyingInstitution of Inter Partes Review
`35 U.S.C. § 314
`
`Denying Motion for Jomnder
`SIS USC. § 315(c); 37 CFR. § 42.122
`
`|
`
`
`
`IPR2022-00861
`Patent 10,257,319 B2
`
`_I, INTRODUCTION
`©
`Code200, UAB, Teso LT,UAB, Metacluster LT, UAB, Oxysales,
`| UAB,and Coretech LT, UAB (‘‘Petitioner” or “Code200”) filed a Petition
`for interpartes review of claims 1, 2, 12, 14, 15, 17-19, and 21-29 of US.
`
`Patent No. 10,257,319 B2 (Ex. 1001, “the ’319 patent”). Paper 1 (‘Pet.”).
`
`Patent Ownerfiled a Preliminary Response. Paper 15 (“Prelim. Resp.”).
`With the Petition, Petitioner also filed a Motion for Joinder with NetNut Ltd.
`v. Bright Data Ltd., JPR2021-01492 (“the 1492 IPR” ). Paper 7 (““Mot.”).
`
`Bright Data Ltd. (“Patent Owner’) filed an Opposition to the Motion for
`
`Joinder. Paper 11 (“Opp.’”). Petitioner filed a Reply to Patent Owner’s
`Opposition. Paper 13 (“Reply”).
`.
`
`Wehaveauthority under 35 U.S.C. § 314(a), which provides that an
`
`inter partes review may notbeinstituted “unless .
`
`.
`
`. there is a reasonable
`
`likelihood that the petitioner would prevail with respect to at least 1 of the
`
`claims challenged in the petition.” Under 35 U.S.C. § 315(b), “[a]n inter
`partes review may not be instituted if the petition requesting the proceeding
`is filed more than 1 year after the date on which the petitioner, real party in
`
`interest, or privy ofthe petitioner is served with a complaintalleging
`
`infringementof the patent.” Section 315(b) further providesthat“[t]he time
`limitation set forth in the preceding sentence shall not apply to a request for
`
`joinder under subsection (c).” Additionally, under 35 U.S.C. § 315(c), “the
`
`Director, in his or her discretion, may join as a party to that inter partes
`review any person whoproperly files a petition under section 311 that the
`Director .
`.
`. determines warrants the institution of an inter partes review
`
`undersection 314.”
`
`
`
`IPR2022-00861
`Patent 10,257,319 B2
`
`For the reasons described below, we do notinstitute an inter partes
`
`review ofthe challenged claims and we denyPetitioner’s Motion for
`
`Joinder.
`
`I. RELATED PROCEEDINGS
`
`The ’319 patent has been the subject of numerous proceedings in
`district court and the Board. We summarize these proceedings below.
`
`|
`A. Teso Litigation
`Theparties indicate that there are several related district court
`
`litigations involving the ’319 patent, including, mostparticularly, Bright
`Data Lid. v. Teso LT, UAB,2: 19-cv-00395-IRG (E.D. Tex.) (“the Teso
`litigation”). Pet. 3; Mot. 2; Paper 16 (Updated Mandatory Notices), 3. In
`
`the Teso litigation, Bright Data Ltd., the Patent Owner here, sued
`
`defendants, Teso LT, UAB, Metacluster LT, UAB, Oxysales, UAB, and
`
`Coretech LT, UAB, someofthe petitioner group here, for infringement of
`
`the ’319 patent, as well as U.S. Patent Nos. 10,484,510 and 10,469,614.
`| Mot. 2. In the Teso litigation, a jury trial was conducted,andthe issue of
`whether claims 1 and 26 of the 319 patent were invalid in view of the
`
`Crowds reference asserted here (see infra) was presented by the defendants.
`Id. The jury found that that the defendants did not provethat these claims
`were invalid by clear and convincing evidence. Jd.
`
`B. 1266IPR
`
`- The parties identify IPR2020-01266 (‘the previously-filed 1266
`
`-
`
`IPR”), filed by Petitioner, which challenged certain claims of the ’319
`patent. Mot. 3; Paper 16, 1; Opp. 8. The previously-filed 1266 IPR was
`denied on discretionary grounds. Mot.3.
`
`
`
`IPR2022-00861
`Patent 10,257,319 B2
`
`C.
`
`’319 Patent Reexamination
`
`Theparties also indicate that the ’319 patentis the subject of an ex
`parte reexamination, Control No. 90/014,875, which has been stayed. Mot.
`5; Paper 16, 2.
`|
`D. 1492 IPR
`
`In the 1492 IPR,the case to which Petitioner is seeking joinder, we
`
`instituted an inter partes review of claims 1, 2, 12, 14, 15, 17-19, and 21-29
`
`of the ?319 patent on the following grounds:
`
`
`
`Claim(s)
`
`35 U.S.C. §
`
`1, 19, 21-29
`1,2, 14, 15, 17-19,
`
`
`
`
`
`21-29
`
`
`References/Basis
`
`
`
`
`
`
`
`Crowds, RFC 2616?
`
`
`
`
`1, 12, 14, 21, 22, 24,
`
`Border’ -
`103
`
`
`25, 27— 29
`
`
`
`1, 12, 14, 15,.17-19,
`21, 22, 24, 25, 27-29
`1, 17, 19, 21-29
`1,2, 14, 15, 17-19,
`
`
`
`
`
`
`
`Border, RFC 2616
`
`hesMorphMix,RFC2616
`orphMix°
`
`' Because the application from which the ’319 patent issued has an earliest
`effective filing date before March 16, 2013 (Ex. 1001, (60)), citations to 35
`U.S.C. §§ 102 and 103 are to the pre-AIA versions. Leahy-Smith America
`Invents Act (“AIA”), Pub. L. No. 112-29.
`* Michael Reiter & Aviel Rubin, Crowds: Anonymityfor Web Transactions,
`ACM Transactions on Information and System Security, Vol. 1, No. 1 (Nov.
`1998) (Ex. 1006, “Crowds”).
`3 Hypertext Transfer Protocol-HTTP/1.1, Network Working Group, RFC
`2616, The Internet Society, 1999 (Ex. 1013, “RFC 2616”).
`“U.S. Patent No. 6,795,848 B1 (Sep. 21, 2004) (Ex. 1012, “Border”).
`
`> Marc Rennhard, MorphMix—A Peer-to-Peer-basedSystemforAnonymous
`
`Internet Access (2004) (Ex. 1008, “MorphMix”).
`
`4 .
`
`
`
`IPR2022-00861
`Patent 10,257,319 B2
`
`NetNut Ltd. v. Bright Data Ltd., PR2021-01492, Paper 12 at 7-8, 39 (PTAB
`Mar. 21, 2022) (1492 Decision”or “1492 Dec.”).
`
`Patent Ownersettled with NetNut in the 1492 IPR, and NetNut has
`| been terminated as Petitioner in that action. 1492 IPR, Paper 20.
`E. 1109 IPR
`|
`
`Thereis also a newly-filed petition pending in IPR2022-01109, which ©
`challenges claims of the 319 patent based on Plamondon(“the 1109 IPR”),
`filed by Petitioner. Code200, UAB v. Bright Data Ltd., [PR2022-01109,
`Paper 1, 9. In the 1109 IPR,Petitioner seeks joinder with previously-
`instituted case IPR2022-00135 (“the 135 IPR”), which wasfiled by The >
`Data Company Technologies Inc. Id., Paper 7. The Board has notyet
`
`determined whether to grant institution and joinder in the 1109 IPR.
`
`F. 135 IPR
`
`In the 135 IPR, The Data Company Technologies Inc. filed a petition
`
`challenging certain claims of the ’319 patent based on Plamondon. As
`noted, institution was granted in the 135 IPR and Petitioner seeksto join it in
`
`the 1109 IPR.
`
`G. Major Data IPR
`
`There is also another pending inter partes review challengeto the
`°319 patent, filed by Major Data UAB,which also seeks joinder with the
`
`1492 IPR. Major Data UAB v. Bright Data Ltd., JPR2022-00915, Paper 3
`(PTAB April 21, 2022) (“the Major Data IPR”). No decision has been
`
`*
`
`_
`
`rendered on institution or the joinder motion in that case.
`
`
`
`IPR2022-00861
`Patent 10,257,319 B2
`
`A. Background
`
`III. DISCUSSION
`
`The Petition in this proceeding is a “me-too”petition asserting the
`same groundsof unpatentability as those upon which weinstituted review in
`the 1492 IPR. ComparePet. 2-3, with 1492 Dec. 7-8, 39. Consistent with
`this, Petitioner contendsthat the Petition is “is substantially identical to the
`
`petition in the NetNut IPR [1492 IPR] and contains the same grounds (based
`
`on the sameprior art and supporting evidence) against the same claims, and
`differs only as necessary to reflect the factthat it is filed by a different
`| petitioner.” Pet. 2 (citing Ex. 1022).
`Petitioner requests that we institute inter partes review for the same ~
`reasons weinstituted review in the 1492 IPR andseeks joinder with that
`IPR. Mot. 1. Petitioner asserts that the request for joinder has been timely
`made. Id. at 6. Petitioner contends that the following factors identified in
`_ Kyocera Corp. v. Sofiview LLC favor joinder: (1) the reasons why joinderis
`appropriate; (2) whetherthe petition raises any new grounds of
`
`unpatentability; (3) any impact joinder would have on the cost andtrial
`
`schedule for the existing review; and (4) whether joinder will add to the
`
`complexity of briefing or discovery. Id. at 6 (citing Kyocera Corp.v.
`Sofiview LLC, 1PR2013-00004, Paper 15 at 4 (PTAB Apr. 24, 2013)
`(“Kyocera”); Consolidated Trial Practice Guide 76 (Nov. 2019) (“TPG”)°).
`
`Morespecifically, when addressing the Teso litigation, where Crowds
`
`was considered, Petitioner argues that the Tesolitigation concerned different
`claims, different prior art, and a different burden ofproof compared to the
`
`° Available at https://go.usa.gov/xpvPF.
`
`6
`
`
`
`IPR2022-00861
`Patent 10,257,319 B2
`
`inter partes review soughtto be joined. Mot. 6-9, Petitioner also asserts |
`that the jury in the Tesolitigation did not have the benefit of the district
`court’s Supplemental Claim Construction Order, (Ex. 1020), which is
`available here and which “the Board found persuasive” in the 1492 IPR. Id.
`
`at 9, Petitioner contends further that the Teso litigation has been stayed and,
`if and whenthestayis lifted, the defendants intendto file post-judgment
`motions. Id. at 3.
`|
`
`Petitioner also argues that the joinder motionis “routine,” and the
`
`Board “often grants motions for joinder in view of pendinglitigations:
`involving the same patent and thesame parties,” as is the case here. Mot. 9-—
`10; Reply 1. Petitioner refersto its previously-denied petitionin the 1266
`IPR that challenged claims ofthe ’319 patent, and asserts that because the
`previous denial was on a discretionary basis, and therefore did not reach the
`merits, this should not weigh against joinder here. Mot. 12; Reply 2-3
`(citing Intel Corp. v. VLSI Tech. LLC, IPR2022-00366, Paper 14, 9 (PTAB
`June 8, 2022) (“Jntel’”’)’). Petitioner contendsthat it will assume an
`“understudy”role, and that joinder will not impactthe trial schedule, or add
`
`|
`
`to the cost, complexity of the briefing, or discovery of the joined proceeding.
`
`Mot. 14-15.
`
`Patent Owner opposes the Motion for Joinder. Patent Owner argues
`
`that the burden is on Petitioner to justify joinder and that burden has not
`been met. Opp. 1. Patent Owner contendsthat, absent joinder.the Petition
`would be time-barred under 35 U.S.C. § 315(b). Id. at 11. Patent Owner '
`
`7 1PR2022-00366 has been joined with IPR2021-01064. Certain issues in
`the joined cases are the subject of Director review, but the issues under
`review are not related to joinder or any other issues we address herein.
`
`7
`
`
`
`IPR2022-00861
`Patent 10,257,319 B2
`
`argues that it should be able to rely on the jury verdict against Petitioner in
`
`the Teso litigation, and that “Petitioner’s actions underminethe integrity of
`
`the judicial process.” Id.
`
`Additionally, Patent Owner contends that Patent Ownerhassettledits
`disputes with NetNut, and Petitioner should not be allowed to continue a
`proceeding that would otherwise be terminated. Opp. 2 (citing Apple Inc.v.
`Uniloc 2017 LLC, IPR2020-00854, Paper 9, 12 (PTAB Oct. 28, 2020)
`|
`(precedential) (“Uniloc’’)).
`
`B. Analysis
`
`Forthe reasonsthat follow, we denyinstitution under § 314(a).
`
`1. Other Challenges to the ’319 patent
`The srounds in this Petition substantially overlap the groundsin the
`previously-denied 1266 IPR, as well as with the groundsthat are the basis of
`
`the instituted 1492 IPR. The petition in the previously-denied 1266 IPR
`
`relied on the following grounds:
`
`
`Claims Challenged|35 U.S.C. §
`
`
`
`103(a)
`
`Crowds, RFC 2616
`
`
`L222 aT|100
`
`
`1, 2, 14, 15, 17, 18,
`
`
`
`21, 22, 24-27
`
`1, 12, 14, 21, 22, 24,
`102(b)
`|
`Border
`
`
`25, 27-29
`
`
`
`
`
`
`1, 2, 14, 15, 17-19,
`103(a)
`MorphMix, RFC 2616
`
`21, 22, 24-27
`
`1, 12, 14, 15, 17, 18,
`21, 22, 24-29
`
`1, 2, 17, 19, 21, 22,
`24-27
`
`|
`
`103(a)
`
`102(b)
`
`
`
`Border, RFC 2616
`.
`
`MorphMix
`
`
`
`IPR2022-00861
`Patent 10,257,319 B2
`
`|
`~ 1266 IPR, Paper18 at 5.
`Wenote also that this is not a typical “me too” joinder request. Mot.
`13-15. Although Petitioner has agreed to an “understudy” role, NetNut, the
`
`petitioner in the 1492 IPR to be joined, has been terminated from that
`proceeding due to a settlement. 1492 IPR, Paper 20. Therefore, Petitioner
`would not be acting in the role of an understudy, but would immediately
`
`assumethe leading role if'joinder were granted. Prelim. Resp. 12; Opp. 14— .
`
`15. Thus, if we granted joinderhere, “Petitioner would stand in to continue
`a proceeding that would otherwise be terminated.” Uniloc, Paper 9 at 4. As
`a result, if we wereto institute this case and grant joinder, Petitioner would -
`be advancing substantially the same grounds it initially relied on in the 1266
`IPR, which was denied in 2020.
`
`In addition, Petitioner challenges claims 1—29 of the ’319 patent based
`
`on Plamondon in the 1109 IPR. 1109 IPR, Paper 1. The claims challenged
`
`in the 1109 IPR therefore also significantly overlap with the claims
`
`challenged here and those previously challenged in the 1266 IPR. See
`
`discussion supra.
`
`2. General Plastic
`
`Both parties present additional arguments under Fintiv and General
`
`Plastic in support of their respective positions. Pet. 12; Prelim. Resp. 4-24;
`
`Opp. 8-15; Reply 2—5 (citing Apple Inc. v. Fintiv Inc., IPR2020-00019,
`
`Paper 11 (PTAB March 20, 2020) (precedential) (“Fintiv’); General Plastic
`Industrial Co., Ltd. v. Canon Kabushiki Kaisha, [PR2016-01357, Paper 19
`(PTAB Sept. 6, 2017) (precedential as to § II.B.4.1) (“GeneralPlastic”).
`Under General Plastic, the Board may denya petition based on the
`discretionary authority of § 314(a). General Plastic, Paper 19 at 15; see also
`
`9
`
`
`
`IPR2022-00861
`Patent 10,257,3 19 B2
`Uniloc, Paper 9 at 4-5. In considering whether to grant joinder with the
`1492 IPR, we may also consider whetherto exercise our discretion under 35
`U.S.C. § 314(a). Under 35 U.S.C. § 315(c), the statutory provision
`
`governing joinder, the discretion to join a party to an ongoing IPRis
`premised on the determination that the petition warrants institution under
`§ 314. This statutory provision reads:
`
`-
`
`If the Director institutes an inter partes review, the
`Director, in his or her discretion, may join as a party
`to that inter partes review any person whoproperly
`files a petition under section 311 that the Director,
`after receiving a preliminaryresponse under section
`313 or the expiration of the time for filing such a
`responsé, determines warrants the institution of an.
`inter partes review undersection 314.
`
`Further, “[t]o join a party to an instituted IPR, the plain language of § 315(c)
`
`requires two different decisions.” Facebook, Inc. v. Windy City Innovations,
`
`LLC, 973 F.3d 1321, 1332 (Fed. Cir. 2020). Thus, in applying § 315(c), we |
`first “determine whether the joinder applicant’s petition for IPR ‘warrants’
`institution under § 314.” Jd. Second,if the petition warrantsinstitution, we
`then “decide whetherto ‘join as a party’ the joinder applicant.” Jd. For the
`reasonsthat follow, we are persuadedto exercise our discretion, under
`GeneralPlastic, not to institute this proceeding.
`|
`In General Plastic, the Board articulated a list of non-exclusive
`
`|
`
`factors to be considered in determining whether to exercise discretion under
`
`
`
`§ 314(a) to denyapetition: |
`
`1. whether the samepetitioner previously filed a petition
`directed to the same claimsof the samepatent;
`
`10
`
`
`
`IPR2022-00861
`Patent 10,257,319 B2
`
`2. whetherat the time offiling ofthe first petition the petitioner
`knew ofthe prior art asserted in the secondpetition or should
`have knownofit;
`
`3. whetherat the time offiling of the second petition the
`petitioner already received the patent owner’s preliminary
`responseto the first petition or received the Board’s decision on
`whetherto institute review in the first petition;
`4, the length of time that elapsed between the timethe petitioner
`learned of the prior art asserted in the secondpetition and the
`filing of the secondpetition;
`5. whether the petitioner provides adequate explanation for the
`time elapsed betweenthefilings ofmultiple petitions directed
`to the same claims of the samepatent;
`6. the finite resources of the Board; and
`
`7. the requirement under 35 U.S.C. § 316(a)(11) to issue a final
`determination not later than 1 year after the date on which the
`Director notices institution of review.
`
`General Plastic, Paper 19 at 16 (citing NVIDIA Corp. v. Samsung Elec. Co.,
`
`IPR2016-00134, Paper 9 at 6-7 (PTAB May4, 2016)).
`
`Factor 1: “whether the same petitioner previouslyfiled a
`petition directed to the same claims ofthe same patent”
`
`There are two other inter partes petitionsthat Petitioner has filed,
`besidesthis one, that challenge claimsof the ’319 patent: the previously-
`
`denied 1266 IPR and the pending 1109 IPR, which we will discuss under
`factor 6 below.
`
`Patent Ownerrelies on Uniloc to argue that because Petitioner
`previously filed the 1266 IPR petition, which challenged the °3 19 patent
`based on the samepriorart asserted here, this favors denial ofinstitution
`underfactor 1. Opp. 2, 8. Petitioner asserts that because the 1266 IPR
`
`petition was not evaluated on the merits, and instead the denial was based on
`
`11
`
`
`
`IPR2022-00861
`Patent 10,257,319 B2.
`
`discretionary grounds, Petitioner relies upon Jntel to distinguish the Uniloc
`
`case, because it addressed a situation after denial of an earlier petition on the
`merits. Reply 2 (citing Jntel, Paper 14 at 9).
`|
`Although this case has somesimilarities with Intel, it differs on the
`
`issue of whetherthe petitioner had the benefit of the Board’s guidance on the
`
`use of stipulations that agree not to raise the groundsasserted in the IPR at
`
`trial. Intel, Paper 14 at 13-14; Prelim. Resp. 7-9. In Jntel, the Board found
`
`that the decision denying the earlier petition occurred before the Board had
`expressed its approval of such stipulations in Sotera Wireless or Sand
`
`Revolution IT. Id. However, as Patent Ownerargues, the petition in the
`
`earlier 1266 petition wasfiled after Sand Revolution IT had been designated
`informative. Prelim. Resp. 8. Unlike the petitioner in Intel, Petitioner here
`
`had the guidance provided by Sand Revolution II, and could have proffered
`such a stipulation, but did not do so. We determinethatthis failure to
`provide such a stipulation in the face of clear guidance from the Board
`
`weighs strongly in favor of exercising discretion to deny institution and
`outweighsthe fact that the Board did not substantively address the merits of
`the priorpetition.
`Accordingly, based on the record before us, we agree with Patent
`Owner (Opp.8; Prelim. Resp. 7-8) that this General Plasticfactor weighsin
`favor of exercising discretion to deny institution of the proceeding.
`
`Factor 3: “whether at the time offiling of the secondpetition
`the petitioner already received the patent owner’s preliminary
`response to thefirst petition or received the Board’s decision
`on whetherto institute review in thefirst petition”
`
`Patent Ownerasserts that Petitioner had received Patent Owner’s
`preliminary responses and the Board’s institution decisionsin the
`
`12
`
`
`
`IPR2022-00861
`Patent 10,257,319 B2
`
`previously-filed 1266 IPR and in the 1492 IPR before the filing of this
`
`Petition. Jd. at 8-9.
`
`General Plastic expresses concern over.“road mapping,”thatis,
`taking advantageofprior filings to obtain a “roadmap”of the opponent’s
`case. General Plastic, Paper 19 at 17. Patent Owner presents no evidence,
`
`however, that this Petition has been modified from the petition in the 1266
`
`IPR filed in 2020 based on information that became available in the
`
`subsequent preliminary response and decision in the 1492 IPR.
`
`Therefore, there is no evidence of road mapping and,thus, this third
`
`General Plastic factor does not weigh in favor of exercising discretion to
`
`deny institution of the proceeding.
`
`Factor 2: “whether at the time offiling ofthefirst petition the
`petitioner knew of the prior art asserted in the secondpetition
`or Should have known of it”
`
`Factor 4: “the length oftime that elapsed betweenthe time the
`petitioner learned of the prior art asserted in the second
`petition andthefiling of the secondpetition”
`
`Factor 5: “whether the petitioner provides adequate
`explanation for the time elapsed betweenthefilings ofmultiple
`petitions directed to the same claims of the same patent”
`
`The Board considers these factors “to assess and weigh whether a
`petitioner should have or could haveraised the new challengesearlier.”
`General Plastic, Paper 19 at 18. Based on the circumstanceshere, these
`
`factors have limited relevance. As discussed, the groundsin the previously-
`
`denied 1266 IPR substantially overlap with the groundsin this Petition, so
`
`there are no new challengesat issue here.
`
`13
`
`
`
`IPR2022-00861
`Patent 10,257,319 B2
`
`Patent Owner arguesthat this Petition was filed 22 monthsafter -
`
`Petitioner had knowledgeofthe prior art references, and Petitionerfiled the
`
`Petition just prior to the one-month deadline after institution in the 1492
`
`IPR. Opp. 9. While this is accurate, Petitioner’s actions, in large part,
`appearto be reasonably diligent underthe circumstances. Petitioner could
`not havefiled this Petition prior to theinstitution ofthe 1492 IPR. And
`because the asserted priorart is the same as the earlier-asserted art, we see
`
`no prejudice to Patent Ownerdueto the timing of the Petition.
`
`Accordingly, we determine that the second, fourth, and fifth General
`Plastic factors do not weigh in favor ofexercising discretion to deny
`institution of the proceeding.
`
`Factor 6: “thefinite resources ofthe Board”
`
`Patent Ownerargues that the Board should not expendits finite
`resourceson Petitioner’s multiple bites of the apple which include three
`
`IPRs, a reexamination, and a jury trial on the sameprior art references. Opp.
`
`1, 9-10; Prelim. Resp. 4, n.1, 9-12.
`In addition to the previously-filed 1266 IPR, which wediscuss above,
`Petitioner also has the pendingpetition in the 1109 IPR,® filed on June 14,
`
`2022, whichalso challenges claims of the ’319 patent, including sole
`
`independent claim 1, but relies on Plamondonasthe primary priorart.
`
`Code200, UAB v. Bright Data Ltd., IPR2022-01109, Paper1, 3.
`
`The Board’s Consolidated Trial Practice Guide provides guidance on
`
`multiple petitions, including identifying circumstances where more than one
`
`® We do not assess or suggest an outcomeonthe decision on institution and
`joinder motion in the pending 1109 IPR.
`
`14
`
`
`
`IPR2022-00861
`Patent 10,257,319 B2
`
`petition may be necessary. TPG, 59. The Guideinstructs the petitioner to
`provide a ranking between the petitions and provide information as to why
`the Board should exercise discretionto institute additional petitions. Id. 59-
`60. Here, Petitioner has notprovided a rankingorrationale 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 andinstituting this case.
`
`Additionally, we considerefficiency relating to the Teso litigation.
`Asdiscussed above, a jury verdict has already been reachedin thatlitigation,
`and the issue of whether claims 1 and 26 of the °319 patent are invalid in
`view of Crowds wasbefore the jury. Mot. 2. We agree with Petitioner that
`there are some differences betweenthe prior art and claimsat issue here
`
`comparedto those in the Tesolitigation, and there are different burdens of
`
`proof. Mot. 6-9. Nonetheless, we agree with Patent Ownerthatinstitution
`
`and joinder would create significant risk of the Board redoing at least some
`
`of the work donein thelitigation. Prelim. Resp. 15-16.
`
`Accordingly, we determinethat the sixth General Plastic factor
`
`weighsstrongly in favor of exercising discretion to deny institution of the
`
`proceeding.
`
`Factor 7: “the requirement under 35 U.S.C. § 316(a)(11) to
`issue afinal determination notlater than I year after the date
`on which the Director notices institution ofreview”
`
`Patent Ownerargues that granting institution and joinder would have
`
`a negative effect on the trial schedule and create added complexity in the
`
`proceeding. Opp. 10.
`
`15
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`
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`IPR2022-00861
`Patent 10,257,319 B2
`
`Weagree with Patent Ownerthat there would likely be a negative
`impact on the schedule in the 1492 IPR that would affect whetherthe one
`year deadline could be met. The 1492 IPR wasinstituted on March 21,
`2022, with oral argument set on December 16, 2022. 1492 IPR, Papers 12,.
`13. IfPetitioneris joined to that case, Petitioner has stated that the Board
`- should “revisit scheduling for these proceedings after decisions on the
`joinder motionsare made in the related proceedings.” Ex. 2009. Although
`Patent Owneragreed to accelerate somebriefing in this case to allow
`consideration ofinstitution and this joinder motion, this case still lags behind
`the 1492 IPR schedule by approximately four months. Paper 19. To adjust
`the schedule to accommodate joinder, the time to complete briefing would
`have to be significantly accelerated to issue a final determination within one
`year, which may not be possible. Additionally, notwithstanding that the one
`yearstatutory time period maybe adjusted for a joined case under 35 U.S.C.
`§ 316(a)(11), granting institution and joinder in this case would
`.
`unnecessarily delay this proceeding beyond the Board’s goal of a one-year
`pendencyforall IPR proceedings.
`Accordingly, we determinethat the seventh General Plastic factor
`weighsstrongly in favor of exercising discretion to denyinstitution of the
`proceeding.
`
`3. Conclusion
`
`In light of the General Plastic factors, the guidance expressed in the
`Trial Practice Guide, and thearguments presented for and against the
`exercise of discretionary denial, we concludethat it is appropriate here to
`
`exercise our discretion under 35 U.S.C. § 314(a) to deny institution.
`
`16
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`
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`IPR2022-00861
`Patent 10,257,319 B2
`
`IV. DENIAL OF MOTION FOR JOINDER
`
`Asstated above, the Director may join a party to an ongoing IPR only
`if the filed petition warrants institution under § 314. 35 U.S.C. § 315(c),
`
`Because we exercise discretion to deny institution under § 314, we deny also
`
`Petitioner’s Motion for Joinder.
`
`V. ORDER
`
`Accordingly, it is:
`
`ORDEREDthat, pursuant to 35 U.S.C. § 314(a), the Petition is
`
`denied; and
`
`FURTHER ORDEREDthat the Motion for Joinder is denied.
`
`17-
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`
`
`IPR2022-00861
`Patent 10,257,319 B2
`
`PETITIONER:
`
`George “Jorde” Scott
`John Heuton
`CHARHON CALLAHAN ROBSON & GARZA, PLLC
`jscott@ccrglaw.com
`theuton@ccrglaw.com
`
`PATENT OWNER:
`
`Thomas Dunham
`Elizabeth O’Brien
`CHERIAN LLP
`tomd@ruyakcherian.com
`elizabetho@ruyakcherian.com.
`
`18
`
`
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