Trials@uspto.gov
`Tel: 571-272-7822
`
`|
`
`Paper 12
`Entered: June 1, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`THE DATA COMPANY TECHNOLOGIES INC.,
`Petitioner,
`
`Vv.
`
`BRIGHT DATA LTD.,
`Patent Owner.
`
`IPR2022-00135
`Patent 10,257,319 B2
`
`Before THOMASL. GIANNETTI, SHEILA F. McSHANE,and
`RUSSELLE. CASS, Administrative Patent Judges.
`
`GIANNETTI, Administrative Patent Judge.
`
`DECISION
`Granting Institution of /nter Partes Review
`35 US.C. § 314
`
`
`Tel: 571-272-7822
`
`|
`
`Paper 12
`Entered: June 1, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`THE DATA COMPANY TECHNOLOGIES INC.,
`Petitioner,
`
`Vv.
`
`BRIGHT DATA LTD.,
`Patent Owner.
`
`IPR2022-00135
`Patent 10,257,319 B2
`
`Before THOMASL. GIANNETTI, SHEILA F. McSHANE,and
`RUSSELLE. CASS, Administrative Patent Judges.
`
`GIANNETTI, Administrative Patent Judge.
`
`DECISION
`Granting Institution of /nter Partes Review
`35 US.C. § 314
`
`
`
`IPR2022-00135
`Patent 10,257,319 B2
`
`I. INTRODUCTION
`
`The Data Company TechnologiesInc. (“Petitioner”) filed a Petition
`
`(Paper 2, “Pet.”) requesting inter partes review of claims 1-29 (the
`
`“challenged claims”) of U.S. Patent No. 10,257,319 B2 (Ex. 1001, “the ’319
`patent”). Patent Owner, Bright Data Ltd.,’ filed a Preliminary Response
`
`(Paper7, “Prelim. Resp.”). With authorization, Petitioner filed a Reply
`
`(Paper8, “Pet. Reply’), and Patent Ownerfiled a Sur-reply (Paper 9, “PO
`
`Sur-reply”).?
`
`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 respect to at least 1 of the
`
`claims challenged in the petition.”
`
`Forthe reasons stated below, we determine that Petitioner has
`
`established a reasonable likelihood that it would prevail with respectto at
`
`least one claim. We,therefore, institute inter partes review asto all of the
`
`challenged claims of the ’319 patent andall of the asserted grounds of
`
`unpatentability in the Petition.
`
`' Bright Data Ltd. was formerly known as Luminati Networks, Ltd.
`* Both the Reply and Sur-reply address the issue of discretionary denial of
`the Petition. See Section II], infra.
`
`2
`
`
`
`IPR2022-00135
`Patent 10,257,319 B2
`
`Il. BACKGROUND
`
`A.
`
`Related Matters
`
`The parties identify several district court proceedings involving the
`’319 patent and its parent, U.S. Patent No. 10,484,510 (“the 510 patent”),
`
`including Bright Data Ltd. v. NetNut Ltd., No. 2:21-cv-225 (E.D. Tex.) (the
`
`‘NetNut Litigation”); and Luminati Networks Ltd. v. Teso LT, UAB,et al.,
`
`No. 2:19-cv-395 (E.D. Tex.) (the “Teso Litigation”). Pet. xv; Paper 4, 1-2.
`
`The °319 patent was previously before the Board in IPR2020-01266
`
`(institution denied) and IPR2021-01492 (pending). Pet. xiv—xv; Paper 5, 1.
`
`The *510 patent is involved in IPR2021-01493 (pending), and was
`
`previously before the Board in IPR2020-01358 (institution denied). Paper5,
`1-2.
`|
`
`In addition, Patent Owneridentifies two ex parte reexaminations,
`
`Control Nos. 90/014,875 and 90/014,876, that have been ordered for the
`
`°319 and *510 patents, respectively. Paper 5,2. Those reexaminations have
`
`since been stayed by the Board. See IPR2021-01492, Paper 14 (Apr. 7,
`
`2022); IPR2021-01493, Paper 13 (Apr. 7, 2022).
`
`B.
`
`Real Parties-in-Interest
`
`Petitioner identifies itself as the only real party-in-interest. Pet. xiv.
`
`Without conceding that they are real parties in interest, Petitioner also
`
`identifies Avantis Team Technologies Ltd. and Cytronix Ltd. Jd.
`
`Patent Owneridentifies Bright Data Ltd. as the only real party-in-
`
`interest. Paper4, 1.
`
`3 The 510 patent is based on a continuation of the application for the ’319
`patent. Ex. 1025, (60).
`
`
`
`IPR2022-00135:
`Patent 10,257,319 B2
`
`C.
`
`The ’319 Patent
`
`The °319 patentis titled “System Providing Faster and More Efficient
`
`Data Communication.” Ex. 1001, (54). According to the 319 patent, there
`
`is a “need for a new method of data transfer that is fast for the consumer,
`
`cheap for the content distributor and does not require infrastructure
`
`investment for ISPs.’ Jd. at 1:54-56. The patent states that other “attempts
`
`at making the Internet faster for the consumer and cheaperfor the
`
`broadcaster,” such as proxy servers and peer-to-peer file sharing, have
`
`various shortcomings. /d. at 1:58—59; 2:24~—2:32; 2:59-3:3.
`
`The *319 patent describes a system and method “for faster and more
`
`efficient data communication within a communication network,” such as in
`
`the networkillustrated in Figure 3, reproduced below (id. at 4:41-44):
`
`
`
`IPR2022-00135
`Patent 10,257,319 B2
`
`ACCELERATION
`SERVER
`
`aa Cc
`
`
`
`FIG. 3
`
`Figure 3 is a schematic diagram depicting communication network 100
`
`including a number of communication devices. Jd. at 4:43-45. Dueto the
`
`functionality provided by software stored within each communication
`
`device, “each device mayserve as a client, peer, or agent, depending upon
`
`requirements of the network 100.” Jd. at 4:46—50.
`Client 102 is capable of communicating with peers 112, 114, and 116,
`
`as well as with one or more agents 122. Jd. at 4:56-58. Web server 152
`
`may be “a typical HTTP server, such as those being used to deliver content
`
`on any of the many suchservers on the Internet.” Jd. at 4:63-67.
`
`Acceleration server 162 includes an acceleration server storage device 164
`
`5
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`
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`IPR2022-00135
`Patent 10,257,319 B2
`
`with an acceleration server database, which “stores Internet Protocol(IP)
`
`addresses of communication devices within the communication network 100
`
`having acceleration software stored therein.” /d. at 5:8—-14.
`
`In operation, a client may request a resource on the network,for
`
`example, through the use of an Internet browser. See id. at 12:62-13:3. If
`
`server 152 is the target of the request, the client sends the IP address of
`
`server 152 to acceleration server 162. Jd. at 13:8-15. Acceleration server
`
`162 then preparesa list of agents that can handle the request, which includes
`
`communication devices “that are currently online, and whose IP addressis
`
`numerically close to the IP of the destination Web server 152.” Jd. at 13:19-
`
`29. The client then sendsthe original request to the agents in the list to find
`
`out which“is best suited to be the one agent that will assist with this
`
`request.” Jd. at 13:31-36.
`
`Each agent respondsto the client with information which “can help
`
`the client to download the requested information from peers in the network.”
`
`Id. at 13:53-57. “Specifically, each agent responds with whether the agent
`
`has seen a previousrequest for this resource that has been fulfilled. In such
`
`a case, the agent may then providethe client with the list of peers and
`
`checksumsof the chunksthat each of them have.” /d. at 13:57-61.
`
`Theclient selects an agent based on a numberof factors, and the
`
`selected agent determines whether data stored in its memory or the memory
`
`of the peers “still mirrors the information that would have been received
`
`from the serveritself for this request.” Jd. at 13:62—14:1, 14:35-38. Ifthe
`
`selected agent does not have the necessary information to service a request,
`
`it may “load the information directly from the serverin order to be able to
`
`provide an answerto the requesting client.” Jd. at 14:62-67.
`
`6
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`
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`IPR2022-00135
`Patent 10,257,319 B2
`
`D.
`
`Illustrative Claim
`
`The °319 patent has 29 claims. As noted,all claims are challenged in
`
`the Petition. Pet. 1. Claim 1, the only independent claim in the ’319 patent,
`
`is illustrative of the claimed subject matter and is reproduced below:4
`
`1. [1P1] A method
`
`[1P2] for use with a first client device, for use withafirst
`server that comprises a webserver that is a Hypertext Transfer
`Protocol (HTTP) server that responds to HTTP requests,
`
`[1P3] the first server stores a first content identified by a
`first content identifier, and
`
`[1P4] for use with a second server, the method by the
`first client device comprising:
`
`[1B] receiving, from the secondserver, the first content
`identifier;
`
`[1C] sending,to the first server over the Internet, a
`Hypertext Transfer Protocol (HTTP) request that comprises the
`first content identifier;
`
`[1D] receiving, the first content from the first server over
`the Internet in response to the sending ofthe first content
`identifier; and
`
`[1E] sending,the first content by thefirst client device to
`the secondserver, in responseto the receiving ofthe first
`content identifier.
`
`Ex. 1001, 19:16—32.
`
`E.
`
`Prior Art References and Other Evidence
`
`Petitioner relies on the following references:
`
`1. Plamondon,U.S. Patent Application Publication US
`2008/0228938 A1, published September 18, 2008 (Ex. 1010).
`
`* Referencesin brackets provided by Petitioner have been added andspacing
`has beenaltered.
`
`
`
`IPR2022-00135
`Patent 10,257,319 B2
`
`2. RFC 2616, Hypertext Transfer Protocol—HTTP/1.1,
`Network Working Group, The Internet Society, 1999 (Ex.
`1018).
`
`3. RFC 1122, Requirements for Internet Hosts—
`Communication Layers, Network Working Group, Internet
`Engineering Task Force, 1989 (Ex. 1014).
`
`4, IEEE 802.11-2007, IEEE Standardfor Information
`Technology—lelecommunications and Information Exchange
`Between Systems - Local and Metropolitan Area Networks—
`Specific Requirements—Part 11: Wireless LAN Medium Access
`Control (MAC) and Physical Layer (PHY) Specifications, IEEE
`Standards, June 12, 2007 (Ex. 1022).
`
`5. Price, U. S. Patent Application Publication US
`2006/0026304 A1, published February 2, 2006 (Ex. 1023).
`
`6. Kozat, U. S. Patent Application Publication US
`2009/0055471 Al, published February 26, 2009 (Ex. 1024).
`In addition to these references, Petitioner relies on a Declaration of
`
`Prof. David Levin, Ex. 1003 (“Levin Decl.”). Patent Owner submitted a
`
`Declaration of Dr. V. Thomas Rhynewith the Preliminary Response. Ex.
`
`2001 (“Rhyne Decl.”).
`
`The Asserted Grounds of Unpatentability
`F.
`Petitioner asserts the following grounds of unpatentability. Pet. 2.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`> The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 287-88 (2011), amended 35 U.S.C. §§ 102 and 103, effective
`March 16, 2013. Because the ’319 patent claimspriority to a provisional
`application that was filed before this date, we apply the pre-AIA versions of
`§§ 102 and 103. See Ex. 1001, (60).
`
`
`
`
`
`IPR2022-00135
`Patent 10,257,319 B2
`
`
`
`
`
`
`
`III. DISCRETIONARY DENIAL
`
`A. Denial Based on Fintiv
`
`Patent Ownerrequests that we exercise our discretion under 35 U.S.C.
`
`§ 314(a) to deny institution. Prelim. Resp. 3—9; PO Sur-reply 1—S.
`
`The Board’s precedential decision in Apple Inc. v. Fintiv, Inc.,
`IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (“Fintiv’’)
`sets forth a non-exclusivelist of factors that we may consider wherethereis
`
`a related, parallel district court action, when determining whetherto use our
`
`discretion to denyinstitution:
`
`1. whether the court granted a stay or evidence exists that one
`maybe grantedif 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.
`
`Fintiv at 5-6. Recognizing that “there is some overlap amongthese factors”
`
`and that “[s]ome facts may be relevant to more than one factor,” the Board
`
`“takes a holistic view of whether efficiency and integrity of the system are
`
`best served by denyingorinstituting review.” Jd. at 6.
`
`
`
`IPR2022-00135
`Patent 10,257,319 B2
`
`1.
`NetNut Litigation
`Although Patent Ownerasserts that “[t]here are six other proceedings
`
`involving the ’319 patent” (Prelim. Resp. 4), because Petitioner is not a party
`
`to any of those proceedings, Patent Owner focusesits Fintiv analysis on the
`
`parallel district court litigation between Patent Owner and NetNut Ltd.
`
`pending in the Eastern District of Texas, referred to as the “NetNut
`
`Litigation.” Bright Data Ltd. v. NetNut Ltd., No. 2:21-cv-225 (E.D. Tex.).
`
`Prelim. Resp. 5; see supra, Section II.A.
`
`Referring to the NetNut Litigation, Patent Owner contendsthat
`
`defendant NetNut Ltd. identified Plamondonas “allegedly anticipating or
`
`rendering obvious claims 1, 2, 14, 15, 17, 18, and 21-27 [of the ’319 patent]
`
`in its invalidity contentions served on 12/17/2021.” Prelim. Resp. 5.
`
`Further, Patent Ownerasserts “[t]he NetNut Litigation is currently at an
`
`advanced stage andhasjury trial scheduled for 9/12/2022 in the Eastern
`
`District of Texas.” Jd. Patent Owner concludesthat “the district court will
`
`resolve invalidity issues involving Plamondon,at least as to independent
`
`claim 1, in September 2022; long beforeafinal written decision is due in
`
`this proceeding in June 2023.” Id.
`
`On May 13, 2022, Patent Owner advised the Board that a settlement
`
`had been reached with NetNut, resolving “all disputes” between NetNut and —
`
`Patent Ownerrelating to the challenged patents, which would include the
`
`°319 patent. On May 18, 2022, Patent Ownerfiled, in IPR2021-01492 and
`
`IPR2021-01493, a Notice of Settlement and Related Court Order. IPR2021-
`
`01492, Paper 16; IPR2021-01493, Paper 15. With the Notice, Patent Owner
`
`submitted an orderby thedistrict court in the NetNut Litigation, dated May
`
`17, 2022, dismissing with prejudice “all pending claims and causes of
`
`10
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`IPR2022-00135
`Patent 10,257,319 B2
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`action” and closing the case in the NetNut Litigation. IPR2021-01492, Ex.
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`2018; IPR2021-01493, Ex. 2017.
`
`In light of the settlement with NetNut and dismissal of the NetNut
`
`Litigation, Patent Owner’s arguments for discretionary denial under Fintiv
`
`based onthe trial in that case are moot, and we do not consider them further.
`
`We,therefore, decline to excrcise ourdiscretion to deny the Petition on that
`
`basis.
`
`Other Arguments
`2.
`Wehave considered Patent Owner’s other arguments for discretionary
`
`denial and find them unavailing. For example, Patent Ownerasserts that in
`
`the Teso Litigation, a jury found the claimsof “related” U.S. Patent No.
`
`10,469,614 not invalid over Mithyantha. PO Resp. 5-6. Patent Owner
`
`argues that Mithyantha discloses the “exact same” computerarchitecture as
`
`Plamandon. Jd. at 6. Patent Owner contendsalso that a jury in the Teso
`Litigation “found in favor of Bright Data, properly recognizing the
`differences between a ‘client device’ and ‘second server.’” Jd. We do not
`
`find this argument compelling. Patent Owner’s explanation of the jury
`
`verdict depends on Patent Owner’s construction of “client device,” which we
`
`reject. See infra. Also,it is based on speculation by Patent Owneras to why
`
`the jury reached its verdict in that case.
`
`Inaddition, Patent Owner’s expression of concern thatit is “unsure
`
`whetherPetitioneris or is not in any way related to any defendantin active
`
`district court litigation” is addressed supra. In short, Patent Owner admits
`
`there is no evidence of any “relationship that would result in denial of
`
`institution.” Prelim Resp. 7.
`
`
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`IPR2022-00135
`Patent 10,257,319 B2
`
`3.
`
`Conclusion
`
`Onthis record, we determinethat the facts in this case weigh against
`
`exercising our discretion to deny institution. Thus, based on our assessment
`
`of the Fintiv factors, we decline to exercise our discretion under 35 U.S.C.
`
`§ 314(a) to deny inter partes review.
`
`B. Denial under General Plastic
`
`In General Plastic Indus. Co. v. Canon Kabushiki Kaisha, IPR2016-
`
`01357, Paper 19 (PTAB Sept. 6, 2017) (precedential) (“General Plastic”),
`
`the Board set out a list of seven factors to consider when asked to exercise
`
`its discretion to deny review of follow-on petitions. Those factors are the
`
`following:
`
`1. whether the samepetitioner previously filed a petition
`directed to the same claims of the same patent;
`2. whetheratthe timeoffiling of the first petition the petitioner
`knew ofthe prior art asserted in the second petition or should
`have known ofat;
`
`3. whetherat the timeoffiling of the second petition 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;
`4. the length of time that elapsed between the timethe petitioner
`learned ofthe prior art asserted in the secondpetition and the
`filing of the secondpetition;
`5. whetherthe petitioner provides adequate explanation for the
`time elapsed betweenthefilings of multiple petitions directed
`to the sameclaimsof the same patent;
`
`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.
`
`12
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`IPR2022-00135
`Patent 10,257,319 B2
`
`General Plastic, Paper 19 at 16. In setting forth these factors, the Board
`
`madeit clear that “[t]here is no per se rule precluding the filing of follow-on
`
`petitions after the Board’s denial of one or more first-filed petitions on the
`
`same patent.” /d. at 15
`
`Onthis record, we determine that General Plastic weighs against
`
`excrcising discretion to deny institution. The General Plastic factors
`
`addressed the situation where the samepetitioner filed “follow-on petitions”
`
`against the samepatents,after a first set of petitions was denied on the
`
`merits. General Plastic, Paper 19 at 2-3. Here, however, Petitioner was not
`
`involved in the previous petitions challenging the °319 patent.
`
`There have been circumstances where General Plastic has not been
`
`limited to instances where multiple petitions are filed by the same petitioner.
`
`See Valve Corp. v. Elec. Scripting Prods., Inc., IPR2019-00062, Paper 11
`
`(PTAB April 2, 2019) (precedential). For example, the existence of a
`
`“significant relationship” between different petitioners may weigh in favor
`
`of discretionary denial.
`
`/d. at 9-10. But here, in addition to the fact that
`
`Petitioner was nota petitioner in any previous proceeding challenging the
`
`°319 patent, there no evidencethat Petitioner has a significant relationship
`
`with a petitioner in an earlier case, as is acknowledged by Patent Owner.
`
`Prelim. Resp. 7. Patent Ownerassertsthat it “is not presently aware of a
`
`significant relationship between Petitioner and NetNut, Code200, or Teso,”
`
`whoarepetitioners in other Board proceedings and defendants in district
`
`court litigations. Jd. at 9.
`
`Patent Ownerargues, however, that as of November 2020, Petitioner
`
`“had access”to the preliminary response to the Code200/Teso petition
`
`against the 319 patent in IPR2021-00458,as well “various docketentries”
`
`13
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`IPR2022-00135
`Patent 10,257,319 B2
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`in the district court litigations. Jd. Patent Owner contendsthat Petitioner
`
`received the benefit of having had the opportunity to study Patent Owner’s
`
`arguments on the 319 patent. Jd.
`
`Wedo notfind these arguments to be persuasive. Although Petitioner
`
`could have accessed Patent Owner’s preliminary response in the Code200
`
`case priorto the filing date of the filing of the Petition, because the Board
`
`denied inter partes review in the Code200 case without addressing the
`
`merits (see IPR2020-01358, Paper 11), Petitioner could not have received
`
`any insight into the Board’s position on the merits of the arguments in the
`
`Code 200 petition from that proceeding.
`
`For the reasons given, we decline to exercise our discretion to deny
`
`inter partes review under GeneralPlastic.
`
`Denial under 35 U.S.C. § 325(d)
`C.
`Under 35 U.S.C. § 325(d), in determining whetherto institute an inter
`partes review, “the Director may take into account whether, and reject the
`
`petition or request because, the same or substantially the samepriorart or
`
`arguments previously were presented to the Office.”
`
`Patent Owner contends that we should deny the Petition under
`
`§ 325(d) because Samuels, which “shares overlapping material with
`
`Plamondon,” was before the examiner during the prosecution of the °319
`
`patent. Prelim. Resp. 10-11. Patent Ownerasserts that Samuels wascited
`
`on an IDS (Information Disclosure Statement) “initialed by the Examiner
`
`during prosecution of the ’319 patent,” and was “applied in related patent
`
`applications,”all of which had the same examineras the °319 patent. Id.
`
`Anticipating Patent Owner’s § 325(d) argument, Petitioner asserts
`
`“this petition does not include the same,or substantially similar, references
`
`14
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`IPR2022-00135
`Patent 10,257,319 B2
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`or arguments from prosecution.” Pet. 74. Petitioner explains that “[o]ther
`
`than RFC 2616 (a secondary reference for claims 15-17), the Patent Office
`
`never considered any reference presented herein.” Jd. Moreover, Petitioner
`
`asserts “the Examiner never applied RFC 2616 in a claim rejection.” Jd.
`
`Addressing Samuels, Petitioner asserts “[t]he Examinerinitialed
`
`Samuels on an IDSbut never discussedit during the °319 patent’s
`
`prosecution.” Jd. at 75. As to the alleged overlap with Plamondon,
`
`Petitioner explains that “[w]hile Samuels and Plamondon share some
`
`overlapping material .
`.
`. the Petition relies on Plamondon’s additional 321
`paragraphs ..., spanning 45 pages, with no counterpart in Samuels.” Id.
`In evaluating arguments under§ 325(d), we use a two-part
`
`framework: (1) whether the sameor substantially the same art previously
`
`waspresented to the Office or whether the sameor substantially the same
`
`arguments previously were presentedto the Office; and (2) if either
`
`condition ofthe first part of the frameworkis satisfied, whether the
`
`petitioner has demonstrated that the Office erred in a manner material to the
`
`patentability of challenged claims. Advanced Bionics, LLC v. MED-EL
`
`Elektromedizinische Gerdte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB
`
`Feb. 13, 2020) (precedential).
`
`We must also consider the non-exclusive factors set forth in Becton,
`
`Dickinson and Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8
`
`(PTAB Dec. 15, 2017) (precedential in relevant part), which “provide useful
`
`insight into how to apply the framework” under § 325(d). Advanced
`
`Bionics, Paper 6 at 9. Those non-exclusive factors include:(a) the
`
`similarities and material differences betweenthe asserted art and the priorart
`
`involved during examination; (b) the cumulative nature of the asserted art
`
`15
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`IPR2022-00135
`Patent 10,257,319 B2
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`and the prior art evaluated during examination; (c) the extent to which the
`
`asserted art was evaluated during examination, including whetherthe prior
`art was the basis for rejection; (d) the extent of the overlap between the
`arguments made during examination and the manner in which Petitioner
`
`relies on the prior art or Patent Ownerdistinguishes the priorart; (e) whether
`Petitioner has pointed out sufficiently howthe Examinererredinits
`evaluation of the asserted prior art; and (f) the extent to which additional
`
`evidence and facts presented in the Petition warrant reconsideration of the
`
`prior art or arguments. Becton, Dickinson, Paper8 at 17-18.
`
`For the reasonsthat follow, we are not persuaded to exercise our
`
`discretion to deny the Petition based on § 325(d). Other than RFC 2616, a
`secondary reference applied by Petitioner only to three dependent claims,the
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`examinerdid not consider any references that Petitioner relies uponin its
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`challenges. See Pet. 74. Although the examinerinitialed the IDSciting
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`Samuels, the examiner did not rely on Samuels during prosecution of the
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`°319 patent. Jd. at 75. And while Petitioner acknowledges that Samuels and
`Plamondon “share some overlapping material,” Petitioner identifies
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`extensive additional disclosure in Plamondonnot found in Samuels that
`
`Petitionerrelies on in its challenges.
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`/d. (citing Ex. 1010 9] 363-682). We
`
`agree that the Petition includes assertions that rely upon significant portions
`of non-overlapping material from Plamondon,as discussed in Section IV.D,
`infra. See also Pet. 75. Thus, we find that Samuels is not substantially the
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`same as Plamondon.
`
`For the foregoing reasons, we are not persuaded that the same or
`
`substantially the sameprior art or arguments previously were presented to
`the Office. Accordingly, neither condition ofthe first part of the Advanced
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`16
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`IPR2022-00135
`Patent 10,257,319 B2
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`Bionics frameworkis satisfied. Having determined that thefirst part of the
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`Advanced Bionics frameworkis not satisfied, we need not consider the
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`secondpart of the framework. See Advanced Bionics at 8, 10.
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`For the reasons given, we are not persuaded to exercise our discretion
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`under § 325(d) to denyinstitution.
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`IV. ANALYSIS OF THE CHALLENGED CLAIMS
`
`A. Level of Ordinary Skill in the Art
`Referring to a Preliminary Response in IPR2020-01358, Petitioner
`adopts Patent Owner’s assessmentthat a person of ordinary skill in the art is
`
`“an individual who, as of October 8, 2009 .
`
`.
`
`. had a Master’s Degree or
`
`higherin the field of Electrical Engineering, Computer Engineering, or
`Computer Science or as of that time had a Bachelor’s Degree in the same
`
`fields and two or moreyears of experience in Internet Communications.”
`
`Pet. 7 (citing Ex. 1008, 18; Levin Decl. {J 30-37).
`
`Patent Owner submitsthat a person of ordinary skill in the art should
`
`have the same qualifications identified by Petitioner. Prelim. Resp. 15. For
`
`-
`
`the purposesof this Decision, we adopt the assessment offered by the
`parties, as it is consistent with the °319 patent and the prior art before us.
`
`See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).
`
`Patent Owner questions whetherPetitioner’s declarant, Dr. Levin,
`
`qualifies under this definition to provide expert opinions, suggesting that we
`
`give his testimony “less weight.” Prelim Resp. 16. Patent Owner argues
`
`also that Dr. Levin’s testimony “appears to be based on hindsight” andthat
`
`he takes “inconsistent positions.” Jd. at 17-18.
`
`Wearesatisfied, at this stage, that Dr. Levin’s education and
`
`experienceare sufficient for us to consider his opinions regarding the
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`17
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`IPR2022-00135
`Patent 10,257,319 B2
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`perspective of one of ordinary skill in the art as of October 2009. See Levin
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`Decl. ff 35-36; Ex. 1004.° Patent Owner’s questions abouthis
`
`qualifications and assertions of “hindsight” and “inconsistency”go to the
`
`weight given to Dr. Levin’s testimony, which we will evaluate on a full
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`recordaftertrial. Similarly, we will evaluate Dr. Rhyne’s qualifications and
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`testimony on a full record aftertrial.
`
`B. Claim Construction
`
`In this inter partes review, claims are construed using the same claim
`
`construction standard that would be used to construe the claimsinacivil
`
`action under 35 U.S.C. § 282(b). 37 C.F.R. § 42.100(b) (2021). Under the
`
`principles set forth by the Federal Circuit, the “words of a claim ‘are
`999
`
`generally given their ordinary and customary meaning,’”
`
`as would be
`
`understood by a person of ordinary skill in the art in question at the time of
`
`the invention. Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005)
`
`(en banc) (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582
`
`(Fed. Cir. 1996)). “In determining the meaning of the disputed claim
`
`limitation, we look principally to the intrinsic evidence of record, examining
`
`the claim languageitself, the written description, and the prosecution
`
`6 Dr. Levin’s curriculum vitae (Ex. 1004) indicates that he received a
`bachelor’s degree in computer science in 2002, and a Ph.D. in computer
`science in September, 2010. As of October 2009, Dr. Levin had
`approximately three years of work experience in software development and
`had completed summerinternships at Motorola, Hewlett Packard Labs, and
`Microsoft Research. Ex. 1004, 12-13. Additionally, as of that time, Dr.
`Levin had published several papers in refereed forumsthat relate to Internet
`communications, such as “Symbiotic Relationships in Internet Routing
`Overlays” and “Motivating Participation in Internet Routing Overlays,” and
`was within a year of completing his Ph.D. Jd. at 6.
`
`18
`
`
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`IPR2022-00135
`Patent 10,257,319 B2
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`history, if in evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek,
`
`Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at
`
`1312-17).
`
`1, preamble, “client device,” “first server,”
`
`.
`
`a)
`
`66
`
`“second server,”
`
`Petitioner asserts that the district court’s constructions in the Teso
`
`Litigation, Luminati Networks Ltd. v. Teso LT, UAB, et al., No. 2:19-cv-395
`
`(E.D. Tex.), should be applied in this case for the terms “client device,”“first
`
`server,” and “second server,” and that the preamble of claim 1 should be
`
`limiting. Pet. 9. In particular, Petitioner points to two claim construction
`
`orders in that case—anoriginal order (Ex. 1006) and a supplemental order
`
`(Ex. 1009). In those orders, the district court construed the preamble of
`
`claim 1 to be limiting, and also construed “second server” and “client
`
`device.” Pet. 9. All other terms were given their plain and ordinary
`
`meaning. Id. at 8-9.
`
`The district court construed “client device” as “communication device
`
`that is operating in the role of a client.” Jd. at 9; Ex. 1006, 12. The district
`
`court construed “‘second server”as “server that is not the client device” (Ex.
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`1006, 14), and later agreed with the defendants’ clarification as to the scope
`
`of this construction, namely,that a “second server’is “a device that is
`
`operating in the role of a server andthat is not the first client device” (Ex.
`
`1009, 8, 11-12).
`
`Patent Owneragreesthat the district court’s claim constructions
`
`should apply for the preamble, “client device,” and “second server.” Prelim.
`
`Resp. 23-24. Patent Owner disagrees, however, with Petitioner’s “broader
`
`construction” of the term “second server,” which Patent Owneralleges
`
`would “remove the requirementthat it be a server.” Jd. at 25. Patent Owner
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`19
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`IPR2022-00135
`Patent 10,257,319 B2
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`asserts that the district court indicated that “[t]he patents do not include
`
`servers as a type of ‘communication device,’” and confirmed “that servers
`
`must be configured to be servers.” Jd. at 24 (citing Ex. 1009, 10). Patent
`
`Ownerrefers to the district court’s statement in the supplemental claim
`
`construction orderthat it “is not changing the construction” of “second
`server.” Jd. at 25 (quoting Ex. 1009, 11). Patent Owner also refers to the
`
`district court’s statementthat “a component can be configured to operate in
`
`different roles—so long as it does not ‘simultaneously serve as more than
`
`one of: the client device, the first server/second server, and the webserver.’”
`
`Id. at 24-25 (quoting Ex. 1009, 10) (emphasis added).
`
`Petitioner presents (Pet. 5) an annotated version of Figure 3 from the
`
`°319 patentto illustrate its application of claim 1:
`
`?319 Patent, Fig. 3 (with PO’s color annotations).
`
`Patent Ownerdisagrees with Petitioner’s description of the elements
`
`in its annotation of Figure 3 and asserts that a person of ordinary skill in the
`
`20
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`IPR2022-00135
`Patent 10,257,319 B2
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`art would have understood that both client 102 and agent 122 in that figure
`
`are client devices, rather than a “second server” and “first client device.”
`Prelim. Resp. 18-19 (citing Rhyne Decl. § 44). Patent Ownerrefers also to
`Figure 1 of the °319 patent, which shows proxy servers betweenclient
`
`devices and webservers. /d. at 19-20. Patent Ownerasserts, and Dr. Rhyne
`
`provides supporting testimony, that Figure 3 shows an agent positioned
`
`between a client and webserver, and also shows “multiple communication
`
`devices” that have software providing functionality to allow them to “serve
`
`as a Client, peer, or agent, depending on the requirements of the network
`
`100.” Id. at 21 (citing Ex. 1001, 4:46-50; Rhyne Decl. 7 44). Patent Owner
`
`argues that a person of ordinary skill in the art would understand both client
`
`102 and agent 122 in Figure 3 to be client devices. Jd. at 21 (citing Rhyne
`
`Decl. | 44). Patent Ownerrefers to the 319 patent’s disclosure that the web
`
`server is a server from whichthe client is requesting information, and the
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`acceleration server has an acceleration server storage device. Jd. (citing Ex.
`
`1001, 4:62—5:7). Patent Ownerasserts that a person ofordinary skill in the
`
`art would understand that web server 152 and acceleration server 162 are
`
`servers.
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`/d. (citing Rhyne Decl. { 45).
`
`At this stage, we do not agree with Patent Owner’s arguments. Patent
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`Ownerhasfailed to considerall of the district court’s statements on the
`
`construction of terms. Specifically, the district court stated that “a
`
`componentcan be configuredto operate in different roles—so longasit
`
`does not ‘simultaneously serve as more than oneof: the client device, the
`
`first server/second server, and the web server.’” Ex. 1009, 10. Thatis,
`
`although the district court determined that a single componentcould not
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`21
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`IPR2022-00135
`Patent 10,257,319 B2
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`simultaneously serve more than one function at any particular time,it also
`
`stated that different components could operate in different roles. Jd.
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`Moreparticularly, in the discussion of “server” terms, the district
`
`court indicate
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