`OV
`Trrals@py
`57172.7822
`
`Paper 19
`Entered: October 19, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`CODE200, UAB; TESO LT, UAB; METACLUSTER LT, UAB;
`OXYSALES, UAB; AND CORETECHLT, UAB,
`Petitioner,
`
`V.
`
`BRIGHT DATA LTD.,
`Patent Owner.
`
`IPR2022-00862
`Patent 10,484,510 B2
`
`Before THOMAS L. GIANNETTI, SHEILA F. McSHANE,and
`RUSSELLE. CASS, Administrative Patent Judges
`
`McSHANE,Administrative Patent Judge.
`
`DECISION
`
`Rehearing on Director Remand
`
`Granting Institution of /nter Partes Review
`3S US.C. § 314
`
`Granting Motion for Joinder
`35 US.C. § 315(C); 37 CER. § 42.122
`
`
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`IPR2022-00862
`Patent 10,484,510 B2
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`I. INTRODUCTION
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`Weaddressthis case after a decision by the Under Secretary of
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`Commercefor Intellectual Property and Director of the United States Patent
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`and Trademark Office vacating our previous decision denying institution,
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`remanding for further proceedings, and ordering us to reconsider joinder
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`after reconsidering the decision denying institution. Paper 18 (“Remand
`
`Dec.”).
`
`I. BACKGROUND
`
`A. BackgroundofProceeding
`
`Code200, UAB, Teso LT, UAB, Metacluster LT, UAB, Oxysales,
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`UAB, and Coretech LT, UAB (‘Petitioner” or “Code200”) filed a Petition
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`for inter partes review of claims 1, 2, 6-11, 13, and 15-24 of U.S. Patent
`
`No. 10,484,510 B2 (Ex. 1001, “the ’510 patent”). Paper 1 (“Pet.”). Bright
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`Data Ltd. (“Patent Owner”) filed a Preliminary Response. Paper 15
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`(Prelim. Resp.”’”). With the Petition, Petitioner also filed a Motion for
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`Joinder with NetNut Lid. v. Bright Data Ltd., IPR2021-01493 (“the 1493
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`IPR” ). Paper 7 (“Mot.”). Patent Ownerfiled an Opposition to the Motion
`
`for Joinder. Paper 11 (“Opp.”). Petitioner filed a Reply to Patent Owner’s
`
`Opposition. Paper 13 (“Reply”).
`
`ThePetition in this proceeding asserts the same grounds of
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`unpatentability as those upon which weinstituted review in the 1493 IPR.
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`Compare Pet. 10, with NetNut Ltd. v. Bright Data Ltd., 1PR2021-01493,
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`Paper 11 at 7, 42 (PTAB Mar. 21, 2022) (“1493 Decision”or “1493 Dec.”).
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`Consistent with this, Petitioner contendsthat the Petition 1s “is substantially
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`identical to the petition in the NetNut IPR [1493 IPR] and contains the same
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`grounds (based on the sameprior art and supporting evidence) against the
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`Patent 10,484,510 B2
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`same claims, and differs only as necessary to reflect the factthat it is filed by
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`a different petitioner.” Pet. 2 (citing Ex. 1024).
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`On July 25, 2022, we issued a Decision in this case exercising
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`discretion to deny institution based on an assessment of factors set forth in
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`General Plastic Industrial Co. Ltd. v. Canon Kabushiki Kaisha, IPR2016-
`
`01357, Paper 19 (PTAB Sept. 6, 2017) (precedential as to § I[.B.4.1)
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`(General Plastic). Paper 17 (“Dec.”). Our Decision also denied joinder of
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`this case with the 1493 IPR. /d. at 17. The Director reviewed our Decision
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`sua sponte, vacated the Decision, and remandedthe case to the panel, with
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`orders that our Decision denying institution and joinder be reconsidered
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`consistent with the Remand Decision. Remand Dec. 7.
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`B. Director Decision and Scope ofRemand
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`The Director considered our discretionary denial of institution under
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`General Plastic, and clarified General Plastic by stating that, “[w]here the
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`first-filed petition .. . was discretionarily denied or otherwise was not
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`evaluated on the merits,” a finding favoring discretionary denial under
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`General Plastic’s factors 1—3 is limited to “when there are ‘road-mapping’
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`concerns under factor 3 or other concerns underfactor 2.”” Remand Dec. 5.
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`The Director noted that in this case, the panel had found “no evidence of
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`road-mapping.” /d. at 5 (citing Dec. 13). The Director added that “‘road-
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`mapping’ concerns are minimized when,asin this case, a petitionerfiles a
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`later petition that raises unpatentability challenges substantially overlapping
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`with those in the previously-filed petition and the later petition is not refined
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`based on lessons learned from later developments.” /d. at 5. The Director
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`agreed with the Board’s finding that General Plastic’s factors 2, 4, and 5 “
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`have limited relevance.” /d. at 6. The Director similarly found factor 7 to
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`IPR2022-00862
`Patent 10,484,510 B2
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`“have limited relevance” because the one-year statutory time period may be
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`adjusted for a joined case under 35 U.S.C. § 316(a)(11). /d. (citing Dec. 16).
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`Further, the Director disagreed with the panel’s determination on factor 6 in
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`view of potential inefficiencies, with the Director determining that “the
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`Board’s mission ‘to improve patent quality and restore confidence in the
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`presumption of validity that comes with issued patents’ outweighs the
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`impact on Board resources neededto evaluate the merits of a petition.” /d.
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`In accordance with the evaluation of the factors, the Director found that “the
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`Patent Owner’s concernsof fairness are outweighed by the benefits to the
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`patent system of improving patent quality by reviewing the merits of the
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`challenges raised in the petitions, which have not been addressed to date.”
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`Id.
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`The Director remandedthe case to the panel for further proceedings,
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`with direction to reconsider the institution decision and joinder. Remand
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`Dec. 7. The Director directed that the panel “consider the Patent Owner’s
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`remaining arguments, including those for discretionary denial under /’intiv
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`and against the merits of the Petitioner’s patentability challenges.” /d.
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`C. Related Proceedings
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`The *510 patent has been the subject of numerous proceedings in
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`district court and the Board. We summarized several related proceedings in
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`the previous decision denying institution in this case. Dec. 3—5. The
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`proceedings of most interest are the 1493 IPR, IPR2020-01358 (“the
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`previously-filed 1358 IPR”), and Bright Data Ltd. v. Teso LT, UAB, 2:19-
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`cv-00395-JRG (E.D. Tex.) (“the 7eso litigation’’).
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`IPR2022-00862
`Patent 10,484,510 B2
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`In the 1493 IPR,the case to which Petitioner is seeking joinder, we
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`instituted an inter partes review of claims 1, 2, 6-11, 13, and 15-24 of the
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`°510 patent on the following grounds:
`
`
`
`
`
`
`
`
`
`1, 6, 7, 13°, 15, 16,
`102(b)
`Crowds?
`18-24
`:
`1,2, 6-11, 13, 15, 16,
`1824
`
`1,6, rie 23,
`1, 6, 8-11, 13, 15-20,
`794
`1, 6-8, 13, 15, 16,
`1834
`1,2, oeMt 15, 16,
`
`103(a)
`102(b)
`103(a)
`
`102(b)
`103(a)
`
`Crowds, RFC 2616
`Border?
`Border, RFC 2616
`_
`MorphMix
`MorphMix, RFC 2616
`
`' 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 ’510 patent claims priority to a provisional
`application that wasfiled before this date, with Petitioner not contesting that
`priority, the pre-AIA versions of §§ 102 and 103 apply. See Ex. 1001, code
`(60); Pet. 17.
`? The Petition includesassertions for claim 13 under the Crowdsanticipation
`ground. Pet. 33. Accordingly, we include this claim in the summarytable,
`although not included in the Petition’s summary table. /d. at 10.
`3 Michael K. Reiter, Crowds: Anonymityfor Web Transactions, ACM
`Transactions on Information and System Security, Vol. 1, No. 1, November
`1998, at 66-92 (Ex. 1006).
`+ Hypertext Transfer Protocol—HTTP/1.1, Network Working Group, RFC
`2616, The Internet Society, 1999 (Ex. 1013).
`> U.S. Patent No. 6,795,848, issued September 21, 2004 (Ex. 1012).
`° Marc Rennhard, MorphMix—APeer-to-Peer-based System for
`AnonymousInternet Access (2004) (Ph.D. dissertation, Swiss Federal
`Institute of Technology) (Ex. 1008).
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`IPR2022-00862
`Patent 10,484,510 B2
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`NetNut Ltd. v. Bright Data Ltd., 1PR2021-01493, Paper 11 at 7, 42 (PTAB
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`Mar. 21, 2022).
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`Patent Ownersettled with NetNut in the 1493 IPR, and NetNut has
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`been terminated as Petitioner in that action. 1493 IPR, Paper 19.
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`In the previously-filed 1358 IPR, Petitioner challenged claims of the
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`°510 patent, and Crowds, Border, and MorphMix were the primarypriorart
`
`asserted. Code200, UAB v. Luminati Networks Ltd.,’ TPR2020-01358, Paper
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`5. The previously-filed 1358 IPR was denied on discretionary grounds. /d.,
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`Paper 11 (Feb. 2, 2021).
`
`In the 7eso litigation, Bright Data Ltd., the Patent Ownerhere, sued
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`defendants Teso LT, UAB, Metacluster LT, UAB, Oxysales, UAB, and
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`Coretech LT, UAB, someof the petitioner group here, for infringement of
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`the °510 patent, as well as for infringement of U.S. Patent Nos. 10,257,319
`
`and 10,469,614. Mot. 2. Thelitigation was filed on December6, 2019. Jd.
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`A jury trial was conducted in November, 2021, and the issue of whether
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`claims | and 26 of the ’510 patent were invalid in view of the Crowds
`
`reference asserted here was presented by the defendants. /d. The jury found
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`that the defendants did not prove that these claims were invalid by clear and
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`convincing evidence. /d. (citing Ex. 1024, 5).
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`Additionally, the parties indicate that the °510 patent is the subject of
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`an ex parte reexamination, Control No. 90/014,876, which has been stayed.
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`Mot. 5; Paper 16, 2.
`
`’ Bright Data Ltd. was formerly known as Luminati Networks Ltd. See
`Paper 10, 2.
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`D. The ’510 Patent (Ex. 1001)
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`The *510 patent is titled “System Providing Faster and More Efficient
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`Data Communication” and issued on November 19, 2019 from an
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`application filed on February 17, 2019. Ex. 1001, codes (22), (45), (54).
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`The patent is subject to a terminal disclaimer. /d. at code (*). The
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`application for the 866 patent claims priority to several applications,
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`including U.S. Provisional Application No. 61/249,624, filed October 8,
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`2009. Id. at code (60).
`
`The °510 patent is directed to addressing the “need for a new method
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`of data transfer that 1s fast for the consumer, cheap for the content distributor
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`and does not require infrastructure investment for ISPs.” Ex. 1001, 1:57-59.
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`The °510 patent states that other “attempts at making the Internet faster for
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`the consumerand cheaperfor the broadcaster,” such as proxy servers and
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`peer-to-peerfile sharing, have various shortcomings. /d. at 1:61—3:6. The
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`°510 patent provides a system and method“for faster and more efficient data
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`communication within a communication network,” such as in the network
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`illustrated in Figure 3, reproduced below. /d. at 3:16—18, 4:5-7.
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`IPR2022-00862
`Patent 10,484,510 B2
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`
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`FIG. 3
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`Figure 3 is a schematic diagram depicting communication network 100
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`including a number of communication devices. Ex. 1001, 4:56-48. Client
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`102 is capable of communicating with peers 112, 114, and 116, as well as
`
`with one or more agents 122. /d. at 4:58-60. Web server 152 may be “a
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`typical HTTPserver, such as those being used to deliver content on any of
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`the many such servers on the Internet.” /d. at 4:65—5:2. Acceleration server
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`162 includesan acceleration server storage device 164 with an acceleration
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`server database, which “stores Internet Protocol (IP) addresses of
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`communication devices within the communication network 100 having
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`acceleration software stored therein.” /d. at 5:14—17.
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`In operation, a client may request a resource on the network, for
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`example, through the use of an Internet browser. Ex. 1001, 12:62—13:3. If
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`server 152 is the target of the request, the client sends the IP address of
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`server 152 to acceleration server 162.
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`/d. at 13:8—15. Acceleration server
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`162 then preparesa list of agents that can handle the request, which includes
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`8
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`IPR2022-00862
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`communication devices “that are currently online, and whose IP addressis
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`numerically close to the IP of the destination Web server 152.” /d. at
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`13:19-29. The client then sends the original request to the agentsin thelist
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`to find out which “is best suited to be the one agent that will assist with this
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`request.” /d. at 13:31—36. The connection established between the agent
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`and client may be a Transmission Control Protocol [TCP] connection.
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`/d.at
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`17:61-64.
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`Each agent respondsto the client with information as to “whether the
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`agent has seen a previous request for this resource that has been fulfilled,”
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`and “which can help the client to download the request information from
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`peers in the network.” Ex. 1001, 13:51-57. The client selects an agent
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`based on a numberof factors, and the selected agent determines whether
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`data stored in its memory or the memoryof the peers “still mirrors the
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`information that would have been received from the serveritself for this
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`request.” /d. at 13:62—14:1, 14:35—38. If the selected agent does not have
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`the necessary information to service a request, it may “load the information
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`directly from the server in order to be able to provide an answerto the
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`requesting client.” /d. at 14:62—67.
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`The °510 patent has twenty four claims. Claim 1, the only
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`independentclaim in the *510 patent,is illustrative of the claimed subject
`
`matter and is reproduced below, with bracketed designations added to the
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`limitations for reference purposes.
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`[pre] A method for use with a web server that respondsto
`1.
`Hypertext Transfer Protocol (HTTP) requests and stores a first content
`identified by a first content identifier, the method bya first client
`device comprising:
`
`[a] establishing a Transmission Control Protocol (TCP)
`connection with a secondserver;
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`IPR2022-00862
`Patent 10,484,510 B2
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`[b] sending, to the web server over an Internet, the first content
`identifier;
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`[c] receiving, the first content from the web server over the
`Internet in response to the sending of the first content identifier;
`and
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`[d] sending the receivedfirst content, to the second server over
`the established TCP connection, in responseto the receiving of
`the first content identifier.
`
`Ex. 1001, 19:18-31.
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`E. Asserted Grounds
`
`Petitioner asserts the following grounds of unpatentability. Pet. 10.
`
`1824
`102
`Crowds
`1,2, 6-11, 13, 15. 16,
`Crowds, RFC 2616
`103
`1824
`
`ae 10, 15-20, 22-|49, Border
`1, 6, 8-11, 13, 15-20,
`27-24
`103
`Border, RFC 2616
`1, 6-8, 13, 15, 16,
`MorphMix
`102
`18-24
`
`Fea 13, 15, 16,|193 MorphMix, RFC 2616
`
`
`
`
`
`
`
` 1, 6, 7, 13,8 15, 16,
`
`8 The Petition includes assertions for claim 13 under the Crowdsanticipation
`ground. Pet. 32. Accordingly, we include this claim in the summarytable,
`although not included in the Petition’s summary table. /d. at 10.
`” For the obviousness challenges under Crowds, Border, and MorpMix,
`Petitioner additionally refers to the basis in view of the “knowledgeof a
`POSITA.” Pet. 10. We understandthis to refer to a person of ordinary skill
`in the art’s understanding of the applied references and not to supplying
`missing limitations or incorporating an unspecified disclosure by reference
`to supply missing claim limitations.
`
`10
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`I. DISCRETIONARY DENIAL
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`In accordance with the Remand Decision, we consider discretionary
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`denial under Fintiv. Remand Dec. 7. Patent Owner contends the Board
`
`should deny the Petition under 35 U.S.C. § 314(a) because “the Fintiv
`
`factors overwhelmingly favor denial of institution.” Prelim. Resp. 16.
`
`The Board’s precedential decision in Apple Inc. v. Fintiv Inc.,
`
`IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (“Fintiv’),
`
`identifies a non-exclusive list of factors parties may consider addressing
`
`where there is a related, parallel district court action to determine whether
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`such action provides any basis for discretionary denial. Fintiv, Paper 11 at
`
`5—16. Those factors include:
`
`1. whether the court granted a stay or evidence exists that one
`may be granted if a proceeding1s 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 between issuesraised in the petition and in the
`parallel proceeding;
`
`5. whether the petitioner and the defendantin the parallel
`proceeding are the same party; and
`
`6. other circumstances that impact the Board’s exercise of
`discretion, including the merits.
`
`Id. at 5-6.
`
`On June 21, 2022, the Director of the United States Patent and
`
`Trademark Office issued an /nterim Procedure for Discretionary Denials in
`
`AIA Post-Grant Proceedings with Parallel District Court Litigation
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`11
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`IPR2022-00862
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`(“Memorandum’’)""to clarify “the [Board’s] current application of Fintiv to
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`discretionary institutions when there 1s parallel litigation” and to “confirm ]
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`that the precedential import of Fintiv 1s limited to the facts of that case.”
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`Memorandum 2. In particular, the Memorandum states that the Board
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`will not deny institution of an IPR or PGR under Fintiv (1) when
`a petition presents compelling evidence of unpatentability;
`(11) when a request for denial under Fintiv is based onaparallel
`ITC proceeding; or (111) where a petitioner stipulates not to
`pursuein a parallel district court proceeding the same groundsas
`in the petition or any grounds that could have reasonably been
`raised in the petition.
`
`Id. at 9.
`
`Patent Ownerasserts that the status of the 7eso litigation, where a jury
`
`verdict has been reached, should be consideredin the Fintiv evaluation.
`
`Prelim. Resp. 16. Patent Owner contends that factors 2—6 of Fintiv favor
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`denial and factor | is neutral. /d. at 16-24. Patent Owner arguesthat
`
`Crowdswasthe reference before the jury, and MorphMixis cumulative to
`
`Crowds. /d. at 19. Patent Owneralso asserts that Border cannot apply as an
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`invalidity reference because of the District’s Court’s claim construction. /d.
`
`Petitioner contendsthat the 7eso litigation concerned different claims,
`
`different prior art, and a different burden of proof comparedto the inter
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`partes review sought to be joined. Mot. 6—9. Petitioner asserts that Crowds
`
`wasthe only reference before the jury in that litigation. /d. at 7. Petitioner
`
`also asserts that the jury in the 7eso litigation did not have the benefit of the
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`District Court’s Supplemental Claim Construction Order (Ex. 1020), which
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`10 Available at: https://www.uspto.gov/sites/default/files/documents/interim
`_procdiscretionarydenialsaiaparalleldistrictcourtlitigationmemo2
`0220621 pdf
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`12
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`is available here and which “the Board found persuasive”in the 1493 IPR.
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`Id. at 9. Petitioner contends further that the 7eso litigation has been stayed
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`and, if and whenthestayis lifted, the defendants intendto file post-
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`judgment motions. /d. at 3.
`
`Weconsider the Director’s Memorandum, whichdirects that “the
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`PTAB will not rely on the Fintiv factors to discretionarily deny institution in
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`view of parallel district court litigation where a petition presents compelling
`
`evidence of unpatentability.”, Memorandum 2. The Memorandum explains
`
`that “where the PTAB determinesthat the information presented at the
`
`institution stage presents a compelling unpatentability challenge, that
`
`determination alone demonstrates that the PTAB should notdiscretionarily
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`deny institution under Fintiv.” Id. at 4-5 (emphasis added). The
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`Memorandum further explains that “[c]ompelling, meritorious challenges
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`are those in which the evidence, if unrebutted in trial, would plainly lead to a
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`conclusion that one or more claims are unpatentable by a preponderance of
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`the evidence.” /d.at 4.
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`On the current record, we determine that Petitioner’s invalidity
`
`groundspresent compelling unpatentability challenges. See infra Sections
`
`IV, D-I. In particular, in our view at this stage of the proceeding, the
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`Petition presents compelling evidence that three prior art references,
`
`including Border, which was not before the jury in the 7eso litigation,
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`anticipate many of the claims of the °510 patent. We determinethat
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`instituting inter partes review under these circumstances“strikes a balance
`
`among the competing concerns of avoiding potentially conflicting outcomes,
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`avoiding overburdening patent owners, and strengthening the patent system
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`by eliminating patents that are not robust and reliable.” Memorandum 5.
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`13
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`Accordingly, based upon our consideration of the evidence and
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`arguments presented in the Petition, and pursuantto the directive in the
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`Memorandum concerning compelling, meritorious challenges, we decline to
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`exercise our discretion under § 314(a) to deny institution of inter partes
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`review as Patent Owner requests.
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`IV. ANALYSIS
`
`A. Level of Ordinary Skill in the Art
`
`According to Petitioner, a person of ordinary skill in the pertinentart
`
`“would have at least a bachelor’s degree in Computer Scienceor related
`
`field (or equivalent experience), and two or more years’ experience working
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`with and programming networked computer systemsas of the Priority Date.”
`
`Pet. 15 (citing Ex. 1005 §§[ 25-27). Petitioner further states that “[s]uch a
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`person would be familiar with the underlying principles of Web, Internet, or
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`network communication, data transfer, and content sharing across networks,
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`including the HTTP and TCP/IP protocols.” /d.
`
`Patent Owner submits that a person of ordinary skill in the art “had a
`
`Master’s Degree or higherin the field of Electrical Engineering, Computer
`
`Engineering, or Computer Scienceor as of that time had a Bachelor’s
`
`Degree in the samefields and two or more years of experience in Internet
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`Communications.” Prelim. Resp. 35 (citing Ex. 2054 § 18). Patent Owner
`
`states that this definition and Petitioner’s definition of a person of ordinary
`
`skill in the art “are not materially different, at least in terms of affecting an
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`institution decision in this IPR.” /d. at 36 (citing Ex. 2033, 18; Ex. 2034,
`
`18).
`
`For the purposes of this Decision, we adopt Petitioner’s proposed
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`level of qualifications becauseit is consistent with the °510 patent and the
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`14
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`prior art at issue. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir.
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`2001) (prior art itself may reflect an appropriate level of skill).
`
`B. Claim Construction
`
`In this inter partes review, claims are construed using the same claim
`
`construction standard that would be used to construe the claims in a civil
`
`action under 35 U.S.C. § 282(b). 37 C.F.R. § 42.100(b) (2022). Under the
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`principles set forth by our reviewing court, the “words of a claim ‘are
`
`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
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`the invention. Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005)
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`(en banc) (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582
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`(Fed. Cir. 1996)). “In determining the meaning ofthe disputed claim
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`limitation, we look principally to the intrinsic evidence of record, examining
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`the claim languageitself, the written description, and the prosecution
`
`history, if in evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek,
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`Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at
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`1312-17).
`
`Petitioner asserts that the district court’s constructions in Luminati
`
`Networks Ltd. v. Teso LT, UAB,et al., No. 2:19-cv-395 (E.D. Tex.) (Teso
`
`Litigation), are appropriate in this case. Pet. 15. In particular, Petitioner
`
`points to two claim construction orders in that case—the “Teso Order” (Ex.
`
`1017) and the “7eso Supplemental Order” (Ex. 1020). /d. at 15—20. In the
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`Teso litigation, the parties agreed to certain constructions adopted by the
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`district court. Ex. 1017, 9. Accordingly, the district court construed the
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`preamble of claim 1 of the ’510 patent to be limiting, and construed certain
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`other terms to have their “plain and ordinary meaning.” /d.
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`In addition, the
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`district court construed certain disputed terms, including “client device” and
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`“second server.” /d. at 12-14. The district court construed “client device”
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`as “communication devicethat is operating in the role of a client.” /d. at 12.
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`The district court initially construed “second server”as “server that is not
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`the client device.” /d. at 14. Later, the court granted the defendants’ request
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`for clarification as to the scope of this construction, and determined that a
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`“second server”is “a device that is operating in the role of a server and that
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`is not the first client device.” Ex. 1020, 8, 11.
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`Patent Ownerproposesthat “the correct construction for “second
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`server’ is a ‘serverthat is not [] a client device.’” Prelim. Resp. 36 (citing
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`Ex. 2054 4 71). Patent Ownerarguesthat the district court was incorrect and
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`a person of ordinary skill would understand that a client device is not a
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`server. /d. at 43-64.
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`Patent Owneralso asserts that in the 7eso litigation the term “client
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`device” was construed as an “communication device operating in the role of
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`a client,” and asserts that a ““communication device’ in the context of the
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`specification is not simply any device that communicates over the Internet”
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`Prelim. Resp. 38 (citing Ex. 2054 § 38). Patent Owner arguesthat “the
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`Court has repeatedly emphasized that a client device is not merely a general-
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`purpose computer.” /d. Patent Owner contendsthat “in the context of the
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`specification, a client device would be understood to be, more specifically, a
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`consumer computer like a smartphone,tablet, laptop, or personal computer.”
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`Id. at 40. Patent Ownerpresents further arguments on this issue, noting
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`disagreements with the district court, and referring to the prosecution history
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`and extrinsic evidence. /d. at 40—43.
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`For the purposesof this decision, we adoptthe district court’s
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`construction for the “second server”as clarified in the 7eso Supplemental
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`Order. Ex. 1020, 11. Thus, we adoptthe district court’s original
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`construction, with the clarification that the second serveris “‘a device that 1s
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`operating in the role of a server and that is not the first client device.” Jd. at
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`8. Specifically, we adopt the district court’s clarification that “a component
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`can be configured to operate in different roles—so longas it does not
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`simultaneously serve as more than one of: the client device, the first
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`server/second server, and the web server.” /d. at 10 (internal quotation
`
`marks omitted). Additionally, we adopt the district court construction of
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`“client device” as “communication device that 1s operating in the role of a
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`client.” Ex. 1017, 12.
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`Weonly construe terms that are necessary to resolve disputes. See
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`Nidec Motor Corp. v. Zhongshan Broad Ocean MotorCo., 868 F.3d 1013,
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`1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d
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`795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in
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`controversy, and only to the extent necessary to resolve the controversy.”’).
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`Atthis stage, no other terms require explicit construction. To the extent we
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`need to interpret any other terms, we will do so in the context of the analysis
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`of the prior art that follows.
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`C. Principles ofLaw
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`A claim is unpatentable under 35 U.S.C. § 102 if a prior art reference
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`discloses each and every limitation of the claimed invention, either explicitly
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`or inherently. Glaxo Inc. v. Novopharm Ltd., 52 F.3d 1043, 1047 (Fed. Cir.
`
`1995); see MEHL/Biophile Int'l Corp. v. Milgraum, 192 F.3d 1362, 1365
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`(Fed. Cir. 1999) (“To anticipate, a claim a prior art reference must disclose
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`every limitation of the claimed invention .
`
`. .”, any limitation not explicitly
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`taught must be inherently taught and would be so understood by a person
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`experienced in the field); In re Baxter Travenol Labs., 952 F.2d 388, 390
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`(Fed. Cir. 1991) (the dispositive question is “whether one skilled in the art
`
`would reasonably understand or infer” that a reference teaches or discloses
`
`all of the limitations of the claimed invention).
`
`A patent claim is unpatentable under 35 U.S.C. 8 103 if “the
`
`differences between the claimed invention and the prior art are such that the
`
`claimed invention as a whole would have been obvious before the effective
`
`date of the claimed invention to a person having ordinary skill in the art to
`
`which said subject matter pertains.” 35 U.S.C. § 103 (2011); see also KSR
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`Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
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`obviousnessis resolved on the basis of underlying factual determinations
`
`including:
`
`(1) the scope and content of the prior art; (2) any differences
`
`between the claimed subject matter and the priorart; (3) the level of ordinary
`
`skill in the art; and (4) when in evidence, objective indicia of
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`nonobviousness.'! Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966).
`
`D. Description of the Principal Prior Art References
`
`1. Crowds (Ex. 1006)
`
`Crowdsis an article that “introduce[s] a new approachfor increasing
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`the privacy of web transactions.” Ex. 1006, 2.!* In this approach, a user
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`joins a “crowd”of other users, wherein the user’s request to a web serveris
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`'T No evidencerelating to objective indicia of nonobviousnessis presented
`by the parties.
`Unless otherwise stated,citations to exhibits use the page numbers
`assigned by the parties and not the original page numbers.
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`passed to a random memberof the crowd,and possibly forwarded to one or
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`more other members, prior to being submitted to the end server. /d.
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`In this
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`way, “[w]hen the request is eventually submitted, it is submitted by a
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`random member, thus preventing the end server from identifying its true
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`initiator.” /d. In Crowds,“[a] user is represented by a process on her
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`computer called ajondo (pronounced ‘John Doe’ and meant to convey the
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`image of a faceless participant).” /d. at 8. “When the jondois started, it
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`contacts a server called the b/ender to request admittance to the crowd.” /d.
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`Exemplary paths for web requests from crowdusers are shown in Figure 2
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`(id. at 9), reproduced below:
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`Crowd
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`Web Servers
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`Fig. 2. Paths in a crowd (the initiator and web server of cach path are labeled the same).
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`In Figure 2 of Crowds, above, when a jondo receives a user request from a
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`browser,it “initiates the establishment of a random path ofjondos that
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`catries its users’ transactions to and from their intended webservers.” Ex.
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`1006, 8. For example, the paths in Figure 2 among the jondoslabeled 1 to 6
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`are as follows: “1 — 5 — server; 2 — 6 — 2 —> server;3 ~ 1—-6—-
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`server; 4 — 4 — server; 5 — 4 — 6 — server; and 6 — 3 — server.” /d.
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`“TS]erver replies traverse the same path as the requests, only in reverse.” /d.
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`at 9.
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`2. Border (Ex. 1012)
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`Borderis a patenttitled “System and Method of Reading Ahead of
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`Objects for Delivery to an HTTP Proxy Server.” Ex. 1012, code (54).
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`Border describes “a system for retrieving web content.” /d. at code (57). In
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`Border, “[a] downstream proxy server receives a URL request message from
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`a web browser. /d. at 3:35—36. Thereafter, “[a]n upstream proxy server
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`receives the URL request message from the downstream proxy server” and
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`“selectively forwards the URL request message to a web server and receives
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`the URL content from the web server.” /d. at 3:38—42. Then, “[t]he
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`upstream proxy server forwards the URL content to the downstream proxy
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`server.” /d. at 3:42-43. An exemplary system employing downstream and
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`upstream proxy servers for accessing a webserver is shown in Figure 1,
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`reproduced below:
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`FIG. 7
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`443
`
`¢
`IP NETWORK
`*
`7 (E.G, INTERNET) ~~
`
`—
`
`107i
`
`SERVER
`
` UPSTREAM
`
`t
`
`“TN
`
`oe
`
`if
`|
`
`~*~ A
` pOWN
`SERVER
`}
`P-TCP
`c
`STREAM
`)
`CACHE .
`( LN
`oe a i
`\
`
`7
`
`~ 105
`
`“
`
`fy
`
`at
`
`
`
`
`Asdepicted in Border’s Figure 1, user station 101, for example, a personal
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`computer, uses standard web browser 103. Ex. 1012, 3:55-61. Userstation
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`101 is connected to downstream proxy server 105, which communicates
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`over network 111 with upstream proxy server 107.
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`/d. at 3:61-66. Proxy
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`servers 105 and 107 are HTTP proxy servers with HTTP caches 115 and
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`117.
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`/d. at 4:8-11. Upstream proxy server 107 is connected to web server
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`109 through IP network 113, for example, the Internet. /d. at 4:5—7. In this
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`system, proxy servers 105 and 107 “act as an intermediary between one or
`
`more browsers and many webservers(e.g., server 109).” /d. at 4:30-31.
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`3. MorphMix (Ex. 1008)
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`MorphMixis a doctoral thesis that identifies the lack of anonymity on
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`the Internet as a problem that “limits the privacy protection of Internet
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`users.” Ex. 1008, Abstract. Accordingly, MorphMix is focused on
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`“achieving anonymousInternet access for low-latency applications such as
`
`web browsing.” /d. MorphMix describes “a peer-to-peer-based mix
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`network” where “[e]very node joining the system canitself establish circuits
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`IPR2022-00862
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`via other nodes to access a server anonymously, but can also be part of
`
`circuits established by
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