`OV
`Trrals@py
`57172.7822
`
`Paper 18
`Entered: December 9, 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.
`
`IPR2022-01110
`Patent 10,484,510 B2
`
`Before THOMAS L. GIANNETTI, SHEILA F. McSHANE,and
`RUSSELLE. CASS, Administrative Patent Judges
`
`McSHANE,Administrative Patent Judge.
`
`DECISION
`Denying Institution of /nter Partes Review
`3S US.C. § 314
`
`Denying Motion for Joinder
`35 US.C. § 315(C); 37 CER. § 42.122
`
`
`
`IPR2022-01110
`Patent 10,484,510 B2
`
`I. INTRODUCTION
`
`Code200, UAB, Teso LT, UAB, Metacluster LT, UAB, Oxysales,
`
`UAB, and Coretech LT, UAB (‘‘Petitioner” or “Code200”) filed a Petition
`
`for inter partes review of claims 1—12 and 15—24 of U.S. Patent
`
`No. 10,484,510 B2 (Ex. 1001, “the ’510 patent”). Paper 1 (“Pet.”). Patent
`
`Ownerfiled a Preliminary Response. Paper 14 (Prelim. Resp.”’). Petitioner
`
`also filed a Reply to Patent Owner’s Preliminary Response. Paper 15 (Pet.
`
`Reply). Patent Ownerthen filed a Sur-reply to Petitioner’s Reply. Paper 17
`
`(PO Sur-reply). With the Petition, Petitioner also filed a Motion for Joinder
`
`with Zhe Data Company Technologies Inc. v. Bright Data Ltd. , 1PR2022-
`
`00138 (“the 138 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 12 (“Mot.
`
`Reply”).
`
`Wehaveauthority under 35 U.S.C. § 314(a), which provides that an
`
`inter partes review maynotbeinstituted “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 notbeinstituted 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 of the petitioner is served with a complaint alleging
`
`infringement of the patent.” Section 315(b) further provides that “[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
`
`
`
`IPR2022-01110
`Patent 10,484,510 B2
`
`Director .
`
`.
`
`. determines warrants the institution of an inter partes review
`
`under section 314.”
`
`For the reasons described below, we do notinstitute an inter partes
`
`review of the challenged claims and we deny Petitioner’s Motion for
`
`Joinder.
`
`Il. BACKGROUND
`
`A. Related Matters
`
`The 510 patent is currently the subject of several proceedings
`
`pending before the USPTO andin district court. We discuss these
`
`proceedings below.
`
`B. Real Parties-in-Interest
`
`Petitioner identifies Code200, UAB; Teso LT, UAB; Metacluster LT;
`
`UAB, Oxysales; UAB; and coretech LT, UAB asthe real parties-in-interest.
`
`Pet. xii.
`
`Patent Owneridentifies Bright Data Ltd. as the real party-in-interest.
`
`Paper10, 1.
`
`C. The ’510 Patent
`
`The *510 patent is titled “System Providing Faster And More Efficient
`
`Data Communication” and issued on November 19, 2019 from an
`
`application filed on February 17, 2019. Ex. 1001, codes (22), (45), (54).
`
`The *510 patent is directed to addressing the “need for a new method ofdata
`
`transfer that 1s fast for the consumer, cheap for the content distributor and
`
`does not require infrastructure investment for ISPs.” /d. at 1:57-59. The
`
`°510 patent provides a system and method“for faster and more efficient data
`
`communication within a communication network.” /d. at 3:16—18, 4:5-7.
`
`
`
`IPR2022-01110
`Patent 10,484,510 B2
`
`D. Asserted Grounds of Unpatentability
`
`Petitioner challenges the patentability of claims of the ’510 patent on
`
`the following grounds, which are the same as those asserted in [PR2022-
`
`00138, the case that Petitioner seeks to join as a petitioner.
`
`
`102(b)
`Plamondon?
`
`24
`103(a)
`Plamondon
`
`8,11
`103(a)
`Plamondon, RFC 2616?
`
`
`
`
`
` 1, 10, 12, 15-23
`
`8,9
`
`2
`
`2-5
`
`103(a)
`
`103(a)
`
`Plamondon, RFC 1122+
`
`Plamondon, IEEE 802.11-2007°
`
`103(a)
`
`Plamondon,Price®
`
`' 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, pre-AIA versions of §§ 102 and
`103 apply. See Ex. 1001, code (60).
`2 U.S. Patent Application Publication US 2008/0228938 A1, published
`September 18, 2008 (Ex. 1010).
`3 Hypertext Transfer Protocol—HTTP/1.1, Network Working Group, RFC
`2616, The Internet Society, 1999 (Ex. 1018).
`+ Requirements for Internet Hosts-Communication Layers, Network
`Working Group, RFC 1122, Internet Engineering Task Force, 1989
`(Ex. 1014).
`> 802.11-2007-IEEEStandard for Information Technology—
`Telecommunications 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).
`° U.S. Patent Application Publication US 2006/0026304 A1, published
`February 2, 2006 (Ex. 1023).
`
`
`
`IPR2022-01110
`Patent 10,484,510 B2
`
`
`Plamondon,Kozat’
`
`
`
`
`103(a)
`
`Pet. 3.
`
`II. DISCUSSION ON INSTITUTION
`
`A. Background
`
`ThePetition in this proceeding is a “me-too” petition asserting the
`
`same groundsof unpatentability as those upon which weinstituted review in
`
`the 138 IPR. Consistent with this, Petitioner contends that the Petition “is
`
`substantially identical to the petition in the TDC IPR [The Data Company
`
`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 fact that it is filed by a different petitioner.” Pet. 2 (citing
`
`Ex. 1080).
`
`As noted above, the *510 patent is currently the subject of several
`
`proceedings before the USPTOandin district court. More specifically, there
`
`are currently three IPRs, one ex parte reexamination, and onedistrict court
`
`proceeding already pending involving challenges to the °510 patent.
`
`Petitioner is involved in the pending district court proceeding and one
`
`of the three IPRs. Another of these proceedingsis the 138 IPR, which
`
`Petitioner seeks to join as a party.
`
`We summarize those proceedings below.
`
`7U.S. Patent Application Publication US 2009/0055471 A1, published
`February 26, 2009 (Ex. 1024).
`
`
`
`IPR2022-01110
`Patent 10,484,510 B2
`
`1. Teso District Court Litigation
`
`The parties indicate that there are several related district court
`
`litigations involving the *510 patent, including Bright Data Ltd. v. Teso LT,
`
`UAB, 2:19-cv-00395-JRG (E.D. Tex.) (“the 7eso Litigation”). Pet. xin;
`
`Prelim. Resp. 3. In the 7eso Litigation, Bright Data Ltd., Patent Owner,
`
`sued Teso LT, as well as other membersof the petitioner group here (UAB,
`
`Metacluster LT, UAB, Oxysales, UAB, and Coretech LT, UAB) for
`
`infringement of the *510 patent, among other patents. Mot. 2. The issue of
`
`whetherclaims | and 22 of the ’510 patent are invalid was presented to the
`
`jury. /d. at 3. On November5, 2021, the jury foundthat that the defendants
`
`did not prove that these claims were invalid by clear and convincing
`
`evidence. /d.; Ex. 1081, 5. Currently, the 7eso litigation is stayed. Mot. 3.
`
`2. The Ex Parte Patent Reexamination
`
`The *510 patentis the subject of an ex parte reexamination, Control
`
`No. 90/014,876, requested by Petitioner, which has been stayed. Mot. 4-5;
`
`Opp. 1.
`
`3. 1493 IPR
`
`On September 3, 2021, NetNut filed a petition seeking inter partes
`
`review of the °510 patent. IPR2021-01493 (“the 1493 IPR”), Paper 2.
`
`
`
`IPR2022-01110
`Patent 10,484,510 B2
`
`Petitioner’s principal references were Crowds,® Border,’ and
`
`MorphMix.!° 1493 IPR, Paper 2 at 9.
`
`On March 21, 2022, we instituted inter partes review of claims1, 2,
`
`6-11, 13, and 15—24 of the ’510 patent. 1493 IPR, Paper 11 at 7, 42.
`
`The 1493 IPRpetition wasthe first that we granted for inter partes
`
`review of the ’510 patent.'! After institution, Patent Owner reached a
`
`settlement with NetNut, and as a result, on May 27, 2022, NetNut was
`
`terminated as petitioner in the 1493 IPR. 1493 IPR, Paper 19. The 1493
`
`IPR proceeding, however, wasnot terminated. Instead, as is discussed in the
`
`next section, Code200 wasjoined as a party to the 1493 IPR and is now the
`
`only petitioner in the case.
`
`4. 862 IPR
`
`On April 18, 2022, Petitioner filed a “me-too” petition in [PR2022-
`
`00862 (“the 862 IPR”), asserting the same grounds of unpatentability based
`
`on Crowds, Border, and MorphMix, the references upon which weinstituted
`
`review in the 1493 IPR. See 862 IPR, Paper 1,2, 10. With the petition,
`
`Petitioner filed a motion to join the 1493 IPR. /d., Paper7.
`
`® Michael Reiter & Aviel Rubin, Crowds: Anonymityfor Web Transactions,
`ACMTransactions on Information and System Security, Vol. 1, No. 1 (Nov.
`1998) (Ex. 1006, “Crowds”).
`° U.S. Patent No. 6,795,848 B1 (Sept. 21, 2004) (Ex. 1012, “Border”).
`10 Marc Rennhard, MorphMix — A Peer-to-Peer-based System for
`Anonymous Internet Access (2004) (Ex. 1008, “MorphMix”).
`'l A previouspetition filed by Petitioner challenging certain claims of the
`°510 patent was denied on discretionary grounds. Mot. 4; IPR2020-01358,
`Paper11.
`
`
`
`IPR2022-01110
`Patent 10,484,510 B2
`
`On October 19, 2022, the panel in the 862 IPR issued a decision
`
`granting institution of inter partes review in the 862 IPR and granting
`
`Petitioner’s motion to join the 1493 IPR. IPR862, Paper 19.”
`
`Because NetNut, the sole petitioner in the 1493 IPR, had been
`
`terminated (see supra), the effect of this joinder wasto place Petitioner in
`
`control of the 1493 IPR.
`
`5. 138 IPR
`
`On November3, 2021, The Data Company TechnologiesInc. filed a
`
`petition in the 138 IPR, challenging certain claims of the ’510 patent based
`
`on the Plamondonreference. See supra. On June 1, 2022, we granted the
`
`petition and instituted a secondinter partes review of the °510 patent. 138
`
`IPR, Paper 12.
`
`6. 916 IPR
`
`Major Data UAB filed a petition challenging the 510 patent on April
`
`21,2022. IPR2022-00916, Paper 1. Major Data also sought joinder with
`
`the 1493 IPR. /d., Paper 3. On July 29, 2022, we denied the motion for
`
`joinder. /d., Paper 14. However, as Major Data wasnot time-barred under
`
`35 U.S.C. § 315(b), on September 15, 2022, we granted the petition and
`
`instituted a third inter partes review of the °510 patent. /d., Paper 18.
`
`” The Director of the U.S. Patent and Trademark Office, sua sponte, vacated
`the panel’s initial decision denying institution and remanded the proceeding
`to the panel for reconsideration. 862 IPR, Paper 18. On remand,the panel
`granted the motion for joinder andinstituted inter partes review. Id., Paper
`19. The panel denied Patent Owner’s request for rehearing of that decision.
`Id., Paper 25.
`
`
`
`IPR2022-01110
`Patent 10,484,510 B2
`
`B. Discussion
`
`Patent Owner argues we should exercise our discretion under 35
`
`U.S.C. § 314(a) to deny inter partes review. Prelim Resp. 5—17. More
`
`specifically, Patent Owner argues for discretionary denial of the Petition
`
`under Fintivand General Plastic.'* Patent Ownerassertsthat “Petitioner[]|
`
`did not rank their serial petitions pending against the “510 Patent.” /d. at 9.
`
`Patent Ownerfurther contends that Petitioner also did not argue whether
`
`Plamondonis more material to the validity of the °510 patent than Crowds,
`
`Morphmix, or Border. /d. Patent Owneralso notes that Petitioner asserts
`
`that the issue of relative materiality is “irrelevant.” /d. (citing Mot. Reply 4,
`
`n.1).
`
`Ourdiscretionary determination of whetherto institute review takes
`
`into consideration guidance in the Consolidated Trial Practice Guide
`
`(TPG)!° which provides guidance on handlingsituations involving multiple
`
`petitions by a single petitioner challenging the samepatent claims:
`
`Based on the Board’s experience, one petition should be
`sufficient to challenge the claims of a patent in mostsituations.
`.. .. In addition, multiple petitions by a petitioner are not
`necessary in the vast majority of cases. To date, a substantial
`majority of patents have been challenged with a single petition.
`
`TPG 59 (emphasis added). The Consolidated Trial Practice Guide
`
`continues: “[fJurther, based on prior experience, the Board findsit unlikely
`
`'3 Apple Inc. v. Fintiv Inc., IPR2020-00019, Paper 11 (PTAB March20,
`2020) (precedential) (“Fintiv’).
`4 General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha, PR2016-
`01357, Paper 19 (PTAB Sept. 6, 2017) (precedential as to § H.B.4.1)
`(“General Plastic’).
`'S Available at https://go.usa.gov/xpvPF
`
`9
`
`
`
`IPR2022-01110
`Patent 10,484,510 B2
`
`that circumstanceswill arise where three or morepetitions by a petitioner
`
`with respect to a particular patent will be appropriate.” /d.
`
`While recognizing that multiple petitions by the samepetitioner will
`
`be “rare,” the Consolidated Trial Practice Guide provides a procedure to
`
`follow when morethan one petition is deemed necessary. TPG 59-60. It
`
`requires that petitioner provide “(1) a ranking of the petitions in the order in
`
`whichit wishes the Board to consider the merits, if the Board usesits
`
`discretion to institute any of the petitions, and (2) a succinct explanation of
`
`the differences between the petitions, why the issues addressed by the
`
`differences are material, and why the Board should exerciseits discretion to
`
`institute additional petitions if it identifies one petition that satisfies
`
`petitioner’s burden under 35 U.S.C. § 314(a).” Jd. at 60.
`
`Under the Consolidated Trial Practice Guide guidance, a party
`
`seeking to maintain multiple challenges to the same patent claims carries a
`
`burden of establishing that multiple petitions are necessary. Petitioner’s
`
`main argumentfor inter partes review institution and joinderis that, “it will
`
`represent Petitioner’s first and only IPR directed to the *510 patent that will
`
`have beeninstituted.” Mot. Reply 2. Although werecognize that at the time
`
`of Petitioner’s statement it was true, since the filing of the Petition, we have
`
`granted the petition in the 862 IPR, and joined Petitioner to the 1493 IPR,
`
`where Code 200 is nowthesole petitioner and controls the proceedings.
`
`Petitioner, Code200, has not explained why Plamondon is more material to
`
`the validity of the 510 patent than Crowds, Morphmix, or Border presented
`
`in the 1493 IPR, nor explained why Petitioner needs more than oneinstituted
`
`proceeding. See TPG 59 (explaining why more than onepetition on
`
`10
`
`
`
`IPR2022-01110
`Patent 10,484,510 B2
`
`different grounds could be required). In short, no explanation has been
`
`provided as to whythe 1493 IPRis not a sufficient challenge.
`
`Additionally, we note that besides the Code200 challenge of the *510
`
`patent in the 1493 IPR,there are other several pending proceedings
`
`challenging claims"® of the same patent: The Data Companychallengesin
`
`the 138 IPR, the Major Data challenges in the 916 IPR, and the ex parte
`
`reexamination. Additionally, Petitioner has more recently filed another
`
`petition challenging the claims of the °510 patent, IPR2023-00039, which
`
`seeks joinder with the 916 IPR.'”
`
`In considering a balanced assessmentofall relevant circumstances in
`
`this proceedings, we are not persuadedthat institution of this case serves to
`
`promotethe efficient administration of the inter partes review process. See
`
`TPG 56. Accordingly, in consideration of the circumstances of this case, we
`
`exercise our discretion under § 314(a) to deny institution of review of inter
`
`partes review.
`
`IV. DENIAL OF MOTION FOR JOINDER
`
`Patent Ownerasserts that Petitioner was sued for infringementof the
`
`°510 patent in December 2019, and therefore, “[w]ithout joinder, the petition
`
`is time-barred under 35 U.S.C. § 315(b).” Opp. 1. Patent Owner arguesthat
`
`the time bar should be a consideration for the exercise of our discretion to
`
`deny joinder. /d. at 7.
`
`'6 All relevant IPR petitions challenge the sole independent claim 1 and at
`least the following dependent claims 2—13 and 15—24. Theex parte
`reexamination involves claim | and dependentclaims 2, 6-11, 13, and 15—
`24.
`'7 A decision on institution and joinder in IPR2023-00039 is pending and the
`decision in that proceedings will be evaluated based on its respective record.
`
`11
`
`
`
`IPR2022-01110
`Patent 10,484,510 B2
`
`Joinder may be authorized when warranted, but the decision to grant
`
`joinderis discretionary. Kyocera Corp. v. Softview LLC, IPR2013-00004,
`
`Paper 15 at 3 (PTAB Apr. 24, 2013); TPG 76. Our Trial Practice Guide
`
`states that “when an otherwise time-barred petitioner requests same party
`
`and/or issue joinder, the Board may exerciseits discretion to permit joinder,
`
`but will do so only where fairness requires it and to avoid undue prejudice to
`
`a party.” TPG. at 75—76 (citing Proppant Express Invs. v. Oren Techs.,
`
`IPR2018-00914, Paper 38 at 3—4 (PTAB Mar. 13, 2019) (precedential)).
`
`Here, considering that Petitioner has the control and opportunity to challenge
`
`the °510 patent in the 1493 IPR, as discussed above, we determine that there
`
`is no undueprejudiceto Petitioner. Accordingly, we deny Petitioner’s
`
`Motion for Joinder.
`
`V. ORDER
`
`Accordingly,it is:
`
`ORDEREDthat the Motion for Joinder is denied; and
`
`FURTHER ORDEREDthatthe Petition is deniedasto all challenged
`
`claims and grounds and notrial is instituted.
`
`12
`
`
`
`IPR2022-01110
`Patent 10,484,510 B2
`
`PETITIONER:
`
`George 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
`
`13
`
`
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