throbber
Trials@uspto.gov
`571-272-7822
`
`Paper 17
`Entered: July 25, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`CODE200, UAB; TESO LT, UAB; METACLUSTERLT,
`UAB;OXYSALES, UAB; AND CORETECH LT, UAB,
`Petitioner,
`
`Vv.
`
`BRIGHT DATALTD.,
`Patent Owner.
`
`IPR2022-00862
`Patent 10,484,510 B2
`
`Before THOMASL. GIANNETTI, SHEILA F. McSHANE,and
`RUSSELLE. CASS, Administrative Patent Judges
`
`McSHANE, Administrative Patent Judge.
`
`DECISION °
`DenyingInstitution of Inter Partes Review
`35 U.S.C. § 314
`
`Denying Motion for Jomnder
`35 U.S.C. § 315(c); 37 CFR. § 42,122
`
`

`

`IPR2022-00862
`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 interpartes review of claims 1, 2, 6-11, 13, and 15-24 of US. Patent
`No. 10,484,510 B2 (Ex. 1001, “the ’510 patent”). Paper 1 (“Pet.”). Patent
`Ownerfiled a Preliminary Response. Paper 15 (Prelim. Resp.”). With the
`Petition, Petitioner also filed a Motion for Joinder with NetNut Ltd. v. Bright
`
`Data Ltd., IPR2021-01493 (“the 1493 IPR” ). Paper 7 (“Mot.”). Bright
`
`Data Ltd. (“Patent Owner”) filed an Opposition to the Motion for Joinder.
`
`Paper 11 (“Opp.”). Petitioner filed a Reply to Patent Owner’s Opposition.
`
`Paper 13 (“Reply”).
`
`Wehaveauthority under 35 U.S.C. § 314(a), which provides that an
`
`inter partes review may not beinstituted “unless .
`
`.
`
`. there is a reasonable
`
`likelihood that the petitioner would prevail with respect to at least 1 of the
`
`claims challengedin 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 whichthe petitioner, real party in
`
`interest, or privy of the petitioner is served with a complaint alleging
`
`infringement of the patent.” Section 315(b) further providesthat “[t]he time
`
`limitation set forth in the preceding sentence shall not apply to a request for
`
`joinder under subsection (c).” Additionally, under 35 U.S.C. § 315(c), “the
`
`Director, in his or her discretion, may join as a party to that inter partes
`review any person whoproperly files a petition under section 311 that the.
`
`Director . .. determines warrants the institution of an inter partes review
`
`undersection 314.”
`
`

`

`IPR2022-00862
`Patent 10,484,510 B2
`
`_ Forthe reasons described below, we do not institute an interpartes
`review of the challenged claims and we deny Petitioner’s Motion for
`
`Joinder.
`
`Il. RELATED PROCEEDINGS
`
`The ’510 patent has been the subject of numerous proceedings in
`
`district court and the Board. We summarize these proceedings below.
`
`A. Teso Litigation
`Theparties indicate that there are severalrelated district court
`litigations involving the ’510 patent, including, mostparticularly, Bright
`
`Data Ltd. v. Teso LT, UAB, 2:19-cv-00395-JRG (E.D. Tex.) (“the Teso
`litigation”). Pet. 3; Mot. 2; Paper 16 (UpdatedMandatory Notices), 3. In
`the Teso litigation, Bright Data Ltd., the Patent Ownerhere, sued
`defendants, Teso LT, UAB, Metacluster LT, UAB, Oxysales, UAB,and
`Coretech LT, UAB, someofthe petitioner group here, for infringement of
`
`the °510 patent, as well as U.S. Patent Nos. 10,257,319 and 10,469,614.
`- Mot. 2. In the Tesolitigation, a jury trial was conducted, and the issue of
`whether claims 1 and 22 of the 510 patent were invalid in view of the
`
`Crowdsreference asserted here (see infra) was presented by the defendants.
`Id. The jury found that that the defendants did not prove that these claims
`were invalid by clear and convincing evidence. Jd.
`|
`B. 1358 IPR
`
`The parties identify IPR2020-01358 (“the previously-filed 1358
`IPR”), filed by Petitioner, which challenged certain claims of the *510 :
`patent. Mot. 3; Paper 16, 1; Opp. 8. The previously-filed 1358 IPR was
`denied on discretionary grounds. Mot. 3.
`
`

`

`IPR2022-00862
`Patent 10,484,510 B2
`
`C.
`
`’510 Patent Reexamination
`
`Theparties also indicate that the ’510 patent is the subject of an ex
`
`parte reexamination, Control No. 90/014,876, which has been stayed. Mot.
`
`5; Paper 16, 2.
`
`D. 1493 IPR
`
`In the 1493 IPR, the case to which Petitioner is seeking joinder, we
`
`instituted an inter partes review of claims 1, 2, 6-11, 13, and 15—24of the
`
`’510 patent on the following grounds:
`
`Claims Challenged|35 U.S.C. §! Reference(s)
`
`1, 6, 7, 137, 15, 16,
`102(b)
`Crowds?
`18-24
`te ee| 103¢a)
`Crowds, RFC 26164
`1, 6, 220. 23,
`102(b)
`Border?
`1, 6, 8-11, 13, 15-20,
`103(a) Border, RFC 2616
`
`
`22-24
`
`' 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 claimspriority to a provisional
`application that was filed before this date, with Petitioner not contesting that
`priority, the pre-AIJA versions of §§ 102 and 103 apply. See Ex. 1001, code
`(60); Pet. 17.
`* The Petition includes assertions for claim 13 under the Crowdsanticipation
`ground. Pet. 33. Accordingly, we include this claim in the summary table,
`although not includedin the Petition’s summarytable. Jd. at 9.
`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).
`
`4
`
`

`

`IPR2022-00862
`Patent 10,484,510 B2
`
`
`
`
`
`
`
`Claims Challenged|35 U.S.C.§' | Reference(s)
`1, 6-8, 13, 15, 16,
`ix®
`102(b)
`1834
`MorphMix
`1 Og eT)
`103(@)
`MorphMix, RFC 2616
`
`
`NetNut Lid. v. Bright Data Ltd., IPR2021-001493, Paper 11 at 7,42 (PTAB
`Mar. 21, 2022) (“1493 Decision” or “1493 Dec.”).
`
`
`
`
`
`
`Patent Ownersettled with NetNut in the 1493 IPR, and NetNut has
`
`been terminated as Petitioner in that action. 1493 IPR, Paper 19.
`
`E. 1110 IPR
`
`There is also a newly-filed petition in pending IPR2022-01110, which
`
`challenges claims of the 510 patent based on Plamondon(“the 1110 IPR”),
`
`filed by Petitioner. Code200, UAB v. Bright Data Ltd., [PR2022-01110,
`Paper 1, 3. In the 1110 IPR,Petitioner seeks joinder with previously-
`instituted case IPR2022-00138 (‘the 138 IPR”), which wasfiled by The
`
`Data Company Technologies Inc. Paper 7. The Board has not yet
`
`determined whetherto grant institution and joinder in the 1110 IPR.
`F. 138 IPR
`|
`|
`
`In the 138 IPR, The Data Company TechnologiesInc. filed a petition
`
`challenging certain claims of the 510 patent based on Plamondon. As
`
`noted, institution was granted in the 138 IPR and Petitioner seeksto join it in
`the 1110 IPR.
`
`G. Major Data IPR
`
`Thereis also another pending inter partes review challenge to the
`’510 patent, filed by Major Data UAB, whichalso seeks joinder with the
`
`© Marc Rennhard, MorphMix—A Peer-to-Peer-based System for
`AnonymousInternet Access (2004) (Ph.D. dissertation, Swiss Federal.
`Institute of Technology) (Ex. 1008).
`
`

`

`IPR2022-00862
`Patent 10,484,510 B2
`
`1493 IPR. Major Data UAB v. Bright Data Ltd., IPR2022-00916, Paper 3
`(PTAB April 21, 2022) (“the Major Data IPR”). No decision has been
`
`rendered on institution or the joinder motion in that case.
`
`IN. DISCUSSION
`
`|
`A. Background
`The Petition in this proceeding is a “me-too” petition asserting the
`
`same groundsof unpatentability as those upon which weinstituted review in
`the 1493 IPR. ‘Compare Pet. 2, with 1493 Dec. 7, 42. Consistent with this,
`Petitioner contendsthat the Petition is “is substantially identical to the.
`
`petition in the NetNut IPR [1493 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. 1024).
`
`Petitioner requests that weinstitute inter partes review for the same
`
`reasons weinstituted review in the 1493IPR and seeks joinder with that
`
`IPR. Mot. 1. Petitioner asserts that the request for joinder has been timely
`
`made. Jd. at 6. Petitioner contends that the following factors identified in
`
`Kyocera Corp. v. Softview LLC favor joinder: (1) the reasons why joinderis
`
`appropriate; (2) whetherthe petition raises any new grounds of
`
`unpatentability; (3) any impact joinder would haveon thecost andtrial
`
`schedule for the existing review; and (4) whether joinder will add to the
`
`complexity of briefing or discovery. Jd. at 6 (citing Kyocera Corp.v.
`
`Softview LLC, IPR2013-00004, Paper 15 at 4 (PTAB Apr. 24, 2013)
`(“Kyocera”); ConsolidatedTrial Practice Guide 76 (Nov. 2019) (“TPG”)’).
`
`7 Available at https://go.usa.gov/xpvPF.
`
`6
`
`

`

`IPR2022-00862
`Patent 10,484,510 B2
`
`Morespecifically, when addressing the Teso litigation, where Crowds
`was considered, Petitioner argues that the Tesolitigation concerned different
`
`claims, different prior art, and a different burden of proof comparedto the
`
`inter partes review sought to be joined. Mot. 6-10. Petitioner also asserts
`
`that the jury in the Teso litigation did not have the benefit of the district
`court’s Supplemental Claim Construction Order, (Ex. 1020), which is
`available here and which “the Board found persuasive” in the 1493 IPR. Id.
`
`at 9. Petitioner contends further that the Teso litigation has been stayed and,
`if and whenthestay islifted, the defendants intendto file post-judgment
`motions. /d. at 3.
`|
`
`Petitioner also argues that the joinder motionis “routine,” and the
`
`Board “often grants motions for joinder in view of pendinglitigations
`
`involving the same patent and the sameparties,” as is the case here. Mot. 9—
`
`10; Reply 1. Petitioner refers to its previously-denied petition in the 1358
`
`IPR that challenged claims of the ’510 patent, and asserts that because the
`
`previous denial was on a discretionary basis, and therefore did not reach the
`
`merits, this should not weigh against joinder here. Mot. 12; Reply 2—3
`
`(citing Intel Corp. v. VLSI Tech. LLC, IPR2022-00366, Paper 14, 9 (PTAB
`
`June 8, 2022) (“Intel’’)®). Petitioner contendsthatit will assume an
`
`“understudy”role, and that joinder will not impact the trial schedule, or add
`
`to the cost, complexity of the briefing, or discovery of the joined proceeding.
`
`Mot. 14-15.
`
`8° IPR2022-00366 has been joined with IPR2021-01064. Certain issues in
`the joined cases are the subject of Director review, but the issues under
`review are not related to joinder or any other issues we address herein.
`
`7
`
`

`

`IPR2022-00862
`Patent 10,484,510 B2
`
`Patent Owner opposesthe Motion for Joinder. Patent Ownerargues
`
`that the burden is on Petitioner to justify joinder and that burden has not
`
`been met. Opp. 1. Patent Owner contendsthat, absent joinder. the Petition
`
`would be time-barred under 35 U.S.C. § 315(b). Jd. at 11. Patent Owner
`
`‘argues that it should be able to rely on the jury verdict against Petitioner in
`the Teso litigation, and that “Petitioner’s actionsundermine the integrity of
`the judicial process.” Id.
`|
`Additionally, Patent Owner contends that Patent Ownerhassettledits
`
`disputes with NetNut, and Petitioner should not be allowed to continue a
`
`proceeding that would otherwise be terminated. Opp. 2 (citing Apple Inc.v.
`
`Uniloc 2017 LLC, IPR2020-00854, Paper 9, 4 (PTAB Oct. 28, 2020)
`
`(precedential) (“Uniloc’’)).
`
`B. Analysis
`
`For the reasons that follow, we deny institution under § 314(a).
`
`1. Other Challenges to the ’510 patent
`
`The groundsin this Petition substantially overlap the groundsin the
`
`previously-denied 1358 IPR,as well as with the grounds thatare the basis of
`the instituted 1493 IPR. The petition in the previously-denied 1358 IPR
`
`relied on the following grounds:
`
`35 U.S.C.§
`
`Reference(s)
`
`
`
`
`
`
`Claims Challenged
`1, 2, 6, 7, 15, 16, 18-
`
`
`73
`Crowds
`
`
`
`
`
`Crowds, RFC 2616
`Roe 1, 13, 15, 16,
`
`
`
`1, 6, 8-11, 13, 15-20,
`Border, RFC 2616
`103(a)
`779A
`
`
`
`1, 2, 6-8, 13, 15, 16,|102(b MorphMix
`
`102(b)
`103(a)
`
`

`

`IPR2022-00862
`Patent 10,484,510 B2
`
`
`Reference(s)
`Claims Challenged | 35U.S.C.§ | |
`
`18-23 pe
`
`I, 2, 6-1 l, 13, 15, 16,
`103(a)
`;
`:
`MorphMix, RFC 2616
`
`
`18-23
`
`
`
`
`
`
`
`1358 IPR, Paper 11 at 4—5.
`
`Wenote also that this is not a typical “me too” joinder request. Mot.
`
`13-15. Although Petitioner has agreed to an “understudy”role, NetNut, the
`petitionerin the 1493 IPR to be joined, has been terminatedfrom that
`proceeding due to asettlement. 1493 IPR, Paper 19. Therefore, Petitioner
`- would not beacting in the role of an understudy, but would immediately
`assume the leading role ifjoinder were granted. Prelim. Resp. 12; Opp. 14—
`
`15. Thus, if we granted joinderhere, “Petitioner would stand in to continue
`a proceeding that would otherwise be terminated.” Uniloc, Paper 9 at 4. As
`. a result, ifwe wereto institute this case and grantjoinder, Petitioner would |
`be advancing substantially the same groundsit initially relied on in the 1358
`
`IPR, which was denied in 2021.
`
`'
`
`In addition, Petitioner challenges claims 1-12 and 15-24 of the ’510
`
`patent based on Plamondonin the 1110 IPR. 1110 IPR, Paper 1. The claims
`
`challenged in the 1110 IPR therefore also significantly overlap with the
`claims challenged here and those previouslychallenged in the 1358 IPR.
`See discussion supra.
`
`2. General Plastic
`
`Both parties present additional arguments under Fintiv and General
`
`Plastic in support oftheir respective positions. Pet. 10-11; Prelim. Resp. 4—
`
`24; Opp. 2, 8-10; Reply 2-5 (citing Apple Inc. v. Fintiv Inc., IPR2020-
`00019, Paper 11 (PTAB March 20, 2020) (precedential) (“Fintiv”), General
`Plastic Industrial Co., Ltd. vs Canon Kabushiki Kaisha, IPR2016-01387,
`
`9
`
`

`

`IPR2022-00862
`Patent 10,484,510 B2
`
`Paper 19 (PTAB Sept. 6, 2017) (precedential as to § II.B.4.i1) (“General
`
`Plastic’)).
`
`Under General Plastic, the Board may denya petition based on
`discretionary authority of § 314(a). General Plastic, Paper 19 at 15; see also
`Uniloc, Paper 9 at 4-5. In considering whetherto grant joinder with the
`1493 IPR, we may also consider whetherto exercise our discretion under 35
`U.S.C. § 314(a). Under 35 U.S.C. § 315(c), the statutory provision
`
`governing joinder, the discretion to join a party to an ongoing IPRis
`
`premised on the determination that the petition warrants institution under
`
`§ 314. This statutory provision reads:
`
`If the Director institutes an inter partes review, the
`Director, in his or her discretion, may join as a party
`to that inter partes review any person whoproperly
`files a petition under section 311 that the Director,
`after receiving a preliminary response undersection
`313 or the expiration of the time for filing such a
`response, determines warrants the institution of an
`inter partes review undersection 314.
`Further, “[t]o join a party to aninstituted IPR, the plain language of§ 31 5(c):
`requires two different decisions.” Facebook, Inc.v. Windy City Innovations,
`LLC, 973 F.3d 1321, 1332 (Fed. Cir. 2020). Thus, in applying § 315(c), we »
`
`first “determine whetherthe joinder applicant’s petition for IPR ‘warrants’
`
`institution under § 314.” Jd. Second, if the petition warrants institution, we
`
`then “decide whetherto ‘join as a party’ the joinder applicant.” 7d. For the
`reasonsthat follow, we are persuaded to exercise our discretion, under
`. GeneralPlastic, not to institute this proceeding.
`
`10
`
`

`

`TPR2022-00862
`Patent 10,484,510 B2
`
`In General Plastic, the Board articulated a list of non-exclusive
`
`factors to be considered in determining whetherto exercise discretion under
`
`§ 314(a) to deny a petition:
`
`1. whether the samepetitioner previously filed a petition
`directed to the same claims of the same patent;
`
`2. whetherat the timeoffiling of the first petition the petitioner
`knew ofthe prior art asserted in the second petition or should
`have knownofit;
`
`_ 3. whetherat the time offiling of the second petition the
`petitioner already received the patent owner’s preliminary
`responseto the first petition or received the Board’s decision on
`whetherto institute review in the first petition;
`4. the length of time that elapsed between the time the petitioner
`learned ofthe prior art asserted in the second petition and the
`filing of the secondpetition;
`5. whetherthe petitioner provides adequate explanation for the
`time elapsed betweenthe filings of multiple petitions directed
`to the same claims of the samepatent;
`
`6. the finite resources of the Board; and
`7. the requirement under 35 U.S.C. § 316(a)(11) to issue a final
`determination notlater than 1 year after the date on which the
`Director notices institution of review.
`
`General Plastic, Paper 19 at 16 (citing NVIDIA Corp. v. Samsung Elec. Co.,
`
`IPR2016-00134, Paper 9 at 6-7 (PTAB May4, 2016)).
`
`Factor I: “whetherthe same petitionerpreviouslyfiled a
`petition directed to the same claims of the same patent”
`
`There are two other inter partes petitions that Petitioner hasfiled,
`
`besides this one, that challenge claims of the ’510 patent: the previously-
`denied 1358 IPR andthe pending 1110 IPR, which wewill discuss under
`
`factor 6 below.
`
`1]
`
`

`

`IPR2022-00862
`Patent 10,484,510 B2
`
`Patent Ownerrelies on Uniloc to argue that because-Petitioner
`
`previously filed the 1358 IPR petition, which challenged the 510 patent
`based on the samepriorart asserted here, this favors denial ofinstitution
`under factor 1. Opp. 2, 8. Petitioner asserts that because the 1358 IPR
`| petition was not evaluated on the merits, and instead the denial was based on
`discretionary grounds,Petitioner relies upon Jnte/to distinguish the Uniloc |
`case, because it addressedasituation after denial-of an earlier petition on the
`merits. Reply 2 (citing Jntel, Paper 14 at 9).
`Although this case has somesimilarities with Intel, it differs on the ©
`
`issue of whetherthe petitioner had the benefit of the Board’s guidance on the
`use of stipulations that agree not to raise the grounds asserted inthe IPRat
`trial. Intel, Paper 14 at 13-14; Prelim. Resp. 7—9. In Intel, the Board found
`that the decision denying the earlier petition occurred before the Board had
`expressed its approval of such stipulations in Sotera Wireless or Sand
`Revolution II. Id. However, as Patent Owner argues, the petition in the
`earlier 1358 petition was filed after Sand Revolution IT had been designated
`informative. Prelim. Resp. 8. Unlike the petitioner in Intel, Petitioner here
`had the guidance provided by Sand Revolution IH, and could have proffered
`
`such a stipulation, but did not do so. We determinethatthis failure to
`provide such:a stipulation in the face of clear guidance from the Board
`weighs strongly in favor of exercising discretion to deny institution and
`
`outweighsthe fact that the Board did not substantively address the merits of
`the prior petition.
`|
`Accordingly, based on the record before us, we agree with Patent
`Owner (Opp. 8; Prelim. Resp. 7—8) that this General Plastic factor weighsin
`favor of exercising discretion to deny institution of the proceeding.
`
`12
`
`

`

`IPR2022-00862
`Patent 10,484,510 B2
`
`Factor 3: “whetherat the time offiling of the second petition
`the petitioner already received the patent owner’s preliminary
`responseto the first petition or received the Board's decision
`on whetherto institute review in thefirst petition”
`
`Patent Ownerasserts that Petitioner had received Patent Owner’s
`
`preliminary responses and the Board’s institution decisions in the
`previously-filed 1358 IPR and in the 1493 IPR beforethe filing of this
`
`Petition. Opp. 8-9.
`
`General Plastic expresses concern over “road mapping,”thatis,
`
`taking advantageofprior filings to obtaina “roadmap” of the opponent’s
`
`case. General Plastic, Paper 19 at 17. Patent Ownerpresents no evidence,
`
`however, that this Petition has been modified from the petition in the 1358
`
`IPR filed in 2020 based oninformation that became available in the
`
`subsequent preliminary response and decision in the 1493 IPR.
`
`Therefore, there is no evidence of road mapping and, thus, this third
`General Plastic factor does not weigh in favor of exercising discretion to
`deny institution of the proceeding.
`
`Factor 2: “whetherat the time offiling of thefirst petition the
`petitioner knew ofthe prior art asserted in the secondpetition
`or should have known of it”’
`
`Factor 4: “the length of time that elapsed between the time the
`petitioner learned of the prior art asserted in the second
`petition andthe filing of the second petition”
`
`Factor 5: “whether the petitioner provides adequate
`explanation for the time elapsed betweenthe filings ofmultiple
`petitions directed to the sameclaims ofthe same patent”
`
`The Board considers these factors “to assess and weigh whether a
`petitioner should have or could have raised the new challengesearlier.”
`
`13
`
`

`

`IPR2022-00862
`
`!
`|
`Patent 10,484,510 B2
`General Plastic, Paper 19 at 18. Based on the circumstances here, these
`factors havelimited relevance. As discussed, the groundsin the previously-
`denied 1358 IPR substantially overlap with the groundsin this Petition, so
`there are no new challenges at issue here.
`
`Patent Ownerarguesthat this Petition was filed 22 monthsafter
`Petitioner had knowledge ofthe priorart references, and Petitionerfiled the
`Petition just prior to the one-month deadline after institution in the 1493
`IPR. Opp. 9. While this is accurate, Petitioner’s actions, in large part,
`
`appear to be reasonably diligent under the circumstances. Petitioner could
`not have filed this Petition prior to the institution of the 1493 IPR. And
`
`because the asserted priorart is the sameas the earlier-asserted art, we see
`no prejudice to Patent Ownerdueto the timing ofthe Petition.
`Accordingly, we determine that the second, fourth, and fifth General
`Plastic factors do not weigh in favor of exercising discretion to deny
`institution of the proceeding.
`
`Factor 6: “thefinite resources ofthe Board”
`
`~
`
`Patent Owner arguesthat the Board should not expendits finite
`resources on Petitioner’s multiple bites of the apple which include three
`IPRs, a reexamination, and a jury trial on the samepriorart references. Opp.
`
`1, 9-10; Prelim. Resp. 4, n.1, 9-12.
`
`In addition to the previously-filed 1358 IPR, which wediscuss above,
`Petitioner also has the pending petition in the 1110 IPR,? filed on June 9,
`2022, which also challenges claims of the ’510 patent, including sole
`
`* We do notassess or suggest an outcome onthedecision on institution and
`joinder motion in the pending 1110 JPR.
`
`14
`
`

`

`IPR2022-00862
`Patent 10,484,510 B2
`independentclaim 1, but relies on Plamondonas the primary prior art.
`Code200, UABv. Bright Data Ltd., [PR2022-01110, Paper 1, 3.
`
`The Board’s Consolidated Trial Practice Guide provides guidance on
`
`multiple petitions, including identifying circumstances where more than one
`
`petition may be necessary. TPG, 59. The Guideinstructs the petitioner to
`
`provide a ranking betweenthe petitions and provide information as to why
`
`the Board should exercise discretion to institute additionalpetitions. Jd. 59-
`
`60. Here, Petitioner has not provided a ranking or rationale to support the
`
`need for multiple petitions. Accordingly, we have no guidance as to why we
`
`should expend the Board’s resourcesto potentially institute multiple
`proceedings by joining and instituting this case.
`Additionally, we considerefficiency relating to the Tesolitigation.
`Asdiscussed above,a jury verdicthas already been reachedin thatlitigation,
`and the issue ofwhether claims 1 and 22 ofthe °510 patent are invalid in
`view of Crowds wasbefore the jury. Mot. 2. We agree with Petitioner that
`there are some differences between the prior art and claims at issue here
`
`—
`
`compared to those in the Teso litigation, and there are different burdens of
`
`proof. Mot. 6-9. Nonetheless, we agree with Patent Ownerthat institution
`
`and joinder would create significant risk of the Board redoing at least some
`
`of the work donein the litigation. Prelim. Resp. 15-16.
`
`Accordingly, we determinethat the sixth General Plastic factor
`
`weighs strongly in favor of exercising discretion to deny institution of the
`
`proceeding.
`
`Factor 7: “the requirement under 35 U.S.C. § 316(a)(11) to
`issue afinal determination not later than I year after the date
`on which the Director notices institution ofreview”
`
`15
`
`

`

`IPR2022-00862
`Patent 10,484,510 B2
`
`Patent Ownerarguesthat granting institution and joinder would have
`a negative effect on the trial schedule and create added complexity in the
`proceeding. Opp. 10.
`
`Weagree with Patent Ownerthat there would likely be a negative
`
`impact on the schedule in the 1493 IPR that would affect whether the one
`year deadline could be met. The 1493 IPR wasinstituted on March 21,
`2022, with oral argument set on December 16, 2022. 1493 IPR, Papers 12,
`
`11. If Petitioner is joined to that case, Petitioner has stated that the Board
`should “revisit scheduling for these proceedings after decisions on the
`
`joinder motions are madein the related proceedings.” Ex. 2009. Although
`
`Patent Owner agreed to accelerate somebriefing in this case to allow
`
`consideration of institution and this joinder motion,this casestill lags behind
`
`the 1493 IPR schedule by approximately four months. Paper 12. To adjust
`
`the schedule to accommodate joinderto issue a final determination within
`one year, the time to complete briefing would haveto be significantly |
`accelerated, which may not be possible. Additionally, notwithstanding that
`the one year statutory time period may be adjusted for a joined case under 35
`U.S.C. § 316(a)(11), granting institution and joinder in this case would
`unnecessarily delay this proceeding beyondthe Board’s goal of a one-year
`
`pendencyfor all IPR proceedings.
`
`Accordingly, we determine that the seventh General Plastic factor
`
`weighsstrongly in favor of exercising discretion to deny institution of the
`
`proceeding.
`
`3. Conclusion
`In light of the General Plastic factors, the guidance expressed in the
`Trial Practice Guide, and the arguments presented for and against the
`
`16
`
`

`

`IPR2022-00862
`Patent 10,484,510 B2
`
`exercise of discretionary denial, we concludethat it is appropriate here to
`
`exercise our discretion under 35 U.S.C. § 314(a) to denyinstitution.
`
`IV. DENIAL OF MOTION FOR JOINDER
`
`Asstated above, the Director may join a party to an ongoing IPR only
`
`if the filed petition warrants institution under § 314. 35 U.S.C. § 315(c).
`Because weexercise discretion to deny institution under § 314, we deny also
`
`Petitioner’s Motion for Joinder.
`
`V. ORDER
`
`Accordingly,it is:
`
`.
`
`ORDEREDthat, pursuant to 35 U.S.C. § 314(a), the Petition is
`
`denied; and
`
`FURTHER ORDEREDthat the Motion for Joinder is denied.
`
`17
`
`

`

`IPR2022-00862
`Patent 10,484,510 B2
`
`_ PETITIONER:
`
`George “Jorde”Scott
`John Heuton
`CHARHON CALLAHAN ROBSON & GARZA, PLLC
`jscott@ccrglaw.com
`jheuton@ccrglaw.com
`
`PATENT OWNER:
`
`Thomas Dunham
`Elizabeth O’Brien
`CHERIAN LLP
`tom@ruyakcherian.com
`elizabetho@ruyakcherian.com
`
`18
`
`

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