Trials(@uspto.gov
`Tel: 571-272-7822
`
`Paper 12
`Entered: May 11, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`THE DATA COMPANY TECHNOLOGIES INC,,
`Petitioner,
`
`V.
`
`BRIGHT DATA LTD.,
`Patent Owner.
`
`IPR2022-00138
`Patent 10,484,510 B2
`
`Before THOMASL. GIANNETTI, SHEILA F. McSHANE,and
`RUSSELLE. CASS, Administrative Patent Judges.
`
`McSHANE,Administrative Patent Judge.
`
`DECISION
`Granting Institution ofInter Partes Review
`35 U.S.C. § 314
`
`
`Tel: 571-272-7822
`
`Paper 12
`Entered: May 11, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`THE DATA COMPANY TECHNOLOGIES INC,,
`Petitioner,
`
`V.
`
`BRIGHT DATA LTD.,
`Patent Owner.
`
`IPR2022-00138
`Patent 10,484,510 B2
`
`Before THOMASL. GIANNETTI, SHEILA F. McSHANE,and
`RUSSELLE. CASS, Administrative Patent Judges.
`
`McSHANE,Administrative Patent Judge.
`
`DECISION
`Granting Institution ofInter Partes Review
`35 U.S.C. § 314
`
`
`
`IPR2022-00138
`Patent 10,484,510 B2
`
`I. INTRODUCTION
`
`The Data Company Technologies Inc.! (“Petitioner”) filed a Petition
`
`(Paper2, “Pet.”) requesting inter partes review of claims 1-12 and 15-24
`
`(the “challenged claims”) of U.S. Patent No. 10,484,510 B2 (Ex. 1001, “the
`
`’510 patent”). Patent Owner, Bright Data Ltd., filed a Preliminary Response
`
`(Paper6, “Prelim. Resp.”). With authorization, Petitioner filed a Reply
`
`(Paper8, “Pet. Reply”), and Patent Ownerfiled a Sur-reply (Paper 9, “PO
`
`Sur-reply”).
`
`The Board has authority to determine whetherto institute an inter
`
`partes review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C.
`
`§ 314(a), we may not authorize an inter partes review unless the information
`
`in the petition and the preliminary response “showsthat there is a reasonable
`
`likelihood that the petitioner would prevail with respect to at least 1 of the
`
`claims challenged in the petition.”
`
`For the reasons stated below, we determine that Petitioner has
`
`established a reasonable likelihood that it would prevailwith respect to at
`
`least one claim. Wetherefore institute inter partes review as to all of the
`
`challenged claims of the ’510 patent andall of the asserted grounds of
`
`unpatentability in the Petition.
`
`A. Related Matters
`
`Il. BACKGROUND
`
`Theparties identify four district court proceedings involving the °510
`
`patent andarelated patent (U.S. Patent No. 10,257,319 (“the °319 patent”)):
`
`' Without concedingthat these parties are real parties in interest, Petitioner
`also identifies Avantis Team Technologies Ltd. and Cytronix Ltd. Pet. xiii.
`
`
`
`IPR2022-00138
`Patent 10,484,510 B2
`
`Bright Data Ltd. v. NetNut Ltd., No. 2:21-cv-225 (E.D. Tex.)
`
`(pending);
`
`Luminati Networks Ltd. v. Teso LT, UAB,et al., No. 2:19-cv-
`
`395 (E.D. Tex.) (pending);
`
`Luminati Networks Ltd. v. BI Science (2009) Ltd., No. 2:19-cv-
`
`397 (E.D. Tex.) (dismissed); and
`
`Luminati Networks Ltd. v. Tefincom S.A., No. 2:19-cv-414
`
`(E.D. Tex.) (pending).
`
`Pet. xiv; Paper5, 2.
`
`The °510 patent was previously before the Board in IPR2020-01358,
`
`in which institution was denied, and in IPR2021-01493 (“the NetNut IPR”),
`
`which hasbeeninstituted. Paper 5, 1. The related ’319 patent is involved in
`
`IPR2021-01492, which has beeninstituted, and also was previously before
`
`the Board in IPR2020-01266, in which institution was denied. Jd. Patent
`
`Owneralso identifies other district court actions involving the °510 patent
`
`and °319 patent. Jd. at 2.
`
`In addition, Patent Owneridentifies ex parte reexaminations, Control
`
`No. 90/014,875 and Control No. 90/014,876, that have been ordered for the
`
`°319 and ’510 patents, respectively. Paper 5,2. Those reexaminations have
`
`been stayed. See NetNut Ltd. v. Bright Data Ltd., JPR2021-01492, Paper 14
`
`(PTAB Apr. 7, 2022); NetNut Ltd. v. Bright Data Ltd., YPR2021-01493,
`
`Paper 13 (PTAB Apr. 7, 2022).
`
`B. The ’510 Patent
`
`The °510 patentis titled “System Providing Faster And MoreEfficient
`
`Data Communication” and issued on November 19, 2019 from an
`
`application filed on February 17, 2019. Ex. 1001, codes (22), (45), (54).
`
`
`
`IPR2022-00138
`Patent 10,484,510 B2
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`Thepatent is subject to a terminal disclaimer. Jd. at code (*). The
`
`application for the ’866 patent claimspriority to several applications,
`
`including U.S. Provisional Application No. 61/249,624,filed October 8,
`
`2009. Id. at code (60).
`
`The ’510 patent is directed to addressing the “need for a new method
`
`of data transfer that is fast for the consumer, cheap for the content distributor
`
`and does not require infrastructure investment for ISPs.” Ex. 1001, 1:57—-59.
`The ’510 patent states that other “attempts at making the Internet faster for
`the consumerand cheaperfor the broadcaster,” such as proxy servers and
`
`peer-to-peerfile sharing, have various shortcomings. Jd. at 1:61-3:6. The
`
`°510 patent provides a system and method “for faster and moreefficient data
`
`communication within a communication network,” such as in the network
`
`illustrated in Figure 3, reproduced below. Jd. at 3:16—18, 4:5-7.
`
`PEER
`nea
`
`FIG. 3
`
`Figure 3 is a schematic diagram depicting communication network 100
`
`including a number of communication devices. Ex. 1001, 4:56-58. Client
`
`
`
`IPR2022-00138
`Patent 10,484,510 B2
`
`102 is capable of communicating with peers 112, 114, and 116, as well as
`
`with one or more agents 122. Jd. at 4:58-60. Web server 152 may be “a
`
`typical HTTP server, such as those being used to deliver content on any of
`
`the many suchservers on the Internet.” Jd. at 4:65—-5:2. Acceleration server
`
`162 includes acceleration server storage device 164 with an acceleration
`
`server database, which “stores Internet Protocol (IP) addresses of
`
`communication devices within the communication network 100 having
`
`acceleration software stored therein.” Jd. at 5:14—17.
`
`In operation, a client may request a resource on the network,for
`
`example, throughthe use of an Internet browser. Ex. 1001, 12:62—13:3. If
`
`server 152 is the target of the request, the client sends the IP address of
`
`server 152 to acceleration server 162. Jd. at 13:8-15. Acceleration server
`
`162 then preparesa list of agents that can handle the request, which includes
`
`communication devices “that are currently online, and whose LP addressis
`
`numerically close to the IP of the destination Web server 152.” Id. at
`
`13:19-29. The client then sendsthe original request to the agentsin the list
`
`to find out which “is best suited to be the one agentthat will assist with this
`
`request.” Jd. at 13:31-36. The connection established between the agent
`
`and client may be a Transmission Control Protocol (TCP) connection. Jd. at
`
`17:61-64.
`
`Each agent respondsto the client with information as to “whether the
`
`agent has seen a previous request for this resource that has been fulfilled,”
`
`and “which can help the client to download the request information from
`
`peers in the network.” Ex. 1001, 13:51-57. The client selects an agent
`
`based on a numberoffactors, and the selected agent determines whether
`
`data stored in its memory or the memory ofthe peers“still mirrors the
`
`
`
`IPR2022-00138
`Patent 10,484,510 B2
`
`information that would have been received from the serveritself for this
`
`request.” Jd. at 13:62—14:1, 14:35-38. Ifthe selected agent does not have
`
`the necessary information to service a request, it may “load the information
`
`directly from the server in order to be able to provide an answerto the
`
`requesting client.” Jd. at 14:62-67.
`
`C. Lllustrative Claim
`
`The *510 patent has 24 claims. Claim 1, the only independent claim
`
`-in the ’510 patent, is illustrative of the claimed subject matter andis
`
`reproduced below, with bracketed designations added for reference
`
`purposes.
`
`[pre] A method for use with a web server that responds to
`1.
`Hypertext Transfer Protocol (HTTP) requests andstoresafirst content
`identified by a first content identifier, the method bya first client
`device comprising:
`[a] establishing a Transmission Control Protocol (TCP)
`connection with a second server;
`
`[b] sending, to the web serveroveran Internet, the first content
`identifier;
`
`[c] receiving, the first content from the web server over the
`Internet in response to the sending ofthe first content identifier;
`and
`
`[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.
`
`D. Asserted Grounds of Unpatentahility
`Petitioner challenges the patentability of claims of the °510 patent on
`
`the following grounds:
`
`
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`IPR2022-00138
`Patent 10,484,510 B2
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`
`
`
`
`
`
`
`
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`89|103(a)|Plamondon,RFC1122?__|
`
`
`
`
`
`
`
`
`
`
`- .
`
`* 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, pre-AIA versions of §§ 102 and
`103 apply. See Ex. 1001, code (60).
`3 U.S. Patent Application Publication US 2008/0228938 A1, published
`September 18, 2008 (Ex. 1010).
`“ 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-ILEE Standard 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).
`7U.S. Patent Application Publication US 2006/0026304 A1, published
`February 2, 2006 (Ex. 1023).
`8 U. S. Patent Application Publication US 2009/0055471 A1, published
`February 26, 2009 (Ex. 1024).
`
`
`
`IPR2022-00138
`Patent 10,484,510 B2
`
`A. Fintiv
`
`Il. DISCRETIONARY DENIAL
`
`Patent Ownerrequests that we exercise our discretion under 35 U.S.C.
`
`§ 314(a) to deny institution. Prelim. Resp. 4-9; PO Sur-reply 1-5.
`
`Although Patent Owner acknowledgesthat Petitioner is not a defendantin
`
`any pendingdistrict court litigation involving the 510 patent, Patent Owner
`
`asserts that institution should be denied, particularly in view ofthe parallel
`
`district court proceedings, Bright Data Ltd. v. NetNut Ltd., No. 2:21-cv-225
`
`(E.D.Tex.) (“the NetNut district court litigation”). Prelim. Resp. 4-9; PO
`
`Sur-reply 2-3.
`
`Under Section 314(a), the Director has discretion to deny institution.
`
`See 35 U.S.C. § 314(a) (stating “[t]he Director may not authorize an inter
`
`partes review to be instituted unless the Director determines that the
`
`information presented in the petition .
`
`.
`
`. showsthat there is a reasonable
`
`likelihood that the petitioner would prevail with respect to at least 1 of the
`
`claims challengedin the petition’) (emphasis added); 37 C.F.R. § 42.108(a)
`
`(stating “the Board will authorize the review to proceed”); cf Cuozzo Speed
`
`Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016) (“[T]he agency’s decision
`
`to deny a petition is a matter committed to the Patent Office’s discretion.”);
`
`Harmonic Inc. v. Avid Tech, Inc., 815 F.3d 1356, 1367 (Fed.Cir. 2016)
`
`(“[T]he PTO is permitted, bul never cumpelled, to institute an IPR
`
`proceeding.”).
`
`‘Lhe Board’s precedential decision in Apple Inc. v. Fintiv, Inc.,
`
`IPR2020-00019, Paper 11 (PTAB Mar.20, 2020) (precedential) (“Fintiv’’)
`
`sets forth six factors that we consideras part of this balanced assessment
`
`when determining whetherto use our discretion to denyinstitution:
`
`
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`IPR2022-00138
`Patent 10,484,510 B2
`
`1. whether the court granted a stay or evidence exists that one
`maybegrantedif a proceedingis instituted;
`2. proximity of the court’s trial date to the Board's projected
`statutory deadline for a final written decision;
`3. investmentin the parallel proceeding by the court and the
`parties;
`4. overlap betweenissues raised in the petition and in the
`parallel proceeding;
`5. whetherthe petitioner and the defendantin the parallel
`proceeding are the same party; and
`6. other circumstancesthat impact the Board’s exercise of
`discretion, including the merits.
`Fintiv at 6. Recognizing that “there is some overlap among these factors”
`
`and that “[s]ome facts may be relevant to more than onefactor,” the Board
`
`“takes a holistic view of whether efficiency and integrity of the system are
`
`best served by denyingor instituting review.” Jd. We now apply these six
`factors to the facts and circumstancespresenthere.
`
`Petitioner argues that because it is not involvedin the litigation and
`
`this inter partes review relies on different art than the art involved in the
`
`litigation, there is no reason for discretionary denial. Pet. 68. Patent Owner
`
`asserts that there is a meaningful overlap in the issues and refers to Fintiv’s
`
`direction regarding petitioners whoare unrelated tolitigation defendants.
`
`Prelim. Resp. 7-8.
`
`Fintiv states that “[e]ven whena petitioner is unrelated to a
`
`defendant”“other circumstances weigh against redoing the work of another
`
`tribunal, [and] the Board may, nonetheless, exercise the authority to deny
`
`institution.” Fintiv, 14. Fintiv states that “[a]n unrelated petitioner should,
`
`therefore, address any other district court or Federal Circuit proceedings
`
`involving the challenged patent to discuss why addressing the sameor
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`
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`IPR2022-00138
`Patent 10,484,510 B2
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`substantially the same issues would not be duplicative of the prior case.” Jd.
`
`Here, in view of Fintiv’s discussion on unrelated petitioners, we will address
`
`its factors, including whetherthere are substantially the same issues raised in
`
`this Petition that are duplicative of those in other proceedings.
`
`1. Factor 1—Stay ofRelated Litigation Proceeding
`Underthefirst Fintiv factor, we consider “whether the court granted a
`stay or evidenceexists that one maybegranted if a proceedingis instituted.”
`
`Fintiv at 6. Here, because Petitioner is not a party in another proceeding,
`
`Patent Owner’s arguments are based upon parallel proceedings, which are
`
`predominantly related to the NetNut district court litigation. Prelim. Resp.
`
`4-9; PO Sur-reply 2-3.
`
`Petitioner asserts that it is not clear how the district court would rule
`
`on a stay motion in the NetNutcase, and this factor should be considered
`
`neutral. Pet. 71. Patent Ownerpresents no argumentonthis factor. See
`
`generally Prelim. Resp.; PO Sur-reply.
`
`“A judge determines whether to grant a stay based onthe facts of each
`
`specific case as presented in the briefs by the parties.” See Apple Inc.v.
`
`Fintiv, Inc., IPR2020-00019, Paper 15 at 12 (PTAB May13, 2020)
`
`(informative) (“Fintiv IP’). “We decline to infer, based on actions taken in
`
`different cases with different facts, how the [d]istrict [c]ourt would rule
`
`should a stay be requested bythe parties in the parallel case here.” Jd.
`
`Accordingly, we determine that this factor is neutral.
`
`2. Factor 2—Proximity of Court’s Trial Date
`
`Underthe second Fintiv factor, we consider the “proximity of the
`
`court’s trial date to the Board’s projected statutory deadline fora final
`
`written decision.” Fintiv at 6. Patent Ownerasserts that because the jury
`
`10
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`
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`IPR2022-00138
`Patent 10,484,510 B2
`
`trial is scheduled for September 12, 2022 in the NetNut district court
`
`litigation, the district court will resolve invalidity issues involving
`
`Plamondon“long before a final written decision is due in this proceeding in
`
`May 2023.” Prelim. Resp.'5. Patent Ownerfurther arguesthat this case is
`
`different than the NetNut IPR because the NetNuttrial date is eight months
`
`before the final written decision would issue in this IPR. PO Sur-reply 3.
`
`Patent Owneralso argues that Plamondonis a reference that will be
`
`considered in the pending reexamination. Prelim. Resp. 5. Patent Owner
`
`asserts that the examiner will have considered Plamondonbeforea final
`
`written decision issues in this case. Jd. Patent Ownerfurtherasserts that in
`
`a litigation with Teso, a jury foundthat the claims of U.S. Patent No.
`
`10,469,614 were not invalid over Mithyantha, where Mithyantha hasthe
`same architecture as Plamondon. Jd. at 5—6 (citing Ex. 2001 q 85; Ex. 2002;
`
`Ex. 2006); referring to Bright Data Ltd. v. Teso LT, Case No. 2:19-cv-
`
`00395-JRG (E.D. Tex.).
`
`The reexamination of the °510 patent in Reexamination Control No.
`
`90/014,876 has been stayed pending the termination or completion of
`
`IPR2021-01493. NetNut Ltd. v. BrightData Ltd., IPR2021-01493, Paper 13
`
`(PTAB April 7, 2022). Because the reexamination of the °510 patent would
`
`not be resumed until approximately March, 2023, ifat all, it is not likely that
`
`reexamination of the patent claims would be completed by the timethe final
`
`written decision issues in this case. As to the Teso district court litigation
`
`jury decision, Patent Owner’s arguments are based on alleged similarities of
`
`the prior art in the litigation and the Plamondonreference asserted here that
`
`are premised on Patent Owner’s proposed construction of the term “client
`
`device.” Prelim. Resp. 5-7. However, as discussed infra Sections IV.B.1
`
`11
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`IPR2022-00138
`Patent 10,484,510 B2
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`and IV.D, we do not agree with Patent Owner’s interpretation of the term
`
`“client device,” and we also determine that Petitioner has provided sufficient
`
`evidence that Plamondondiscloses the limitations of claim 1.
`
`The estimated date of the Board’s final written decision in this caseis
`early May, 2023. The NetNutjury selection is set for September, 2022.
`Thus, underthe current schedule, the jury selection in the NetNutdistrict
`
`court litigation would occur approximately eight months before the final
`
`written decision would issue in this case. As noted in the NetNut IPR,a trial
`
`date for this Patent Ownerslipped by six monthsin a case in the Eastern
`
`District of Texas, and Patent Ownersought extensionsin a related court
`
`proceeding. NetNut Ltd. v. BrightData Ltd., TPR2021-01493, Paper 11 at 12,
`
`Ex. 1101 (docket entries 65, 509), Ex. 1102 (PTAB April 7, 2022). Further,
`
`in the NetNutdistrict court litigation, the date for the Markman hearing and
`
`several other case deadlines, such as fact and expert discovery close, have
`
`been rescheduled several times. See Bright Data Ltd. v. NetNut Ltd., No.
`
`2:21-cv-225 (E.D. Tex.), Dkt. Entries 56, 132, March 10, 2022 Notice,
`
`March29, 2022 Notice. Considering these circumstances, we determinethat
`
`this factor weighs only slightly in favor of exercising our discretion to deny
`
`institution.
`
`3. Factor 3—Investmentin the Parallel Proceeding
`
`Underthe third Fintiv factor, we consider the “investmentin the
`
`parallel proceeding by the court and the parties.” J*intiv, 6. Petitioner
`
`asserts that in view of the lack of the overlap of the issues betweenthis
`
`proceeding and the NetNutlitigation, this factor weighs against discretionary
`
`denial. Pet. 70 (citing MED-EL Elektromedizinische Gerdte v. Adv. Bionics,
`
`IPR2021-00044, Paper 14, 27-28 (Apr. 6, 2021)). Patent Owner argues that
`
`12
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`IPR2022-00138
`Patent 10,484,510 B2
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`in the NetNutlitigation, the Markman hearing and the fact discovery close
`
`are set to occur before the institution deadline in this IPR, so muchofthe
`
`workfor invalidity is going to be completedin thatlitigation before
`
`institution of this IPR. PO Sur-reply 3.
`
`Petitioner notes that at the time of the Petition’s filing (November4,
`
`2021) none of the defendants in otherlitigations had relied upon Plamondon
`
`as prior art. Pet. 69. Patent Owner argues that Plamondonwas included in
`
`NetNut’s district court invalidity contentions. PO Sur-reply 2 (citing NetNut
`
`Ltd. v. Bright Data Ltd., TPR2021-01493, Ex. 1104 at 34 (PTAB Jan.18,
`
`2022)). We notethat the invalidity contentions in the NetNut district court
`
`litigation were filed on December 17, 2021, whichisafter the filing of the
`
`Petition. Further, Petitioner filed the Petition approximately five months
`
`after the June, 2021 filing of the complaint in the NetNut district court
`
`litigation. In view of the record, Petitioner acted diligently in filing the
`
`Petition with Plamondonasthe primary priorart.
`
`Accordingly, when weighingthe status of the NetNutdistrict court
`
`litigation in view ofPetitioner’s diligence, we determinethat this factor does
`
`not favor discretionary denial.
`
`4. Factor 4—Overlap With Issues Raised in Parallel
`Proceeding
`
`Underthe tourth Fintiv tactor, we consider the “overlap between
`
`issues raised in the petition and in the parallel proceeding.” Fintiv, 6. Patent
`
`Ownercontendsthis factor favors denial of institution because Plamondonis
`
`part of the invalidity contentions in the NetNutdistrict court litigation.
`
`Prelim. Resp. 5; PO Sur-reply 2. Petitioner argues that inclusion of a
`
`reference in invalidity contentions does not makeoverlapattrial likely
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`13
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`IPR2022-00138
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`enoughto favor discretionary denial. Pet. Reply 2 (citing Bose v. Koss,
`
`IPR2021-00680, Paper 15 (Oct. 13, 2021)). Petitioner further asserts that the
`
`Board has foundthat invalidity theories in litigation are subject to narrowing
`
`and maynotbe relied uponat trial. /d. In response, Patent Owner contends
`
`that although NetNut may narrowits invalidity theories fortrial, “the risk of
`
`duplicating work or inconsistency between the Board and the court is
`indeterminable.” PO Sur-reply 2 (citing Lab Corp. Am. Holdings v. Ravgen,
`IPR2021-01026, Paper 11 at 24 (PTAB Dec. 14, 2021)).
`
`The invalidity contentions filed in the NetNutdistrict court litigation
`
`include several other prior art references that NetNut contendsanticipate
`
`claims of the *510 patent, including MorphMix, Border, Squid, Crowds, and
`
`Aoki, as well as including assertions of obviousness over these primary
`
`references in combination with several other prior art references. See
`
`NetNut Ltd. v. Bright Data Ltd., IPR2021-01493, Ex. 1104 at 34-37 (PTAB
`Jan. 18, 2022). Underthese circumstances,it is fair to say that these
`contentions will be narrowed fortrial. As such, the possibility that
`Plamondonwill be addressedat trial does not favor discretionary denial.
`
`5. Factor 5—Commonality ofParties in Parallel Proceedings
`
`Underthe fifth Fintiv factor, we consider “whetherthe petitioner and
`
`the defendantin the parallel proceeding are the sameparty.” Fintiv,6.
`
`Petitioner is not a namedparty in anyofthe district court litigations that
`
`involve the ’510 patent. Patent Ownerasserts that it is not aware of any
`
`relationship that would result in denial of institution, such as a timebar.
`
`Prelim. Resp. 7; PO Sur-Reply 1.
`
`At this juncture, Petitioner is not a party in any of the district court
`
`proceedingsandthere is no evidencein the record that anotherentity is a
`
`14
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`IPR2022-00138
`Patent 10,484,510 B2
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`real party in interest. We regardthis as a strong reason not to exercise
`
`discretion to deny institution. Accordingly, we determinethat this factor
`
`does not favor discretionary denial
`
`6. Factor 6—Other Circumstances
`
`Underthe sixth Fintiv factor, we consider “other circumstancesthat
`impact the Board’s exercise ofdiscretion, including the merits.” Fintiv, 6.
`Petitioner argues that the Petition makes a strong showing on the merits.
`
`Pet. 71. Petitioner asserts that Patent Owner’s arguments on claim
`
`construction have been rejected by the Boardbased onthedistrict court’s
`
`construction. Pet. Reply 4.
`
`Patent Owner contendsthat Petitioner only relies upon Plamondon as
`
`an anticipatory reference, but Plamondonfails to disclose a “client device”
`
`as that term was construed because the appliance in Plamondon would be
`
`understood to be a server. PO Sur-reply 3. Patent Owner arguesthat the
`
`examiner during prosecution, as well as the Teso defendants, interpreted
`
`Plamondon’s appliance to be a server. Id.
`As discussed below, we have reviewed Petitioner’s arguments against
`patentability and Patent Owner’s preliminary responses, and based on the
`record before us, we disagree with Patent Owneronissues of claim
`construction, as well as Patent Owner’s assertions that the merits of the
`
`Petition are weak. Rather, at this stage of the proceeding, we find that
`
`Petitioner has shownat least a reasonable likelihood of success on the
`
`merits. This is based on the determination that the evidence on this record
`
`favors Petitioner’s proposed claim construction based on the district court’s
`
`broad interpretation of some claim terms. See infra Section IV.B.1.
`
`Moreover, we determinethat Petitioner’s showing on the disclosures of the
`
`15
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`IPR2022-00138
`Patent 10,484,510 B2
`
`priorart is strong and weighs against exercising discretion to deny under
`factor 6. See Fintiv, at 14-15 (noting that the merits favor institution under
`
`factor 6 “if the merits of a ground raised in the petition seem particularly
`
`strong.”’).
`
`Accordingly, we determinethat this factor weighs in favor of not
`
`exercising discretionary denial.
`
`7. Conclusion
`
`Onthis record, after weighingall of the factors and taking a holistic
`
`view, we determinethat the facts in this case weighing against exercising
`
`discretion outweigh the facts that favor exercising discretion. Thus, based
`
`on our assessment of the Fintiv factors, we decline to exercise our discretion
`
`under 35 U.S.C. § 314(a) to deny inter partes review.
`
`B. General Plastic
`
`In General Plastic Indus. Co. v. Canon Kabushiki Kaisha, IPR2016-
`
`01357, Paper 19 (PTAB Sept. 6, 2017) (precedential) (“General Plastic’),
`
`the Boardset out a list of seven factors to consider when asked to exercise
`
`its discretion to deny review of follow-on petitions. Here, Patent Owner
`
`asserts that it “is not presently aware of a significant relationship between
`
`Petitioner and NetNut, Code200, or Teso,” whoare petitioners in other
`
`Board proceedings and defendants in district court litigations. Prelim. Resp.
`
`9. Patent Ownerargues, however, that Petitioner had accessto the
`
`preliminary response to the Code200/Tesopetition against the °510 patent as
`
`of December 2020, as well as other entries in district court litigations. Jd.
`
`Patent Ownercontendsthat Petitioner received the benefit of having had the
`
`opportunity to study Patent Owner’s arguments on the °510 patent. Jd.
`
`16
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`IPR2022-00138
`Patent 10,484,510 B2
`
`Onthis record, we determine that, based on the facts of this case, the
`
`General Plastic factors weighing against exercising discretion outweigh the
`facts that favor exercising discretion. General Plastic addressed the
`situation where the samepetitioner filed “follow-on petitions” against the
`
`samepatents, after a first set of petitions was denied on the merits. General
`
`Plastic, Paper 19 at 2-3. There have been circumstances where General
`
`Plastic has not been limited to instances where multiple petitions are filed by
`
`the samepetitioner. Valve Corp. v. Elec. Scripting Prods., Inc., {PR2019—
`
`00062, Paper 11, at 9-10 (PTAB April 2, 2019) (precedential) (existence of
`
`a “significant relationship” between the different petitioners would weigh in
`
`favor of discretionary denial). But here, Petitioner was nota petitioner in
`
`previous proceedings, nor is there any evidence in the record that Petitioner
`
`has a significant relationship with petitioners in an earlier case, as
`
`acknowledged by Patent Owner. Prelim. Resp. 7. Thus, we decline to
`
`exercise our discretion under 35 U.S.C. § 314(a) to deny inter partes review.
`
`C. Section 325(d)
`Under 35 U.S.C. § 325(d), when determining whetherto institute an
`
`inter partes review,“the Director may take into account whether, and reject
`
`the petition or request because, the same or substantially the samepriorart
`
`or arguments previously were presented to the Office.” In evaluating
`
`arguments under § 325(d), we use
`
`[a] two-part framework:(1) whether the sameor substantially the
`sameart previously was prcescntcd to the Office or whether the
`same or substantially the same arguments previously were
`presented to the Office; and (2) if either condition offirst part of
`the
`framework is
`satisfied, whether
`the petitioner has
`demonstrated that the Office erred in a manner material to the
`patentability of challenged claims.
`
`17
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`IPR2022-00138
`Patent 10,484,510 B2
`
`Advanced Bionics, LLC v. MED-EL Elektromedizinische Gerdte GmbH,
`IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential)
`
`(“Advanced Bionics”); see also Becton, Dickinson & Co. v. B. Braun
`
`Melsungen AG, IPR2017-01586, Paper 8 at 17-18 (PTAB Dec.15, 2017)
`
`(precedential as to Section III.C.5, first paragraph) (listing factors to
`
`consider in evaluating the applicability of § 325(d)) (“Becton Dickinson’).
`
`Patent Owner contends that we should deny the Petition under
`
`§ 325(d) because Samuels, which shares overlapping material with
`
`Plamondon, was before the examinerduring the prosecution of the °510
`
`patent. Prelim. Resp. 10-11. Patent Ownerasserts that Samuels wascited
`
`on an IDSduring the prosecution of the ’510 patent, and was part of the
`
`prosecution record for related patent applications, whichall had the same
`examiner. /d. at 10-11 (citing Pet. 74-75). Patent Owner arguesthat
`
`Petitioner admits that Samuels shares overlapping material with Plamondon,
`
`including Figures 1A—1E, 2A—2B, 3 and paragraphs 202 to 362 of
`
`Plamondon. /d. at 10 (citing Pet. 74).
`
`Patent Owneradditionally asserts that although Petitioner contends
`
`that Plamondon has additional disclosures that anticipate claim 1, which the
`
`Patent Office never considered, Samuels and Plamondon disclose the same
`
`network architecture. Prelim. Resp. 11. Patent Owner contendsthat
`
`Petitioner does not identify any error by the examinerbased on the
`
`examiner’s interpretation of the network architecture in both Samuels and
`
`Plamondon. /d. Patent Ownerasserts that the examiner did not understand
`
`appliance 200 of Samuels/Plamondonto be a client device, but rather a type
`
`of server, and Petitioner takes a contradictory position to this. Jd. at 11-12.
`
`Patent Ownerargues that the Board need not expend resources to conduct an
`
`18
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`IPR2022-00138
`Patent 10,484,510 B2
`
`entire trial to conclude that the appliance of Samuels and Plamondon donot
`
`disclose a “first client device.” Id. at 12.
`
`Under Advanced Bionics, Becton Dickinson factors (a), (b), and (d)
`
`are considered in the evaluation of whether the sameor substantially the
`
`sameart or arguments were previously presented to the Office. Advanced
`
`Bionics, Paper 6 at 10. Becton, Dickinson identifies these factors as (a) the
`
`similarities and material differences between the asserted art and the prior art
`
`involved during examination; (b) the cumulative nature of the asserted art
`
`and the prior art evaluated during examination; and (d) the extent of the
`
`overlap between the arguments made during examination and the mannerin
`
`which petitioner relies on the prior art. Becton, Dickinson, Paper 8 at 17-18.
`
`The record showsthat, other than RFC 2616, which is a secondary
`
`reference applied to dependent claims, the examiner did not consider any
`
`references that Petitioner relies upon in its challenges. See Ex. 1002, 475.
`
`Another reference, Samuels, was identified on an IDS. Jd. Petitioner
`
`acknowledges that Samuels has some overlap with Plamondon,but asserts
`
`that Plamondonalso has extensive disclosure that is not found in Samuels
`
`which Petitionerrelies on in its challenges. Pet. 74 (citing Ex. 1010 f{ 363-
`
`682). Weagreethat the Petition includesassertions that rely upon
`
`significant portions of non-overlapping material from Plamondon,as
`discussed infra Section IV.D. See also Pet. 75. Thus, we find that Samuels
`
`is not substantially the same as Plamondon. Accordingly, neither condition
`
`of the first part of the two-part framework,that is, substantially the sameart
`
`or argument,is satisfied for the exercise of discretion under 35 U.S.C.
`
`§ 325(d).
`
`19
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`
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`IPR2022-00138
`Patent 10,484,510 B2
`
`For the foregoing reasons, we are not persuaded that the same or
`
`substantially the sameprior art or arguments previously were presented to
`
`the Office. Having determined that the first part of the Advanced Bionics
`
`frameworkis not satisfied, we need not consider the second part of the
`
`framework. See Advanced Bionics at 8, 10.
`
`For the foregoing reasons, we are not persuaded that we should
`
`exercise our discretion under § 325(d) to deny institution and we decline to
`
`do so.
`
`IV. ANALYSIS
`
`A. Level of Ordinary Skill in the Art
`Petitioner refers to a Preliminary Response in IPR2020-01358, and
`
`states that it adopts Patent Owner’s assessmentthat a person ofordinary skill
`
`in the art is “an individual who, as of October 8, 2009 .. . had a Master’s
`
`Degree orhigherin the field of Electrical Engineering, Computer
`
`Engineering, or Computer Scienceoras of that time had a Bachelor’s
`
`Degree in the samefields and two or moreyears of experience in Internet
`
`Communications.” Pet. 7 (citing Ex. 1008, 19; Ex. 1003 { 30-37).
`
`Patent Ownersubmits that a person of ordinary skill in the art should
`
`have the qualifications identified by Petitioner and adopts them. Prelim.
`
`Resp. 15. Patent Owner submits that Petitioner has not affirmatively
`
`established that its declarant, Dr. Levin, satisfies the qualifications of a
`
`person of ordinary skill in the art as of October 8, 2009 under that level of
`
`qualifications. Jd. at 16. Patent Owner argues that because Petitioner has
`
`not established that Dr. Levin had requisite qualifications at that ti
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