`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.
`
`IPR2022-00861
`Patent 10,257,319 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
`
`
`
`IPR2022-00861
`Patent 10,257,319 B2
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`I. INTRODUCTION
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`Weaddressthis case after a decision by the UnderSecretary 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
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`Dec.”).
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`Il. BACKGROUND
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`A. Background ofProceeding
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`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, 12, 14, 15, 17-19, and 21-29 of US.
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`Patent No. 10,257,319 B2 (Ex. 1001, “the ’319 patent’). Paper 1 (“Pet.’’).
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`Bright 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 Ltd. v. Bright Data Ltd. , IPR2021-01492 (“the 1492
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`IPR” ). Paper 7 (“Mot.”). Patent Ownerfiled an Opposition to the Motion
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`for Joinder. Paper 11 (“Opp.”). Petitioner filed a Reply to Patent Owner’s
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`Opposition. Paper 13 (“Reply”).
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`ThePetition in this proceeding asserts the same grounds of
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`unpatentability as those upon which weinstituted review in the 1492 IPR.
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`Compare Pet. 11, with NetNut Ltd. v. Bright Data Ltd., IPR2021-01492,
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`Paper 12 at 7-8, 39 (PTAB Mar. 21, 2022) (“1492 Decision”or “1492
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`Dec.”). Consistent with this, Petitioner contends that the Petition “is
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`substantially identical to the petition in the NetNut IPR [1492 IPR] and
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`contains the same grounds (based on the sameprior art and supporting
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`Patent 10,257,319 B2
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`evidence) against the same claims, and differs only as necessary to reflect
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`the factthat it is filed by a different petitioner.” Pet. 2 (citing Ex. 1022).
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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-
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`01357, Paper 19 (PTAB Sept. 6, 2017) (precedential as to § I[.B.4.1)
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`(General Plastic). Paper 17 (“Dec.”). The Board’s Decision also denied
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`joinder of this case with the 1492 IPR. /d. at 17. The Director reviewed our
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`Decision sua sponte, vacated the Decision, and remanded the case to the
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`panel, with orders that our Decision denying institution and joinder be
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`reconsidered 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 Board 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 panel’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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`Patent 10,257,319 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 remanded the 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 Fintiv
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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 °319 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 1492 IPR, IPR2020-01266 (“the
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`previously-filed 1266 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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`IPR2022-00861
`Patent 10,257,319 B2
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`In the 1492 IPR,the case to which Petitioner is seeking joinder, we
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`instituted an inter partes review of claims 1, 2, 12, 14, 15, 17-19, and 21-29
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`of the °319 patent on the following grounds:
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`
`
`
` Crowds?
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`1,19, 21-29!
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`1,2, 14, 15, 17-19,
`
`103
`Crowds, RFC 2616+
`21-29
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`1, 12, 14, 21, 22, 24,
`25, 27-29
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`1, 12, 14, 15, 17-19,
`21,22,24,25,27-|103 Border, RFC 2616
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`29°
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`1, 17, 19, 21-29
`102
`MorphMix’
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`1,2, 14,15,17-19,|103 MorphMix, RFC 2616
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`
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`
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`
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`' The Petition includes assertions for claim 23 under the Crowdsanticipation
`ground. Pet. 36. Accordingly, we include this claim in the summarytable,
`although not included in the Petition’s summary table. /d. at 11.
`? Because the application from which the ’319 patent issued hasan earliest
`effective filing date before March 16, 2013 (Ex. 1001, (60)), citations to 35
`U.S.C. §8 102 and 103 are to the pre-AJA versions. Leahy-Smith America
`Invents Act (“AIA”), Pub. L. No. 112-29.
`3 Michael Reiter & Aviel Rubin, Crowds: Anonymityfor Web Transactions,
`ACM Transactions on Information and System Security, Vol. 1, No. 1 (Nov.
`1998) (Ex. 1006, “Crowds”).
`+ Hypertext Transfer Protocol-HTTP/1.1, Network Working Group, RFC
`2616, The Internet Society, 1999 (Ex. 1013, “RFC 2616”).
`> U.S. Patent No. 6,795,848 B1 (Sep. 21, 2004) (Ex. 1012, “Border”).
`° Although Petitioner’s listing of the asserted grounds doesnotidentify
`claim 19 for this ground (see Pet. 11), Petitioner includes claim 19 inits
`analysis of obviousness based on Border(see id. at 57). Accordingly, we
`include claim 19 here.
`7 Marc Rennhard, MorphMix — A Peer-to-Peer-based System for Anonymous
`Internet Access (2004) (Ex. 1008, “MorphMix”).
`
`5
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`IPR2022-00861
`Patent 10,257,319 B2
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`
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`NetNut Ltd. v. Bright Data Ltd., IPR2021-01492, Paper 12 at 7-8, 39 (PTAB
`Mar. 21, 2022).
`
`Patent Ownersettled with NetNut in the 1492 IPR, and NetNut has
`
`been terminated as Petitioner in that action. 1492 IPR, Paper 20.
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`In the previously-filed 1266 IPR, Petitioner challenged claims of the
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`°319 patent, and Crowds, Border, and MorphMix were the primary prior art
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`asserted. Code200, UAB v. Luminati Networks Ltd.,° IPR2020-01266,
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`Paper 5. The previously-filed 1266 IPR was denied on discretionary
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`grounds. /d., Paper 18 (Dec. 23, 2020).
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`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 °319 patent, as well as for infringement of U.S. Patent Nos. 10,484,510
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`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 ’319 patent were invalid in view of the Crowds
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`reference asserted here waspresented 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. 1023, 5).
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`8 The case caption in the underlyinglitigation was later changedto identify
`plaintiff as Bright Data Ltd. Ex. 1020, 1.
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`IPR2022-00861
`Patent 10,257,319 B2
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`Additionally, the parties indicate that the °319 patent is the subject of
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`an ex parte reexamination, Control No. 90/014,875, which has been stayed.
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`Mot. 5; Paper 16, 2.
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`D. The ’319 Patent (Ex. 1001)
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`The °319 patentis titled “System Providing Faster And More Efficient
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`Data Communication.” Ex. 1001, code (54). According to the ’319 patent,
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`there is a “need for a new method ofdata transfer that is fast for the
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`consumer, cheap for the content distributor and does not require
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`infrastructure investment for ISPs.” /d. at 1:54-56. The patent states that
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`other “attempts at making the Internet faster for the consumer and cheaper
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`for the broadcaster,” such as proxy servers and peer-to-peerfile sharing,
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`have various shortcomings. /d. at 1:58-59, 2:24-2:32, 2:59-3:3.
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`The °319 patent describes a system and method “for faster and more
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`efficient data communication within a communication network,” such as in
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`the networkillustrated in Figure 3, reproduced below (Ex. 1001, 4:41-44):
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`IPR2022-00861
`Patent 10,257,319 B2
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`ac
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`ACCELERATION |
`GERVER
`Aas
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`
`
`“— — = eetONnrteitarreeiennrerne”
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`STORAGE
`DEVICE
`is
`paren
`
`TLEENE
`a
`
`7
`
`enh
`
`-
`
`SENT
`AHENT
`
`3
`
`fern *
`
`f
`
`Pree
`13
`
`Ss
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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, 4:43-45. Due to
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`the functionality provided by software stored within each communication
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`device, “each communication device mayserveas a client, peer, or agent,
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`depending upon requirements of the network 100.” /d. at 4:46—50.
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`Client 102 is capable of communicating with peers 112, 114, and 116,
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`as well as with one or more agents 122. Ex. 1001, 4:56-58. Web server 152
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`may be“a typical HTTP server, such as those being used to deliver content
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`on any of the manysuch servers on the Internet.” /d. at 4:63—67.
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`Acceleration server 162 includes an acceleration server storage device 164
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`IPR2022-00861
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`with an acceleration server database, which “stores Internet Protocol (IP)
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`addresses of communication devices within the communication network 100
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`having acceleration software stored therein.” /d. at 5:8-14.
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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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`communication devices “that are currently online, and whoseIP addressis
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`numerically close to the IP of the destination Web server 152.” /d. at 13:19-
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`29. The client then sendsthe original request to the agentsin thelist to find
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`out which “1s best suited to be the one agent that will assist with this
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`request.” /d. at 13:31-36.
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`Each agent respondsto the client with information which “can help
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`the client to download the requested information from peers in the network.”
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`Ex. 1001, 13:53-57. “Specifically, each agent responds with whether the
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`agent has seen a previous request for this resource that has been fulfilled. In
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`such a case, the agent may then provide the client with the list of peers and
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`checksums of the chunks that each of them have.” /d. at 13:57-61.
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`The client selects an agent based on a numberoffactors, and the selected
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`agent determines whether data stored in its memory or the memoryof the
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`peers “still mirrors the information that would have been received from the
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`server itself for this request.” /d. at 13:62—14:1, 14:35-38. If the selected
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`agent does not have the necessary information to service a request, it may
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`“load the information directly from the server in order to be able to provide
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`an answerto the requesting client.” /d. at 14:62—67.
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`Patent 10,257,319 B2
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`Claim 1, the only independentclaim of the ’319 patent, is illustrative
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`of the claimed subject matter and is reproduced below, with references
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`added in brackets.
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`1. [Preamble] A method for use withafirst client device,
`for use with a first server that comprises a webserverthat is a
`Hypertext Transfer Protocol (HTTP) server that respondsto
`HTTPrequests, the first server stores a first content identified
`by a first content identifier, and for use with a secondserver,
`the method bythefirst client device comprising:
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`[a] receiving, from the secondserver, the first content
`identifier;
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`[b] sending, to the first server over the Internet, a
`Hypertext Transfer Protocol (HTTP) request that comprises the
`first content identifier;
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`[c] receiving, the first content from the first server over
`the Internet in response to the sending ofthe first content
`identifier; and
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`[d] sending, the first content by the first client device to
`the second server, in response to the receiving of the first
`content identifier.
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`Ex. 1001, 19:16—32.
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`E. Asserted Grounds
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`Petitioner asserts the following grounds of unpatentability. Pet. 11.
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` 1, 19, 21-29°
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`” Although not noted in the groundstable (Pet. 11), Petitioner asserts an
`anticipation challenge to claim 23 (id. at 11).
`
`10
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`IPR2022-00861
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`
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`1,2, 14, 15, 17-19,
`-
`91-29
`103
`Crowds, RFC 2616
`1, 12, 14, 21, 22, 24,
`Border
`102
`25, 27-29
`
`1, 12, 14, 15, 17-19,
`
`21, 22,24, 25,27-29|19? Border, RFC 2616
`1, 17, 19, 21-29
`102
`MorphMix
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`
`
`
`
`
`
`
`
`M30” 15,1719,|193 MorphMix, RFC 2616
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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
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`should deny the Petition under 35 U.S.C. § 314(a) because “the Fintiv
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`factors overwhelmingly favor denial of institution.” Prelim. Resp. 16.
`
`The Board’s precedential decision in Apple Inc. v. Fintiv Inc.,
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`IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (“Fintiv’),
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`identifies a non-exclusive list of factors parties may consider addressing
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`wherethere 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
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`5—16. Those factors include:
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`1. whether the court granted a stay or evidence exists that one
`may be granted if a proceeding 1s instituted;
`
`10 For the obviousness challenges under Crowds, Border, and MorpMix,
`Petitioner additionally refers to the basis “in view of the knowledgeof a
`POSA.” Pet. 11. We understand this 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.
`
`11
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`2. proximity of the court’s trial date to the Board’s projected
`statutory deadline for a final written decision;
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`3. investmentin the parallel proceeding by the court and the
`parties;
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`4. overlap between issues raised in the petition and in the
`parallel proceeding;
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`5. whether the petitioner and the defendantin the parallel
`proceeding are the same party; and
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`6. other circumstances that impact the Board’s exercise of
`discretion, including the merits.
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`Id. at 5-6.
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`On June 21, 2022, the Director of the United States Patent and
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`Trademark Office issued an /nterim Procedure for Discretionary Denials in
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`AIA Post-Grant Proceedings with Parallel District Court Litigation
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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 is 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 on a parallel
`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.
`
`Td. at 9.
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`'T Available at: https://www.uspto.gov/sites/default/files/documents/interim
`_procdiscretionarydenialsaiaparalleldistrictcourtlitigationmemo2
`0220621 pdf
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`12
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`Patent Ownerasserts that the status of the 7eso litigation, where a jury
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`verdict has been reached, should be consideredin the Fintiv evaluation.
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`Prelim. Resp. 16. Patent Owner contends that factors 2—6 of Fintiv favor
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`denial and factor 1 is neutral. /d. at 16-24. Patent Owner arguesthat
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`Crowdswasthe reference before the jury, and MorphMix is cumulative to
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`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.
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`Petitioner contends that the 7eso litigation concerned different claims,
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`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
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`wasthe only reference before the jury in that litigation. /d. at 7. Petitioner
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`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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`is available here and which “the Board found persuasive”in the 1492 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.
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`/d.at 3.
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`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 ofparallel district court litigation where a petition presents compelling
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`evidence of unpatentability.”, Memorandum 2. The Memorandum explains
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`that “where the PTAB determines that the information presented at the
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`institution stage presents a compelling unpatentability challenge, that
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`determination alone demonstrates that the PTAB should not discretionarily
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`deny institution under Fintiv.”, Memorandum, 4—5 (emphasis added). The
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`Memorandum further explains that “[c]ompelling, meritorious challenges
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`13
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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.” Memorandum 4.
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`On the current record, we determine that Petitioner’s invalidity
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`groundspresent compelling unpatentability challenges. See infra Sections
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`IV, D-H. In particular, in our view at this stage of the proceeding, the
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`Petition presents compelling evidencethat three prior art references,
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`including Border, which wasnot before the jury in the 7esolitigation,
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`anticipate many of the claims of the °319 patent. We determinethat
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`instituting inter partes review under these circumstances“strikes a balance
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`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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`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
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`A. Level of Ordinary Skill in the Art
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`According to Petitioner, a person of ordinary skill in the pertinentart
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`“would have at least a bachelor’s degree in Computer Scienceor related
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`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.”
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`Pet. 17 (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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`14
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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.
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`Patent Owner submits that a person of ordinary skill in the art “had a
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`Master’s Degree or higherin the field of Electrical Engineering, Computer
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`Engineering, or Computer Scienceor as of that time had a Bachelor’s
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`Degree in the samefields and two or more years of experience in Internet
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`Communications.” Prelim. Resp. 35 (citing Ex. 2054 4 18). Patent Owner
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`states that this definition and Petitioner’s definition of a person of ordinary
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`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.
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`For the purposes of this Decision, we adopt Petitioner’s proposed
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`level of qualifications becauseit is consistent with the ’319 patent and the
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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).
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`B. Claim Construction
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`In this inter partes review, claims are construed using the same claim
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`construction standard that would be used to construe the claims in a civil
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`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
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`generally given their ordinary and customary meaning,” as would be
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`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
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`15
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`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
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`NetworksLtd. v. Teso LT, UAB,et al., No. 2:19-cv-395 (E.D. Tex.) (Teso
`
`Litigation), are appropriate in this case. Pet. 18. In particular, Petitioner
`
`points to two claim construction orders in that case—the “7eso Order” (Ex.
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`1017) and the “7eso Supplemental Order” (Ex. 1020). /d.
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`In the Teso
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`litigation, the parties agreed to certain constructions adopted by thedistrict
`
`court. Ex. 1017,9. Accordingly, the district court construed the preamble
`
`of claim | of the ?319 patent to be limiting, and construed certain other terms
`
`to have their “plain and ordinary meaning.” /d.
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`In addition, the district
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`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
`
`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
`
`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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`16
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`IPR2022-00861
`Patent 10,257,319 B2
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`Patent Owneralso asserts that in the 7eso litigation the term “client
`
`device” was construed as a “communication device operating in the role of a
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`client,” and asserts that a ““communication device’ in the context of the
`
`specification is not simply any device that communicates over the Internet.”
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`Id. at 38 (citing Ex. 2054 4 38). Patent Owner arguesthat “the Court has
`
`repeatedly emphasized that a client device is not merely a general-purpose
`
`computer.” /d. Patent Owner contendsthat “in the context of the
`
`specification, a client device would be understood to be, more specifically, a
`
`consumer computer like a smartphone,tablet, laptop, or personal computer.”
`
`Id. at 40. Patent Ownerpresents further arguments on this issue, noting
`
`disagreements with the district court, and referring to the prosecution history
`
`and extrinsic evidence. /d. at 40-43.
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`For the purposes of this decision, we adoptthe district court’s
`
`construction for the “second server”as clarified in the 7eso Supplemental
`
`Order. Ex. 1020, 11. Thus, we adoptthe district court’s original
`
`construction, with the clarification that the second serveris “a device that is
`
`operating in the role of a server and that is not the first client device.” Jd. at
`
`8. Specifically, we adopt the district court’s clarification that “a component
`
`can be configured to operate in different roles—so longas it does not
`
`simultaneously serve as more than oneof: the client device, the first
`
`server/second server, and the web server.” Ex. 1020, 10 (internal quotation
`
`marks omitted). Additionally, we adopt the district court construction of
`
`“client device” as “communication device that 1s operating in the role of a
`
`client.” Ex. 1017, 12.
`
`Weonly construe terms that are necessary to resolve disputes. See
`
`Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013,
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`17
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`IPR2022-00861
`Patent 10,257,319 B2
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`1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d
`
`795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in
`
`controversy, and only to the extent necessary to resolve the controversy.”’).
`
`Atthis stage, no other terms require explicit construction. To the extent we
`
`need to interpret any other terms, we will do so in the context of the analysis
`
`of the prior art that follows.
`
`C. Principles ofLaw
`
`A claim is unpatentable under 35 U.S.C. § 102 if a prior art reference
`
`discloses each and every limitation of the claimed invention, either explicitly
`
`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
`
`(Fed. Cir. 1999) (“To anticipate, a claim a prior art reference must disclose
`
`every limitation of the claimed invention .
`
`. .”, any limitation not explicitly
`
`taught must be inherently taught and would be so understood by a person
`
`experienced in the field); In re Baxter Travenol Labs., 952 F.2d 388, 390
`
`(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
`
`whichsaid subject matter pertains.” 35 U.S.C. § 103 (2011); see also KSR
`
`Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
`
`obviousnessis resolved on the basis of underlying factual determinations
`
`including:
`
`(1) the scope and content of the prior art; (2) any differences
`
`18
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`IPR2022-00861
`Patent 10,257,319 B2
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`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
`
`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 approach for increasing
`
`the privacy of web transactions.” Ex. 1006, 2.'° In this approach, a user
`
`joins a “crowd”of other users, wherein the user’s request to a web serveris
`
`passed to a random memberof the crowd,and possibly forwarded to one or
`
`more other members, prior to being submitted to the end server. /d.
`
`In this
`
`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
`
`initiator.” /d.
`
`In Crowds,“[a] user is represented by a process on her
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`computer called ajondo (pronounced ‘John Doe’ and meantto 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
`
`(id. at 9), reproduced below:
`
`” No evidencerelating to objective indicia of nonobviousness is presented
`by the parties.
`'S Unless otherwise stated, citations to exhibits use the page numbers
`assigned by the parties and not the original page numbers.
`
`19
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`IPR2022-00861
`Patent 10,257,319 B2
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`Crowd
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`Web Servers
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`Pig. 2. Paths in a crowd (he initialer and web server of each path are labeled the same}.
`
`In Figure 2 of Crowds, above, when a jondoreceives a user request from a
`
`browser,it “initiates the establishment of a random path ofjondos that
`
`carries its users’ transactions to and from their intended web servers.” Ex.
`
`1006, 8. For example, the paths in Figure 2 among the jondoslabeled 1 to 6
`
`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.
`
`“TS]erver replies traverse the same path as the requests, only in reverse.” /d.
`
`at 9.
`
`2. Border (Ex. 1012)
`
`Borderis a patenttitled “System and Method of Reading Ahead of
`
`Objects for Delivery to an HTTP ProxyServer.” Ex. 1012, code (54).
`
`Border describes “a system for retrieving web content.” /d. at code (57). In
`
`Border, “[a] downstream proxy server receives a URL request message from
`
`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 proxyserver” and
`
`20
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`
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`IPR2022-00861
`Patent 10,257,319 B2
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`“selectively forwards the URL request message to a web server and receives
`
`the URL content from the web server.” /d. at 3:38—42. Then, “[t]he
`
`upstream proxy server forwards the URL content to the downstream proxy
`
`server.” /d. at 3:42-43. An exemplary system employing downstream and
`
`upstream proxyservers for accessing a webserver is shown in Figure 1,
`
`reproduced below:
`
`FIG. 1
`
`100
`
`5«
`
`413
`
`aA
`a
`IP NETWORK
`&
`“>
`(E.G. INTERNET) yo
`(
`_
`te- -
`
`UPSTREAM
`
`SERVER
`
`i
`
`chau | + 10s
`LL?
`SERVER
`
`i
`
`é
`
`
`Asdepicted in Border’s Figure 1, user station 101, for example, a personal
`
`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
`
`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
`
`117.
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`/d. at 4:8-11. Upstream proxy server 107 is connected to web server
`
`109 through IP network 113, for example, the Internet. /d. at 4:5—-7. In this
`
`system, proxy servers 105 and 107 “act as an intermediary between oneor
`
`more browsers and many webservers(e.g., server 109).” /d. at 4:30-31.
`
`21
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`IPR2022-00861
`Patent 10,257,319 B2
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`3. MorphMix (Ex. 1008)
`
`MorphMixis a doctoral thesis that identifies the lack of anonymity on
`
`the Internet as a problem that “limits the privacy protection of Internet
`
`users.” Ex. 1008, Abstract. Accordingly, MorphMix is focused on
`
`“achieving anonymousInternet access for low-latency applications such as
`
`web browsing.” /d. MorphMix describes “a peer-to-peer-based mix
`
`network” where “[e]very no
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