UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TESO LT, UAB; CODE200, UAB; METACLUSTER LT, UAB; AND
`OXYSALES, UAB, Petitioners,
`
`v.
`
`LUMINATI NETWORKS LTD.,
`Patent Owner.
`____________
`
`Case IPR2021-00249
`Patent No. 10,637,968
`____________
`
`NOTICE OF ISSUANCE OF ORDER RELEVANT
`TO PARALLEL DISTRICT COURT LITIGATION
`
`
`
`
`
`
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TESO LT, UAB; CODE200, UAB; METACLUSTER LT, UAB; AND
`OXYSALES, UAB, Petitioners,
`
`v.
`
`LUMINATI NETWORKS LTD.,
`Patent Owner.
`____________
`
`Case IPR2021-00249
`Patent No. 10,637,968
`____________
`
`NOTICE OF ISSUANCE OF ORDER RELEVANT
`TO PARALLEL DISTRICT COURT LITIGATION
`
`
`
`
`
`
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`Patent Board:
`
`Petitioner’s Position: In Paper 13 of Inter Partes Review Case No. IPR2020-
`
`01266, the Board instructed the parties to “advise the Board by email of any changes
`
`to the schedule in the district court action that might affect the trial date of that action
`
`within 24 hours of entry of the changes by the district court.” Although no similar
`
`Order has been entered in this case, the immediate case involves the same parties
`
`and a patent asserted in one of the two patent infringement actions referenced below.
`
`Accordingly, Petitioners provide the following Notice of Issuance of Order Relevant
`
`to Parallel District Court Litigation.
`
`Patent Owner has filed two patent infringement actions against Petitioners in
`
`the United States District for the Eastern District of Texas. The first action, Case No.
`
`2:19-cv-00395-JRG (“395 Case”), involves three patents, U.S. Pat. 10,257,319, U.S.
`
`Pat. 10,484,510, and U.S. Pat. 10,469,614, which are asserted against Petitioners
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`Teso LT, UAB, Metacluster LT, UAB, and Oxysales, UAB. Those patents were the
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`subject of, respectively, Inter Partes Review Case Nos. IPR2020-01266, IPR2020-
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`01358, and IPR2020-01506. The Board issued discretionary denials of the three
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`Petitions under 35 U.S.C. § 314(a), in part due to the 395 Case being set for jury
`
`selection on May 10, 2021, before a final determination would issue in any of the
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`Inter Partes Review Cases. After the discretionary denials, the parties filed a Joint
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`Motion to Reschedule Pretrial Conference and Conditionally Continue Trial Setting
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`
`
`1
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`
`
`
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`in the 395 Case to conditionally continue the trial. The Court granted the motion “as
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`modified,” and set the trial to July 12, 2021. 395 Case, ECF No. 372. A copy of the
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`Order is attached hereto as Exhibit 1037.
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`The second action, Case No. 2:19-cv-00396-JRG (“396 Case”), involves two
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`patents—U.S. Pat. 10,637,968 (the patent-at-issue in the immediate petition) and
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`U.S. Pat. 10,484,511 (the subject of Inter Partes Review Case No. IPR2021-00122),1
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`asserted against Petitioners Code200, UAB, Metacluster LT, UAB, and Oxysales,
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`UAB. Importantly, the 396 Case is also set for jury selection on July 12, 2021.
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`Petitioners and Patent Owner acknowledge that trial in both cases cannot commence
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`simultaneously, and have discussed the scheduling conflict. Patent Owner has
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`informed Petitioners that it contends the 395 Case trial should commence first
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`because it was filed first. Accordingly, Patent Owner’s position is effectively that
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`the trial in the 396 Case—which involves a patent that is the subject of a still pending
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`Inter Partes Review Case—should not commence on July 12, 2021. Therefore,
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`Petitioners respectfully submit that, given the current state of affairs, it is not clear
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`when the 396 Case will reach trial. Petitioners disagree with Patent Owner’s
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`characterization of the “practice of the Court.” Patent Owner’s suggestion that the
`
`
`1 The Board issued a discretionary denial in Inter Partes Review Case No. IPR2021-
`00122 under 35 U.S.C. § 314(a) on April 20, 2021, in part due to the 396 Case being
`set for trial on July 12, 2021, before a final determination would issue in that Inter
`Partes Review Case.
`
`
`
`2
`
`
`
`
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`396 Case will be tried in July, effectively immediately after the 395 case, is mere
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`speculation.
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`Patent Owner Position: As stated by the United States District for the
`
`Eastern District of Texas (“Court”), “[t]he dates of pretrial conference and jury
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`selection are among those which the Court does not change without a showing of
`
`good cause.” Exhibit 1037 at 2. The Court set the jury selection date for the 396
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`Case for July 12, 2021 under the current Docket Control Order (ECF 48), which has
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`not changed. Exhibit 2001 at 1. Neither party has suggested there is good cause to
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`move the jury selection date and Patent Owner is aware of no motion, joint or
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`otherwise, seeking to move the jury selection date. Per the practice of the Court,
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`multiple cases often share the same jury selection date with the trials to follow.
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`Consistent with that practice, Bright Data has no reason to believe that both trials
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`will not occur in July.
`
`
`
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`
`
`3
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`
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`
`
`Dated: April 29, 2021
`
`Respectfully submitted,
`
`CHARHON CALLAHAN ROBSON &
`GARZA, PLLC
`
`/Craig Tolliver/
`
`Craig Tolliver (Reg. No. 45,975)
`George “Jorde” Scott (Reg. No. 62,859)
`3333 Lee Parkway, Suite 460
`Dallas, TX 75219
`(214) 521-6400
`
`
`
` .
`
`
`
`
`
`4
`
`
`
`
`
`
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`
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`CERTIFICATE OF SERVICE
`
`The undersigned certifies service pursuant to 37 C.F.R. § 42.6(e) on the
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`undersigned date on Patent Owner by email as authorized by the Patent Owner at the
`
`following email addresses:
`
`tomd@ruyakcherian.com
`
`donl@ruyakcherian.com
`
`Luminati_IPRs@ruyakcherian.com
`
`
`
`Dated: April 29, 2021
`
`
`
`
`
`
`
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`
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`5
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`Respectfully submitted,
`
`CHARHON CALLAHAN ROBSON &
`GARZA, PLLC
`
`/Craig Tolliver/
`
`Craig Tolliver (Reg. No. 45,975)
`Lead Attorney for Petitioners
`3333 Lee Parkway, Suite 460
`Dallas, TX 75219
`(214) 521-6400
`
`
`
`
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