`Trials@uspto.gov
`571-272-7822 Entered: February 6, 2023
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CODE200, UAB; TESO LT, UAB; METACLUSTER LT,
`UAB;OXYSALES, UAB; AND CORETECH LT, UAB,
`Petitioner,
`
`v.
`
`BRIGHT DATA LTD.,
`Patent Owner.
`____________
`
`IPR2021-01492 (Patent 10,257,319 B2)
` IPR2021-01493 (Patent 10,484,510 B2)1
`____________
`
`
`
`Before THOMAS L. GIANNETTI, SHEILA F. McSHANE, and
`RUSSELL E. CASS, Administrative Patent Judges
`
`McSHANE, Administrative Patent Judge.
`
`
`
`ORDER
`Adjusting One-Year Pendency Due to Joinder
`35 U.S.C. § 316(a)(11); 37 C.F.R. § 42.100(c)
`
`
`
`
`1 The parties are not authorized to use this caption.
`
`
`
`IPR2021-01492 (Patent 10,257,319 B2)
`IPR2021-01493 (Patent 10,484,510 B2)
`
`
`I. BACKGROUND
`
`On April 18, 2022, Code200, UAB, Teso LT, UAB, Metacluster LT,
`UAB, Oxysales, UAB, and Coretech LT, UAB (“Petitioner”) filed Petitions
`for inter partes review of claims of U.S. Patent No. 10,257,319 B2 in
`IPR2022-00861 (“861 IPR”) and claims of Patent 10,484,510 B2 in
`IPR2022-00862 (“862 IPR”). 861 IPR, Paper 1; 862 IPR, Paper 1. Along
`with the Petitions, Petitioner also filed Motions for Joinder with NetNut Ltd.
`v. Bright Data Ltd., IPR2021-01492 (“the 1492 IPR” ) and NetNut Ltd. v.
`Bright Data Ltd., IPR2021-01493 (“the 1493 IPR”), respectively. Paper 7,
`861 IPR; Paper 7, 862 IPR. 2
`
`On July 25, 2022, we issued decisions in the 861 and 862 IPRs
`exercising discretion to deny institution based on an assessment of factors
`set forth in General Plastic Industrial Co. Ltd. v. Canon Kabushiki Kaisha,
`IPR2016-01357, Paper 19 (PTAB Sept. 6, 2017) (precedential as to
`§ II.B.4.i). Paper 17, 861 IPR. The Board’s decisions also denied the
`motions for joinder. Id. at 17.
`The Director reviewed our decisions sua sponte, and on August 23,
`2022, the Director issued an order vacating the decisions and remanding the
`cases to the panel, with an order that our decisions denying institution and
`joinder be reconsidered consistent with the remand decision. Paper 18, 861
`IPR. On October 19, 2022, we issued rehearing decisions that granted
`institution and joinder with the respective 1492 and 1493 IPRs. Paper 19,
`861 IPR, 40. The rehearing and joinder decisions directed that all further
`
`
`2 Hereafter, we refer to the filings in the 861 IPR because they are
`substantially similar to those of the 862 IPR.
`2
`
`
`
`IPR2021-01492 (Patent 10,257,319 B2)
`IPR2021-01493 (Patent 10,484,510 B2)
`
`filings in the joined proceedings were to be made in the respective 1492 and
`1493 IPRs. Id. We also issued a Revised Joint Scheduling Order that was
`entered in the respective 1492 and 1493 IPRs. Paper 27, 1492 IPR; Paper
`25, 1493 IPR.
`
`II. ADJUSTMENT OF ONE-YEAR PENDENCY DUE TO JOINDER
`
`Pursuant to 35 U.S.C. § 316(a)(11), “the final determination in an
`inter partes review [shall] be issued not later than 1 year after the date on
`which the Director notices the institution of a review under this chapter,
`except that the Director . . . may adjust the time periods in this paragraph in
`the case of joinder under section 315(c).” The Director has delegated the
`authority to adjust the one-year period to the Board. See 37 C.F.R.
`§ 42.100(c). In particular, 37 C.F.R. § 42.100(c) provides:
`An inter partes review proceeding shall be administered such
`that pendency before the Board after institution is normally no
`more than one year. The time can be . . . adjusted by the Board
`in the case of joinder.
`In accordance with 37 C.F.R. § 42.100(c), the Board adjusts the time
`of pendency before the Board in the present proceedings, which involve
`joinder, beyond one year after institution to permit the Board to consider and
`determine the pending issues. The Board shall issue a Final Written
`Decisions in these proceedings no later than September 29, 2023.
`
`
`
`3
`
`
`
`IPR2021-01492 (Patent 10,257,319 B2)
`IPR2021-01493 (Patent 10,484,510 B2)
`
`
`III. ORDER
`
`Accordingly, it is:
`
`ORDERED that the time of pendency in these proceedings, which
`
`involves joinder, is adjusted beyond one year after institution; and
`FURTHER ORDERED that the Board shall issue a Final Written
`Decisions in these proceedings no later than September 29, 2023.
`
`
`
`
`
`
`
`
`
`4
`
`
`
`IPR2021-01492 (Patent 10,257,319 B2)
`IPR2021-01493 (Patent 10,484,510 B2)
`
`PETITIONER:
`
`Ronald Abramson
`M. Mord Lewis
`Ari J. Jaffess
`LISTON ABRAMSON LLP
`ron.abramson@listonabramson.com
`michael.lewis@listonabramson.com
`ari.jaffess@listonabramson.com
`
`John Heuton
`George “Jorde” Scott
`Craig Tolliver
`CHARHON CALLAHAN ROBSON & GARZA, PLLC
`jheuton@ccrglaw.com
`jscott@ccrglaw.com
`ctolliver@ccrglaw.com
`
`
`PATENT OWNER:
`
`Thomas Dunham
`Elizabeth O’Brien
`CHERIAN LLP
`tomd@ruyakcherian.com
`elizabetho@cherianllp.com
`
`
`
`
`
`
`
`
`5
`
`
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