Paper 12
`Trials@uspto.gov
`Entered: March 21, 2022
`Tel: 571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`NETNUT LTD.,
`Petitioner,
`v.
`BRIGHT DATA LTD.,
`Patent Owner.
`
`IPR2021-01492
`Patent 10,257,319 B2
`
`
`
`Before THOMAS L. GIANNETTI, SHEILA F. McSHANE, and
`RUSSELL E. CASS, Administrative Patent Judges.
`
`GIANNETTI, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`Trials@uspto.gov
`Entered: March 21, 2022
`Tel: 571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`NETNUT LTD.,
`Petitioner,
`v.
`BRIGHT DATA LTD.,
`Patent Owner.
`
`IPR2021-01492
`Patent 10,257,319 B2
`
`
`
`Before THOMAS L. GIANNETTI, SHEILA F. McSHANE, and
`RUSSELL E. CASS, Administrative Patent Judges.
`
`GIANNETTI, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`IPR2021-01492
`Patent 10,257,319 B2
`
`
`INTRODUCTION
`I.
`NetNut Ltd. (“Petitioner”) filed a Petition (Paper 2, “Pet.”) requesting
`inter partes review of claims 1, 2, 12, 14, 15, 17–19, and 21–29 (the
`“challenged claims”) of U.S. Patent No. 10,257,319 B2 (Ex. 1001, “the ’319
`patent”). Patent Owner, Bright Data Ltd.,1 filed a Preliminary Response
`(Paper 9, “Prelim. Resp.”). With authorization from the panel, Petitioner
`filed a preliminary Reply (Paper 10, “Pet. Prelim. Reply”), and Patent
`Owner filed a preliminary Sur-reply (Paper 11, “PO Prelim. Sur-reply”).
`The Board has authority to determine whether to institute 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 “shows that 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 prevail with respect to at
`least one claim. We therefore institute inter partes review as to all of the
`challenged claims of the ’319 patent and all of the asserted grounds of
`unpatentability in the Petition.
`
`II. BACKGROUND
`A. Related Matters
`The parties identify several district court proceedings involving the
`’319 patent and a related patent, U.S. Patent No. 10,484,510 (“the ’510
`patent”), including Bright Data Ltd. v. NetNut Ltd., No. 2:21-cv-225 (E.D.
`
`1 Bright Data Ltd. was formerly known as Luminati Networks, Ltd. See Pet.
`1; Prelim. Resp. 11 n.8.
`
`2
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`Tex.) (the “NetNut Litigation”);2 and Luminati Networks Ltd. v. Teso LT,
`UAB, et al., No. 2:19-cv-395 (E.D. Tex.) (the “Teso Litigation”). Pet. 2–3;
`Paper 4, 1–2.
`The parties also identify a number of district court actions involving
`patents related to the ’319 patent. See Pet. 3–4; Paper 4, 2–3.
`The ’319 patent was previously before the Board in IPR2020-01266
`(institution denied). Pet. 4; Paper 4, 1. The ’510 patent is involved in
`IPR2021-01493 (pending), and was previously before the Board in
`IPR2020-01358 (institution denied). Pet. 5; Paper 4, 1. The parties also
`identify a number of other USPTO proceedings involving patents related to
`the ’319 patent. See Pet. 4–5; Paper 4, 2.
`In addition, Patent Owner identifies ex parte reexaminations requested
`for the ’319 and ’510 patents, respectively, Control No. 90/014,875 and
`Control No. 90/014,876. Paper 6, 1–2; Prelim. Resp. 17.
`B. Real Parties-in-Interest
`Petitioner identifies NetNut Ltd. as the only real party-in-interest. Pet.
`2. Patent Owner identifies Bright Data Ltd. as the only real party-in-interest.
`Paper 4, 1. At this stage, neither party challenges those identifications.
`C. The ’319 Patent (Ex. 1001)
`The ’319 patent is titled “System Providing Faster and More Efficient
`Data Communication.” Ex. 1001, (54). According to the ’319 patent, there
`is a “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.” Id. at 1:54–56. The patent states that other “attempts
`
`
`2 Patent Owner alternatively refers to this case as the “NetNut II Litigation.”
`See Prelim. Resp. 25.
`
`3
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`at making the Internet faster for the consumer and cheaper for the
`broadcaster,” such as proxy servers and peer-to-peer file sharing, have
`various shortcomings. Id. at 1:58–59; 2:24–2:32; 2:59–3:3.
`The ’319 patent describes a system and method “for faster and more
`efficient data communication within a communication network,” such as in
`the network illustrated in Figure 3, reproduced below (id. at 4:41–44):
`
`Figure 3 is a schematic diagram depicting communication network 100
`including a number of communication devices. Id. at 4:43–45. Due to the
`functionality provided by software stored within each communication
`
`
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`4
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`device, “each device may serve as a client, peer, or agent, depending upon
`requirements of the network 100.” Id. at 4:46–50.
`
`Client 102 is capable of communicating with peers 112, 114, and 116,
`as well as with one or more agents 122. Id. at 4:56–58. Web server 152
`may be “a typical HTTP server, such as those being used to deliver content
`on any of the many such servers on the Internet.” Id. at 4:63–67.
`Acceleration server 162 includes an 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.” Id. at 5:8–14.
`
`In operation, a client may request a resource on the network, for
`example, through the use of an Internet browser. See id. at 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. Id. at 13:8–15. Acceleration server
`162 then prepares a list of agents that can handle the request, which includes
`communication devices “that are currently online, and whose IP address is
`numerically close to the IP of the destination Web server 152.” Id. at 13:19–
`29. The client then sends the original request to the agents in the list to find
`out which “is best suited to be the one agent that will assist with this
`request.” Id. at 13:31–36.
`Each agent responds to the client with information which “can help
`the client to download the requested information from peers in the network.”
`Id. at 13:53–57. “Specifically, each agent responds with whether the agent
`has seen a previous request for this resource that has been fulfilled. In such
`a case, the agent may then provide the client with the list of peers and
`checksums of the chunks that each of them have.” Id. at 13:57–61.
`
`5
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`
`The client selects an agent based on a number of factors, and the
`selected agent determines whether data stored in its memory or the memory
`of the peers “still mirrors the information that would have been received
`from the server itself for this request.” Id. at 13:62–14:1, 14:35–38. If the
`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 answer to the requesting client.” Id. at 14:62–67.
`
`D. Illustrative Claim
`The ’319 patent has 29 claims. As noted, claims 1, 2, 12, 14, 15, 17–
`19, and 21–29 are challenged in the Petition. Pet. 1. Claim 1, the only
`independent claim in the ’319 patent, is illustrative of the claimed subject
`matter and is reproduced below:3
`1. [Preamble] A method for use with a first client device,
`for use with a first server that comprises a web server that is a
`Hypertext Transfer Protocol (HTTP) server that responds to
`HTTP requests, the first server stores a first content identified
`by a first content identifier, and for use with a second server,
`the method by the first client device comprising:
`[a] receiving, from the second server, the first content
`identifier;
`[b] sending, to the first server over the Internet, a
`Hypertext Transfer Protocol (HTTP) request that comprises the
`first content identifier;
`[c] receiving, the first content from the first server over
`the Internet in response to the sending of the first content
`identifier; and
`[d] sending, the first content by the first client device to
`the second server, in response to the receiving of the first
`content identifier.
`
`3 Paragraph references in brackets added tracking Petitioner‘s analysis.
`
`6
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`Ex. 1001, 19:16–32.
`E. Prior Art References and Other Evidence
`Petitioner relies on the following references:
`1. Michael Reiter & Aviel Rubin, Crowds: Anonymity
`for Web Transactions, ACM Transactions on Information and
`System Security, Vol. 1, No. 1 (Nov. 1998) (Ex. 1006,
`“Crowds”);
`2. Border, et al., U.S. Patent No. 6,795,848 B1 (Sep. 21,
`2004) (Ex. 1012, “Border”);
`3. Marc Rennhard, MorphMix – A Peer-to-Peer-based
`System for Anonymous Internet Access (2004) (Ex. 1008,
`“MorphMix”);
`4. Fielding, et al., RFC 2616, Hypertext Transfer
`Protocol -- HTTP/1.1, Internet Engineering Task Force,
`Network Working Group (June 1999) (Ex. 1013, “RFC 2616”).
`In addition to these references, Petitioner relies on a Declaration of
`
`Keith J. Teruya. Ex. 1005 (“Teruya Decl.”). Patent Owner submitted a
`Declaration of Dr. V. Thomas Rhyne with the Preliminary Response. Ex.
`2006 (“Rhyne Decl.”).
`E. The Asserted Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability. Pet. 10.
`
`
`7
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`
`Claim(s) Challenged
`
`1, 19, 21–295
`
`1, 2, 14, 15, 17–19, 21–29
`1, 12, 14, 21, 22, 24, 25, 27–
`29
`1, 12, 14, 15, 17–19, 21, 22,
`24, 25, 27–297
`1, 17, 19, 21–29
`
`1, 2, 14, 15, 17–9, 21–29
`
`Basis
`35 U.S.C. §
`1026
`
`Reference(s)4
`
`Crowds
`
`103
`
`102
`
`103
`
`102
`
`103
`
`Crowds, RFC 2616
`
`Border
`
`Border, RFC 2616
`
`MorphMix
`
`MorphMix, RFC 2616
`
`
`4 Petitioner’s obviousness challenges additionally refer to the “[k]nowledge
`of [a person of ordinary skill in the art].” Pet. 10. 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.
`General knowledge in the art, unsupported by the references, cannot supply
`a missing limitation. Patent Trial and Appeal Board Consolidated Trial
`Practice Guide 36 (Nov. 2019), available at https://www.uspto.gov/
`TrialPracticeGuideConsolidated.
`5 Although Petitioner’s listing of the asserted grounds excludes claim 23 for
`this ground (see Pet. 10), Petitioner includes claim 23 in its analysis of
`anticipation based on Crowds (see id. at 38). Accordingly, we include claim
`23 here.
`6 Because the application from which the ’319 patent issued has an earliest
`effective filing date before March 16, 2013 (Ex. 1001, (60)), citations to 35
`U.S.C. §§ 102 and 103 are to the pre-AIA versions. Leahy-Smith America
`Invents Act (“AIA”), Pub. L. No. 112-29.
`7 Although Petitioner’s listing of the asserted grounds does not identify
`claim 19 for this ground (see Pet. 10), Petitioner includes claim 19 in its
`analysis of obviousness based on Border (see id. at 58). Accordingly, we
`include claim 19 here.
`
`8
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`
`III. DISCRETIONARY DENIAL
`A. Denial Based on Fintiv
`Patent Owner contends the Board should deny the Petition under
`§ 314(a) because “the Fintiv factors overwhelmingly favor denial of
`institution.” Prelim. Resp. 18.
`The Board’s precedential decision in Apple Inc. v. Fintiv Inc.,
`IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”),
`identifies a non-exclusive list of factors parties may consider addressing
`where there is a related, parallel district court action to determine whether
`such action provides any basis for discretionary denial. Fintiv, Paper 11 at
`5–16. Those factors include:
`1. whether the court granted a stay or evidence exists that one
`may be granted if a proceeding is instituted;
`2. proximity of the court’s trial date to the Board’s projected
`statutory deadline for a final written decision;
`3. investment in the parallel proceeding by the court and the
`parties;
`4. overlap between issues raised in the petition and in the
`parallel proceeding;
`5. whether the petitioner and the defendant in the parallel
`proceeding are the same party; and
`6. other circumstances that impact the Board’s exercise of
`discretion, including the merits.
`Id. at 5–6.
`In evaluating the Fintiv factors, we take “a holistic view of whether
`efficiency and integrity of the system are best served by denying or
`instituting review.” Id. at 6.
`Although Patent Owner asserts that “there are five sets of other
`proceedings involving the ’319 and ’510 Patents” (Prelim. Resp. 10), Patent
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`Owner focuses its Fintiv analysis on the parallel district court litigation
`between Patent Owner and Petitioner pending in the Eastern District of
`Texas, referred to as the “NetNut Litigation.” Id. at 18–31. See infra,
`Section II.A. Referring to the NetNut Litigation, Patent Owner contends,
`“the parties are the same, the challenged claims are substantially the same,
`the primary prior art references are exactly the same, and the district court
`trial is scheduled to begin in September 2022, compared to an institution
`decision expected in this IPR in March 2022 and a final written decision in
`March 2023.” Prelim. Resp. 18. For the reasons that follow, we decline to
`exercise our discretion to deny the Petition on that basis.
`Factor 1 (Stay)
`
`Neither party has requested a stay in the NetNut Litigation. Prelim.
`Resp. 19. Thus, whether the presiding judge, Judge Gilstrap, would grant a
`stay if one were requested is speculative. This factor is neutral.
`Factor 2 (Proximity of Trial Date)
`
`If trial in the NetNut Litigation proceeds as scheduled, in September
`2022, it would occur approximately six months before the due date for the
`final written decision. Petitioner points out that trial dates in the Eastern
`District of Texas have slipped, and cites the docket sheet for a trial involving
`Patent Owner in which the jury selection date was delayed by almost six
`months. Pet. Prelim. Reply. 2 (citing Ex. 1101, docket items 65, 509).
`Furthermore, Petitioner asserts that Patent Owner has requested extensions
`in related proceedings. Id. (citing Ex. 1102, docket items 79, 80; Ex. 1103).
`The scheduled trial date is approximately six months away. In that time
`period, it is possible that this trial date also could slip, making the final
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`written decision due much closer to the trial. This factor, therefore, only
`slightly favors exercising our discretion to deny the Petition.
`Factor 3 (Investment in NetNut Litigation)
`
`Patent Owner contends that by the date of institution, “the parties will
`have invested significant resources in the NetNut Litigation.” Prelim. Resp.
`22. However, according to Petitioner, “[t]he parties have completed only
`limited work in the district court proceeding, for example, only recently
`exchanging infringement and invalidity contentions and claim
`constructions.” Pet. Prelim. Reply 2. Further, Petitioner asserts “[n]o
`depositions have been taken or noticed. The majority of work in fact
`discovery remains ahead.” Id.
`To support its argument that significant resources have been invested,
`Patent Owner cites the Docket Control Order (Ex. 2003). Prelim. Resp. 10.
`That Order shows that a Markman hearing has not been held, nor has fact or
`expert discovery ended. Ex. 2003, 3.8 Filing of dispositive motions is not
`scheduled until June 2022. Id. In the absence of more specific information
`from Patent Owner about the status of the case, we are not persuaded that
`“significant resources” have been devoted to the invalidity case in the
`NetNut Litigation.
`Moreover, Petitioner has been reasonably diligent, filing the Petition
`here on September 3, 2021, less than three months after being sued on June
`18, 2021 and over nine months before the one-year deadline. Pet. 10; Pet.
`Prelim. Reply 1. We agree with Petitioner that Patent Owner’s references to
`proceedings involving different patents or different parties do not prove a
`
`8 Unless otherwise stated, citations to exhibit pages use the page numbers
`assigned by the parties and not the original page numbers.
`
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`lack of diligence in filing the Petition in this proceeding. See Prelim. Resp.
`25–26; Pet. Prelim. Reply 3. We therefore determine that this factor
`strongly favors not exercising our discretion to deny the Petition.
`Factor 4 (Overlap of Issues)
`
`Petitioner asserts that there are “four dependent claims in this
`proceeding and five in the related proceeding (IPR2021–01493), which are
`not at issue in the district court litigation.” Pet. Prelim. Reply 3. Moreover,
`the NetNut Litigation involves “additional grounds of invalidity.” Id. at 3–4.
`Patent Owner responds that “the majority of challenged claims of the ‘319
`Patent, including independent claim 1 (i.e., the only independent claim), will
`be resolved by the district court in the NetNut II Litigation long before the
`Board issues a final written decision.” Prelim. Resp. 29. In addition, Patent
`Owner argues Petitioner relies on the “same exact references” here as in the
`NetNut Litigation. Id. at 29–30. We determine that this factor weighs at
`least moderately in favor of exercising our discretion to deny the Petition.
`Factor 5 (Petitioner and Defendant are Same Party)
`
`“If a petitioner is unrelated to a defendant in an earlier court
`proceeding, the Board has weighed this fact against exercising discretion.”
`Fintiv at 13–14. The parties in the litigation are the same. We assess this
`factor as favoring the exercise of our discretion to deny institution.
`Factor 6 (Other Circumstances, Including the Merits)
`
`We agree with Petitioner that the merits of this case are particularly
`strong. Pet. 12; Pet. Prelim. Reply 4–5. As discussed in greater detail infra,
`the merits of the case are determined by the construction of the terms “client
`device,” “first server,” and “second server.” Pet. 21–22; Prelim. Resp. 49–
`52. These terms appear in all challenged claims. Petitioner has proposed
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`certain constructions for those terms based, in part, on the district court’s
`constructions of those terms in the NetNut Litigation, and in IPR2021–
`00458 and IPR2021–00465, which involved parents similar to the ’319
`patent. Pet. 22–23.
`
`Petitioner argues that the merits are strong because Patent Owner’s
`argument construes the claims such “that clients and servers are mutually
`exclusive categories, and that a ‘communication device’ must somehow do
`something more than communicate.” Pet. Prelim. Reply 4. Petitioner
`asserts that these arguments “have repeatedly been rejected by the court,” as
`well as by the Board in IPR2021–00458 and IPR2021–00465. Id. at 4–5.
`As discussed infra, in Section IV.C, in our analysis instituting inter
`partes review in this proceeding, at this stage we agree with Petitioner’s
`claim constructions, specifically, that “the devices in question may be
`configured to operate in different roles and are characterized by the function
`they perform (i.e., sending or receiving), not by any physical properties.”
`Pet. 4–5. More specifically, we adopt the district court’s construction, with
`the clarification that the second server is “a device that is operating in the
`role of a server and that is not the first client device.” See infra, Section
`IV.C. This construction is consistent with the extrinsic evidence offered by
`Petitioner (Ex. 1018, 5), as well as the construction of “server” adopted by
`the Board in IPR2021-00458, involving a patent similar to the ’319 patent.
`See IPR2021-00458, Paper 11, 21. As this claim construction is central to
`this controversy and favors Petitioner, we determine that the merits of the
`Petition are strong. Thus, this factor strongly favors not exercising our
`discretion to deny institution.
`
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`
`Conclusion
`
`In summary, after weighing the factors and taking a holistic view of
`whether efficiency and integrity of the system are best served by denying or
`instituting review, we are not persuaded to exercise our discretion to deny
`review. The strong showing on the merits in the Petition and relatively
`minor investment in the merits of the validity challenge in district court
`persuade us that efficiency and integrity of the system would not be served
`by denying review.
`B. Denial Based on Multiple Petitions
`The Petition preemptively addresses an anticipated argument that the
`Petition should be denied under General Plastic Indus. Co. v. Canon
`Kabushiki Kaisha, IPR2016-01357, Paper 19 (PTAB Sept. 6, 2017)
`(precedential) (“General Plastic”). Pet. 12–15. In General Plastic, the
`Board set out a list of seven factors to consider when asked to exercise its
`discretion to deny review of follow-on petitions. Those factors are the
`following:
`1. whether the same petitioner previously filed a petition
`directed to the same claims of the same patent;
`2. whether at the time of filing of the first petition the petitioner
`knew of the prior art asserted in the second petition or should
`have known of it;
`3. whether at the time of filing of the second petition the
`petitioner already received the patent owner’s preliminary
`response to the first petition or received the Board’s decision on
`whether to institute review in the first petition;
`4. the length of time that elapsed between the time the petitioner
`learned of the prior art asserted in the second petition and the
`filing of the second petition;
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`5. whether the petitioner provides adequate explanation for the
`time elapsed between the filings of multiple petitions directed
`to the same claims of the same patent;
`6. the finite resources of the Board; and
`7. the requirement under 35 U.S.C. § 316(a)(11) to issue a final
`determination not later than 1 year after the date on which the
`Director notices institution of review.
`General Plastic, Paper 19 at 16. In setting forth these factors, the Board
`made it clear that “[t]here is no per se rule precluding the filing of follow-on
`petitions after the Board’s denial of one or more first-filed petitions on the
`same patent.” Id. at 15.
`
`We have reviewed Petitioner’s arguments and Patent Owner’s brief
`response. Prelim. Resp. 41–43. For the most part, Patent Owner relies on its
`Fintiv analysis, discussed supra. For example, for the first factor (“whether
`the same petitioner previously filed a petition directed to the same claims of
`the same patent”), Petitioner contends that “Petitioner was not involved with
`the prior IPR challenging the [’319] Patent.” Pet. 12. Patent Owner
`responds that “[a]lthough NetNut was not involved in the Code200/Teso IPR
`proceedings, Patent Owner respectfully disagrees that this factor ‘strongly
`favors institution’ in view of the detailed Fintiv analysis above.” Prelim.
`Resp. 42. Similarly, for General Plastic factors 2–6, Patent Owner refers to
`its Fintiv analysis. Id. at 42–43. For factor 7, Patent Owner responds that
`“Patent Owner is not presently aware of any risk that the Board will be
`unable to meet the one-year deadline under 35 U.S.C. § 316(a)(1).” Id. at
`43.
`After considering the Petition and Patent Owner’s response, for the
`
`reasons discussed in connection with Fintiv, supra, and for the reasons given
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`by Petitioner, we are not persuaded to exercise our discretion to deny the
`Petition under General Plastic.
`
`IV. ANALYSIS OF THE CHALLENGED CLAIMS
`A. Anticipation and Obviousness
`The Federal Circuit addressed the legal standard for anticipation in
`Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331 (Fed. Cir. 2016):
`Under 35 U.S.C. § 102(b), a prior art reference will anticipate if
`it “disclose[s] each and every element of the claimed invention
`. . . arranged or combined in the same way as in the claim.”
`815 F.3d at 1341 (citation omitted) (footnote omitted). The Federal Circuit
`went on to explain:
`However, a reference can anticipate a claim even if it ‘d[oes]
`not expressly spell out’ all the limitations arranged or combined
`as in the claim, if a person of skill in the art, reading the
`reference, would at ‘once envisage’ the claimed arrangement or
`combination.
`Id. (quoting Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376,
`1381 (Fed. Cir. 2015))
`A claim is unpatentable as obvious under 35 U.S.C. § 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
`filing date of the claimed invention to a person having ordinary skill in the
`art to which the claimed invention pertains.” 35 U.S.C. § 103 (2011). The
`question of obviousness is resolved on the basis of underlying factual
`determinations, including: (1) the scope and content of the prior art; (2) any
`differences between the claimed subject matter and the prior art; (3) the level
`of skill in the art; and (4) so-called “secondary considerations,” including
`commercial success, long-felt but unsolved needs, failure of others, and
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`unexpected results. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`At this stage, neither party has presented any evidence on the fourth Graham
`factor.
`
`B. Level of Ordinary Skill in the Art
`According to Petitioner, a person of ordinary skill in the pertinent art
`
`“would have at least a bachelor’s degree in Computer Science or related
`field (or equivalent experience), and two or more years’ experience working
`with and programming networked computer systems as of the Priority Date.”
`Pet. 20 (citing Teruya Decl. ¶¶ 25–27). Petitioner continues that “[s]uch a
`person would be familiar with the underlying principles of Web, Internet, or
`network communication, data transfer, and content sharing across networks,
`including the HTTP and TCP/IP protocols.” Id.
`
`Patent Owner submits that a person of ordinary skill in the art “had a
`Master’s Degree or higher in the field of Electrical Engineering, Computer
`Engineering, or Computer Science or as of that time had a Bachelor’s
`Degree in the same fields and two or more years of experience in Internet
`Communications.” Prelim. Resp. 47. But Patent Owner acknowledges that
`this definition and Petitioner’s definition of a person of ordinary skill in the
`art “are not materially different, at least in terms of affecting an institution
`decision in this IPR.” Id. (footnote omitted).
`
`We regard Petitioner’s more specific definition as consistent with the
`’319 patent and the prior art before us. See Okajima v. Bourdeau, 261 F.3d
`1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level
`of skill). Therefore, for the purpose of this decision, we adopt Petitioner’s
`formulation. We agree, however, that this definition and Patent Owner’s
`
`17
`
`
`
`IPR2021-01492
`Patent 10,257,319 B2
`
`definition of a person of ordinary skill in the art “are not materially
`different,” and that our decision would be the same using either definition.
`C. Claim Construction
`For this inter partes review, the Board applies the same claim
`
`construction standard as that applied in federal courts. See 37 C.F.R
`§ 42.100(b) (2019). Under this standard, claim terms “are generally given
`their ordinary and customary meaning” as understood by a person of
`ordinary skill in the art in question at the time of the invention. Phillips v.
`AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc) (citations
`omitted). “In determining the meaning of the disputed claim limitation, we
`look principally to the intrinsic evidence of record, examining the claim
`language itself, the written description, and the prosecution history, if in
`evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d
`1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17).
`Extrinsic evidence is “less significant than the intrinsic record in
`determining ‘the legally operative meaning of claim language.’” Phillips,
`415 F.3d at 1317 (citation omitted).
`
`Petitioner asserts that the district court’s constructions in Luminati
`Networks Ltd. v. Teso LT, UAB, et al., No. 2:19-cv-395 (E.D. Tex.) (Teso
`Litigation)9, are appropriate in this case. Pet. 21. In particular, Petitioner
`points to two claim construction orders in that case—the “Teso Order” (Ex.
`1017) and the “Teso Supplemental Order” (Ex. 1020). Pet. 21–22. In the
`Teso Litigation, the parties agreed to certain constructions adopted by the
`district court. Id. at 21. Thus, the district court construed the preamble of
`
`9 The case caption in this litigation was later changed to identify plaintiff as
`Bright Data Ltd. Ex. 1020, 1.
`
`18
`
`
`
`IPR2021-01492
`Patent 10,257,319 B2
`
`claim 1 of the ’319 patent to be limiting, and construed certain other terms to
`have their “plain and ordinary meaning.” Id. In addition, the district court
`construed certain disputed terms, including “client device” and “second
`server.” Id. at 21–22. The district court construed “client device” as
`“communication device that is operating in the role of a client.” Ex. 1017,
`12. The district court initially construed “second server” as “server that is
`not the client device.” Id. at 14. Later, the court granted the defendants’
`request for clarification as to the scope of this construction, and determined
`that a “second server” is “a device that is operating in the role of a server
`and that is not the first client device.” Ex. 1020, 8, 11.
`At this stage, Patent Owner agrees that we should apply the claim
`constructions in the Teso Order for the preamble, “client device,” and
`“second server.” Prelim. Resp. 48. For “second server,” Patent Owner
`proposes that we apply the district court’s construction of that term from the
`Teso Order (“server that is not the client device”). Id. (citing Ex. 1017, 14).
`Patent Owner quotes from the Supplemental Order, which states that the
`district court “is not now changing the scope of the terms in any way,” and
`alleges Petitioner is “seeking a broader construction of the term ‘second
`server’ to remove the requirements that it be a server.” Id. at 49.
`For the purposes of this decision, we adopt the district court’s
`construction for the “second server” as clarified in the Teso Supplemental
`Order. Ex. 1020, 11. Thus, we adopt the district court’s original
`construction, with the clarification that the second server is “a device that is
`operating in the role of a server and that is not the first client device.” Id. at
`8. This construction is consistent with the extrinsic evidence offered by
`Petitioner (Ex. 1018, 5), as well as the construction of “server” adopted by
`
`19
`
`
`
`IPR2021-01492
`Patent 10,257,319 B2
`
`the Board in IPR2021-00458, involving a patent similar to the ’319 patent.
`See IPR2021-00458, Paper 11. 21. Specifically, we adopt the district court’s
`clarification that “a component can be configured to operate in different
`roles—so long as it does not simultaneously serve as more than one of: the
`client device, the first server/second server, and the web server.” Ex. 1020,
`10 (internal quotation marks omitted).
`We only construe terms that are necessary to resolve disputed
`disputes. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co.,
`868 F.3d 1013, 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.”). At this 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.
`D. Description of the Principal Prior Art References
`Crowds (Ex. 1006)
`
`Crowds is an article that “introduce[s]
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