Trials@uspto.gov
`571-272-7822
`
`Paper 14
`Entered: April 7, 2022
`
`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.
`
`ORDER
`Staying Concurrent Ex Parte Reexamination
`37 C.F.R. § 42.122(a)
`
`INTRODUCTION
`I.
`On September 3, 2021, 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
`
`
`
`
`571-272-7822
`
`Paper 14
`Entered: April 7, 2022
`
`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.
`
`ORDER
`Staying Concurrent Ex Parte Reexamination
`37 C.F.R. § 42.122(a)
`
`INTRODUCTION
`I.
`On September 3, 2021, 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
`
`
`
`
`
`IPR2021-01492
`Patent 10,257,319 B2
`B2 (Ex. 1001, “the ’319 patent”). On March 21, 2022, we instituted inter
`partes review as to all challenged claims of the ’319 patent. See Paper 12.
`On November 12, 2021, a request to reexamine the challenged claims
`(with the exception of claim 23) was granted in Reexamination Control No.
`90/014,875 (“the ’875 Reexamination Proceeding”), based on the same
`references that are before us in this inter partes review. See Ex. 3001.
`The Board has authority to stay a reexamination involving a patent
`challenged in an inter partes review. 37 C.F.R. § 42.122(a) (2019); see also
`35 U.S.C. § 315(d) (2012). For the reasons discussed below, we determine
`that there is good cause to stay the ’875 Reexamination Proceeding.
`II. FACTUAL AND PROCEDURAL BACKGROUND
`On November 12, 2021, in Reexamination Control No. 90/014,875, a
`request for ex parte reexamination was granted as to claims 1, 2, 12, 14, 15,
`17–19, 21, 22, and 24–29 of the ’319 patent. Ex. 3001. The request for
`reexamination and the examiner’s determination of a substantial new
`question of patentability were based on the same Crowds, RFC 2616,
`Border, and MorphMix references cited the Petition. See Pet. 10; Ex. 3001.
`On March 21, 2022, we instituted inter partes review as to all the
`challenged claims of the ’319 patent. Paper 12, 39. We instituted trial on all
`grounds of the Petition, which are based on Crowds, RFC 2616, Border, and
`MorphMix. Id. at 8.
`On March 23, 2022, by email, the Board requested the parties to
`advise the Board if they would agree to stay the ’875 Reexamination
`Proceeding in light of the institution of this inter partes review. Ex. 3002.
`The parties responded that Patent Owner would agree to the stay, and that
`Petitioner “does not oppose or join.” Ex. 3003.
`
`2
`
`
`
`IPR2021-01492
`Patent 10,257,319 B2
`On March 25, 2022, the CRU (Central Reexamination Unit) issued an
`Office Action rejecting claims 1, 2, 12, 14, 15, 17–19, 21, 22, and 24–29
`based on Crowds, RFC 2616, Border, and MorphMix. Ex. 3004.
`III. ANALYSIS
`Office guidance outlines factors the Board considers in AIA trials in
`deciding whether to stay a parallel reexamination involving the same patent.
`See Notice Regarding Options for Amendments by Patent Owner Through
`Reissue or Reexamination During a Pending AIA Trial Proceeding, 84 Fed.
`Reg. 16,654, 16,657 (Apr. 22, 2019) (“Notice Regarding Amendment
`Options”). We discuss each of those factors below.
`A. Whether the claims challenged in the AIA proceeding are the same as
`or depend directly or indirectly from claims at issue in the concurrent
`parallel Office proceeding
`All claims challenged in this proceeding, with the exception of claim
`23, are subject to reexamination in the ’875 Reexamination Proceeding. Ex.
`3001. This factor favors a stay.
`B. Whether the same grounds of unpatentability or the same prior art
`are at issue in both proceedings
`The same references are before us in this inter partes review as are
`being considered by the CRU in the ’875 Reexamination Proceeding. This
`factor favors a stay.
`C. Whether the concurrent parallel Office proceeding will duplicate
`efforts within the Office
`Because nearly all same claims and all the prior art we are considering
`in this proceeding are also at issue in the ’875 Reexamination Proceeding,
`allowing both to proceed concurrently would duplicate efforts. This factor
`favors a stay.
`
`3
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`IPR2021-01492
`Patent 10,257,319 B2
`D. Whether the concurrent parallel Office proceeding could result in
`inconsistent results between proceedings (e.g., whether substantially
`similar issues are presented in the concurrent parallel Office
`proceeding)
`With the exception of claim 23, the ’875 Reexamination Proceeding is
`considering the same claims and all the same prior art as we are considering
`in this trial, which raises the possibility of inconsistent results. This factor
`favors a stay.
`E. Whether amending the claim scope in one proceeding would affect
`the claim scope in another proceeding
`The claims in the ’875 Reexamination Proceeding that are before us in
`this trial have been rejected, and Patent Owner may respond with an
`amendment that would affect their scope. Ex. 3004. This factor favors a
`stay.
`F. The respective timeline and stage of each proceeding
`In the ’875 Reexamination Proceeding, the Examiner has granted the
`request for reexamination and issued an office action. Ex. 3001, 3004. In
`this proceeding, we recently entered a decision granting institution. Paper
`12. Thus, in both proceedings, the Office has invested some resources, but a
`significant amount of work remains in each. This factor is neutral.
`G. The statutory deadlines of the respective proceedings
`This proceeding is subject to a statutory deadline that requires a final
`decision within one year of institution, absent a rare extension. 35 U.S.C.
`§ 316(a)(11) (2012). The ’875 Reexamination Proceeding is required to be
`“conducted with special dispatch,” but is not subject to a specific deadline.
`35 U.S.C. § 305 (2012). This factor favors a stay.
`
`4
`
`
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`IPR2021-01492
`Patent 10,257,319 B2
`H. Whether a decision in one proceeding would likely simplify issues in
`the concurrent parallel Office proceeding or render it moot
`A determination in this proceeding regarding the patentability of the
`challenged claims in view of the cited references would simplify the issues
`in the ’875 Reexamination Proceeding, which is also considering those
`claims and the same prior art. Accord Avaya Inc. v. Network-1 Security
`Solutions, Inc., IPR2013-00071, Paper 8, 2 (PTAB Dec. 21, 2012).
`Conversely, the ’875 Reexamination Proceeding could simplify or render
`moot this proceeding if a reexamination certificate with amendments to the
`claims challenged here were to issue before a final decision in this
`proceeding. See M&P Golf, LLC v. Max Out Golf, LLC, IPR2016-00784,
`Paper 43 (PTAB Aug. 30, 2017) (entering judgment against Patent Owner as
`to original claims when Patent Owner amended each of those claims in a
`reexamination, and the reexamination certificate had issued). However,
`considering the current stages of the proceedings and the ordinary timeline
`for reexaminations, that eventuality is unlikely. This factor favors a stay.
`IV. CONCLUSION
`The facts here present good cause for entering a stay. The pertinent
`factors overwhelmingly weigh in favor of staying the ’875 Reexamination
`Proceeding. See Notice Regarding Amendment Options, 84 Fed. Reg. at
`16,656 (“Good cause for staying a case may exist if, for example, an
`ongoing AIA proceeding, which is subject to statutory deadlines, is
`addressing the same or overlapping claims of a patent at issue in a parallel
`Office proceeding.”).
`We also note that although neither party has filed a motion for a stay,
`neither party opposes a stay. See Ex. 3003. Moreover, the Board “may
`impose a stay sua sponte.” Notice Regarding Amendment Options, 84 Fed.
`
`5
`
`
`
`IPR2021-01492
`Patent 10,257,319 B2
`Reg. at 16,657. Under these circumstances, we see no need for a motion or
`further briefing.
`
`V. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that Reexamination Control No. 90/014,875 is stayed,
`pending the termination or completion of IPR2021-001492;
`FURTHER ORDERED that all time periods for filing further papers
`in Reexamination Control No. 90/014,875 are tolled for the duration of the
`stay, and no further papers shall be filed in the reexamination while this stay
`remains in place; and
`FURTHER ORDERED that the time periods for filing further papers
`in Reexamination Control No. 90/014,875 will be restarted when the stay is
`lifted.
`
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`
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`
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`6
`
`
`
`IPR2021-01492
`Patent 10,257,319 B2
`FOR PETITIONER:
`Ronald Abramson
`Mord Lewis
`Ari Jaffess
`LISTON ABRAMSON LLP
`Ron.abramson@listonabramson.com
`Michael.lewis@listonabramson.com
`Ari.jaffess@listonabramson.com
`
`FOR PATENT OWNER:
`
`Thomas Dunham
`Elizabeth O’Brien
`RUYAKCHERIAN LLP
`tomd@ruyakcherian.com
`elizabetho@ruyakcherican.com
`
`7
`
`
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