Paper 19
`Trials@uspto.gov
`571-272-7822 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 CORETECH LT, UAB,
`Petitioner,
`
`v.
`
`BRIGHT DATA LTD.,
`Patent Owner.
`____________
`
`IPR2022-00861
`Patent 10,257,319 B2
`____________
`
`
`
`Before THOMAS L. GIANNETTI, SHEILA F. McSHANE, and
`RUSSELL E. CASS, Administrative Patent Judges
`
`McSHANE, Administrative Patent Judge.
`
`
`
`DECISION
`Rehearing on Director Remand
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`Granting Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. § 42.122
`
`
`Trials@uspto.gov
`571-272-7822 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 CORETECH LT, UAB,
`Petitioner,
`
`v.
`
`BRIGHT DATA LTD.,
`Patent Owner.
`____________
`
`IPR2022-00861
`Patent 10,257,319 B2
`____________
`
`
`
`Before THOMAS L. GIANNETTI, SHEILA F. McSHANE, and
`RUSSELL E. CASS, Administrative Patent Judges
`
`McSHANE, Administrative Patent Judge.
`
`
`
`DECISION
`Rehearing on Director Remand
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`Granting Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. § 42.122
`
`
`
`IPR2022-00861
`Patent 10,257,319 B2
`
`
`I. INTRODUCTION
`We address this case after a decision by the Under Secretary of
`
`Commerce for Intellectual Property and Director of the United States Patent
`and Trademark Office vacating our previous decision denying institution,
`remanding for further proceedings, and ordering us to reconsider joinder
`after reconsidering the decision denying institution. Paper 18 (“Remand
`Dec.”).
`
`II. BACKGROUND
`
`A. Background of Proceeding
`Code200, UAB, Teso LT, UAB, Metacluster LT, UAB, Oxysales,
`
`UAB, and Coretech LT, UAB (“Petitioner” or “Code200”) filed a Petition
`for inter partes review of claims 1, 2, 12, 14, 15, 17–19, and 21–29 of U.S.
`Patent No. 10,257,319 B2 (Ex. 1001, “the ’319 patent”). Paper 1 (“Pet.”).
`Bright Data Ltd. (“Patent Owner”) filed a Preliminary Response. Paper 15
`(“Prelim. Resp.”). With the Petition, Petitioner also filed a Motion for
`Joinder with NetNut Ltd. v. Bright Data Ltd., IPR2021-01492 (“the 1492
`IPR” ). Paper 7 (“Mot.”). Patent Owner filed an Opposition to the Motion
`for Joinder. Paper 11 (“Opp.”). Petitioner filed a Reply to Patent Owner’s
`Opposition. Paper 13 (“Reply”).
`
`The Petition in this proceeding asserts the same grounds of
`unpatentability as those upon which we instituted review in the 1492 IPR.
`Compare Pet. 11, with NetNut Ltd. v. Bright Data Ltd., IPR2021-01492,
`Paper 12 at 7–8, 39 (PTAB Mar. 21, 2022) (“1492 Decision” or “1492
`Dec.”). Consistent with this, Petitioner contends that the Petition “is
`substantially identical to the petition in the NetNut IPR [1492 IPR] and
`contains the same grounds (based on the same prior art and supporting
`
`2
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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
`the fact that it is filed by a different petitioner.” Pet. 2 (citing Ex. 1022).
`
`On July 25, 2022, we issued a Decision in this case 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)
`(General Plastic). Paper 17 (“Dec.”). The Board’s Decision also denied
`joinder of this case with the 1492 IPR. Id. at 17. The Director reviewed our
`Decision sua sponte, vacated the Decision, and remanded the case to the
`panel, with orders that our Decision denying institution and joinder be
`reconsidered consistent with the Remand Decision. Remand Dec. 7.
`
`B. Director Decision and Scope of Remand
`
`The Director considered our discretionary denial of institution under
`General Plastic, and clarified General Plastic by stating that, “[w]here the
`first-filed petition . . . was discretionarily denied or otherwise was not
`evaluated on the merits,” a finding favoring discretionary denial under
`General Plastic’s factors 1–3 is limited to “when there are ‘road-mapping’
`concerns under factor 3 or other concerns under factor 2.” Remand Dec. 5.
`The Director noted that in this case, the Board had found “no evidence of
`road-mapping.” Id. at 5 (citing Dec. 13). The Director added that “‘road-
`mapping’ concerns are minimized when, as in this case, a petitioner files a
`later petition that raises unpatentability challenges substantially overlapping
`with those in the previously-filed petition and the later petition is not refined
`based on lessons learned from later developments.” Id. at 5. The Director
`agreed with the panel’s finding that General Plastic’s factors 2, 4, and 5
`“have limited relevance.” Id. at 6. The Director similarly found factor 7 to
`
`3
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`“have limited relevance” because the one-year statutory time period may be
`adjusted for a joined case under 35 U.S.C. § 316(a)(11). Id. (citing Dec. 16).
`Further, the Director disagreed with the panel’s determination on factor 6 in
`view of potential inefficiencies, with the Director determining that “the
`Board’s mission ‘to improve patent quality and restore confidence in the
`presumption of validity that comes with issued patents’ outweighs the
`impact on Board resources needed to evaluate the merits of a petition.” Id.
`In accordance with the evaluation of the factors, the Director found that “the
`Patent Owner’s concerns of fairness are outweighed by the benefits to the
`patent system of improving patent quality by reviewing the merits of the
`challenges raised in the petitions, which have not been addressed to date.”
`Id.
`The Director remanded the case to the panel for further proceedings,
`
`with direction to reconsider the institution decision and joinder. Remand
`Dec. 7. The Director directed that the panel “consider the Patent Owner’s
`remaining arguments, including those for discretionary denial under Fintiv
`and against the merits of the Petitioner’s patentability challenges.” Id.
`
`C. Related Proceedings
`The ’319 patent has been the subject of numerous proceedings in
`district court and the Board. We summarized several related proceedings in
`the previous decision denying institution in this case. Dec. 3–5. The
`proceedings of most interest are the 1492 IPR, IPR2020-01266 (“the
`previously-filed 1266 IPR”), and Bright Data Ltd. v. Teso LT, UAB, 2:19-
`cv-00395-JRG (E.D. Tex.) (“the Teso litigation”).
`
`4
`
`
`
`102
`
`103
`
`Border5
`
`Border, RFC 2616
`
`MorphMix7
`MorphMix, RFC 2616
`
`IPR2022-00861
`Patent 10,257,319 B2
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`
`In the 1492 IPR, the case to which Petitioner is seeking joinder, we
`instituted an inter partes review of claims 1, 2, 12, 14, 15, 17–19, and 21–29
`of the ’319 patent on the following grounds:
`
`
`
`35 U.S.C. §
`1022
`103
`
`References/Basis
`Crowds3
`Crowds, RFC 26164
`
`Claim(s)
`1, 19, 21–291
`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–
`296
`102
`1, 17, 19, 21–29
`103
`1, 2, 14, 15, 17–19,
`
`1 The Petition includes assertions for claim 23 under the Crowds anticipation
`ground. Pet. 36. Accordingly, we include this claim in the summary table,
`although not included in the Petition’s summary table. Id. at 11.
`2 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.
`3 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”).
`4 Hypertext Transfer Protocol–HTTP/1.1, Network Working Group, RFC
`2616, The Internet Society, 1999 (Ex. 1013, “RFC 2616”).
`5 U.S. Patent No. 6,795,848 B1 (Sep. 21, 2004) (Ex. 1012, “Border”).
`6 Although Petitioner’s listing of the asserted grounds does not identify
`claim 19 for this ground (see Pet. 11), Petitioner includes claim 19 in its
`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
`
`
`
`35 U.S.C. §
`
`References/Basis
`
`IPR2022-00861
`Patent 10,257,319 B2
`
`
`Claim(s)
`21–29
`NetNut Ltd. v. Bright Data Ltd., IPR2021-01492, Paper 12 at 7–8, 39 (PTAB
`Mar. 21, 2022).
`
`Patent Owner settled with NetNut in the 1492 IPR, and NetNut has
`been terminated as Petitioner in that action. 1492 IPR, Paper 20.
`
`In the previously-filed 1266 IPR, Petitioner challenged claims of the
`’319 patent, and Crowds, Border, and MorphMix were the primary prior art
`asserted. Code200, UAB v. Luminati Networks Ltd.,8 IPR2020-01266,
`Paper 5. The previously-filed 1266 IPR was denied on discretionary
`grounds. Id., Paper 18 (Dec. 23, 2020).
`
`In the Teso litigation, Bright Data Ltd., the Patent Owner here, sued
`defendants, Teso LT, UAB, Metacluster LT, UAB, Oxysales, UAB, and
`Coretech LT, UAB, some of the petitioner group here, for infringement of
`the ’319 patent, as well as for infringement of U.S. Patent Nos. 10,484,510
`and 10,469,614. Mot. 2. The litigation was filed on December 6, 2019. Id.
`A jury trial was conducted in November 2021, and the issue of whether
`claims 1 and 26 of the ’319 patent were invalid in view of the Crowds
`reference asserted here was presented by the defendants. Id. The jury found
`that the defendants did not prove that these claims were invalid by clear and
`convincing evidence. Id. (citing Ex. 1023, 5).
`
`
`8 The case caption in the underlying litigation was later changed to identify
`plaintiff as Bright Data Ltd. Ex. 1020, 1.
`
`
`6
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`IPR2022-00861
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`
`Additionally, the parties indicate that the ’319 patent is the subject of
`an ex parte reexamination, Control No. 90/014,875, which has been stayed.
`Mot. 5; Paper 16, 2.
`
`D. The ’319 Patent (Ex. 1001)
`The ’319 patent is titled “System Providing Faster And More Efficient
`
`Data Communication.” Ex. 1001, code (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 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 (Ex. 1001, 4:41–44):
`
`7
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`IPR2022-00861
`Patent 10,257,319 B2
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`
`
`
`Figure 3 is a schematic diagram depicting communication network 100
`including a number of communication devices. Ex. 1001, 4:43–45. Due to
`the functionality provided by software stored within each communication
`device, “each communication 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. Ex. 1001, 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
`
`8
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`IPR2022-00861
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`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. Ex. 1001, 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.”
`Ex. 1001, 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.
`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.
`
`
`9
`
`
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`IPR2022-00861
`Patent 10,257,319 B2
`
`Claim 1, the only independent claim of the ’319 patent, is illustrative
`
`of the claimed subject matter and is reproduced below, with references
`added in brackets.
`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.
`Ex. 1001, 19:16–32.
`
`
`
`
`E. Asserted Grounds
`Petitioner asserts the following grounds of unpatentability. Pet. 11.
`
`Claim(s)
`1, 19, 21–299
`
`35 U.S.C. §
`102
`
`References/Basis
`Crowds
`
`
`9 Although not noted in the grounds table (Pet. 11), Petitioner asserts an
`anticipation challenge to claim 23 (id. at 11).
`10
`
`
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`IPR2022-00861
`Patent 10,257,319 B2
`
`
`35 U.S.C. §
`
`103
`
`102
`
`References/Basis
`
`Crowds, RFC 261610
`
`Border
`
`Border, RFC 2616
`MorphMix
`MorphMix, RFC 2616
`
`Claim(s)
`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, 27–29 103
`1, 17, 19, 21–29
`102
`1, 2, 14, 15, 17–19,
`103
`21–29
`
`
`
`III. DISCRETIONARY DENIAL
`In accordance with the Remand Decision, we consider discretionary
`
`denial under Fintiv. Remand Dec. 7. Patent Owner contends the Board
`should deny the Petition under 35 U.S.C. § 314(a) because “the Fintiv
`factors overwhelmingly favor denial of institution.” Prelim. Resp. 16.
`
`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;
`
`10 For the obviousness challenges under Crowds, Border, and MorpMix,
`Petitioner additionally refers to the basis “in view of the knowledge of 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;
`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.
`
`On June 21, 2022, the Director of the United States Patent and
`Trademark Office issued an Interim Procedure for Discretionary Denials in
`AIA Post-Grant Proceedings with Parallel District Court Litigation
`(“Memorandum”)11 to clarify “the [Board’s] current application of Fintiv to
`discretionary institutions when there is parallel litigation” and to “confirm[]
`that the precedential import of Fintiv is limited to the facts of that case.”
`Memorandum 2. In particular, the Memorandum states that the Board
`will not deny institution of an IPR or PGR under Fintiv (i) when
`a petition presents compelling evidence of unpatentability;
`(ii) when a request for denial under Fintiv is based on a parallel
`ITC proceeding; or (iii) where a petitioner stipulates not to
`pursue in a parallel district court proceeding the same grounds as
`in the petition or any grounds that could have reasonably been
`raised in the petition.
`Id. at 9.
`
`
`11 Available at: https://www.uspto.gov/sites/default/files/documents/interim
`_proc_discretionary_denials_aia_parallel_district_court_litigation_memo_2
`0220621_.pdf
`
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`
`Patent Owner asserts that the status of the Teso litigation, where a jury
`verdict has been reached, should be considered in the Fintiv evaluation.
`Prelim. Resp. 16. Patent Owner contends that factors 2–6 of Fintiv favor
`denial and factor 1 is neutral. Id. at 16–24. Patent Owner argues that
`Crowds was the reference before the jury, and MorphMix is cumulative to
`Crowds. Id. at 19. Patent Owner also asserts that Border cannot apply as an
`invalidity reference because of the District’s Court’s claim construction. Id.
`Petitioner contends that the Teso litigation concerned different claims,
`different prior art, and a different burden of proof compared to the inter
`partes review sought to be joined. Mot. 6–9. Petitioner asserts that Crowds
`was the only reference before the jury in that litigation. Id. at 7. Petitioner
`also asserts that the jury in the Teso litigation did not have the benefit of the
`District Court’s Supplemental Claim Construction Order (Ex. 1020), which
`is available here and which “the Board found persuasive” in the 1492 IPR.
`Id. at 9. Petitioner contends further that the Teso litigation has been stayed
`and, if and when the stay is lifted, the defendants intend to file post-
`judgment motions. Id. at 3.
`
`We consider the Director’s Memorandum, which directs that “the
`PTAB will not rely on the Fintiv factors to discretionarily deny institution in
`view of parallel district court litigation where a petition presents compelling
`evidence of unpatentability.” Memorandum 2. The Memorandum explains
`that “where the PTAB determines that the information presented at the
`institution stage presents a compelling unpatentability challenge, that
`determination alone demonstrates that the PTAB should not discretionarily
`deny institution under Fintiv.” Memorandum, 4–5 (emphasis added). The
`Memorandum further explains that “[c]ompelling, meritorious challenges
`
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`are those in which the evidence, if unrebutted in trial, would plainly lead to a
`conclusion that one or more claims are unpatentable by a preponderance of
`the evidence.” Memorandum 4.
`On the current record, we determine that Petitioner’s invalidity
`grounds present compelling unpatentability challenges. See infra Sections
`IV, D–H. In particular, in our view at this stage of the proceeding, the
`Petition presents compelling evidence that three prior art references,
`including Border, which was not before the jury in the Teso litigation,
`anticipate many of the claims of the ’319 patent. We determine that
`instituting inter partes review under these circumstances “strikes a balance
`among the competing concerns of avoiding potentially conflicting outcomes,
`avoiding overburdening patent owners, and strengthening the patent system
`by eliminating patents that are not robust and reliable.” Memorandum 5.
`Accordingly, based upon our consideration of the evidence and
`arguments presented in the Petition, and pursuant to the directive in the
`Memorandum concerning compelling, meritorious challenges, we decline to
`exercise our discretion under § 314(a) to deny institution of inter partes
`review as Patent Owner requests.
`IV. ANALYSIS
`A. 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. 17 (citing Ex. 1005 ¶¶ 25–27). Petitioner further states that “[s]uch a
`person would be familiar with the underlying principles of Web, Internet, or
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`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. 35 (citing Ex. 2054 ¶ 18). Patent Owner
`states 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. at 36.
`
`For the purposes of this Decision, we adopt Petitioner’s proposed
`level of qualifications because it is consistent with the ’319 patent and the
`prior art at issue. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir.
`2001) (prior art itself may reflect an appropriate level of skill).
`
`B. Claim Construction
`In this inter partes review, claims are construed using the same claim
`construction standard that would be used to construe the claims in a civil
`action under 35 U.S.C. § 282(b). 37 C.F.R. § 42.100(b) (2022). Under the
`principles set forth by our reviewing court, the “words of a claim ‘are
`generally given their ordinary and customary meaning,’” as would be
`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 (Fed. Cir. 2005)
`(en banc) (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582
`(Fed. Cir. 1996)). “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
`
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`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).
`
`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), are appropriate in this case. Pet. 18. In particular, Petitioner
`points to two claim construction orders in that case—the “Teso Order” (Ex.
`1017) and the “Teso Supplemental Order” (Ex. 1020). Id. In the Teso
`litigation, the parties agreed to certain constructions adopted by the district
`court. Ex. 1017, 9. Accordingly, the district court construed the preamble
`of 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 12–14. The district court construed “client device”
`as “communication device that is operating in the role of a client.” Id. at 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.
`Patent Owner proposes that “the correct construction for ‘second
`server’ is a ‘server that is not [] a client device.’” Prelim. Resp. 36 (citing
`Ex. 2054 ¶ 71). Patent Owner argues that the district court was incorrect and
`a person of ordinary skill would understand that a client device is not a
`server. Id. at 43–64.
`
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`Patent Owner also asserts that in the Teso litigation the term “client
`device” was construed as a “communication device operating in the role of a
`client,” and asserts that a “‘communication device’ in the context of the
`specification is not simply any device that communicates over the Internet.”
`Id. at 38 (citing Ex. 2054 ¶ 38). Patent Owner argues that “the Court has
`repeatedly emphasized that a client device is not merely a general-purpose
`computer.” Id. Patent Owner contends that “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 Owner presents further arguments on this issue, noting
`disagreements with the district court, and referring to the prosecution history
`and extrinsic evidence. Id. at 40–43.
`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. 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). Additionally, we adopt the district court construction of
`“client device” as “communication device that is operating in the role of a
`client.” Ex. 1017, 12.
`We only 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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`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.
`
`
`
`C. Principles of Law
`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. § 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
`which said 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
`obviousness is resolved on the basis of underlying factual determinations
`including: (1) the scope and content of the prior art; (2) any differences
`
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`between the claimed subject matter and the prior art; (3) the level of ordinary
`skill in the art; and (4) when in evidence, objective indicia of
`nonobviousness.12 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`
`D. Description of the Principal Prior Art References
`
`1. Crowds (Ex. 1006)
`Crowds is an article that “introduce[s] a new approach for increasing
`the privacy of web transactions.” Ex. 1006, 2.13 In this approach, a user
`joins a “crowd” of other users, wherein the user’s request to a web server is
`passed to a random member of the crowd, and possibly forwarded to one or
`more other members, prior to being submitted to the end server. Id. In this
`way, “[w]hen the request is eventually submitted, it is submitted by a
`random member, thus preventing the end server from identifying its true
`initiator.” Id. In Crowds, “[a] user is represented by a process on her
`computer called a jondo (pronounced ‘John Doe’ and meant to convey the
`image of a faceless participant).” Id. at 8. “When the jondo is started, it
`contacts a server called the blender to request admittance to the crowd.” Id.
`Exemplary paths for web requests from crowd users are shown in Figure 2
`(id. at 9), reproduced below:
`
`
`12 No evidence relating to objective indicia of nonobviousness is presented
`by the parties.
`13 Unless otherwise stated, citations to exhibits use the page numbers
`assigned by the parties and not the original page numbers.
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`In Figure 2 of Crowds, above, when a jondo receives a user request from a
`browser, it “initiates the establishment of a random path of jondos that
`carries its users’ transactions to and from their intended web servers.” Ex.
`1006, 8. For example, the paths in Figure 2 among the jondos labeled 1 to 6
`are as follows: “1 → 5 → server; 2 → 6 → 2 → server; 3 → 1 → 6 →
`server; 4 → 4 → server; 5 → 4 → 6 → server; and 6 → 3 → server.” Id.
`“[S]erver replies traverse the same path as the requests, only in reverse.” Id.
`at 9.
`
`2. Border (Ex. 1012)
`
`Border is a patent titled “System and Method of Reading Ahead of
`Objects for Delivery to an HTTP Proxy Server.” Ex. 1012, code (54).
`Border describes “a system for retrieving web content.” Id. at code (57). In
`Border, “[a] downstream proxy server receives a URL request message from
`a web browser. Id. at 3:35–36. Thereafter, “[a]n upstream proxy server
`receives the URL request message from the downstream proxy server” and
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`“selectively forwards the URL request message to a web server and receives
`the URL content from the web server.” Id. at 3:38–42. Then, “[t]he
`upstream proxy server forwards the URL content to the downstream proxy
`server.” Id. at 3:42–43. An exemplary system employing downstream and
`upstream proxy servers for accessing a web server is shown in Figure 1,
`reproduced below:
`
`As depicted in Border’s Figure 1, user station 101, for example, a personal
`computer, uses standard web browser 103. Ex. 1012, 3:55–61. User station
`101 is connect
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