Paper 13
`
`Trials@uspto.gov
`571-272-7822 Entered: March 14, 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.
`____________
`
`IPR2021-01502
`Patent 9,241,044 B2
`____________
`
`
`
`Before THOMAS L. GIANNETTI, SHEILA F. McSHANE, and
`RUSSELL E. CASS, Administrative Patent Judges
`
`GIANNETTI, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`Denying Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. § 42.122
`
`
`
`Trials@uspto.gov
`571-272-7822 Entered: March 14, 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.
`____________
`
`IPR2021-01502
`Patent 9,241,044 B2
`____________
`
`
`
`Before THOMAS L. GIANNETTI, SHEILA F. McSHANE, and
`RUSSELL E. CASS, Administrative Patent Judges
`
`GIANNETTI, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`Denying Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. § 42.122
`
`
`
`IPR2021-01502
`Patent 9,241,044 B2
`
`
`
`
`I. INTRODUCTION
`On September 10, 2021, Code200, UAB, Teso LT, UAB, Metacluster
`LT, UAB, Oxysales, UAB, and Coretech LT, UAB (collectively
`“Petitioner”) filed a Petition for inter partes review of claims 81, 82, 87–
`100, and 108 of U.S. Patent No. 9,241,044 B2 (Ex. 1001, “the ’044 patent”).
`Paper 1 (“Pet.”). With the Petition, Petitioner filed a Motion for Joinder
`with NetNut Ltd. v. Bright Data Ltd., IPR2021-00458. Paper 7 (“Motion”).
`Bright Data Ltd. (“Patent Owner”) filed an Opposition to the Motion for
`Joinder. Paper 11 (“Opp.”). Petitioner filed a Reply to Patent Owner’s
`Opposition. Paper 12 (“Reply”). Patent Owner did not file a Preliminary
`Response, which was due on December 20, 2021. Paper 8 (Notice of Filing
`Date Accorded).
`We have authority to institute inter partes review under 35 U.S.C.
`§ 314(a), which provides that an inter partes review may not be instituted
`“unless . . . there is a reasonable likelihood that the petitioner would prevail
`with respect to at least 1 of the claims challenged in the petition.” However,
`under 35 U.S.C. § 315(b), “[a]n inter partes review may not be instituted if
`the petition requesting the proceeding is filed more than 1 year after the date
`on which the petitioner, real party in interest, or privy of the petitioner is
`served with a complaint alleging infringement of the patent.” Section 315(b)
`further provides that “[t]he time limitation set forth in the preceding sentence
`shall not apply to a request for joinder under [35 U.S.C.] subsection (c).”
`We also have authority to consider Petitioner’s joinder motion under
`35 U.S.C. § 315(c), which provides that “the Director, in his or her
`discretion, may join as a party to that inter partes review any person who
`
`2
`
`
`
`IPR2021-01502
`Patent 9,241,044 B2
`
`properly files a petition under section 311 that the Director . . . determines
`warrants the institution of an inter partes review under section 314.”
`For the reasons described below, we (1) deny Petitioner’s Motion for
`Joinder, and (2) deny the Petition as time-barred under 35 U.S.C. § 315(b).
`
`II. RELATED PROCEEDINGS
`Patent Owner indicates that IPR2021-01503 is a related proceeding.
`Paper 9, 1. A similar joinder motion is pending in that proceeding.
`IPR2021-01503, Paper 7. The parties also indicate that related patents to the
`’044 patent are the subject of multiple litigations, inter partes reviews, and
`other Patent and Trademark Office proceedings. Pet. 3–10; Paper 9, 2–3.
`
`III. REAL PARTIES IN INTEREST
`Petitioner identifies the real parties-in-interest as Code200, UAB;
`Teso LT, UAB; Metacluster LT, UAB; Oxysales, UAB; and Coretech lt,
`UAB. Pet 1. These are the parties named in the Petition.
`Patent Owner identifies Bright Data Ltd. as the only real party-in-
`interest. Paper 9, 1. Bright Data was formerly known as Luminati
`Networks, Ltd. Motion 2 n.1.
`
`IV. BACKGROUND
`On July 19, 2018, Luminati Networks, Ltd., now known as Bright
`
`Data Ltd., sued UAB Teso LT (f/k/a UAB Tesonet) and UAB Metacluster
`LT for infringement of the ’044 patent. Luminati Networks Ltd. v. UAB
`Tesonet, UAB Metacluster Ltd., Civil Action No. 2:18-CV-00299-JRG (E.D.
`Tx.). Motion 2; Opp. 2.
`
`On February 4, 2020, the claims and counterclaims in that lawsuit
`were dismissed with prejudice. Motion 2 (citing Ex. 1, dismissal order
`
`3
`
`
`
`IPR2021-01502
`Patent 9,241,044 B2
`
`attached to Motion). The dismissed counterclaims asserted invalidity of the
`’044 patent. Opp. 8.
`
`On January 22, 2021, NetNut Limited (“NetNut”) filed a petition
`challenging claims 81, 82, 87–100, and 108 of the ’044 patent. IPR2021–
`00458, Paper 1.
`
`On August 12, 2021, the Patent Trial and Appeal Board (PTAB)
`determined that the petitioner in the NetNut proceeding had established “a
`reasonable likelihood that the petitioner would prevail with respect to at least
`1 of the claims challenged in the petition,” and instituted inter partes review
`of the ’044 patent. Id., Paper 11.
`
`On September 10, 2021, Petitioner filed the Petition in this
`proceeding, accompanied by its Motion for Joinder. Papers 1, 7. Petitioner
`indicates in its joinder motion that the Petition in this proceeding is what is
`commonly referred to as a “me-too” petition; that is, it concerns the same
`patent and the same claims, presents the same supporting expert declaration,
`and asserts the same grounds of challenge and prior art as the petition in
`IPR2021-00458. Motion 3. Petitioner describes the differences between the
`Petition here and the petition in IPR2021-00458 as “minimal, non-
`substantive changes related to formalities of a different party filing the
`petition.” Id. Moreover, Petitioner represents that it will assume an
`“understudy” role if joined. Id. at 5.
`
`Petitioner represents that NetNut does not oppose joinder. Id. at 3.
`However, as discussed below, Patent Owner opposes joinder. See generally
`Opp.
`
`4
`
`
`
`IPR2021-01502
`Patent 9,241,044 B2
`
`
`V. DISCUSSION
`
`A. Denial of Joinder Motion
`
`Petitioner contends that the Petition “is substantially identical to the
`
`petition in [IPR2021-00458] and contains the same grounds (based on the
`same prior art and supporting evidence) against the same claims, and differs
`only as necessary to reflect the fact that it is filed by a different petitioner.”
`Pet. 1.
`Petitioner asserts that the request for joinder has been timely made.
`Motion 3. Petitioner contends that the following factors identified in
`Kyocera Corp. v. Softview LLC favor joinder: (1) the reasons why joinder is
`appropriate; (2) whether the petition raises any new grounds of
`unpatentability; (3) any impact joinder would have on the cost and trial
`schedule for the existing review; and (4) whether joinder will add to the
`complexity of briefing or discovery. Id. at 3–4; (citing Kyocera Corp. v.
`Softview LLC, IPR2013-00004, Paper 15 at 4 (PTAB Apr. 24, 2013);
`Consolidated Trial Practice Guide 76 (Nov. 2019)1).
`More specifically, Petitioner argues that the Board “routinely” grants
`joinder where the party seeking joinder relies upon identical arguments and
`the same grounds raised in the existing proceeding, as is the case here. Id. at
`4. Petitioner asserts that joinder is the most efficient and economical manner
`to proceed. Id. at 5. Petitioner also states that it will not request any
`alterations to the trial schedule of the IPR2021-00458, and it will adopt a
`secondary, “understudy” role in that IPR. Id.
`
`
`1 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`5
`
`
`
`IPR2021-01502
`Patent 9,241,044 B2
`
`
`Petitioner argues that, because it will rely on the same prior art and the
`same expert to support identical arguments regarding unpatentability,
`granting joinder will not add to the complexity of briefing and discovery. Id.
`at 6.
`
`Patent Owner opposes the Motion for Joinder. Patent Owner contends
`that the burden is on Petitioner to justify joinder and that burden has not
`been met. Opp. 2. Patent Owner argues that absent joinder, the Petition
`would be time-barred under 35 U.S.C. § 315(b) because Petitioner was sued
`for infringement of the ’044 patent in 2018. Id. Patent Owner asserts that
`the existence of a time bar under § 315(b) is a factor that may be considered
`when exercising discretion to grant joinder under 35 U.S.C. § 315(c). Id. at
`4. Patent Owner asserts the Board should exercise its discretion to join
`“only in limited circumstances - namely, where fairness requires it and to
`avoid undue prejudice to a party.” Id. Patent Owner contends such
`circumstances are not present here, and may include “actions taken by a
`patent owner in a co-pending litigation such as the late addition of newly
`asserted claims.” Id. at 8 (citing Proppant Express Invs. v. Oren Techs.,
`IPR2018-00914, Paper 38 at 4 (PTAB Mar. 13, 2019) (precedential)).
`Patent Owner refers to Petitioner’s acknowledgement that the claims
`and counterclaims in the prior district court lawsuit were dismissed with
`prejudice on February 4, 2020. Opp. 2 (citing Motion 2, ¶ 2). As a
`consequence, Patent Owner contends that Petitioner’s actions seeking
`institution and joinder in this proceeding “undermine the [previous]
`dismissal of Petitioner’s invalidity counterclaims with prejudice” and
`“undermine the integrity of the judicial process.” Id. at 3.
`
`6
`
`
`
`IPR2021-01502
`Patent 9,241,044 B2
`
`
`Patent Owner contends also that Petitioner was aware of the ’044
`patent and the asserted prior art since 2018, when it was sued for
`infringement, but fails to explain its delay in filing the Petition until 2021.
`Id.
`
`Petitioner replies that joinder is not time-barred and Proppant is
`inapplicable to the case. Reply 1–2. Petitioner further argues that § 315(b)
`states that the one year time bar does not apply to requests for joinder. Id. at
`1. Petitioner contends that Proppant was directed to same-party joinder with
`a party seeking to join new issues, and does not apply here, where joinder is
`sought for a different party for a “me-too” petition. Id. at 1–2 (citing
`Kingston Tech. Co., Inc. v. Securewave Storage Solutions, Inc., IPR2020-
`00139, Paper 12 at 14 (PTAB Mar. 23, 2020)). Petitioner alleges that in
`Kingston, the Board referred to the legislative history of the AIA, indicating
`that joinder would be allowed “as of right.” Id. at 2–3 (citing Kingston at
`14). Petitioner further argues that the previous district court litigation was
`settled before trial, with no determination of validity of the ’044 patent, and
`there is no prohibition in the dismissal order on challenging the patent in an
`inter partes review. Id. at 3. Petitioner also asserts that there is no prejudice
`to Patent Owner because Petitioner will be acting in an understudy role if
`joinder is permitted. Id. at 4–5.
`On the “delay in filing issue,” Petitioner offers the explanation that the
`one-year deadline under § 315(b) does not apply to “me-too” petitions, and
`Board rules (specifically 37 C.F.R. § 42.122(b)) “expressly permit a motion
`for joinder within one month of institution in the underlying proceeding.”
`Id. at 3–4.
`
`7
`
`
`
`IPR2021-01502
`Patent 9,241,044 B2
`
`
`For the reasons that follow, we determine that Petitioner has not
`shown that joinder is warranted under the circumstances and we exercise our
`discretion to deny Petitioner’s motion for joinder.
`Joinder may be authorized when warranted, but the decision to grant
`joinder is discretionary. See 35 U.S.C. § 315(c); 37 C.F.R. § 42.122. We
`agree with Petitioner that under § 315(b), a one-year bar does not apply
`when joinder is granted. However, in view of the specific facts of this case,
`we determine that grant of the joinder motion is not warranted because of
`prejudice to Patent Owner as well as Petitioner’s unexplained delay in
`seeking inter partes review.
`More specifically, allowing joinder would offer Petitioner a second
`bite at asserting invalidity after the dismissal of Petitioner’s invalidity
`counterclaims with prejudice in the prior district court action. We agree
`with Patent Owner that Petitioner’s “inconsistent actions” in dismissing the
`invalidity counterclaims with prejudice “undermine the integrity of the
`judicial process.” Opp. 7. Furthermore, Petitioner’s joinder attempt
`“undermine[s]” the prior dismissal with prejudice. Id. Patent Owner
`continues that Petitioner “now seek[s] a second bite at the invalidity apple.”
`Id. at 8. We agree that the prior dismissal with prejudice of Petitioner’s
`invalidity counterclaims weighs heavily in favor of denying joinder in this
`case.
`
`Additionally, Petitioner was sued in district court for infringement of
`the ’044 patent in 2018. Petitioner could have filed a petition for inter
`partes review in the one-year window following commencement of the
`lawsuit. Instead, Petitioner agreed to a dismissal with prejudice, waiting
`until several years later to challenge the ’044 patent. Petitioner’s
`
`8
`
`
`
`IPR2021-01502
`Patent 9,241,044 B2
`
`unexplained tardiness in challenging the ’044 patent after being sued in 2018
`is another factor weighing in favor of denying joinder here.
`In summary, we agree with Patent Owner that adding Petitioner to
`IPR2021-00458 at this stage would be unduly prejudicial and not in the
`interest of justice. Petitioner’s delay, the dismissal of its invalidity
`counterclaims with prejudice, and the resulting unfairness to Patent Owner
`favor exercising our discretion to deny the motion. Accordingly, in view of
`these factors, we determine that Petitioner has not demonstrated sufficient
`justification for the grant of the joinder motion.
`Further, although Petitioner cites Kingston and the AIA’s legislative
`history to suggest that joinder should be permitted as a matter of right, we do
`not agree. See Reply 2–3 (citing Kingston at 14). Section § 315(c)
`explicitly provides that joinder is discretionary. See 35 U.S.C. § 315(c) (“If
`the Director institutes an inter partes review, the Director, in his or her
`discretion, may join as a party to that inter partes review any person.”)
`Thus, in view of the specific facts here, we exercise our discretion to
`deny joinder.
`
`B. Denial of Inter Partes Review
`It is undisputed that Petitioner was served with a complaint alleging
`infringement of the ’044 patent more than one year prior to filing the
`Petition in this proceeding. See Pet. 2. Accordingly, in view of the denial of
`the requested relief of joinder with IPR2021-00458, institution of inter
`partes review as requested by Petitioner is barred by statute. See 35 U.S.C.
`§ 315(b); 37 C.F.R. § 42.101(b).
`
`9
`
`
`
`IPR2021-01502
`Patent 9,241,044 B2
`
`
`VI. CONCLUSION
`For the foregoing reasons, we deny Petitioner’s motion for joinder.
`Because Petitioner is barred under 35 U.S.C. § 315(b) from seeking inter
`partes review of the ’044 patent, we deny the Petition and do not institute
`review as to any of the challenged claims.
`
`VII. ORDER
`
`
`
`Accordingly, it is:
`ORDERED that the Motion for Joinder is denied; and
` FURTHER ORDERED that, the Petition is denied as to all challenged
`claims and grounds and no trial is instituted.
`
`
`
`
`
`PETITIONER:
`
`George Scott
`jscott@ccrglaw.com
`
`
`Craig Tolliver
`ctolliver@tolliverlawfirm.com
`
`
`PATENT OWNER:
`
`Thomas M. Dunham
`Elizabeth A. O’Brien
`RUYAKCHERIAN LLP
`tom@ruyakcherian.com
`elizabetho@ruyakcherian.com
`
`10
`
`
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