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.
`____________
`
`IPR2021-01503
`Patent 9,742,866 B2
`____________
`
`
`
`Before THOMAS L. GIANNETTI, SHEILA F. McSHANE, and
`RUSSELL E. CASS, Administrative Patent Judges
`
`McSHANE, 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.
`____________
`
`IPR2021-01503
`Patent 9,742,866 B2
`____________
`
`
`
`Before THOMAS L. GIANNETTI, SHEILA F. McSHANE, and
`RUSSELL E. CASS, Administrative Patent Judges
`
`McSHANE, 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
`
`
`
`IPR2021-01503
`Patent 9,742,866 B2
`
`
`I. INTRODUCTION
`Code200, UAB, Teso LT, UAB, Metacluster LT, UAB, Oxysales,
`UAB, and Coretech LT, UAB (“Petitioner”) filed a Petition for inter partes
`review of claims 15–20, 23, 24, 27, and 28 of U.S. Patent No. 9,742,866 B2
`(Ex. 1001, “the ’866 patent”). Paper 1 (“Pet.”). Petitioner also filed a
`Motion for Joinder with NetNut Ltd. v. Bright Data Ltd., IPR2021-00465
`(“the 465 IPR” or “the NetNut 465 IPR”). Paper 7 (“Mot.”). 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”).
`We have authority 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.” 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 subsection (c).” Additionally, under 35 U.S.C. § 315(c), “the
`Director, in his or her discretion, may join as a party to that inter partes
`review any person who properly files a petition under section 311 that the
`Director . . . determines warrants the institution of an inter partes review
`under section 314.”
`
`2
`
`
`
`IPR2021-01503
`Patent 9,742,866 B2
`
`
`For the reasons described below, we do not institute an inter partes
`review of the challenged claims and we deny Petitioner’s Motion for
`Joinder.
`
`II. RELATED PROCEEDINGS
`Patent Owner indicates that a related proceeding is IPR2021-01502.
`Paper 10, 1. The parties also indicate that related patents are the subject of
`multiple litigations, inter partes reviews, and other Patent Office
`proceedings. Pet. 3–10; Paper 10, 1–3.
`In a related litigation, Luminati Networks, Ltd., now known as Bright
`Data Ltd., the Patent Owner here, sued UAB Teso LT (f/k/a UAB Tesonet)
`and UAB Metacluster LT, some of the petitioners here, for infringement of
`the ’866 patent in Luminati Networks Ltd. v. UAB Tesonet, UAB Metacluster
`Ltd., Civil Action No. 2:18-CV-00299-JRG (E.D. Tx.). Mot. 2; Opp. 2.
`That lawsuit was filed on July 19, 2018. Mot. 2. In that lawsuit, the claims
`and counterclaims, which included invalidity assertions, were dismissed
`with prejudice on February 4, 2020. Id. (citing Ex. 1 (attached to Motion)).
`
`3
`
`
`
`IPR2021-01503
`Patent 9,742,866 B2
`
`
`In the NetNut 465 IPR, we instituted an inter partes review of claims
`15–20, 23, 24, 27, and 28 of the ’866 patent on the following grounds:
`
`35 U.S.C. §
`102(a)1
`103
`103
`103
`103
`
`Claim(s)
`15–17, 23, 24
`18
`19, 20, 27, 28
`15, 17, 18
`15, 17, 18
`
`References/Basis
`Sharp KK2
`Sharp KK, MPEG DASH3
`Sharp KK, Shribman4
`Luotonen5, RFC 26166
`Luotonen, RFC 2616, RFC
`30407
`NetNut Ltd. v. Bright Data Ltd., IPR2021-00465, Paper 11 at 4–5, 35 (PTAB
`Aug. 12, 2021) (“465 Decision” or “465 Dec.”).
`
`III. DISCUSSION
`
`A. Joinder Motion
`
`The Petition in this proceeding asserts the same grounds of
`
`unpatentability as those upon which we instituted review in the NetNut 465
`IPR. Compare Pet. 1, 12, with 465 Dec. 4–5, 35. Consistent with this,
`
`
`1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 287–88 (2011), which amended 35 U.S.C. §§ 102 and 103, was
`effective on March 16, 2013 and applies here.
`2 EP 2 597 869 A1, published on May 29, 2013. (Ex. 1018)
`3 Information technology–Dynamic adaptive streaming over HTTP
`(DASH)–Part 1: Media Presentation Description and Segment Formats,
`ISO/IEC JTC 1/SC 29, January 5, 2012 (Ex. 1027).
`4 U.S. Patent Application No. 2011/0087733 A1, filed July 14, 2010,
`published April 14, 2011 (Ex. 1017).
`5 Ari Luotonen, WEB PROXY SERVERS, Prentice Hall Web Infrastructure
`Series, 1998 (Ex. 1014).
`6 Hypertext Transfer Protocol–HTTP/1.1, Network Working Group, RFC
`2616, The Internet Society, 1999 (Ex. 1007).
`7 Internet Web Replication and Caching Taxonomy, Network Working
`Group, RFC 3040, The Internet Society, 2001 (Ex. 1020).
`4
`
`
`
`IPR2021-01503
`Patent 9,742,866 B2
`
`Petitioner contends that the Petition is “is substantially identical to the
`petition in the NetNut IPR [465 IPR] 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 (citing Ex. 1034).
`Petitioner requests that we institute inter partes review and seeks
`joinder with the NetNut 465 IPR. Mot. 1. Petitioner asserts that the request
`for joinder has been timely made. Id. at 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)8). 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 states that it will not request any alterations to
`the trial schedule of the NetNut 465 IPR and it will adopt a secondary,
`understudy role in that IPR. Id. Petitioner argues that, because it will rely
`on the same prior art and the same expert to support identical arguments
`
`
`8 Available at https://go.usa.gov/xpvPF.
`5
`
`
`
`IPR2021-01503
`Patent 9,742,866 B2
`
`regarding the unpatentability, granting joinder will not add to the complexity
`of briefing and discovery. Id. at 6.
`Patent Owner opposes the Motion for Joinder because it 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 on this
`patent in 2018. Id. Patent Owner asserts that the existence of a time bar is
`one of the factors that may be considered when exercising discretion to
`avoid undue prejudice to a party. Id. at 4 (citing Proppant Express Invs. v.
`Oren Techs., IPR2018-00914, Paper 38 at 4 (PTAB Mar. 13, 2019)
`(precedential) (“Proppant”)). Patent Owner argues that consideration of
`one-year time bar is only disregarded in limited circumstances, such as those
`in view of actions taken by a patent owner in a co-pending litigation, like the
`late addition of newly asserted claims. Id.
`Patent Owner refers to Petitioner’s acknowledgement that the claims
`and counterclaims in the District Court lawsuit were dismissed with
`prejudice on February 4, 2020. Opp. 2 (citing Mot. 2, ¶ 2). Patent Owner
`contends that Petitioner’s actions seeking institution and joinder undermine
`the previous dismissal of Petitioner’s invalidity counterclaims with prejudice
`and these inconsistent actions further serve to undermine the integrity of the
`judicial process. Id. at 3, 8. Patent Owner argues that “the finite resources
`of the Board should not be used to give Petitioner[] a second bite at the
`invalidity apple, particularly in light of Petitioner[’s] prior dismissal with
`prejudice of their invalidity counterclaims.” Id. Patent Owner contends that
`if NetNut were to exit the NetNut 465 IPR, Petitioners should not be allowed
`to step into NetNut’s shoes and “Patent Owner should not have to bear the
`
`6
`
`
`
`IPR2021-01503
`Patent 9,742,866 B2
`
`additional time and expense to defend its patents against Petitioners, given
`the prior dismissal with prejudice.” Id. at 8.
`Patent Owner contends that Petitioner was aware of the ‘866 patent
`and the asserted prior art since 2018, which is before the one-year bar for
`filing a petition. Opp. 9–10. Patent Owner argues that Petitioner fails to
`explain its delay in filing the Petition or why fairness now requires joinder.
`Id. at 10.
`In Reply, Petitioner argues that Proppant is inapplicable to the case
`and joinder is not time-barred. Reply 1–2. Petitioner 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
`where a party seeks to join new issues, which does not apply in this case
`because here joinder is sought by a different party based on 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)
`(“Kingston”)). Petitioner also alleges that in the Kingston case, the Board
`referred to the legislative history of the AIA, which indicates that joinder
`would be allowed as a matter 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 ’866 patent, and
`there is no prohibition in the District Court order preventing Petitioner from
`challenging the patent in an inter partes review. Id. at 3. Petitioner also
`asserts that there is no prejudice to Patent Owner from joinder because
`Petitioner will be acting in an understudy role. Id. at 4–5. Petitioner further
`argues that there was no delay in filing because the one year deadline does
`not apply in these circumstances, that is, for “me-too” cases under § 315(b),
`
`7
`
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`IPR2021-01503
`Patent 9,742,866 B2
`
`and also that the Board’s rules permit joinder within one month of institution
`in the underlying proceeding under § 42.122(b). Id. at 4.
`For the reasons that follow, we determine that Petitioner has not
`shown that joinder is warranted under these specific 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 a one-year bar does not apply to joinder under
`§ 315(b). However, in view of the specific facts of this case, we determine
`that the grant of the 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 previous dismissal with prejudice of
`Petitioner’s invalidity counterclaims in the District Court action. As such,
`joinder would not be in the interest of justice and would be prejudicial to
`Patent Owner under these circumstances. We agree with Patent Owner 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 on the ’866 patent
`in 2018. Although it could have done so, Petitioner did not file an inter
`partes challenge in the one-year time frame following the lawsuit’s
`commencement. Now, several years later, after a dismissal of the District
`Court litigation with prejudice, Petitioner seeks to challenge the patent by its
`joinder motion. Petitioner provides no explanation for not filing for review
`when it could have earlier done so in the one-year window, but now seeks to
`
`8
`
`
`
`IPR2021-01503
`Patent 9,742,866 B2
`
`join a challenge after dismissal of its earlier counterclaims with prejudice—
`except to argue that there was no delay for the joinder motion under the
`statute. Petitioner also does not provide an explanation why fairness now
`requires joinder. Thus, we agree with Patent Owner that adding Petitioner to
`the NetNut 465 IPR would not be in the interests of justice and has not been
`justified.
`Accordingly, in view of these factors, we determine that Petitioner has
`not presented sufficient justification for the grant of the joinder motion.
`Additionally, Petitioner refers to the AIA legislative history cited in
`the Kingston case, perhaps to suggest that joinder should be permitted as a
`matter of right. See Reply 2–3 (citing Kingston at 14). We do not agree that
`joinder is granted as a matter of right. Section § 315(c) explicitly states 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. Inter Partes Review
`Petitioner was served with a complaint alleging infringement of the
`’866 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 IPR2021-00465, institution of an 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
`
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`IPR2021-01503
`Patent 9,742,866 B2
`
`
`IV. CONCLUSION
`For the foregoing reasons, we deny Petitioner’s motion for joinder.
`Because Petitioner is barred under 35 U.S.C. § 315(b) from inter partes
`review of the ’866 patent, we do not institute review as to any of the
`challenged claims.
`
`V. 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.
`
`
`
`
`
`
`
`
`
`
`
`
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`
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`
`10
`
`
`
`IPR2021-01503
`Patent 9,742,866 B2
`
`
`PETITIONER:
`
`George “Jorde” Scott
`Craig Tolliver
`CHARHON CALLAHAN ROBSON & GARZA, PLLC
`jscott@ccrglaw.com
`ctolliver@tolliverlawfirm.com
`
`
`PATENT OWNER:
`
`Thomas Dunham
`Elizabeth O’Brien
`RUYAKCHERIAN LLP
`tom@dunham.cc
`elizabetho@ruyakcherian.com
`
`
`
`
`
`
`
`
`
`
`
`
`
`11
`
`
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