Trials@uspto.gov
`571-272-7822
`
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`
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`Paper No. 48
`Entered: May 23, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`THE DATA COMPANY TECHNOLOGIES INC.,
`Petitioner,
`
`v.
`
`BRIGHT DATA LTD.,
`Patent Owner.
`________________
`
`IPR2022-00135
`Patent 10,257,319 B2
`________________
`
`Record of Oral Hearing
`Held: March 1, 2023
`________________
`
`
`
`
`Before THOMAS L. GIANNETTI, SHEILA F. McSHANE, and
`RUSSELL E. CASS, Administrative Patent Judges.
`
`
`
`
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`571-272-7822
`
`
`
`
`Paper No. 48
`Entered: May 23, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`THE DATA COMPANY TECHNOLOGIES INC.,
`Petitioner,
`
`v.
`
`BRIGHT DATA LTD.,
`Patent Owner.
`________________
`
`IPR2022-00135
`Patent 10,257,319 B2
`________________
`
`Record of Oral Hearing
`Held: March 1, 2023
`________________
`
`
`
`
`Before THOMAS L. GIANNETTI, SHEILA F. McSHANE, and
`RUSSELL E. CASS, Administrative Patent Judges.
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2022-00135
`Patent 10,257,319 B2
`
`
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`MICHAEL RADER, ESQ.
`ADAM WICHMAN, PhD.
`Wolf Greenfield & Sacks PC
`600 Atlantic Avenue
`23rd Floor
`Boston, Massachusetts 02210
`(212) 336-3850
`(617) 646-8571
`mrader-ptab@wolfgreenfield.com
`awichman-ptab@wolfgreenfield.com
`
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`THOMAS DUNHAM, ESQ.
`ROBERT HARKINS, ESQ.
`RuyakCherian LLP
`1901 L Street NW
`Suite 700
`Washington, DC 20036
`(202) 838-1567
`(510) 944-0187
`tomd@cherianllp.com
`bobh@ruyakcherian.com
`
`
`
`
`
`
`
`
`
`
`The above-entitled matter came on for hearing on Wednesday,
`March 1, 2023, commencing at 11:00 a.m. EST, via Video-conference.
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`IPR2022-00135
`Patent 10,257,319 B2
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`P R O C E E D I N G S
`- - - - -
`
`11:00 a.m.
`USHER: All parties are connected. Please unmute your mic when
`you're ready to present. Thank you.
`JUDGE CASS: Good morning, everyone, I am Judge Cass and with
`me today I have Judges Giannetti and McShane.
`This is the oral hearing in IPR 2022-00135 involving U.S. Patent No.
`10257319.
`Why don't we begin by having an identification from each side of
`who is on the line. So Petitioner's Counsel, why don't you proceed first.
`MR. RADER: Thank you, your Honor. My name is Michael Rader
`from Wolf Greenfield on behalf of the Petitioner.
`And Adam Wichman, my colleague is here as well and will be
`presenting as well.
`JUDGE CASS: Thank you. Why don't we turn to Patent Owner.
`MR. DUNHAM: Good morning, your Honors, this is Tom Dunham
`with Cherian LLP on behalf of Patent Owner. And with me are my
`colleagues Robert Harkins and Elizabeth O'Brien.
`And Mr. Harkins will be presenting and Ms. O'Brien may be
`presenting, depending on the issues that come up. And I will of course
`present as well.
`JUDGE CASS: Thank you, Counsel.
`As we discussed in our prehearing conference last Friday, this case
`has many similarities to IPR 2022-00138, which was heard on February 10
`of 2023.
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`IPR2022-00135
`Patent 10,257,319 B2
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`So to promote efficiency here, we will enter the hearing transcript
`and demonstratives from the hearing in the 00138 case since the record for
`this case -- once the transcript for that case becomes available.
`So accordingly, the parties do not need to repeat during this hearing
`arguments that were presented during the hearing in the 00138 case.
`As we also discussed in our prehearing conference, each party has
`agreed that it will have 45 minutes to have time to present its arguments.
`Petitioner will proceed first, followed by Patent Owner's response.
`Petitioner may reserve time for rebuttal, and then we'll proceed to
`rebuttal to respond to Patent Owner's presentation.
`And finally, Patent Owner may use any of its remaining time for a
`surrebuttal responding to Petitioner's rebuttal arguments only.
`Let me go through a few things before we begin. First of all, there's
`going to be a public line for this case. We're not aware of any confidential
`information that may be discussed. But if that's not the case, please speak
`up.
`
`Please keep your microphones muted when you're not speaking.
`When it's your turn to argue, please speak slowly and if you hear another
`voice, please stop so that we don't talk over each other.
`If either party believes that the other party is presenting an improper
`argument, please raise that issue during your presentation. Do not object at
`the time and interrupt the other party's presentation.
`I will keep time and can give you a warning when you've gone into
`rebuttal time if you'd like.
`I also want to let you know we've received the parties' demonstrative
`exhibits and are able to view them on our screens. To ensure that the
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`IPR2022-00135
`Patent 10,257,319 B2
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`transcript is clear and that everyone can follow along, please refer to your
`demonstratives by slide number.
`We've also received Petitioner's objections to Patent Owner's
`demonstratives. For purposes of this hearing, Patent Owner may present its
`slides and we will reserve a ruling on Patent Owner's objections and rule on
`them in due course.
`Are there any questions from the parties before we begin?
`MR. RADER: Not from Petitioner.
`JUDGE CASS: All right, then why don't we start with Petitioner.
`Counsel for Petitioner, would you like to reserve time for rebuttal?
`MR. RADER: Yes, we'd like to reserve 10 of our 45 minutes for
`rebuttal, please.
`JUDGE CASS: All right. With that, please proceed.
`MR. RADER: Thank you very much, your Honors, for the
`opportunity to present again. Per your instructions, we will ensure that we
`avoid duplication, at least we hope to.
`In fact, in our affirmative presentation, you will hear mostly from
`Mr. Wichman, who is planning to address the dependent claims since we did
`not have an opportunity to talk about those at the last hearing. So that will
`not be duplicative.
`For my part, I'm just going to address one issue on claim
`construction, which I did not have the opportunity to speak about last time.
`And that's the Patent Owner's argument that you should adopt a narrow
`claim construction for purposes of preserving the validity of the claims.
`And then I'll comment on one very small issue regarding the
`Plamondon reference as well.
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`IPR2022-00135
`Patent 10,257,319 B2
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`
`So with regard the claim construction issue, if your Honors could
`turn to the Petitioner's Slide 63 for just a moment.
`The threshold issue, before I talk about the substance of the Patent
`Owner's argument for preserving validity, is how does the Federal Circuit
`view this canon of claim construction.
`Well, it first -- the issue first came up in the Patent Owner response
`when the Patent Owner cited a 2002 case.
`We responded in the reply by pointing out that in the en banc
`Phillips decision, which was decided in 2005, at that point, this doctrine of
`construing claims narrowly to preserve their validity was all but a dead
`letter. As the Federal Circuit said, it was a doctrine of limited utility.
`And we noted that the case the Patent Owner had cited predated
`Phillips.
`So how did they respond in their surreply? They cited an even older
`case from 1996, almost a decade before Phillips was decided.
`Patent Owner has cited no post-Phillips authority endorsing the
`notion as a threshold matter of construing claims narrowly to preserve their
`validity.
`And the Federal Circuit explained, and this is on the righthand side
`of our Slide 63 in the middle, we have limited this maxim to cases in which
`the court concludes after applying all the available tools of claim
`construction that the claim is still ambiguous.
`Now, they have never argued that. In fact, the Patent Owner here
`argues the opposite. They're arguing lexicography.
`The lexicography is -- argument is wrong for the reasons I explained
`on February 10.
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`IPR2022-00135
`Patent 10,257,319 B2
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`But they argue that the meaning of the client device term is very
`clear because it's defined lexicographically. That's the opposite of an
`ambiguous claim term.
`So to the extent there's any life let at all in the doctrine of construing
`claims to preserve their validity, this definitely is not a situation where it's
`applicable.
`JUDGE GIANNETTI: Mr. Rader, this is Judge Giannetti. Do you
`see any relationship between the doctrine that you're discussing and the
`presumption of validity that applies in district court?
`MR. RADER: No, not really. First of all, of course, as you noted, it
`only applies in district court. There's no presumption of validity here.
`They're really two separate doctrines. I mean, the presumption of
`validity just arises from the fact that the Patent Office examined the claims.
`And we give, you know, a certain amount of deference to the
`decisions made by an administrative agency, and that's where it arises from.
`But the doctrine, the canon of claim construction is -- I mean, that's a
`matter of Federal Circuit law, that's a separate issue.
`And the Federal Circuit has said -- it hasn't completely ruled it out.
`But I think since 2005 has rarely if ever found a situation where it applied.
`JUDGE GIANNETTI: All right, thank you.
`MR. RADER: If you could turn now, I'm going to primarily use the
`Patent Owner's own slides to talk about the substance of what they're
`arguing. If you could turn to the Patent Owner's Slide 30.
`Here they put Figures 1 and 3 from the 319 patent side by side. And
`they say that a role-based construction like what the court adopted would
`cause Figure 3 to, quote unquote, collapse onto Figure 1.
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`IPR2022-00135
`Patent 10,257,319 B2
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`The Patent Owner argues that you have to act to prevent that from
`happening because the Federal Circuit will not condone a construction under
`which the claims are invalid.
`I've already talked about my view of the Federal Circuit thinks about
`the doctrine, but let's talk about the specifics here.
`So in our petition at the beginning and again on the very first page of
`our reply, we explain that the actual reason why Claim 1 is anticipated by
`Plamondon has nothing to do with claim construction. It's simply the way
`Patent Owner chose to write the claim.
`Now, how does the invention of the 319 patent as embodied in
`Figure 3 operate? As we explained in the petition, pages 1-4, Client 102 has
`software on it called an acceleration application.
`That application intercepts requests for content and contacts the
`acceleration server.
`The acceleration server has an index of agents that could help get the
`content. It will direct the requester to an agent.
`The agent in turn has an index of peers that may have all or part of
`the content. And it will direct the requester to one of those, or if there are
`none, it'll go and get the content itself.
`Figure 1, the prior art figure, does not show an acceleration server. It
`does not show an agent. It does not show peers.
`It does not talk about any of those method steps that I just described
`which the 319 patent describes as the purported novel invention of the
`patent.
`
`And as we explained in our reply on page 1, the reason the claims
`read on the prior art and are anticipated is that they're over-broad and they
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`IPR2022-00135
`Patent 10,257,319 B2
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`don't recite any of the features that I just described that the 319 patent says
`are the novel features, supposedly novel features of the invention.
`The notion that the Patent Owner is now arguing is that this patent is
`all about using a mobile phone or a laptop as a client device. That's just not
`in the patent.
`Mobile phone, cellphone, smart phone, laptop, desktop, tablet -- you
`won't even find any of these words anywhere in the patent specification.
`So the argument for preserving validity here requires reimagining or
`rewriting the entire specification.
`But that's not all they're reimagining. Right, the Patent Owner's
`taking a very creative approach to its patent.
`If you look at Patent Owner's Slide 36, they talk about Claim 1 of the
`319 patent. And the first bullet is they say Claim 1 keeps the benefits of
`using a prior art proxy server, e.g., it provides anonymity.
`So anonymity of the requesting device, that's really important. And
`they say that's provided by Claim 1.
`If you look at their -- Patent Owner Slide 11, they talk about the
`benefits of the claimed methods.
`And just focusing on the third bullet, they say the claimed methods
`prevent blocking or spoofing by a web server. They provide anonymity to
`the requester. They provide the use of a residential IP address.
`If you look at Patent Owner's Slide 22. They say that the features
`driving the commercial success, the purported commercial success, of their
`invention are those same features.
`The proxy client devices have residential IP addresses, which lower
`the risk of blocking and spoofing.
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`IPR2022-00135
`Patent 10,257,319 B2
`
`
`So all of these key concepts -- anonymity, preventing web servers
`from blocking or spoofing, residential IP addresses -- those are the features
`that supposedly distinguish their invention from the prior art and supposedly
`underlie their secondary considerations arguments.
`Not a single one of those is either in the specifications or the claims.
`And I'll direct you to Dr. Williams, their expert, his deposition,
`Exhibit 1081 at page 88, or you can just obviously read or word search the
`patent. It's not there.
`On page 40 of their Patent Owner Response, they went so far as to
`say the following. This is the top paragraph on page 40.
`They talk about Plamondon, the -- our primary reference.
`Plamondon is agnostic regarding anonymity of Client 102.
`Then they say, quote, That is the opposite of the disclosure of the
`319 patent, unquote.
`Now, your Honors, they admit the 319 patent says nothing
`whatsoever about anonymity.
`What else is the Patent Owner reimagining in its patent? Turn to
`their Slide 46, Patent Owner's Slide 46.
`In an effort put some meat on the bones about what a client device is,
`they offer these attributes. Let's look at a few of them.
`The first one, typically portable and easily moved. Now, what does
`that mean?
`How easily moved does it have to be? Does it depend on your size
`or strength? No idea.
`Typically uses relatively few connections. How few is few?
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`IPR2022-00135
`Patent 10,257,319 B2
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`Typically processes a limited number of requests. How limited does
`that number need to be?
`And all of those are prefaced with the word typically. So even if
`you're not moveable at all, you could still qualify as a client device since
`that's only typical, it's not even a requirement according to the Patent Owner.
`Et cetera, et cetera.
`And none of this is anywhere in the specification. It's only their
`expert that provides this information.
`None of this is in the claim either. So if you ask yourself is the
`Patent Owner saying that a client device under each construction -- under its
`construction has to have these attributes?
`I don't know the answer to that. That answer has never been
`provided.
`Your Honors, patent prosecution is an ex parte process. The Data
`Company was not able to participate in the prosecution of the 319 patent.
`Wolf Greenfield was not able to participate. The public was not able to
`participate.
`Every aspect of the 319 patent, its specification and its claims, was
`chosen by the Patent Owner and only the Patent Owner.
`The Federal Circuit has repeatedly said that it will not redraft claims
`to sustain their validity.
`When the Patent Office adopted the Phillips standard for IPRs, it
`explained in its guidance, which we cite from the Federal Register in our
`reply brief, that that was an important piece of -- that was an important piece
`of the process, and it would of course follow the Federal Circuit's
`instructions there.
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`IPR2022-00135
`Patent 10,257,319 B2
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`So this -- this board should decline the invitation to reimagine the
`319 patent and engage in a narrow construction for purposes of preserving
`validity.
`Now, last issue before I turn it over to Mr. Wichman. Briefly about
`Plamondon.
`If you could turn to the Petitioner's Slide 62. We've quoted here the
`full paragraph 238 of Plamondon.
`Now, if you'll recall, there were two key paragraphs in Plamondon
`for the disclosure of the client device and server limitations under the Patent
`Owner's construction . I want to make that clear, we're talking about under
`the Patent Owner's constructions here.
`So if you recall, paragraph 229 said that appliance 200 is an instance
`of computing device 100.
`And then this paragraph 238 that you see on our Slide 62 lists the
`various things that computing device 100 can be, and therefore that
`appliance 200 can be.
`So for example, it could be a Treo smart phone by Palm. It could be
`a pocket PC device. It could be a Nokia smart phone. It could be a
`Motorola smart phone. It could be a Sony Erickson phone. It could be any
`other type of smart phone.
`Or at the very bottom, it says it could be any other type of
`telecommunications that's capable of doing what it needs to do as appliance
`200.
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`The disclosure is clear. Appliance 200, which is a computing device
`100, can be any of these things.
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`IPR2022-00135
`Patent 10,257,319 B2
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`And then it's not limited to those, it can be other things too, as long
`as it has the memory and processing power necessary to do what it needs to
`do.
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`What does the Patent Owner say? Well, turn to the Patent Owner's
`Slide 61. On the bottom half of that slide, they say a desktop, laptop, mobile
`telephone does not have the capabilities for performing the operations of
`appliance 200 described in Plamondon.
`So it says the very devices that Plamondon says work, and
`Plamondon doesn't just say a smart phone, it lists at least four different
`specific models of smart phones.
`It says no, those don't work. Do they cite any evidence? No. Did
`their expert address this? No.
`In fact, this is a new argument that did not appear either in their
`Patent Owner Response or in their Sur-reply.
` So we object to it on that basis, but I wanted to respond and just
`point out that this is yet another instance of the Patent Owner reimagining
`the evidence.
`Plamondon says these smart phones work for computing device 100
`and therefore appliance 200, they say no, they don't. But they provide no
`evidence for that.
`Now, the last thing I just wanted to point out is that this
`reimagination goes even further. Consider this example. We pointed this out
`on page 27 of our reply brief.
`While their expert ultimately admitted that the claims do not require
`a client device to have a residential IP address, during the first half of this
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`IPR2022-00135
`Patent 10,257,319 B2
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`deposition, he testified the opposite. And in fact, he insisted that the claims
`do require a residential IP address.
`I'm quoting now from page 49 of Exhibit 1081 in the deposition. I
`asked him, To practice the method claims of the 510 and 319 patents, must
`the first client device have a residential IP address?
`Answer: yes.
`Question: so if the device has a commercial IP address assigned to it,
`it will not practice the claims of the 510 or 319 patents?
`He answered: In my opinion, a device that has a commercial IP
`address cannot be a first client device. He insisted on it.
`Eleven pages later on page 60 of this transcript, I asked him is a
`residential IP address required to satisfy the first client device limitation of
`the challenged claim? Same question.
`Answer: Residential IP address is not a restriction on the claims.
`Changed his mind.
`Your Honors, the briefing made this case -- Patent Owner's briefing
`made this case more complicated than it really is. The waffling back and
`forth to try to make the claims match what the Patent Owner thinks it needs
`for this case in the moment.
`The fact is, it's very simple. They wrote claims that are over-broad
`that read directly on the prior art. They could have written different claims,
`and they did not.
`They could have amended their claims in this IPR to cover their
`actual invention, and they did not do that either.
`I'll cede the rest of my time to Mr. Wichman.
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`IPR2022-00135
`Patent 10,257,319 B2
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`MR. WICHMAN: Good morning, your Honors, I'm Adam
`Wichman for the Petitioner.
`I'd like to address ground start with ground six.
`As you recall, there is no dispute that the combination of Plamondon
`with the software versioning system in Price meets every additional
`limitation in Claims 2-5 and 19-20 of the 319 patent.
`The only dispute concerns the reasons to form this combination.
`So if the Board could turn to Petitioner's Slide 38. The petition
`identifies three distinct reasons that persons of ordinary skill would want to
`combine Plamondon with Price.
`None of these are genuinely disputed. Each of them alone justifies
`forming this combination.
`First, software versioning. We explain in the petition on page 46
`that right there in Price at paragraph 4, Price says that digital-based devices
`often require updated software versions.
`Something familiar I'm sure to every member of the panel, anybody
`who uses a computer or a smart phone, software has to be updated all the
`time.
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`To address that problem, the person of ordinary skill would in --
`would want to have incorporated Price's software updating in Plamondon's
`system so that all the devices in Plamondon's network could have their
`software updates managed.
`The Patent Owner has no response to this, so this reason to combine
`is undisputed.
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`IPR2022-00135
`Patent 10,257,319 B2
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`In the petition at page 47, we explain that combining Plamondon and
`Price brings together known prior art elements with known methods yield
`predictable results, a canonical reason to combine under KSR.
`In response, the Patent Owner provides a single sentence asserting
`that this combination would change the functionality of two elements in
`Plamondon.
`There is no explanation of how functionality would change. There is
`no explanation of why any alleged change matters to the obviousness
`analysis.
`And there's really no evidentiary support, because the single
`paragraph that they cite in Dr. Williams's declaration is a single sentence
`that is just an exact restatement of the Patent Owner's argument with no
`supporting evidence or reasoning.
`And this also ignores the facts, because in the petition at page 49 we
`explain that a client 102, 102A, one of these myriad clients floating around
`in Plamondon's network, is still the second server in the claims.
`And we explain in the petition at page 48 that this client 102A is
`augmented with software that implements Price's coordinating computer.
`So no functionality changes. The functionality is augmented.
`That leaves this additional reason for combination undisputed and
`compelling.
`Finally, we refer to cybersecurity. In this, the Patent Owner provides
`no relevant response. So if the Board could turn to Slide 39.
`We show you in the petition at 47, we explain that the person of
`ordinary skill would have recognized that Price provided a way to apply
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`IPR2022-00135
`Patent 10,257,319 B2
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`regular software patching to network components distributed throughout
`Plamondon.
`And that is a compelling reason to combine Plamondon with Price's
`system.
`This relies on Dr. Levin's testimony and his declaration from
`paragraphs 393 to 400.
`In that declaration, Dr. Levin discusses Exhibit 1038. Exhibit 1038
`are best practices, recommendations from the National Institutes of
`Standards and Technology on providing software patching and vulnerability
`management. So NIST.
`So NIST of course, sister agency to the Patent Office within the
`Commerce Department. We show you here just one paragraph from Dr.
`Levin's testimony reproduced on the bottom left of the slide.
`Paragraph 396, quoting from page 1 of the executive summary of
`Exhibit 1038.
`NIST says, Timely patching of security issues is generally
`recognized as critical to maintaining the operational availability,
`confidentiality, and integrity of IT systems.
`We outline in green on the bottom left from the same page in the
`NIST document, To help address this growing problem, it is recommended
`that all organizations have a systematic, accountable, and documented
`process for managing exposure to vulnerabilities through timely deployment
`of patches.
`Well, that's exactly what Price provides. There's more.
`If you look at Dr. Levin's declaration of paragraph 397, he quotes
`Exhibit 1038 at page 2-11. Applying patches to multiple systems is a
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`IPR2022-00135
`Patent 10,257,319 B2
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`constant administrative challenge. This task can be made less burdensome
`with the use of applications that automatically distribute updates to end user
`computers.
`Paragraph 398, NIST, in bold letters, Organizations should use
`automated patch management tools to expedite the distribution of patches to
`systems.
`Paragraph 400. Price provides a technical solution to the software
`versioning and software patching problems posed by Plamondon's network.
`This is a compelling reason for the person of ordinary skill to
`combine Plamondon with Price.
`In response, the Patent Owner points to Plamondon paragraph 354.
`We show you paragraph 354 on the bottom right of Slide 39.
`Paragraph 354 describes Plamondon's appliance 200 providing
`access control. That means login control, authentication.
`So as I'm sure everyone on the panel, I expect you're using the Patent
`Office network, someone who is authorized to use that network will have
`access credentials, a username, a password. You enter those credentials,
`you're given access.
`That's all that Plamondon paragraph 354 is discussing.
`And this is just completely irrelevant to the stated reason to combine,
`which is to provide a mechanism for regularly applying software patching to
`remediate security vulnerabilities responsive to the issues that NIST itself
`has recognized are prevalent in the industry, and to respond to NIST's
`recommendations for best practices.
`So this reason to combine is not disputed, and it's compelling. Three
`reasons to combine, no genuine dispute on all of them, on any of them.
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`Patent 10,257,319 B2
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`If the Board could turn to Slide 41. The Patent Owner has one more
`argument.
`The Patent Owner argues that the combination of Plamondon and
`Price would result in inefficiencies. This argument ignores the facts.
`The facts, in Dr. Levin's deposition testimony, Exhibit 2010, pages
`145-147, which we have reproduced and annotated on Slides 41 and 42.
`Dr. Levin is unambiguous that modern software development takes
`advantages of the modularity of different software components.
`The modularity means one component, Price's coordinating
`computer software, and another component, Plamondon's appliance 200, say
`the software that implements the first client device.
`They provide services to each other, but they don't know what the
`other piece of software's doing internally.
`And Dr. -- on page 145, it's the top right here, Dr. Levin explains.
`It's very, very common for two different software applications on the same
`computer to have their own caches.
`One piece of software may store information, the other piece of
`software may store information, and they have no idea what the other piece
`of software is doing.
`Because it's not important, because the overwhelming benefit of this
`modularity approach, as Dr. Levin explains, is that it makes it simple,
`straightforward, predictable, and provides the reasonable expectation of
`success that combining the software will work.
`So there is no inefficiency here because the benefits of this approach
`outweigh the possibility that there will be duplications of data in the cache,
`which seems to be Bright Data's inefficiency argument.
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`IPR2022-00135
`Patent 10,257,319 B2
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`The other problem is that Bright Data's argument ignores the law.
`The law says that a combination only needs to be suitable, as the Federal
`Circuit recently reiterated in Intel v. Qualcomm, as we show on the bottom
`left of Slide 41.
`Well, the same testimony from Dr. Levin demonstrates that this
`combination of Plamondon and Price is overwhelmingly suitable, as does the
`fact that this combination fully responds to the recommendation in NIST's
`best practices guidance in Exhibit 1038, corroborating Dr. Levin's testimony.
`There are no other arguments against this combination and
`Plamondon and Price render obvious Claims 2-5 and 19-20 in the 319
`patent.
`
`So unless the Board has questions, I'll turn to Ground 7.
`Okay. In Ground 7, there is no dispute again that the combination of
`Plamondon and Kozat in Kozat's peer-to-peer system meets every additional
`limitation in Claims 6 to 11 of the 319 patent.
`Again, the only dispute concerns the reasons that a person of
`ordinary skill in the art would combine Plamondon with Kozat.
`In the petition at page 57, we explain Kozat is a particular kind of
`peer-to-peer system. Kozat has unique attributes and functionality that
`cannot be found in Plamondon.
`It has a control server that keeps track of current supply demand, and
`predicted future demand of files and optimizes the delivery of content to
`devices in its network.
`It makes content delivery decisions based on the available resources,
`based on the distance of a device supply content and the requesting device.
`None of that is available in Plamondon.
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`IPR2022-00135
`Patent 10,257,319 B2
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`If the Board will turn to Slide 46. We've reproduced the petition at
`page 59.
`The first sentence of that petition in 59, Persons of ordinary skill in
`the art would have found implementing Kozat's peer-to-peer functionality a
`natural extension of Plamondon.
`This ends with the highlighted yellow material in the top left of the
`slide and relies on Dr. Levin's testimony at paragraphs 463-468.
`The reasons to combine Plamondon and Kozat are highlighted in
`green. The Patent Owner does not challenge or dispute that the combination
`of Plamondon and Kozat would provide these benefits that are highlighted in
`green. Or that these provide a reason to combine Plamondon and Kozat.
`The Patent Owner's argument is that because Plamondon provides a
`cache management system, therefore Kozat's solution would be unnecessary.
`Well, that's non-responsive because the fact that there is a cache
`management system, as we explain in the reply, would motivate the
`combination.
`The fact that there is a cache management system is a general
`assertion that ignores the fact that Plamondon simply does not describe the
`functionality or the optimization that's provided in Kozat.
`So this is not a -- this just does not take issue with the asserted
`reasons to combine.
`The other arguments, very briefly. Patent Owner argues that
`Plamondon would have worked for its intended purpose, and therefore the
`person of ordinary skill would not have formed a combination.
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