PUBLIC VERSION
`
`Paper 51
`Trials@uspto.gov
`Date: May 31, 2023
`Tel: 571-272-7822
`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
`
`
`
`Before THOMAS L. GIANNETTI, SHEILA F. McSHANE, and
`RUSSELL E. CASS, Administrative Patent Judges.
`
`CASS, Administrative Patent Judge.
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`Granting Motions to Seal
`Granting Motion to Exclude
`35 U.S.C. § 318(a); 37 C.F.R. § 42.14; 37 C.F.R. § 42.64
`
`
`
`
`
`Paper 51
`Trials@uspto.gov
`Date: May 31, 2023
`Tel: 571-272-7822
`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
`
`
`
`Before THOMAS L. GIANNETTI, SHEILA F. McSHANE, and
`RUSSELL E. CASS, Administrative Patent Judges.
`
`CASS, Administrative Patent Judge.
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`Granting Motions to Seal
`Granting Motion to Exclude
`35 U.S.C. § 318(a); 37 C.F.R. § 42.14; 37 C.F.R. § 42.64
`
`
`
`
`
`IPR2022-00135
`Patent 10,257,319 B2
`
`
`
`I. INTRODUCTION
`
`A. Background
`In this inter partes review, The Data Company Technologies Inc.
`(“Petitioner”) challenges the patentability of claims 1–29 (the “challenged
`claims”) of U.S. Patent No. 10,257,319 B2 (Ex. 1001, “the ’319 patent”),
`which is assigned to Bright Data Ltd. (“Patent Owner”).
`We have jurisdiction under 35 U.S.C. § 6. This Final Written
`Decision, issued pursuant to 35 U.S.C. § 318(a), addresses issues and
`arguments raised during the trial in this inter partes review. For the reasons
`discussed below, Petitioner has proven by a preponderance of the evidence
`that claims 1–29 are unpatentable.
`B. Procedural History
`In this proceeding, Petitioner relies upon the following references:
`1. Plamondon, U.S. Patent Application Publication US
`2008/0228938 A1, published September 18, 2008 (Ex. 1010).
`2. RFC 2616, Hypertext Transfer Protocol—HTTP/1.1,
`Network Working Group, The Internet Society, 1999
`(Ex. 1018).
`3. RFC 1122, Requirements for Internet Hosts–
`Communication Layers, Network Working Group, Internet
`Engineering Task Force, 1989 (Ex. 1014).
`4. IEEE 802.11-2007, IEEE Standard for Information
`Technology–Telecommunications and Information Exchange
`Between Systems - Local and Metropolitan Area Networks–
`Specific Requirements–Part 11: Wireless LAN Medium Access
`Control (MAC) and Physical Layer (PHY) Specifications, IEEE
`Standards, June 12, 2007 (Ex. 1022).
`5. Price, U. S. Patent Application Publication US
`2006/0026304 A1, published February 2, 2006 (Ex. 1023).
`6. Kozat, U. S. Patent Application Publication US
`2009/0055471 A1, published February 26, 2009 (Ex. 1024).
`2
`
`
`
`
`
`
`
`IPR2022-00135
`Patent 10,257,319 B2
`
`Petition (“Pet.”) viii, 2.
`Petitioner submitted a declaration from Prof. David Levin (Ex. 1003,
`“Levin Decl.”). Patent Owner submitted a Declaration of Dr. V. Thomas
`Rhyne with the Preliminary Response (Ex. 2001, “Rhyne Decl.”), and
`submitted a declaration from Dr. Tim A. Williams with the Patent Owner
`Response (Ex. 2044, “Williams Decl.”).
`Petitioner challenges the Patentability of claims 1–29 on the following
`grounds:
`
`Claim(s) Challenged
`1, 12–14, 21–27
`28, 29
`15–17
`17, 18
`2
`2–5, 19, 20
`6–11
`
`35 U.S.C. §1
`102(b)
`103(a)
`103(a)
`103(a)
`103(a)
`103(a)
`103(a)
`
`Reference(s)/Basis
`Plamondon
`Plamondon
`Plamondon, RFC 2616
`Plamondon, RFC 1122
`Plamondon, IEEE 802.11-2007
`Plamondon, Price
`Plamondon, Kozat
`
`Pet. 2. Patent Owner filed a Preliminary Response. Paper 7 (“Prelim.
`Resp.”). With our permission, Petitioner filed a Reply to the Preliminary
`
`
`1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 287–88 (2011), amended 35 U.S.C. §§ 102 and 103, effective
`March 16, 2013. Because the ’319 patent claims priority to a provisional
`application that was filed before this date, we apply the pre-AIA versions of
`§§ 102 and 103. See Ex. 1001, code (60).
`3
`
`
`
`
`
`IPR2022-00135
`Patent 10,257,319 B2
`
`
`Response (Paper 8), and Patent Owner filed a Sur-reply to Petitioner’s Reply
`(Paper 9).
`During the trial, Patent Owner filed a Response (Paper 16, “PO
`Resp.”), Petitioner filed a Reply (Paper 23, “Pet. Reply”), and Patent Owner
`filed a Sur-reply (Paper 29, “PO Sur-reply”).
`An oral hearing was held on March 1, 2023, a transcript of which
`appears in the record. Paper 48 (“Tr.”).
`
`C. Real Parties-in-Interest
`Petitioner identifies itself as the only real party-in-interest. Pet. xiv.
`Without conceding that they are real parties in interest, Petitioner also
`identifies Avantis Team Technologies Ltd. and Cytronix Ltd. Id.
`Patent Owner identifies Bright Data Ltd. as the only real party-in-
`interest. Paper 4, 1.
`D. Related Matters
`The parties identify several district court proceedings involving the
`’319 patent and its child, U.S. Patent No. 10,484,510 (“the ’510 patent”), 2
`including Bright Data Ltd. v. NetNut Ltd., No. 2:21-cv-225 (E.D. Tex.) (the
`“NetNut Litigation”); and Luminati Networks Ltd. v. Teso LT, UAB, et al.,
`No. 2:19-cv-395 (E.D. Tex.) (the “Teso Litigation”). Pet. xv; Paper 4, 1–2.
`The ’319 patent is or was previously before the Board in IPR2020-
`01266 (institution denied), IPR2021-01492 (pending), IPR2022-00861
`(joined with IPR2021-01492), IPR2022-00915 (pending), IPR2022-01109
`(terminated) and IPR2023-00038 (terminated). Pet. xiv–xv; Paper 5, 1;
`
`
`2 The ’510 patent is based on a continuation of the application for the ’319
`patent. Ex. 1025, code (60).
`
`
`
`4
`
`
`
`IPR2022-00135
`Patent 10,257,319 B2
`
`
`Paper 39, 3. The ’510 patent is or was involved in IPR2020-01358
`(institution denied), IPR2021-01493 (pending), IPR2021-00862 (joined with
`IPR2021-01493), IPR2022-00916 (pending), IPR2022-01110 (terminated),
`and IPR2023-00039 (terminated). Paper 5, 1–2; Paper 39, 3–4.
`In addition, Patent Owner identifies two ex parte reexaminations,
`Control Nos. 90/014,875 and 90/014,876, that have been ordered for the
`’319 and ’510 patents, respectively. Paper 5, 2. Those reexaminations have
`since been stayed by the Board. See IPR2021-01492, Paper 14 (Apr. 7,
`2022); IPR2021-01493, Paper 13 (Apr. 7, 2022).
`E. The ’319 Patent
`The ’319 patent is titled “System Providing Faster and More Efficient
`Data Communication.” Ex. 1001, (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 (id. at 4:41–44):
`
`
`
`5
`
`
`
`IPR2022-00135
`Patent 10,257,319 B2
`
`
`
`
`
`
`Figure 3 is a schematic diagram depicting communication network 100
`including a number of communication devices. Id. at 4:43–45. Due to the
`functionality provided by software stored within each communication
`device, “each 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. Id. at 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
`6
`
`
`
`
`
`IPR2022-00135
`Patent 10,257,319 B2
`
`
`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 5:8–15.
`In operation, a client may request a resource on the network, for
`example, through the use of an Internet browser. See id. at 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.”
`Id. at 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.
`
`
`
`
`7
`
`
`
`IPR2022-00135
`Patent 10,257,319 B2
`
`
`
`
`F. Illustrative Claim
`The ’319 patent has 29 claims. As noted, all claims are challenged in
`the Petition. Pet. 1. Claim 1, the only independent claim in the ’319 patent,
`is illustrative of the claimed subject matter and is reproduced below:3
`1. [1P1] A method
`[1P2] 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,
`[1P3] the first server stores a first content identified by a
`first content identifier, and
`[1P4] for use with a second server, the method by the
`first client device comprising:
`[1B] receiving, from the second server, the first content
`identifier;
`[1C] sending, to the first server over the Internet, a
`Hypertext Transfer Protocol (HTTP) request that comprises the
`first content identifier;
`[1D] receiving, the first content from the first server over
`the Internet in response to the sending of the first content
`identifier; and
`[1E] 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.
`
`II. ANALYSIS OF THE CHALLENGED CLAIMS
`A. The Parties’ Arguments
`In our Decision on Institution, we concluded that the arguments and
`
`evidence advanced by Petitioner demonstrated a reasonable likelihood that at
`
`
`3 References in brackets provided by Petitioner have been added and spacing
`has been altered.
`
`
`
`8
`
`
`
`IPR2022-00135
`Patent 10,257,319 B2
`
`
`least one claim of the ’319 patent would have been anticipated or obvious.
`Inst. Dec. 17–34. Here, we must consider whether Petitioner has established
`by a preponderance of the evidence that claims 1–29 of the ’319 patent
`would have been anticipated or obvious. 35 U.S.C. § 316(e). We previously
`instructed Patent Owner that “Patent Owner is cautioned that any arguments
`not raised in the response may be deemed waived.” Paper 13, 9; see also In
`re NuVasive, Inc., 842 F.3d 1376, 1379–82 (Fed. Cir. 2016) (holding patent
`owner waived an argument addressed in the preliminary response by not
`raising the same argument in the patent owner response). Additionally, the
`Board’s Trial Practice Guide states that the Patent Owner Response “should
`identify all the involved claims that are believed to be patentable and state
`the basis for that belief.” Consolidated Trial Practice Guide (Nov. 2019)4
`(“TPG”), 66.
`
`Patent Owner has chosen not to address certain arguments and
`evidence advanced by Petitioner to support its unpatentability contentions.
`In this regard, the record contains persuasive arguments and evidence
`presented by Petitioner regarding the manner in which the prior art discloses
`the corresponding limitations of claims 1–29 of the ’319 patent and the
`rationale for combining the asserted references.
`B. Level of Ordinary Skill in the Art
`Referring to a Preliminary Response in IPR2020-01358, Petitioner
`adopts Patent Owner’s assessment that a person of ordinary skill in the art is
`“an individual who, as of October 8, 2009 . . . had a Master’s Degree or
`higher in the field of Electrical Engineering, Computer Engineering, or
`
`4 Available at
`https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf?MURL=.
`9
`
`
`
`
`
`IPR2022-00135
`Patent 10,257,319 B2
`
`
`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.”
`Pet. 7 (citing Ex. 1008, 18; Ex. 1003 ¶¶ 30–37) (alteration in original).
`Patent Owner submits that a person of ordinary skill in the art should
`have the qualifications identified by Petitioner and adopts them. PO Resp. 2
`(citing Ex. 1003 ¶ 34; Ex. 2044 ¶ 30).
`We adopt the assessment offered by the parties as it is consistent with
`the ’319 patent and the prior art before us. See Okajima v. Bourdeau, 261
`F.3d 1350, 1355 (Fed. Cir. 2001).
`C. 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) (2021). Under the
`principles set forth by the Federal Circuit, 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
`history, if in evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek,
`
`
`
`10
`
`
`
`IPR2022-00135
`Patent 10,257,319 B2
`
`
`Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at
`1312–17).
`
`1. “client device”
`a. Petitioner’s Assertions
`Petitioner asserts that the district court’s construction in Luminati
`Networks Ltd. v. Teso LT, UAB, No. 2:19-cv-395 (E.D. Tex.) (“Teso
`litigation”)5 should be applied here for the term “client device.” Pet. 9. In
`the district court litigation, the magistrate judge construed “client device” as
`“communication device that is operating in the role of a client.” Id.;
`Ex. 1006, 12. Petitioner points to two claim construction orders in that
`case—an original order (Ex. 1006) and a supplemental order (Ex. 1009). In
`those orders, the magistrate judge construed the preamble of claim 1 to be
`limiting, and also construed the terms “second server” and “client device.”
`Pet. 9. Petitioner also refers to the claim construction order in Luminati
`Networks Ltd. v. Code200, No. 2:19-cv-396 (E.D. Tex.), which concerns
`patents with the same specification as the ’319 patent, where it was found
`that “the role-based construction applies ‘regardless of any additional role
`the device may serve, including as a server.’” Pet. Reply 3 (citing Ex. 1082,
`13). Petitioner indicates that in the Texas litigations, the constructions were
`adopted by the district judge. Id. (citing Ex. 1074; Ex. 1083). Petitioner
`also refers to the claim construction order in Bright Data Ltd. v. NetNut Ltd.,
`
`
`5 Luminati Networks Ltd. is now Bright Data Ltd.
`11
`
`
`
`
`
`IPR2022-00135
`Patent 10,257,319 B2
`
`
`No. 2:21-cv-225 (E.D. Tex.), where Patent Owner’s construction based on
`“consumer computer” was rejected. Id. at 4 (citing Ex. 2013, 10–16).
`b. Patent Owner’s Assertions
`Patent Owner asserts that a person of ordinary skill in the art would
`have understood the term “client device” to be a “consumer computer,” or
`alternatively, to be a “consumer communication device.” PO Resp. 10
`(citing Ex. 2044 ¶ 69). Patent Owner argues that these constructions are
`consistent with the claim language, Specification, and the prosecution
`histories. Id. at 10–11. Patent Owner contends that a person of ordinary
`skill in the art would have understood that a client device is a
`communication device because the Specification states that “each
`communication device may serve as a client, peer, or agent” which
`“informs” a person of skill “that client 102, peers 112, 114, 116, and agent
`122 are all ‘client devices’ in the context of the [S]pecification.” Id. at 11
`(citing Ex. 2044 ¶ 70; Ex. 1001, 4:44–50, 5:21–29).
`Patent Owner alleges that the Specification discloses how a
`communication device can be configured to be a client, agent, or peer by its
`disclosure of a requesting client device ↔ proxy server ↔ proxy client
`device ↔web server architecture. PO Resp. 11–12 (citing Ex. 1001, 4:44–
`50, 5:21–29, 9:12–50). Patent Owner alleges that the Specification explains
`that when executing the fetching method, “the requesting client device may
`be executing the client module 224 disclosed in FIG. 6, while the proxy
`client device may be executing the agent module 228 disclosed in FIG. 6.”
`Id. at 12. Based upon this, Patent Owner contends that a person of ordinary
`skill in the art “would understand in the context of the ’319 [p]atent, a client
`device is a consumer computer with specific software to operate in
`
`
`
`12
`
`
`
`IPR2022-00135
`Patent 10,257,319 B2
`
`
`accordance with the claims.” Id. Referring to Figure 6 of the Specification,
`Patent Owner asserts that a person of ordinary skill in the art would
`understand that “one ‘client device’ may be configured to be the requesting
`client device and another ‘client device’ may be configured to be the proxy
`client device.” Id. (citing Ex. 2044 ¶ 73). In support, Patent Owner also
`refers to modified annotated Figure 3, reproduced below, alleging that agent
`122 is disclosed as a client device “that is selected, for example, because
`agent 122 is closest to the web server 152.” Id. at 8, 12–13 (citing Ex. 2044
`¶¶ 74–75).
`
`
`Patent Owner alleges that a person of ordinary skill’s understanding of
`requesting client device (purple) ↔ second server (green) ↔ first client
`device (red) ↔ web server (blue) would correspond to client 102 ↔ proxy
`server 6 ↔ agent 122 ↔ web server 152, shown in Patent Owner’s version
`
`
`
`13
`
`
`
`IPR2022-00135
`Patent 10,257,319 B2
`
`
`of modified annotated Figure 3 of the ’319 patent, above, which presents a
`schematic diagram of the network. Id. at 8.
`Patent Owner further asserts that in light of the Specification, “a client
`device would be understood to be, more specifically, a consumer computer
`like a laptop, desktop, tablet, or smartphone.” PO Resp. 13 (citing Ex. 2044
`¶ 76 (citing Ex. 1001, 2:44–46 (“In the network 50, files are stored on
`computers of consumers, referred to herein as client devices.”) (emphasis
`omitted))).
`Patent Owner argues that the district court’s rejection of its proposed
`construction of a “client device” as “consumer computer” is wrong for three
`reasons. PO Resp. 13–15. First, Patent Owner asserts that, although the
`district court found that there was no express lexicography in the
`Specification, the Specification states that “computers of consumers” are
`“referred to herein as client devices.” Id. at 13 (citing Ex. 2044 ¶ 76;
`Ex. 1001, 2:47–49). Patent Owner further asserts that a person of ordinary
`skill in the art would have understood that a consumer device is
`distinguished from a commercial device and that a consumer device is not a
`dedicated proxy server. Id. at 13–14 (citing Ex. 2044 ¶ 76). Second, Patent
`Owner disagrees with the district court’s finding that in the Specification the
`term “consumer” refers to the consumer of content, as opposed to a
`broadcaster of content. Id. at 14 (citing Ex. 1006, 11). Rather, Patent
`Owner argues, the common understanding of “consumer” as “a person who
`buys goods or services for their own use” is not a deviation from the use of
`the term in the Specification, and personal use is often distinguished from
`commercial use. Id. at 14 (citing Ex. 2015; Ex. 2016; 15 U.S.C. § 6809(9);
`12 C.F.R. § 332.3(e)(1)). Third, Patent Owner disagrees with the district
`
`
`
`14
`
`
`
`IPR2022-00135
`Patent 10,257,319 B2
`
`
`court’s finding that the term “consumer” does not appear to be used in
`connection with the claimed invention, contending that the Specification
`refers to “computers of consumers,” and there were statements made during
`the prosecution of the parent application to the ’319 patent that refer to this
`issue. Id. at 14–15 (citing Ex. 2044 ¶ 76; Ex. 1001, 2:44–46; Ex. 1072,
`624).
`Patent Owner contends that in the ’319 patent, “a client device is not a
`server.” PO Resp. 15. Patent Owner disagrees with the district court’s view
`that there was insufficient support for including a negative limitation in the
`construction that a client device is unable to act as a server in all cases. Id.
`(citing Ex. 1006, 12). According to Patent Owner, a person of ordinary skill
`in the art would have understood that a client device is not a server in the
`context of the patent, and the MPEP does not require that a negative
`limitation be recited verbatim in the Specification. Id. (citing, inter alia,
`Ex. 2044 ¶ 62). Patent Owner argues that the Specification describes the
`shortcomings of using a proxy server as an intermediary, and therefore
`provides a reason to exclude a client device encompassing a proxy server.
`Id. at 16 (citing Ex. 1001, 2:24–32; Ex. 1006, 12; Ex. 2044 ¶ 83).
`Patent Owner asserts that, in view of the recited architecture of the
`’319 patent claims that distinguishes between client devices and servers, the
`use of three interchangeable general use computers in a pathway would not
`disclose that architecture. PO Resp. 16 (citing Ex. 2044 ¶¶ 78–79). Patent
`Owner also argues that the recited architecture in the ’319 patent claims, that
`is, a second server ↔ first client device ↔ web server architecture, also
`distinguishes the use of a client device, rather than a proxy server, as an
`intermediary, and that this distinction is consistent with an Alice order in the
`
`
`
`15
`
`
`
`IPR2022-00135
`Patent 10,257,319 B2
`
`
`Teso litigation. Id. at 16–17 (citing Ex. 2044 ¶ 79; Ex. 2007, 8–9); PO Sur-
`reply 2. Patent Owner further contends that the district court “repeatedly
`acknowledged that a client device is not a merely general-purpose
`computer.” PO Resp. 16 (citing Ex. 2013, 14–15).
`Patent Owner argues that a person of ordinary skill in the art would
`have understood “that a client device is typically portable and easily moved,
`like, for example, a laptop, desktop, tablet or smartphone.” PO Resp. 17
`(citing Ex. 2044 ¶ 80). Patent Owner contends that a person of ordinary skill
`in the art would be informed by statements made during prosecution that a
`client device is not a dedicated network device, typically uses a single or
`relatively few connections, and is resource limited (e.g., bandwidth and
`storage), unlike a server. Id. Patent Owner also argues that a person of skill
`would have understood that a client device typically is understood “(a) to be
`regularly switched off and taken offline; (b) to be capable of processing only
`a limited number of requests at any given time . . . and/or (c) to have lesser
`fault tolerance, lesser reliability, and lesser scalability, prioritizing value to
`users over system costs.” Id. at 17–18 (citing Ex. 2044 ¶ 81). Patent Owner
`asserts that a person of ordinary skill’s understanding of “client” would have
`been consistent with its plain and ordinary meaning, which is “an application
`that runs on a personal computer or workstation and relies on a server to
`perform some operations.” Id. at 18 (citing Ex. 2044 ¶ 82; Ex. 2017; Ex.
`2045). Patent Owner contends that a person of ordinary skill would have
`understood that there are structural differences between client devices and
`servers. Id. (citing Ex. 2044 ¶ 84).
`Patent Owner also contends that, upon reviewing Figures 1 and 3 of
`the Specification, a person of ordinary skill in the art would have understood
`
`
`
`16
`
`
`
`IPR2022-00135
`Patent 10,257,319 B2
`
`
`that proxy server 6 must be structurally different from agent 122 and that “a
`server is not a client device and that a client device is not a server.” PO
`Resp. 19 (citing Ex. 2044 ¶ 85). Patent Owner argues that “Petitioner’s
`expert agreed that server 6 of Figure 1 and agent 122 of Figure 3 would be
`operating in the same roles at a given point in time,” so under the Board’s
`preliminary constructions “Figure 3 collapses onto Figure 1” and fails to
`account for structural differences between a proxy server and a client device.
`Id. (emphases omitted). Patent Owner points to Petitioner’s expert’s
`agreement that in Figure 1, client devices 14 and 16 are operating in the role
`of a client and web server 32 is operating in the role of a server under the
`Board’s preliminary constructions. Id. at 20 (citing Ex. 2044 ¶ 87; Ex. 2010,
`51:3–9, 51:11–20, 53:17–21, 53:22–54:3, 54:4–10, 54:23–55:5). Patent
`Owner also asserts that Petitioner’s expert agrees that in Figure 3, client 102
`is operating in the role of a client and web server 152 is operating in the role
`of a server under the Board’s preliminary constructions. Id. at 21 (citing
`Ex. 2044 ¶ 92; Ex. 2010, 56:8–12, 56:13–18, 57:8–14, 57:15–18, 57:19–25,
`58:15–20).
`Patent Owner additionally refers to the prosecution history of U.S.
`Patent No. 10,069,936 (“the ’936 patent), the parent of the ’319 patent. PO
`Resp. 24. Patent Owner argues that this prosecution history “clearly
`distinguishes client devices from servers.” Id. (citing Ex. 2044 ¶ 99). Patent
`Owner asserts that during prosecution, the applicant amended the claims to
`“specify that the ‘devices’ being used as intermediaries are ‘clients’ in
`contrast to the teachings of Garcia,” which was a reference used by the
`examiner to reject the then-pending claims. Id. (citing Ex. 1072, 304, 349).
`Patent Owner points to the applicant’s statement that “the ‘device’ was
`
`
`
`17
`
`
`
`IPR2022-00135
`Patent 10,257,319 B2
`
`
`equated in the Garcia reference to the cache server 306, which is clearly a
`dedicated device and performs a server functionality,” and further that “[t]he
`Garcia reference is silent, and actually teaches away from identifying and
`using another client device for supporting a content request by a specific
`client.” Id. at 24–25 (citing Ex. 1072, 349 (emphasis omitted)). Patent
`Owner also refers to the applicant’s statement that “[c]lient devices, such as
`client 105 in the Garcia reference, are end-units that request information
`from servers, use client-related software . . . and are typically consumer
`owned and operated.” Id. at 25 (citing Ex. 1072, 624) (emphasis omitted).
`Additionally, Patent Owner refers to the examiner’s statement that “the
`limitations of the independent claims, within its environment, is allowable
`subject matter over the prior art, in light of the specification,” contending
`that “[t]he examiner’s acknowledgement of the ‘environment’ . . . shows
`that the examiner appreciated the unique architecture disclosed in the
`specification and the novel use of a proxy client device within that
`architecture.” Id. at 26 (citing Ex. 1072, 741 (emphasis omitted); Ex. 2044
`¶ 104).
`Patent Owner also refers to the prosecution history of the ’319 patent,
`asserting that it shows that servers and client devices are not
`interchangeable. PO Resp. 27 (citing Ex. 2044 ¶ 106). In that prosecution,
`the applicant contended that “the claims involve specific networking of
`physical elements such as servers and clients, connected via various
`networks forming a specific structure and relationships, which are physical
`apparatuses, and are NO[T] a ‘generic computer’ as stated in the Action.”
`Id. (citing Ex. 1002, 163) (alteration in original). Patent Owner further cites
`the applicant’s statement that “the conventional arrangement involves
`
`
`
`18
`
`
`
`IPR2022-00135
`Patent 10,257,319 B2
`
`
`fetching data by a client device from a server device, while the claims
`disclose a server receiving information from another server via a client
`device.” Id. (citing Ex. 1002, 163–164). Patent Owner also refers to the
`prosecution history of the ’510 patent, arguing that the examiner
`acknowledged the “environment” of the claimed method, which “shows that
`the examiner appreciated the unique architecture disclosed . . . and the novel
`use of a proxy client device within that architecture.” Id. at 28 (citing Ex.
`1002, 653; Ex. 2044 ¶ 107).
`c. Analysis
`For the reasons discussed below, we determine that the evidence of
`record supports the district court’s construction of the term “client device” as
`a “communication device that is operating in the role of a client” that we
`adopted in out Institution Decision and continue to apply here. Conversely,
`we find that the evidence does not support Patent Owner’s view that a
`“client device” is a “consumer computer,” or alternatively, a “consumer
`communication device,” where the “client device” cannot be a server. See
`PO Resp. 10–28.
`
`
`
`i. Claim Language
`Under Phillips, we begin with the language of the claims themselves.
`See Phillips, 415 F.3d at 1314. In claim 1, the method is for use with a “first
`client device.” In step [1C], the first client device, “send[s], to the first
`server over the Internet, a Hypertext Transfer Protocol (HTTP) request that
`comprises the first content identifier,” which serves to request content from
`the first server (web server). See Ex. 1001, 19:24–26. In step [1C], the first
`client device is acting as a client in requesting content. In step [1E], the first
`client device “send[s], the first content by the first client device to the
`
`
`
`19
`
`
`
`IPR2022-00135
`Patent 10,257,319 B2
`
`
`second server, in response to the receiving of the first content identifier.”
`See id. at 19:30–32. In step [1E], the first client device is acting as a server
`to forward content.
`The parties address the issue that the “first client device” acts in
`differing roles in claim 1. Petitioner asserts that the claim’s required
`functionality is consistent with the district court’s determinations on the
`role-based nature of the term. Pet. Reply 10 (citing Ex. 1082, 13). Patent
`Owner agrees that if the role-based construction were adopted, in its
`modified Figure 3, “agent 122 would be (i) operating in the role of a server
`when receiving requests from client device 102 and (ii) operating in the role
`of a client when sending requests to web server 1522,” with Petitioner’s
`expert agreeing to the same. PO Resp. 21–22 (citing Ex. 2010, 56:19–25;
`57:1–7).
`One of Patent Owner’s experts, Dr. Rhyne, who provided a
`declaration in this proceeding (Ex. 2001), also provided testimony in the
`Teso litigation that is consistent with the role-based nature of claim terms as
`set forth in the claim language (Ex. 1108). In the Teso litigation, Dr. Rhyne
`testified that the steps required by claim 1 of the ’319 patent are illustrated
`by an annotated Figure 3 of the patent, reproduced below, which shows
`client 102 acting in the role of the claimed “second server,” and agent 122
`acting in the role of “first client server” as follows:
`11. To illustrate the steps required by independent claim 1 of
`the ’319 and ’510 Patents, in light of the claim language and the
`above disclosures from the common specification, the “client
`102” of Figure 3 is an example of the “second server” of the
`claims, with the numbered arrows corresponding with the
`bracketed letters identifying the elements of the claims as
`shown in the annotated table following the figure. (I note that
`
`
`
`20
`
`
`
`IPR2022-00135
`Patent 10,257,319 B2
`
`
`
`the step identified as “A” is the only [] claimed element in the
`’510 patent.).
`Ex. 1108 ¶ 11.
`
`
`
`
`Id. As shown in the above testimony, annotated Figure 3 of the ’319 patent,
`and claim chart
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
