Paper 12
`Trials@uspto.gov
`Entered: June 1, 2022
`Tel: 571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
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`
`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
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`
`
`Before THOMAS L. GIANNETTI, SHEILA F. McSHANE, and
`RUSSELL E. CASS, Administrative Patent Judges.
`
`GIANNETTI, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
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`
`
`Trials@uspto.gov
`Entered: June 1, 2022
`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.
`
`GIANNETTI, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
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`IPR2022-00135
`Patent 10,257,319 B2
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`I. INTRODUCTION
`The Data Company Technologies Inc. (“Petitioner”) filed a Petition
`(Paper 2, “Pet.”) requesting inter partes review of claims 1–29 (the
`“challenged claims”) of U.S. Patent No. 10,257,319 B2 (Ex. 1001, “the ’319
`patent”). Patent Owner, Bright Data Ltd.,1 filed a Preliminary Response
`(Paper 7, “Prelim. Resp.”). With authorization, Petitioner filed a Reply
`(Paper 8, “Pet. Reply”), and Patent Owner filed a Sur-reply (Paper 9, “PO
`Sur-reply”).2
`The Board has authority to determine whether to institute an inter
`partes review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C.
`§ 314(a), we may not authorize an inter partes review unless the information
`in the petition and the preliminary response “shows that there is a reasonable
`likelihood that the petitioner would prevail with respect to at least 1 of the
`claims challenged in the petition.”
`For the reasons stated below, we determine that Petitioner has
`established a reasonable likelihood that it would prevail with respect to at
`least one claim. We, therefore, institute inter partes review as to all of the
`challenged claims of the ’319 patent and all of the asserted grounds of
`unpatentability in the Petition.
`
`
`1 Bright Data Ltd. was formerly known as Luminati Networks, Ltd.
`2 Both the Reply and Sur-reply address the issue of discretionary denial of
`the Petition. See Section III, infra.
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`II. BACKGROUND
`Related Matters
`A.
`The parties identify several district court proceedings involving the
`’319 patent and its parent, U.S. Patent No. 10,484,510 (“the ’510 patent”),3
`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 was previously before the Board in IPR2020-01266
`(institution denied) and IPR2021-01492 (pending). Pet. xiv–xv; Paper 5, 1.
`The ’510 patent is involved in IPR2021-01493 (pending), and was
`previously before the Board in IPR2020-01358 (institution denied). Paper 5,
`1–2.
`
`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).
`B.
`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.
`
`
`3 The ’510 patent is based on a continuation of the application for the ’319
`patent. Ex. 1025, (60).
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`The ’319 Patent
`C.
`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):
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`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
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`with an acceleration server database, which “stores Internet Protocol (IP)
`addresses of communication devices within the communication network 100
`having acceleration software stored therein.” Id. at 5:8–14.
`In operation, a client may request a resource on the network, for
`example, through the use of an Internet browser. 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.
`
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`Illustrative Claim
`D.
`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:4
`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.
`E.
`Prior Art References and Other Evidence
`Petitioner relies on the following references:
`1. Plamondon, U.S. Patent Application Publication US
`2008/0228938 A1, published September 18, 2008 (Ex. 1010).
`
`
`4 References in brackets provided by Petitioner have been added and spacing
`has been altered.
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`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).
` In addition to these references, Petitioner relies on a Declaration of
`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.”).
`
`The Asserted Grounds of Unpatentability
`F.
`Petitioner asserts the following grounds of unpatentability. Pet. 2.
`Claims Challenged
`35 U.S.C. §5
`Reference(s)
`1, 12–14, 21–27
`102(b)
`Plamondon
`28, 29
`103(a)
`Plamondon
`15–17
`103(a)
`Plamondon, RFC 2616
`17, 18
`103(a)
`Plamondon, RFC 1122
`
`
`5 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, (60).
`
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`Claims Challenged
`2
`2–5, 19, 20
`6–11
`
`
`Reference(s)
`35 U.S.C. §5
`Plamondon, IEEE 802.11-2007
`103(a)
`Plamondon, Price
`103(a)
`Plamondon, Kozat
`103(a)
`III. DISCRETIONARY DENIAL
`A. Denial Based on Fintiv
`Patent Owner requests that we exercise our discretion under 35 U.S.C.
`
`§ 314(a) to deny institution. Prelim. Resp. 3–9; PO Sur-reply 1–5.
`
`The Board’s precedential decision in Apple Inc. v. Fintiv, Inc.,
`IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”)
`sets forth a non-exclusive list of factors that we may consider where there is
`a related, parallel district court action, when determining whether to use our
`discretion to deny institution:
`1. whether the court granted a stay or evidence exists that one
`may be granted if a proceeding is instituted;
`2. proximity of the court’s trial date to the Board’s projected
`statutory deadline for a final written decision;
`3. investment in the parallel proceeding by the court and the
`parties;
`4. overlap between issues raised in the petition and in the
`parallel proceeding;
`5. whether the petitioner and the defendant in the parallel
`proceeding are the same party; and
`6. other circumstances that impact the Board’s exercise of
`discretion, including the merits.
`Fintiv at 5–6. Recognizing that “there is some overlap among these factors”
`and that “[s]ome facts may be relevant to more than one factor,” the Board
`“takes a holistic view of whether efficiency and integrity of the system are
`best served by denying or instituting review.” Id. at 6.
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` NetNut Litigation
`1.
`Although Patent Owner asserts that “[t]here are six other proceedings
`
`involving the ’319 patent” (Prelim. Resp. 4), because Petitioner is not a party
`to any of those proceedings, Patent Owner focuses its Fintiv analysis on the
`parallel district court litigation between Patent Owner and NetNut Ltd.
`pending in the Eastern District of Texas, referred to as the “NetNut
`Litigation.” Bright Data Ltd. v. NetNut Ltd., No. 2:21-cv-225 (E.D. Tex.).
`Prelim. Resp. 5; see supra, Section II.A.
`
`Referring to the NetNut Litigation, Patent Owner contends that
`defendant NetNut Ltd. identified Plamondon as “allegedly anticipating or
`rendering obvious claims 1, 2, 14, 15, 17, 18, and 21–27 [of the ’319 patent]
`in its invalidity contentions served on 12/17/2021.” Prelim. Resp. 5.
`Further, Patent Owner asserts “[t]he NetNut Litigation is currently at an
`advanced stage and has jury trial scheduled for 9/12/2022 in the Eastern
`District of Texas.” Id. Patent Owner concludes that “the district court will
`resolve invalidity issues involving Plamondon, at least as to independent
`claim 1, in September 2022; long before a final written decision is due in
`this proceeding in June 2023.” Id.
`
`On May 13, 2022, Patent Owner advised the Board that a settlement
`had been reached with NetNut, resolving “all disputes” between NetNut and
`Patent Owner relating to the challenged patents, which would include the
`’319 patent. On May 18, 2022, Patent Owner filed, in IPR2021-01492 and
`IPR2021-01493, a Notice of Settlement and Related Court Order. IPR2021-
`01492, Paper 16; IPR2021–01493, Paper 15. With the Notice, Patent Owner
`submitted an order by the district court in the NetNut Litigation, dated May
`17, 2022, dismissing with prejudice “all pending claims and causes of
`
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`action” and closing the case in the NetNut Litigation. IPR2021-01492, Ex.
`2018; IPR2021-01493, Ex. 2017.
`
`In light of the settlement with NetNut and dismissal of the NetNut
`Litigation, Patent Owner’s arguments for discretionary denial under Fintiv
`based on the trial in that case are moot, and we do not consider them further.
`We, therefore, decline to exercise our discretion to deny the Petition on that
`basis.
`
` Other Arguments
`2.
`We have considered Patent Owner’s other arguments for discretionary
`denial and find them unavailing. For example, Patent Owner asserts that in
`the Teso Litigation, a jury found the claims of “related” U.S. Patent No.
`10,469,614 not invalid over Mithyantha. PO Resp. 5–6. Patent Owner
`argues that Mithyantha discloses the “exact same” computer architecture as
`Plamandon. Id. at 6. Patent Owner contends also that a jury in the Teso
`Litigation “found in favor of Bright Data, properly recognizing the
`differences between a ‘client device’ and ‘second server.’” Id. We do not
`find this argument compelling. Patent Owner’s explanation of the jury
`verdict depends on Patent Owner’s construction of “client device,” which we
`reject. See infra. Also, it is based on speculation by Patent Owner as to why
`the jury reached its verdict in that case.
`In addition, Patent Owner’s expression of concern that it is “unsure
`whether Petitioner is or is not in any way related to any defendant in active
`district court litigation” is addressed supra. In short, Patent Owner admits
`there is no evidence of any “relationship that would result in denial of
`institution.” Prelim Resp. 7.
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` Conclusion
`3.
`On this record, we determine that the facts in this case weigh against
`
`exercising our discretion to deny institution. Thus, based on our assessment
`of the Fintiv factors, we decline to exercise our discretion under 35 U.S.C.
`§ 314(a) to deny inter partes review.
`
`B. Denial under General Plastic
`In General Plastic Indus. Co. v. Canon Kabushiki Kaisha, IPR2016-
`01357, Paper 19 (PTAB Sept. 6, 2017) (precedential) (“General Plastic”),
`the Board set out a list of seven factors to consider when asked to exercise
`its discretion to deny review of follow-on petitions. Those factors are the
`following:
`1. whether the same petitioner previously filed a petition
`directed to the same claims of the same patent;
`2. whether at the time of filing of the first petition the petitioner
`knew of the prior art asserted in the second petition or should
`have known of it;
`3. whether at the time of filing of the second petition the
`petitioner already received the patent owner’s preliminary
`response to the first petition or received the Board’s decision on
`whether to institute review in the first petition;
`4. the length of time that elapsed between the time the petitioner
`learned of the prior art asserted in the second petition and the
`filing of the second petition;
`5. whether the petitioner provides adequate explanation for the
`time elapsed between the filings of multiple petitions directed
`to the same claims of the same patent;
`6. the finite resources of the Board; and
`7. the requirement under 35 U.S.C. § 316(a)(11) to issue a final
`determination not later than 1 year after the date on which the
`Director notices institution of review.
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`General Plastic, Paper 19 at 16. In setting forth these factors, the Board
`made it clear that “[t]here is no per se rule precluding the filing of follow-on
`petitions after the Board’s denial of one or more first-filed petitions on the
`same patent.” Id. at 15
`On this record, we determine that General Plastic weighs against
`exercising discretion to deny institution. The General Plastic factors
`addressed the situation where the same petitioner filed “follow-on petitions”
`against the same patents, after a first set of petitions was denied on the
`merits. General Plastic, Paper 19 at 2–3. Here, however, Petitioner was not
`involved in the previous petitions challenging the ’319 patent.
`There have been circumstances where General Plastic has not been
`limited to instances where multiple petitions are filed by the same petitioner.
`See Valve Corp. v. Elec. Scripting Prods., Inc., IPR2019–00062, Paper 11
`(PTAB April 2, 2019) (precedential). For example, the existence of a
`“significant relationship” between different petitioners may weigh in favor
`of discretionary denial. Id. at 9–10. But here, in addition to the fact that
`Petitioner was not a petitioner in any previous proceeding challenging the
`’319 patent, there no evidence that Petitioner has a significant relationship
`with a petitioner in an earlier case, as is acknowledged by Patent Owner.
`Prelim. Resp. 7. Patent Owner asserts that it “is not presently aware of a
`significant relationship between Petitioner and NetNut, Code200, or Teso,”
`who are petitioners in other Board proceedings and defendants in district
`court litigations. Id. at 9.
`Patent Owner argues, however, that as of November 2020, Petitioner
`“had access” to the preliminary response to the Code200/Teso petition
`against the ’319 patent in IPR2021-00458, as well “various docket entries”
`
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`in the district court litigations. Id. Patent Owner contends that Petitioner
`received the benefit of having had the opportunity to study Patent Owner’s
`arguments on the ’319 patent. Id.
`We do not find these arguments to be persuasive. Although Petitioner
`could have accessed Patent Owner’s preliminary response in the Code200
`case prior to the filing date of the filing of the Petition, because the Board
`denied inter partes review in the Code200 case without addressing the
`merits (see IPR2020-01358, Paper 11), Petitioner could not have received
`any insight into the Board’s position on the merits of the arguments in the
`Code 200 petition from that proceeding.
`
`For the reasons given, we decline to exercise our discretion to deny
`inter partes review under General Plastic.
`
`C. Denial under 35 U.S.C. § 325(d)
`Under 35 U.S.C. § 325(d), in determining whether to institute an inter
`partes review, “the Director may take into account whether, and reject the
`petition or request because, the same or substantially the same prior art or
`arguments previously were presented to the Office.”
`Patent Owner contends that we should deny the Petition under
`§ 325(d) because Samuels, which “shares overlapping material with
`Plamondon,” was before the examiner during the prosecution of the ’319
`patent. Prelim. Resp. 10–11. Patent Owner asserts that Samuels was cited
`on an IDS (Information Disclosure Statement) “initialed by the Examiner
`during prosecution of the ’319 patent,” and was “applied in related patent
`applications,” all of which had the same examiner as the ’319 patent. Id.
`Anticipating Patent Owner’s § 325(d) argument, Petitioner asserts
`“this petition does not include the same, or substantially similar, references
`
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`or arguments from prosecution.” Pet. 74. Petitioner explains that “[o]ther
`than RFC 2616 (a secondary reference for claims 15-17), the Patent Office
`never considered any reference presented herein.” Id. Moreover, Petitioner
`asserts “the Examiner never applied RFC 2616 in a claim rejection.” Id.
`
`Addressing Samuels, Petitioner asserts “[t]he Examiner initialed
`Samuels on an IDS but never discussed it during the ’319 patent’s
`prosecution.” Id. at 75. As to the alleged overlap with Plamondon,
`Petitioner explains that “[w]hile Samuels and Plamondon share some
`overlapping material . . . the Petition relies on Plamondon’s additional 321
`paragraphs . . . , spanning 45 pages, with no counterpart in Samuels.” Id.
`In evaluating arguments under § 325(d), we use a two-part
`framework: (1) whether the same or substantially the same art previously
`was presented to the Office or whether the same or substantially the same
`arguments previously were presented to the Office; and (2) if either
`condition of the first part of the framework is satisfied, whether the
`petitioner has demonstrated that the Office erred in a manner material to the
`patentability of challenged claims. Advanced Bionics, LLC v. MED-EL
`Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB
`Feb. 13, 2020) (precedential).
`We must also consider the non-exclusive factors set forth in Becton,
`Dickinson and Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8
`(PTAB Dec. 15, 2017) (precedential in relevant part), which “provide useful
`insight into how to apply the framework” under § 325(d). Advanced
`Bionics, Paper 6 at 9. Those non-exclusive factors include: (a) the
`similarities and material differences between the asserted art and the prior art
`involved during examination; (b) the cumulative nature of the asserted art
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`and the prior art evaluated during examination; (c) the extent to which the
`asserted art was evaluated during examination, including whether the prior
`art was the basis for rejection; (d) the extent of the overlap between the
`arguments made during examination and the manner in which Petitioner
`relies on the prior art or Patent Owner distinguishes the prior art; (e) whether
`Petitioner has pointed out sufficiently how the Examiner erred in its
`evaluation of the asserted prior art; and (f) the extent to which additional
`evidence and facts presented in the Petition warrant reconsideration of the
`prior art or arguments. Becton, Dickinson, Paper 8 at 17–18.
` For the reasons that follow, we are not persuaded to exercise our
`discretion to deny the Petition based on § 325(d). Other than RFC 2616, a
`secondary reference applied by Petitioner only to three dependent claims, the
`examiner did not consider any references that Petitioner relies upon in its
`challenges. See Pet. 74. Although the examiner initialed the IDS citing
`Samuels, the examiner did not rely on Samuels during prosecution of the
`’319 patent. Id. at 75. And while Petitioner acknowledges that Samuels and
`Plamondon “share some overlapping material,” Petitioner identifies
`extensive additional disclosure in Plamondon not found in Samuels that
`Petitioner relies on in its challenges. Id. (citing Ex. 1010 ¶¶ 363–682). We
`agree that the Petition includes assertions that rely upon significant portions
`of non-overlapping material from Plamondon, as discussed in Section IV.D,
`infra. See also Pet. 75. Thus, we find that Samuels is not substantially the
`same as Plamondon.
`
`For the foregoing reasons, we are not persuaded that the same or
`substantially the same prior art or arguments previously were presented to
`the Office. Accordingly, neither condition of the first part of the Advanced
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`Bionics framework is satisfied. Having determined that the first part of the
`Advanced Bionics framework is not satisfied, we need not consider the
`second part of the framework. See Advanced Bionics at 8, 10.
`For the reasons given, we are not persuaded to exercise our discretion
`under § 325(d) to deny institution.
`
`IV. ANALYSIS OF THE CHALLENGED CLAIMS
`A. 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
`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; Levin Decl. ¶¶ 30–37).
`
`Patent Owner submits that a person of ordinary skill in the art should
`have the same qualifications identified by Petitioner. Prelim. Resp. 15. For
`the purposes of this Decision, 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).
`
`Patent Owner questions whether Petitioner’s declarant, Dr. Levin,
`qualifies under this definition to provide expert opinions, suggesting that we
`give his testimony “less weight.” Prelim Resp. 16. Patent Owner argues
`also that Dr. Levin’s testimony “appears to be based on hindsight” and that
`he takes “inconsistent positions.” Id. at 17–18.
`We are satisfied, at this stage, that Dr. Levin’s education and
`experience are sufficient for us to consider his opinions regarding the
`
`
`
`17
`
`
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`IPR2022-00135
`Patent 10,257,319 B2
`
`
`perspective of one of ordinary skill in the art as of October 2009. See Levin
`Decl. ¶¶ 35–36; Ex. 1004.6 Patent Owner’s questions about his
`qualifications and assertions of “hindsight” and “inconsistency” go to the
`weight given to Dr. Levin’s testimony, which we will evaluate on a full
`record after trial. Similarly, we will evaluate Dr. Rhyne’s qualifications and
`testimony on a full record after trial.
`B. Claim Construction
`In this inter partes review, claims are construed using the same claim
`construction standard that would be used to construe the claims in a civil
`action under 35 U.S.C. § 282(b). 37 C.F.R. § 42.100(b) (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
`
`
`6 Dr. Levin’s curriculum vitae (Ex. 1004) indicates that he received a
`bachelor’s degree in computer science in 2002, and a Ph.D. in computer
`science in September, 2010. As of October 2009, Dr. Levin had
`approximately three years of work experience in software development and
`had completed summer internships at Motorola, Hewlett Packard Labs, and
`Microsoft Research. Ex. 1004, 12–13. Additionally, as of that time, Dr.
`Levin had published several papers in refereed forums that relate to Internet
`communications, such as “Symbiotic Relationships in Internet Routing
`Overlays” and “Motivating Participation in Internet Routing Overlays,” and
`was within a year of completing his Ph.D. Id. at 6.
`18
`
`
`
`
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`IPR2022-00135
`Patent 10,257,319 B2
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`history, if in evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek,
`Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at
`1312–17).
`
`1. preamble, “client device,” “first server,” “second server,”
`Petitioner asserts that the district court’s constructions in the Teso
`Litigation, Luminati Networks Ltd. v. Teso LT, UAB, et al., No. 2:19-cv-395
`(E.D. Tex.), should be applied in this case for the terms “client device,” “first
`server,” and “second server,” and that the preamble of claim 1 should be
`limiting. Pet. 9. In particular, 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 district court construed the preamble of
`claim 1 to be limiting, and also construed “second server” and “client
`device.” Pet. 9. All other terms were given their plain and ordinary
`meaning. Id. at 8–9.
`The district court construed “client device” as “communication device
`that is operating in the role of a client.” Id. at 9; Ex. 1006, 12. The district
`court construed “second server” as “server that is not the client device” (Ex.
`1006, 14), and later agreed with the defendants’ clarification as to the scope
`of this construction, namely, that a “second server” is “a device that is
`operating in the role of a server and that is not the first client device” (Ex.
`1009, 8, 11–12).
`Patent Owner agrees that the district court’s claim constructions
`should apply for the preamble, “client device,” and “second server.” Prelim.
`Resp. 23–24. Patent Owner disagrees, however, with Petitioner’s “broader
`construction” of the term “second server,” which Patent Owner alleges
`would “remove the requirement that it be a server.” Id. at 25. Patent Owner
`
`
`
`19
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`IPR2022-00135
`Patent 10,257,319 B2
`
`
`asserts that the district court indicated that “[t]he patents do not include
`servers as a type of ‘communication device,’” and confirmed “that servers
`must be configured to be servers.” Id. at 24 (citing Ex. 1009, 10). Patent
`Owner refers to the district court’s statement in the supplemental claim
`construction order that it “is not changing the construction” of “second
`server.” Id. at 25 (quoting Ex. 1009, 11). Patent Owner also refers to the
`district court’s statement that “a component can be configured to operate in
`different roles—so long as it does not ‘simultaneously serve as more than
`one of: the client device, the first server/second server, and the web server.’”
`Id. at 24–25 (quoting Ex. 1009, 10) (emphasis added).
`Petitioner presents (Pet. 5) an annotated version of Figure 3 from the
`’319 patent to illustrate its application of claim 1:
`
`
`Patent Owner disagrees with Petitioner’s description of the elements
`in its annotation of Figure 3 and asserts that a person of ordinary skill in the
`20
`
`
`
`
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`IPR2022-00135
`Patent 10,257,319 B2
`
`
`art would have understood that both client 102 and agent 122 in that figure
`are client devices, rather than a “second server” and “first client device.”
`Prelim. Resp. 18–19 (citing Rhyne Decl. ¶ 44). Patent Owner refers also to
`Figure 1 of the ’319 patent, which shows proxy servers between client
`devices and web servers. Id. at 19–20. Patent Owner asserts, and Dr. Rhyne
`provides supporting testimony, that Figure 3 shows an agent positioned
`between a client and web server, and also shows “multiple communication
`devices” that have software providing functionality to allow them to “serve
`as a client, peer, or agent, depending on the requirements of the network
`100.” Id. at 21 (citing Ex. 1001, 4:46–50; Rhyne Decl. ¶ 44). Patent Owner
`argues that a person of ordinary skill in the art would un
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