Trials@uspto.gov
`571-272-7822
`
`
`Paper 25
`Entered: December 8, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CODE200, UAB; TESO LT, UAB; METACLUSTER LT, UAB;
`OXYSALES, UAB; AND CORETECH LT, UAB,
`Petitioner,
`
`v.
`
`BRIGHT DATA LTD.,
`Patent Owner.
`____________
`
`IPR2022-00861 (Patent 10,257,319 B2)
` IPR2022-00862 (Patent 10,484,510 B2) 1
`____________
`
`
`
`
`Before THOMAS L. GIANNETTI, SHEILA F. McSHANE, and
`RUSSELL E. CASS, Administrative Patent Judges
`
`McSHANE, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Patent Owner’s Requests for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`1 This Order applies to each of the listed cases. Given the similarities of
`issues, we issue one Order to be docketed in each case. The parties are not
`authorized to use this caption style.
`
`
`
`571-272-7822
`
`
`Paper 25
`Entered: December 8, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CODE200, UAB; TESO LT, UAB; METACLUSTER LT, UAB;
`OXYSALES, UAB; AND CORETECH LT, UAB,
`Petitioner,
`
`v.
`
`BRIGHT DATA LTD.,
`Patent Owner.
`____________
`
`IPR2022-00861 (Patent 10,257,319 B2)
` IPR2022-00862 (Patent 10,484,510 B2) 1
`____________
`
`
`
`
`Before THOMAS L. GIANNETTI, SHEILA F. McSHANE, and
`RUSSELL E. CASS, Administrative Patent Judges
`
`McSHANE, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Patent Owner’s Requests for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`1 This Order applies to each of the listed cases. Given the similarities of
`issues, we issue one Order to be docketed in each case. The parties are not
`authorized to use this caption style.
`
`
`
`
`IPR2022-00861 (Patent 10,257,319 B2)
`IPR2022-00862 (Patent 10,484,510 B2)
`
`
`I. INTRODUCTION
`Code200, UAB, Teso LT, UAB, Metacluster LT, UAB, Oxysales,
`UAB, and Coretech LT, UAB (“Petitioner” or “Code200”) filed Petitions for
`inter partes review of claims 1, 2, 12, 14, 15, 17–19, and 21–29 of U.S.
`Patent No. 10,257,319 B2 (“the ’319 patent”) in Case IPR2022-00861
`(the “-861proceeding”) and claims 1, 2, 6–11, 13, and 15–24 of U.S. Patent
`No. 10,484,510 B2 (“the ’510 patent”) in Case IPR2022-00862 (the “-862
`proceeding”). See Paper 1 (-861 proceeding) (“Pet.”); Paper 1 (-862
`proceeding).
`
`On July 25, 2022, we issued Decisions in these cases exercising
`discretion to deny institution based on an assessment of factors set forth in
`General Plastic Industrial Co. Ltd. v. Canon Kabushiki Kaisha, IPR2016-
`01357, Paper 19 (PTAB Sept. 6, 2017) (precedential as to § II.B.4.i)
`(General Plastic). Paper 17 (-861 proceeding) (“Dec.”); Paper 17 (-862
`proceeding). In the same Decisions, we also denied Petitioner’s motions for
`joinder with cases IPR2021-01492 (“the -1492 IPR”) and IPR2021-01493
`(“the -1493 IPR”). Id.
`
`The Director reviewed our Decisions sua sponte, vacated the
`Decisions, and remanded the cases to the panel, with orders that our
`Decisions denying institution and joinder be reconsidered consistent with the
`Director’s Remand Decision. Paper 18 (-861 proceeding) (“Remand Dec.”);
`Paper 18 (-862 proceeding). In the Remand Decision, the Director
`considered the panel’s discretionary denial of institution under General
`Plastic, clarified some of its factors, and declined to exercise discretionary
`denial under General Plastic. Remand Dec. 3–7. The Director instructed
`the panel, on remand, “to consider the Patent Owner’s remaining arguments,
`
`
`
`2
`
`
`
`IPR2022-00861 (Patent 10,257,319 B2)
`IPR2022-00862 (Patent 10,484,510 B2)
`
`including those for discretionary denial under Fintiv and against the merits
`of the Petitioner’s patentability challenges.” Id. at 7.
`
`On remand, we considered issues pursuant to the Director’s order of
`the Remand Decision and issued Decisions on Remand granting institution
`of inter partes reviews and granting the motions for joinder with the -1492
`and -1493 IPRs. Paper 19 (-861 proceeding) (“Dec. on Remand”); Paper 19
`(-862 proceeding).
`Bright Data, Ltd. (“Patent Owner”) filed Requests for Rehearing in
`these proceedings, requesting reconsideration of the Decisions on Remand.
`See Paper 22 (-861 proceeding) (“Reh’g Req.”); Paper 22 (-862 proceeding).
`Patent Owner contends that the Decisions on Remand made factual findings
`not supported by substantial evidence, made unreasonable judgments when
`weighing factors, and overlooked arguments. Reh’g Req. 1.
`We have considered Patent Owner’s Requests, and, for the reasons set
`forth below, we deny Patent Owner’s Requests for Rehearing.
`II. STANDARD OF REVIEW
`When reconsidering a decision on institution, we review the decision
`
`for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion
`may be found if a decision is based on an erroneous interpretation of law, if
`a factual finding is not supported by substantial evidence, or if the decision
`represents an unreasonable judgment in weighing relevant factors. Star
`Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold
`P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203
`F.3d 1305, 1315–16 (Fed. Cir. 2000). The party requesting rehearing has the
`burden of showing the decision should be modified, which includes
`
`
`
`3
`
`
`
`IPR2022-00861 (Patent 10,257,319 B2)
`IPR2022-00862 (Patent 10,484,510 B2)
`
`specifically identifying all matters the party believes we misapprehended or
`overlooked. 37 C.F.R. § 42.71(d).
`III. DISCUSSION
`The circumstances of the -861 proceeding parallel those of the -862
`
`proceeding as they relate to the respective Requests for Rehearing. More
`specifically, the timeline and relationships of respective related cases to the
`’319 patent (-861 proceeding) and ’510 patent (-862 proceeding) are very
`similar, and the status of these related cases form the basis of most of Patent
`Owner’s arguments in the Rehearing Requests. See Reh’g Req. 2–4; Paper
`22, 2–4 (-862 proceeding). The arguments made by Patent Owner in the
`Rehearing Requests are the same, except as to the references to the
`respective parallel related cases. See Reh’g Req. 5–15; Paper 22, 5–15 (-862
`proceeding). Accordingly, we refer to the cases related the -861 proceeding
`as representative, with our analysis equally applying to the -862 proceeding.
`Discretionary Denial Issues
`Patent Owner argues that the Board overlooked Patent Owner’s
`
`arguments related to General Plastic factor 6, particularly in light of further
`developments in relevant proceedings which have occurred since the
`Director’s decision. Reh’g Req. 6–7.
`
`1. Teso Litigation
`
`Patent Owner asserts that in the initial panel Decision, the panel
`agreed that there was risk of redoing work in view of the Teso litigation.
`Reh’g Req. 6–7 (citing Dec. 15). The panel’s findings on this issue were
`presented in the initial panel Decision, including in the General Plastic
`factor 6 discussions. Dec. 15. Those findings were subject to review by the
`Director in the Director’s Remand Decision on discretionary denial under
`
`
`
`4
`
`
`
`IPR2022-00861 (Patent 10,257,319 B2)
`IPR2022-00862 (Patent 10,484,510 B2)
`
`these factors. Remand Dec. 3–7. The scope of the Director’s instructions on
`remand to the panel did not include further review of the General Plastic
`factors, and, accordingly, we did not address them in the Decisions on
`Remand. Remand Dec. 7; Decision on Remand 4.
`
`2. Other Pending Petitions
`
`Patent Owner additionally asserts that, at the time of the Decisions on
`Remand, Petitioner also had other pending petitions challenging the ’319
`patent: IPR2022-01109 (which seeks joinder with IPR2022-00135); and
`IPR2023-00038 (which seeks joinder with IPR2022-00915). Reh’g Req. 8.
`Patent Owner contends that Petitioner’s multiple petitions attempt to take
`“multiple bites at the invalidity apple” and Petitioner is establishing a pattern
`of behavior that shows a potential for abuse. Id. Patent Owner argues that
`the Decision on Remand do not reference Petitioner’s failure to rank
`concurrently-pending petitions, as the initial panel Decision originally
`found, in accordance with the Consolidated Trial Practice Guide. Id. at 13
`(citing Dec. 15).
`
`Although another petition challenging the ’319 patent was filed in
`IPR2023-00038 after our initial decision, the panel’s findings on the General
`Plastic factors in the initial panel Decision included consideration of the
`pending IPR2022-01109 petition (Dec. 11, 14–15). The issue of co-pending
`petitions challenging the ’319 patent was, therefore, a subject for review and
`disposition in the Director’s Remand Decision on discretionary denial under
`General Plastic.2 Remand Dec. 3–7. Additionally, the initial panel
`
`
`2 Decisions on institution and joinder in IPR2022-01109 and IPR2023-00038
`are pending and the decisions in those proceedings will be evaluated based
`on their respective records.
`
`
`
`5
`
`
`
`IPR2022-00861 (Patent 10,257,319 B2)
`IPR2022-00862 (Patent 10,484,510 B2)
`
`Decision included a discussion of alleged “multiple bites of the apple” and
`ranking of petitions (Dec. 14–15), and therefore, those issues were a subject
`for review and disposition by the Director in the Director’s Remand
`Decision. As noted supra, the scope of the Director’s remand to the panel
`did not include further review of the General Plastic factors, and
`accordingly, the Decision on Remand did not, nor did it need to, address
`them. Remand Dec. 7; Decision on Remand 4.
`
`Patent Owner also presents arguments related to instituted IPR2022-
`00915 (the “-915 IPR”), which we address below. Reh’g Req. 7.
`Joinder Issues
`Patent Owner contends that in the Decisions on Remand we stated
`
`that absent joinder, “the merits presented in this challenge would not be
`reached by the Board in a final written decision.” Reh’g Req. 5 (citing Dec.
`on Remand 39). Patent Owner contends this statement “overlook[s]” the
`-915 IPR, filed by Major Data UAB, which challenges the same claims of
`the same patent based on the same references as those in the -861
`proceeding. Id. at 5–6. Patent Owner argues that in the -915 IPR, the same
`grounds as those in the -861 proceeding will be evaluated in a final written
`decision because the -915 IPR has been instituted. Id. Patent Owner also
`asserts that “there is no pending litigation between Patent Owner and the
`petitioner [Major Data] in the -915 IPR which minimizes the risk of
`settlement and subsequent termination of the -915 IPR.” Id. at 6.
`
`As noted, the petitioner in the -915 IPR is Major Data UAB, not
`Code200. See Reh’g Req. 3. Petitioner here, Code200, was sued by Patent
`Owner on the ’319 and ’510 patents, and the -861 and -862 proceedings are
`the only instituted inter partes reviews with Code200 as the petitioner that
`
`
`
`6
`
`
`
`IPR2022-00861 (Patent 10,257,319 B2)
`IPR2022-00862 (Patent 10,484,510 B2)
`
`challenges these patents at this time. We decline to speculate on whether a
`settlement with Major Data in the -915 IPR is minimized because Major
`Data is not involved in litigation with Patent Owner. See id. at 6. In any
`event, however, joinder is appropriate so that Code200 may pursue its
`challenges in view of the rationale underlying instituting review and the
`grant of joinder with -1492 IPR and-1493 IPR: that the merits of a
`compelling unpatentability challenge be reached in an IPR.
`
`Patent Owner also contends that there is a “high risk of duplicative
`efforts and conflicting decisions in view of the -915 IPR.” Reh’g Req. 3.
`The -861 proceeding has been set on substantially the same schedule as that
`of the -915 IPR in order to minimize any potential conflicts and duplication
`of effort. Compare Paper 20, with IPR2022-00915, Paper 19.
`
`Patent Owner additionally asserts that the panel did not address some
`joinder issues and made unreasonable judgments in weighing relevant
`factors. Reh’g Req. 9–13. For example, Patent Owner contends that NetNut
`was terminated as a petitioner in the -1492 IPR due to settlement, and
`therefore the case should have been terminated. Id. at 10. Patent Owner
`argues the Consolidated Trial Practice Guide notes that there are strong
`public policy reasons to favor settlement and expects that a proceeding will
`be terminated, and Congress and the Federal Courts encourage settlement in
`litigation. Id. Patent Owner argues that in view of the -915 IPR, there is no
`prejudice to the termination of the -1492 IPR. Id. at 11. Patent Owner
`argues that there is, however, substantial prejudice to Patent Owner and the
`Board in not terminating the -1492 IPR. Id. at 11.
`
`Patent Owner also argues that because NetNut was terminated as
`petitioner in the -1492 IPR, Petitioner would not be acting in the role of an
`
`
`
`7
`
`
`
`IPR2022-00861 (Patent 10,257,319 B2)
`IPR2022-00862 (Patent 10,484,510 B2)
`
`understudy there, but instead will assume the leading role. Reh’g Req. 11.
`Patent Owner asserts that this was not a “routine” joinder request and
`Petitioner “did not sufficiently justify in their motion-briefing why they
`should now be allowed to assume the leading role in the -1492 IPR.” Id.
`Patent Owner argues that this proceeding is not the first opportunity to
`obtain a merit-based decision, and refers to IPR2020-01266, which was
`denied discretionarily, as “an opportunity before the Board to obtain a
`merits-based decision.” Id. at 12. Patent Owner asserts that, as to IPR2020-
`01266, “[t]he Board necessarily considered the merits of, for example, the
`petition. . . but the merits did not outweigh the other discretionary factors.”
`Id. at 12. Patent Owner further argues that Petitioner should not be allowed
`a “do-over” because they were unsuccessful in the Teso litigation. Id.
`
`As the Decision on Remand indicates, we previously assessed the
`issues related to the settlement with NetNut, the Teso litigation, and the
`relative burdens on the parties, but determined that reaching the merits was
`in the interests of justice. Dec. on Remand 38–39.
`
`Patent Owner has not met its burden of showing that we overlooked or
`misapprehended its arguments or evidence, as is required by 37 C.F.R.
`§ 42.71(d). Rather, Patent Owner additionally uses its Requests for
`Rehearing as an opportunity to reargue some of its positions; positions with
`which we do not agree. On raising policy arguments related to settlement,
`and the issue that the merits could have been (or have been) previously
`reached in IPR2020-01266, Patent Owner relies on new arguments not
`presented in its Opposition to the Motion for Joinder (Paper 11) or
`Preliminary Response (Paper 15). These new arguments are unavailing. A
`request for rehearing is not an opportunity to present new arguments.
`
`
`
`8
`
`
`
`IPR2022-00861 (Patent 10,257,319 B2)
`IPR2022-00862 (Patent 10,484,510 B2)
`
`We are therefore not persuaded that we misapprehended or
`
`overlooked any matter in exercising our discretion to grant institution.
`III. CONCLUSION
`For the foregoing reasons, Patent Owner has not demonstrated that we
`
`abused our discretion, or that we misapprehended or overlooked any issue,
`in granting institution of inter partes reviews in these cases.
`IV. ORDER
`Accordingly, it is ORDERED that Patent Owner’s Requests for
`
`Rehearing are denied.
`
`
`
`
`
`9
`
`
`
`IPR2022-00861 (Patent 10,257,319 B2)
`IPR2022-00862 (Patent 10,484,510 B2)
`
`
`PETITIONER:
`
`George “Jorde” Scott
`John Heuton
`CHARHON CALLAHAN ROBSON & GARZA, PLLC
`jscott@ccrglaw.com
`theuton@ccrglaw.com
`
`
`PATENT OWNER:
`
`Thomas Dunham
`Elizabeth O’Brien
`CHERIAN LLP
`tomd@ruyakcherian.com
`elizabetho@ruyakcherian.com
`
`
`
`
`10
`
`
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