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UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_________________________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________________
`
` MAJOR DATA UAB,
`
`Petitioner
`
`v.
`
`BRIGHT DATA LTD.,
`
`Patent Owner
`
`_________________________
`
`Case IPR2022-00915
`
`Patent No. 10,257,319
`
`_________________________
`
`
`
`
`
`PATENT OWNER’S OPPOSITION
`TO PETITIONER’S MOTION TO EXCLUDE
`
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`

`

`
`
`Based on Petitioner’s Motion to Exclude, it is unclear whether Petitioner
`
`IPR2022-00915 of Patent No. 10,257,319
`
`seeks to exclude Patent Owner’s recitation of the data center proxy service having
`
`“Approx. $22.1 million revenue in 2021” and/or Patent Owner’s citation in
`
`footnote 13 to “IPR2022-00687, Paper 18 at 75 (PTAB Jan. 20, 2023)”. See
`
`generally Paper 43.
`
`Regardless, Petitioner’s Motion to Exclude should be denied for at least 4
`
`reasons.
`
`First, Petitioner’s Motion to Exclude is effectively an unauthorized motion
`
`to strike and should be denied on that basis alone. See Patent Trial and Appeal
`
`Board Consolidated Trial Practice Guide (November 2019) (“TPG”) at 79
`
`(explaining that a motion to exclude should not address evidence that a party
`
`believes exceeds the proper scope of a sur-reply); see also TPG at 80-81
`
`(discussing a motion to strike which requires prior authorization). The Board has
`
`“repeatedly stated” that filing a motion to exclude evidence as failing to comply
`
`with 37 C.F.R. § 42.23 is improper. Palo Alto Networks, Inc. v. Finjan Inc.,
`
`IPR2015-01979, Paper 62 at 66 (PTAB Mar. 15, 2017)(citing collection of cases).
`
`Second, Petitioner’s Motion to Exclude does not argue that Patent Owner
`
`violated any of the Federal Rules of Evidence (e.g., inadmissible due to relevance
`
`or hearsay). See TPG at 79; see also TPG at 8 (“Admissibility of evidence is
`
`
`
`1
`
`

`

`
`
`generally governed by the Federal Rules of Evidence). Petitioner thus fails to meet
`
`IPR2022-00915 of Patent No. 10,257,319
`
`its burden.
`
`Third, Patent Owner has continuously argued the value of its residential
`
`proxy service and, in the Sur-reply, directly responded to Petitioner’s arguments in
`
`the Reply (see pages 24-26) regarding use of a residential IP address versus a
`
`commercial IP address. $53.7 million in annual revenue of the residential proxy
`
`service (which uses residential IP addresses) is significant in and of itself. Patent
`
`Owner additionally recited the approximate annual revenue of the data center
`
`proxy service (which uses commercial IP addresses) for comparison.
`
`Fourth, Petitioner has been aware of the annual revenue of Patent Owner’s
`
`services at least because the annual revenue is public information disclosed in
`
`Reexam Control Nos. 90/014,624; 90/014,827; 90/014,652; and 90/014,816; each
`
`of which Petitioner has been aware of since at least April 21, 2022. Paper 1 at 9;
`
`see also EX. 1128 (showing awareness of papers filed in Reexam Control Nos.
`
`90/014,624 and 90/014,827). Petitioner has also been coordinating closely with the
`
`petitioners in IPR2021-01492 and -01493 (e.g., filing substantially identical papers
`
`post-institution). Petitioner has also been preparing to enter the U.S. market in
`
`competition with Patent Owner. Paper 16 at 3. Patent Owner respectfully submits
`
`that for at least these reasons, Petitioner has been aware that the annual revenue of
`
`Patent Owner’s services is inconsistent with the argument that the use of
`
`
`
`2
`
`

`

`
`
`residential IP addresses has no value compared to the use of commercial IP
`
`IPR2022-00915 of Patent No. 10,257,319
`
`addresses.
`
`For at least the foregoing reasons, Petitioner’s Motion should be denied.
`
`Additionally, Patent Owner notes that the Board need not decide Petitioner’s
`
`Motion at this time given that consideration of the objected-to evidence may
`
`ultimately be unnecessary to resolve the patentability of the challenged claims,
`
`rendering the Motion moot. See TPG at 79-80.
`
`
`
`
`
`
`
`Respectfully submitted,
`
`Date: June 1, 2023
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`By: /s/ Thomas M. Dunham
`Thomas M. Dunham
`Reg. No. 39,965
`
`Cherian LLP
`1901 L Street NW, Suite 700
`Washington, D.C. 20036
`(202) 838-1567
`
`ATTORNEY FOR PATENT OWNER,
`BRIGHT DATA LTD.
`
`3
`
`
`
`
`
`
`
`
`
`

`

`
`
`CERTIFICATE OF COMPLIANCE
`
`IPR2022-00915 of Patent No. 10,257,319
`
`This paper consists of less than 15 pages and complies with the type-volume
`
`as mandated in 37 C.F.R. § 42.24. In preparing this certificate, counsel has relied on
`
`the word count of the word-processing system used to prepare the paper (Microsoft
`
`Word).
`
`
`
`
`
`Respectfully submitted,
`
`Date: June 1, 2023
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`By: /s/ Thomas M. Dunham
`Thomas M. Dunham
`Reg. No. 39,965
`
`Cherian LLP
`1901 L Street NW, Suite 700
`Washington, D.C. 20036
`(202) 838-1567
`
`ATTORNEY FOR PATENT OWNER,
`BRIGHT DATA LTD.
`
`4
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`

`

`
`
`CERTIFICATE OF SERVICE
`
`IPR2022-00915 of Patent No. 10,257,319
`
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned hereby certifies this paper
`
`was served on the undersigned date via email, as authorized by Petitioners, at the
`
`following email addresses:
`
`rhuang@mkwllp.com
`
`vma@mkwllp.com
`
`jbartlett@mkwllp.com
`
`
`
`
`
`Respectfully submitted,
`
`
`Date: June 1, 2023
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`By: /s/ Thomas M. Dunham
`Thomas M. Dunham
`Reg. No. 39,965
`
`Cherian LLP
`1901 L Street NW, Suite 700
`Washington, D.C. 20036
`(202) 838-1567
`
`ATTORNEY FOR PATENT OWNER,
`BRIGHT DATA LTD.
`
`5
`
`
`
`
`
`
`
`

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