Paper 14
`Trials@uspto.gov
`571-272-7822 Date: July 29, 2022
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MAJOR DATA UAB,
`Petitioner,
`
`v.
`
`BRIGHT DATA LTD.,
`Patent Owner.
`____________
`
`IPR2022-00915
`Patent 10,257,319 B2
`____________
`
`
`
`Before THOMAS L. GIANNETTI, SHEILA F. McSHANE, and
`RUSSELL E. CASS, Administrative Patent Judges
`
`CASS, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. § 42.122
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822 Date: July 29, 2022
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MAJOR DATA UAB,
`Petitioner,
`
`v.
`
`BRIGHT DATA LTD.,
`Patent Owner.
`____________
`
`IPR2022-00915
`Patent 10,257,319 B2
`____________
`
`
`
`Before THOMAS L. GIANNETTI, SHEILA F. McSHANE, and
`RUSSELL E. CASS, Administrative Patent Judges
`
`CASS, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. § 42.122
`
`
`
`
`
`
`IPR2022-00915
`Patent 10,257,319 B2
`
`
`I. INTRODUCTION
`Major Data UAB (“Petitioner”) filed a Petitioner 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 (Ex. 1001, “the ’319 patent”). Paper 1 (“Pet.”).
`Concurrently with its Petition, Petitioner filed a motion for Joinder with Net
`Nut Ltd. v. Bright Data Ltd., IPR2021-01492 (“the 1492 IPR”). Paper 3
`(“Mot.”). Patent Owner filed a Preliminary Response (Paper 12 (“Prelim.
`Resp.”)) and an opposition to the motion for joinder (Paper 7 (“Opp.”)).
`Petitioner filed a Reply to Patent Owner’s opposition. Paper 13 (“Reply”).
`We have authority under 35 U.S.C. § 314(a), which provides that an
`inter partes review may not be instituted “unless . . . there is a reasonable
`likelihood that the petitioner would prevail with respect to at least 1 of the
`claims challenged in the petition.” Additionally, under 35 U.S.C. § 315(c),
`“the Director, in his or her discretion, may join as a party to that inter partes
`review any person who properly files a petition under section 311 that the
`Director . . . determines warrants the institution of an inter partes review
`under section 314.”
`For the reasons described below, we deny Petitioner’s Motion for
`Joinder. We will issue a decision on whether to institute an inter partes
`review based on the Petition in due course.
`
`II. RELATED PROCEEDINGS
`The parties indicate that there are multiple related district court
`litigations. Pet. 5–6; Mot. 2–3; Paper 6, 2–3. In addition to the 1492 IPR,
`the parties also identify IPR2020-01266 (“the previously-filed 1266 IPR”),
`filed by Metacluster LT, UAB, Code 200, UAB, Oxysales, UAB, and Teso
`LT, UAB, which challenged claims of the ’319 patent. Mot. 3; Paper 6, 1.
`
`2
`
`
`
`IPR2022-00915
`Patent 10,257,319 B2
`
`The previously-filed 1266 IPR was denied on discretionary grounds. Mot. 3.
`The parties also indicate that the ’319 patent is the subject of an ex parte
`reexamination, Control No. 90/014,875, which has been stayed. Mot. 3;
`Paper 6, 2. The parties also identify IPR2022-00861 (“the 861 IPR”) filed
`by the same parties who filed the previously-filed 1266 IPR, along with a
`motion for joinder to the 1492 IPR. Pet. 5; Paper 6, 2. We recently issued a
`decision in the 861 IPR denying Petitioner’s motion for joinder and also
`denying institution of inter partes review. IPR2022-00861, Paper 17.
`In the 1492 IPR, the case which Petitioner is seeking to join, we
`instituted an inter partes review of claims 1, 2, 12, 14, 15, 17–19, and 21–29
`of the ’319 patent. 1492 IPR, Paper 12 at 7–8, 39 (“1492 Decision” or
`“1492 Dec.”). Thereafter, Patent Owner settled with NetNut in the 1492
`IPR, and NetNut has been terminated as petitioner in that action. 1492 IPR,
`Paper 20. Due to the termination of NetNut and our denial of joinder in the
`861 IPR, there is no remaining petitioner in the 1492 IPR.
`
`III. DISCUSSION
`
`A. Background
`Petitioner argues that its Petition “is substantially identical to the
`petition submitted in” the 1492 IPR and that it “agrees to proceed solely on
`the grounds, substantive evidence, and arguments advanced, or that will be
`advanced in” the 1492 IPR. Mot. 2. Petitioner further states that it “is
`willing to take an ‘understudy’ role in the joined proceedings, so long as
`NetNut is party to the proceedings and is not estopped under 35 U.S.C.
`§ 315(e)(1),” and thus “there will be no added complexity” to the
`proceeding. Id. at 2, 8. Additionally, Petitioner argues, “[j]oinder will not
`impact the [1492] IPR trial schedule” because Petitioner “consents to the
`
`3
`
`
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`IPR2022-00915
`Patent 10,257,319 B2
`
`existing trial schedule in” the 1492 IPR. Id. at 7. Thus, according to
`Petitioner, “[g]ood cause exists for joining this proceeding with the [1492]
`IPR because these proceedings are substantive identical, and consistent with
`35 C.F.R. § 42.1(b)[,] joinder will enable the Board to efficiently ‘secure the
`just, speedy, and inexpensive resolution’ of multiple petitions in a single
`proceeding.” Id. at 5–6.
`Petitioner states that it has not been served with a complaint for
`infringement, and therefore the Petition in this proceeding is not time-barred
`under 35 U.S.C. § 315(b). Mot. 1 n.1. Patent Owner agrees that “[b]ased on
`the information presently available, Major Data is not time-barred from
`IPR.” Opp. 15.
`Patent Owner argues that the Board should exercise its discretion to
`deny joinder because, among other reasons, it will add complexity to the
`1492 IPR. Opp. 3. As an example, Patent Owner states that, if joinder is
`granted, it will have to prepare its Patent Owner Response on an expedited
`schedule. Id. at 11. Moreover, according to Patent Owner, in preparation
`for its Patent Owner Response, it “intends to submit secondary
`considerations evidence which requires agreement with opposing counsel
`(whoever that may be) on a modified protective order (due to confidential
`productions in the district court litigations).” Id. Patent Owner also asserts
`that it “intends to depose the testifying expert, Mr. Teruya, as part of
`preparing its PORs,” and “[i]t is unclear which party/ies would be defending
`Mr. Teruya and how that examination would be fairly conducted.” Id. at 13.
`Additionally, according to Patent Owner, because the Petition in this
`case is not time-barred, “denying joinder causes no prejudice to” Petitioner.
`Mot. 15. Thus, Patent Owner contends, it “should not have to bear the
`
`4
`
`
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`IPR2022-00915
`Patent 10,257,319 B2
`
`additional cost of continuing the [1492] IPR when [it] otherwise should be
`terminated due to settlement.” Id. at 11.
`Petitioner responds that it “has already invested significant expense
`and time to join an existing, already-instituted, demonstratively meritorious
`petition,” and that there is no good reason to force it “to suffer the prejudice
`of the substantial delay and additional cost involved in needlessly setting this
`petition all the way back to the pre-institution stage.” Reply 2. Petitioner
`further argues that Patent Owner will not be prejudiced by having to file its
`Patent Owner Response on an accelerated schedule because the Board has
`extended the deadline for the Patent Owner Response. Id. at 3.
`B. Analysis
`The decision to grant joinder is discretionary. 35 U.S.C. § 315(c).
`“The Board will determine whether to grant joinder on a case-by-case basis,
`taking into account the particular facts of each case, substantive and
`procedural issues, and other considerations.” Dell Inc. v. Network-1 Sec.
`Solutions, Inc., IPR2013-00385, Paper No. 17 at 3 (PTAB July 29, 2013).
`Under the particular facts and circumstances of this case, we decline
`to exercise our discretion to join this proceeding with the 1492 IPR. First,
`both parties agree that Petitioner’s Petition is not time-barred under
`35 U.S.C. § 315(b). Mot. 1 n.1; Opp. 15. Therefore, even if joinder is not
`granted, we will evaluate the merits of the Petition and, if appropriate,
`institute this proceeding in the normal course. Indeed, because the due date
`of Patent Owner’s Preliminary Response was moved up, an institution
`decision in this proceeding will be rendered earlier than it would have been
`under normal circumstances. See Paper 10.
`
`5
`
`
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`IPR2022-00915
`Patent 10,257,319 B2
`
`
`Moreover, joining this proceeding to the 1492 IPR would add
`unnecessary procedural complexity to that proceeding. Because NetNut has
`been terminated from the 1492 IPR, and we have denied the motion for
`joinder in the 861 IPR, there is presently no petitioner in the 1492 IPR. 1492
`IPR, Paper 20; 861 IPR, Paper 17. If we were to grant Petitioner’s motion
`for joinder, Petitioner would not assume an “understudy” role, but rather
`would immediately assume the primary role in the 1492 IPR. Patent Owner
`would then have to file its Patent Owner Response in the 1492 IPR on an
`expedited basis, and our extension of the date for the Patent Owner
`Response would further compress the schedule in the 1492 IPR. This would
`place an unnecessary burden on the parties and the Board.
`Given these procedural complexities, we believe it is more efficient
`and in the interest of justice to deny Petitioner’s motion for joinder, and
`consider whether to institute inter partes review of the ’319 patent based on
`the grounds set forth in Petition in this case in the ordinary course of this
`proceeding.1
`
`Conclusion
`For the foregoing reasons, we deny Petitioner’s motion to join this
`proceeding to the 1492 IPR. We will consider whether to institute an inter
`partes review based on the Petition in the normal course of this proceeding.
`
`V. ORDER
`
`
`
`Accordingly, it is:
` ORDERED that Petitioner’s Motion for Joinder is denied.
`
`
`
`1 In due course, we will terminate the 1492 IPR in a separate order.
`6
`
`
`
`IPR2022-00915
`Patent 10,257,319 B2
`
`
`PETITIONER:
`
`Liang Huang
`Wensheng Ma
`MAURIEL KAPOUYTIAN WOODS LLP
`rhuang@mkwllp.com
`vma@mkwllp.com
`
`PATENT OWNER:
`
`Thomas Dunham
`Elizabeth O’Brien
`RUYAKCHERIAN LLP
`tomd@ruyakcherian.com
`elizabetho@ruyakcherian.com
`
`
`
`
`
`
`
`
`
`
`7
`
`
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