Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 18
`Entered: September 15, 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
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`
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`
`
`
`
`
`
`Before THOMAS L. GIANNETTI, KEVIN C. TROCK, and
`SHEILA F. McSHANE, Administrative Patent Judges.
`
`TROCK, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`Paper 18
`Entered: September 15, 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, KEVIN C. TROCK, and
`SHEILA F. McSHANE, Administrative Patent Judges.
`
`TROCK, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
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`IPR2022-00915
`Patent 10,257,319 B2
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`
`INTRODUCTION
`I.
`Major Data UAB (“Petitioner”) filed a Petition (Paper 1, “Pet.”)
`requesting inter partes review of claims 1, 2, 12, 14, 15, 17–19, and 21–29
`(the “challenged claims”) of U.S. Patent No. 10,257,319 B2 (Ex. 1001, “the
`’319 patent”). Bright Data Ltd.1 (“Patent Owner”) filed a Preliminary
`Response (Paper 12, “Prelim. Resp.”). With authorization from the panel,
`Petitioner filed a Preliminary Reply (Paper 16, “Pet. Prelim. Reply”), and
`Patent Owner filed a Preliminary Sur-reply (Paper 17, “PO Prelim. Sur-
`reply”).
`The Board has authority to determine whether to institute 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.
`
`II. BACKGROUND
`
`A. Related Matters
`The parties identify several district court proceedings involving the
`’319 patent and a related patent, U.S. Patent No. 10,484,510 (“the ’510
`
`1 According to Petitioner, Bright Data Ltd. was formerly known as Luminati
`Networks, Ltd. See Pet. 1.
`
`2
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`patent”), 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. 3–4;
`Paper 6, 2–3. The parties also identify a number of district court actions
`involving patents related to the ’319 patent. Id.
`According to the parties, the ’319 patent was previously before the
`Board in IPR2020-01266, IPR2021-01492, IPR2022-00135, and IPR2022-
`00861. Pet. 4; Paper 6, 1–2. The parties also identify a number of other
`USPTO proceedings involving patents related to the ’319 patent. See Pet. 4–
`6; Paper 6, 1–2.
`In addition, Patent Owner identifies ex parte reexaminations requested
`for the ’319 and ’510 patents, respectively, Control No. 90/014,875 and
`Control No. 90/014,876. Paper 6, 2.
`B. Real Parties-in-Interest
`Petitioner identifies Major Data UAB as the real party-in-interest.
`Pet. 2. Patent Owner expresses concern, however, that “Major Data was
`formed as a ‘back-up’ option to continue these IPRs,” and represents that
`Patent Owner “has not sued Major Data for infringement of any patents and
`Patent Owner is not aware of any services offered by Major Data.” Prelim.
`Resp. 3.
`In its Preliminary Reply, however, Petitioner points out that shortly
`before Patent Owner filed the Preliminary Response, Petitioner had advised
`Patent Owner and “confirmed, inter alia, that it is not affiliated with any of
`the Code200 parties and did not discuss the preparation or filing of IPRs
`with anyone apart from privileged communications with its own attorneys.”
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`Pet. Prelim. Reply 3. Petitioner avers that “it did not file its IPRs at any
`another party’s behest.” Id.
`In its Preliminary Sur-reply, Patent Owner does not directly challenge
`Petitioner’s representations, but instead “reserves all rights including, e.g.,
`vacatur and sanctions, if any contradictions to Petitioner’s representations
`should arise.” PO Prelim. Sur-reply 4.
`Based on the current record, we determine that Petitioner has
`established compliance with the statutory requirement under 35 U.S.C.
`§ 312(a)(2) to identify all real parties in interest.
`C. 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):
`
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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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`D. Illustrative Claim
`The ’319 patent has 29 claims. As noted, claims 1, 2, 12, 14, 15, 17–
`19, and 21–29 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:2
`1. [Preamble] A method 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, the first server stores a first content identified
`by a first content identifier, and for use with a second server,
`the method by the first client device comprising:
`[a] receiving, from the second server, the first content
`identifier;
`[b] sending, to the first server over the Internet, a
`Hypertext Transfer Protocol (HTTP) request that comprises the
`first content identifier;
`[c] receiving, the first content from the first server over
`the Internet in response to the sending of the first content
`identifier; and
`[d] 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.
`
`
`2 Paragraph references in brackets proposed by Petitioner. See Pet. 25–34.
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`E. Prior Art References and Other Evidence
`
`Petitioner relies on the following references:
`1. Michael Reiter & Aviel Rubin, Crowds: Anonymity
`for Web Transactions, ACM Transactions on Information and
`System Security, Vol. 1, No. 1 (Nov. 1998) (Ex. 1006,
`“Crowds”);
`2. Marc Rennhard, MorphMix – A Peer-to-Peer-based
`System for Anonymous Internet Access (2004) (Ex. 1008,
`“MorphMix”);
`3. Border, et al., U.S. Patent No. 6,795,848 B1 (Sep. 21,
`2004) (Ex. 1012, “Border”); and
`4. Fielding, et al., RFC 2616, Hypertext Transfer
`Protocol -- HTTP/1.1, Internet Engineering Task Force,
`Network Working Group (June 1999) (Ex. 1013, “RFC 2616”).
`In addition to these references, Petitioner relies on a Declaration of
`
`Keith J. Teruya. Ex. 1005 (“Teruya Decl.”). Patent Owner submitted a
`Declaration of Tim A. Williams, Ph.D. with the Preliminary Response.
`Ex. 2025 (“Williams Decl.”).
`
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`F. Asserted Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability. Pet. 11.
`
`Claim(s) Challenged
`
`1, 19, 21–294
`1, 2, 14, 15, 17–19, 21–29
`1, 12, 14, 21, 22, 24, 25,
`27–29
`1, 12, 14, 15, 17–19, 21, 22,
`24, 25, 27–296
`1, 17, 19, 21–29
`1, 2, 14, 15, 17–9, 21–29
`
`Basis
`35 U.S.C. §
`1025
`103
`
`102
`
`103
`
`102
`103
`
`Reference(s)3
`
`Crowds
`
`Crowds, RFC 2616
`
`Border
`
`Border, RFC 2616
`
`MorphMix
`MorphMix, RFC 2616
`
`
`3 Petitioner’s obviousness challenges additionally refer to the “[k]nowledge
`of [a person of ordinary skill in the art].” Pet. 11. We understand this to
`refer to a person of ordinary skill in the art’s understanding of the applied
`references and not to supplying missing limitations or incorporating an
`unspecified disclosure by reference to supply missing claim limitations.
`General knowledge in the art, unsupported by the references, cannot supply
`a missing limitation. Patent Trial and Appeal Board Consolidated Trial
`Practice Guide 36 (Nov. 2019), available at https://www.uspto.gov/
`TrialPracticeGuideConsolidated.
`4 Although Petitioner’s listing of the asserted grounds excludes claim 23 for
`this ground (see Pet. 11), Petitioner includes claim 23 in its analysis of
`anticipation based on Crowds (see id. at 35). Accordingly, we include claim
`23 here.
`5 Because the application from which the ’319 patent issued has an earliest
`effective filing date before March 16, 2013 (Ex. 1001, (60)), citations to
`35 U.S.C. §§ 102 and 103 are to the pre-AIA versions. Leahy-Smith
`America Invents Act (“AIA”), Pub. L. No. 112-29.
`6 Although Petitioner’s listing of the asserted grounds does not identify
`claim 19 for this ground (see Pet. 11), Petitioner includes claim 19 in its
`
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`III. DISCRETIONARY DENIAL
`Patent Owner contends the Board should deny the Petition pursuant to
`35 U.S.C. § 314(a) because “the Fintiv factors overwhelmingly favor denial
`of institution.” Prelim. Resp. 8. Patent Owner provides arguments
`regarding the factors set forth in Fintiv. Id. at 8–19. Patent Owner also
`argues that we should exercise our discretion under § 314(a) to deny
`institution because “there is a significant risk of the Board redoing the work
`of another tribunal.” Id. at 7.
`The Board’s precedential decision in Apple Inc. v. Fintiv Inc.,
`IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”),
`identifies a non-exclusive list of factors parties may consider addressing
`where there is a related, parallel district court action to determine whether
`such action provides any basis for discretionary denial. Fintiv, Paper 11 at
`5–16. Those factors include:
`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.
`
`
`analysis of obviousness based on Border (see id. at 57). Accordingly, we
`include claim 19 here.
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`Id. at 5–6.
`On June 21, 2022, the Director of the United States Patent and
`Trademark Office issued an Interim Procedure for Discretionary Denials in
`AIA Post-Grant Proceedings with Parallel District Court Litigation
`(“Memorandum”)7 to clarify “the [Board’s] current application of Fintiv to
`discretionary institutions where there is parallel litigation” and to “confirm[]
`that the precedential import of Fintiv is limited to the facts of that case.”
`Memorandum 2. In particular, the Memorandum states that the Board
`will not deny institution of an IPR or PGR under Fintiv (i) when
`a petition presents compelling evidence of unpatentability; (ii)
`when a request for denial under Fintiv is based on a parallel ITC
`proceeding; or (iii) where a petitioner stipulates not to pursue in
`a parallel district court proceeding the same grounds as in the
`petition or any grounds that could have reasonably been raised in
`the petition.
`Id. at 9.
`Petitioner argues in its Preliminary Reply that there are reasons why
`the Board should decline to exercise its discretion under § 314(a). Petitioner
`first argues that “discretionary denials are inappropriate under Fintiv when
`parallel litigation would not result in a ‘binding’ decision that would
`‘conclusively resolve an assertion of patent invalidity.’” Pet. Prelim. Reply
`4 (citing Memorandum 6). Petitioner points out that Patent Owner “has not
`sued Major Data and is not aware of any infringement by Major Data. As a
`non-party to the parallel district court litigation, any judgment upholding the
`patents-in-suit as valid would not be binding on Major Data.” Id. at 5 (citing
`
`
`7 Available at:
`https://www.uspto.gov/sites/default/files/documents/interim_proc_discretion
`ary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf
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`Stevenson v. Sears, Roebuck & Co., 713 F.2d 705, 710–11 (Fed. Cir. 1983)
`(prior holding of patent validity not binding on subsequent accused infringer
`because it is “grossly inequitable to bind a party to a judgment of validity
`rendered in an action against some other party”). Petitioner argues that
`“[t]he parallel Texas litigation is therefore not conclusive as to Major Data
`and thus cannot be the basis of a discretionary denial.” Pet. Prelim. Reply 5.
`Second, Petitioner argues that the Memorandum “establishes a bright-
`line rule that ‘the PTAB will not discretionarily deny institution of an IPR or
`PGR in view of parallel district court litigation where a petitioner stipulates
`not to pursue in a parallel district court proceeding the same grounds as in
`the petition or any grounds that could have reasonably been raised in the
`petition.’” Id. (citing Memorandum 7). Petitioner provides just such a
`stipulation, stating that it “hereby does stipulate, ‘not to pursue in a parallel
`district court proceeding the same grounds as in the petition or any grounds
`that could have reasonably been raised’ against the claims included in the
`petition.” Pet. Prelim. Reply 6 (quoting Memorandum 7).
`Patent Owner argues, however, that “Petitioner’s stipulation is
`meaningless at least because the [Texas] Litigation has already proceeded
`through trial and reached a jury verdict,” and “Petitioner is not a defendant
`in the Tefincom Litigation.” PO Prelim. Sur-reply 6. Patent Owner
`concludes that “Petitioner’s stipulation provides no mitigating effects” and
`“cannot affect the Board’s Fintiv analysis in this IPR.” Id.
`
`Neither party addresses, however, another directive of the
`Memorandum, which states that “the PTAB will not rely on the Fintiv
`factors to discretionarily deny institution in view of parallel district court
`litigation where a petition presents compelling evidence of unpatentability.”
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`Memorandum 2. The Memorandum explains that “where the PTAB
`determines that the information presented at the institution stage presents a
`compelling unpatentability challenge, that determination alone demonstrates
`that the PTAB should not discretionarily deny institution under Fintiv.”
`Memorandum, 4–5 (emphasis added). The Memorandum further explains
`that “[c]ompelling, meritorious challenges are those in which the evidence,
`if unrebutted in trial, would plainly lead to a conclusion that one or more
`claims are unpatentable by a preponderance of the evidence.” Memorandum
`4.
`
`On the current record, we determine that Petitioner’s invalidity
`grounds, if unrebutted at trial, would plainly lead to a conclusion that the
`challenged claims are unpatentable by a preponderance of the evidence. See
`infra Sections IV.E–J. Instituting inter partes review under these
`circumstances “strikes a balance among the competing concerns of avoiding
`potentially conflicting outcomes, avoiding overburdening patent owners, and
`strengthening the patent system by eliminating patents that are not robust
`and reliable.” Memorandum 5.
`Accordingly, based upon our consideration of the evidence and
`arguments presented in the Petition, and pursuant to the directive in the
`Memorandum concerning compelling, meritorious challenges, we decline to
`exercise our discretion under § 314(a) to deny institution of inter partes
`review as Patent Owner requests.
`
`IV. ANALYSIS OF THE CHALLENGED CLAIMS
`A. Applicable Legal Standards
`The Federal Circuit addressed the legal standard for anticipation in
`Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331 (Fed. Cir. 2016):
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`Under 35 U.S.C. § 102(b), a prior art reference will anticipate if
`it “disclose[s] each and every element of the claimed invention
`. . . arranged or combined in the same way as in the claim.”
`815 F.3d at 1341 (citation omitted) (footnote omitted). The Federal Circuit
`went on to explain:
`However, a reference can anticipate a claim even if it ‘d[oes]
`not expressly spell out’ all the limitations arranged or combined
`as in the claim, if a person of skill in the art, reading the
`reference, would at ‘once envisage’ the claimed arrangement or
`combination.
`Id. (quoting Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376,
`1381 (Fed. Cir. 2015)).
`A claim is unpatentable as obvious under 35 U.S.C. § 103 “if the
`differences between the claimed invention and the prior art are such that the
`claimed invention as a whole would have been obvious before the effective
`filing date of the claimed invention to a person having ordinary skill in the
`art to which the claimed invention pertains.” 35 U.S.C. § 103 (2011). The
`question of obviousness is resolved on the basis of underlying factual
`determinations, including: (1) the scope and content of the prior art; (2) any
`differences between the claimed subject matter and the prior art; (3) the level
`of skill in the art; and (4) so-called “secondary considerations,” including
`commercial success, long-felt but unsolved needs, failure of others, and
`unexpected results. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`At this stage, neither party has presented any evidence on the fourth Graham
`factor.
`B. Level of Ordinary Skill in the Art
`
`According to Petitioner, a person of ordinary skill in the pertinent art
`“would have at least a bachelor’s degree in Computer Science or related
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`field (or equivalent experience), and two or more years’ experience working
`with and programming networked computer systems as of the Priority Date.”
`Pet. 16. Petitioner continues that “[s]uch a person would be familiar with
`the underlying principles of Web, Internet, or network communication, data
`transfer, and content sharing across networks, including the HTTP and
`TCP/IP protocols.” Id. at 16–17 (citing Teruya Decl. ¶¶ 25–27).
`
`Patent Owner submits that a person of ordinary skill in the art would
`have 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.” Prelim. Resp. 29–30.
`
`We regard Petitioner’s more specific definition as consistent with the
`’319 patent and the prior art before us. See Okajima v. Bourdeau, 261 F.3d
`1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level
`of skill). Therefore, for the purpose of this decision, we adopt Petitioner’s
`formulation.
`C. Claim Construction
`
`For this inter partes review, the Board applies the same claim
`construction standard as that applied in federal courts. See 37 C.F.R
`§ 42.100(b) (2019). Under this standard, claim terms “are generally given
`their ordinary and customary meaning” as 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, 1312–13 (Fed. Cir. 2005) (en banc) (citations
`omitted). “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
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`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).
`Extrinsic evidence is “less significant than the intrinsic record in
`determining ‘the legally operative meaning of claim language.’” Phillips,
`415 F.3d at 1317 (citation omitted).
`Only those terms that are in controversy need be construed, and only
`to the extent necessary to resolve the controversy. See Nidec Motor Corp. v.
`Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017);
`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
`1999).
`
`Petitioner contends that the district court’s constructions in Luminati
`Networks Ltd. v. Teso LT, UAB, et al., No. 2:19-cv-395 (E.D. Tex.) (the
`“Teso Litigation”)8, are appropriate for use in this case. Pet. 17–19. In
`particular, Petitioner points to two claim construction orders in that case—
`the “Teso Order” (Ex. 1017) and the “Teso Supplemental Order” (Ex. 1020).
`According to Petitioner, the parties in the Teso Litigation agreed to certain
`constructions adopted by the district court. Pet. 17. There, the district court
`construed the preamble of claim 1 of the ’319 patent to be limiting, and
`construed certain other terms to have their “plain and ordinary meaning.”
`Id.
`
`Petitioner also points out that the district court in the Teso Litigation
`construed certain disputed claim terms, including “client device” and
`“second server.” Id. at 17–18. There, the district court construed “client
`device” as a “communication device that is operating in the role of a client.”
`
`8 The case caption in the Teso Litigation was later changed to identify the
`plaintiff as Bright Data Ltd. See Ex. 1020, 1.
`
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`Id.; Ex. 1017, 12. The district court also initially construed “second server”
`as a “server that is not the client device.” Pet. 18. Later, the court granted
`defendants’ request for clarification as to the scope of this construction, and
`determined that a “second server” is “a device that is operating in the role of
`a server and that is not the first client device.” Id.; Ex. 1020, 8, 11.
`
`Patent Owner now proposes constructions for the claim terms “client
`device” and “second server” that are different than those determined by the
`district court in the Teso Litigation. See Prelim. Resp. 30–31. We discuss
`Patent Owner’s proposed constructions below.
`Client Device
`
`Patent Owner states that “[t]he Board preliminarily construed the term
`‘client device’ as a ‘communication device that is operating in the role of a
`client,’” citing the Board’s decisions granting institution of inter partes
`review in IPR2021-01492 (Ex. 2004) and IPR2021-01493 (Ex. 2005).
`Prelim. Resp. 30. Patent Owner proposes, however, that “the correct
`construction for ‘client device’ is ‘consumer computer’ or alternatively, a
`‘consumer communication device.’” Prelim. Resp. 30 (citing Ex. 2025
`¶ 36).
`
`Patent Owner’s proposed construction of the claim term “client
`device” as a “consumer computer” was previously considered, and rejected,
`by the district court in the Teso Litigation. See, e.g., Ex. 1017, 10–12. In
`the Preliminary Response, Patent Owner takes issue with the evidence and
`the reasoning used by the district court to reject Patent Owner’s previously
`proposed construction. See, e.g., Prelim. Resp. 34–36. We have considered
`Patent Owner’s evidence and arguments in the Preliminary Response that
`the district court’s construction of the claim term “client device” as a
`
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`“communication device that is operating in the role of a client” is incorrect.
`See Prelim. Resp. 31–49. For purposes of this decision, however, we concur
`with the district court’s reasoning and agree with its construction of the
`claim term “client device” as a “communication device that is operating in
`the role of a client.” This construction is consistent with, and supported by,
`the intrinsic evidence of the specification.
`Second Server
`
`Patent Owner states that “[t]he Board preliminarily construed the term
`‘second server’ as ‘server that is not the client device,’ with the clarification
`that ‘second server’ is a ‘device that is operating in the role of a server and
`that is not the client device.’” Prelim. Resp. 30 (citing Ex. 2004, 19;
`Ex. 2005, 22). Patent Owner proposes, however, that “the correct
`construction for ‘second server’ is a ‘server that is not is a client device.’”
`Prelim. Resp. 31 (citing Ex. 2025 ¶ 71).
`Patent Owner’s proposed construction of the claim term “second
`server” as a “server that is not is a client device” was previously considered
`by the district court in the Teso Litigation, but the court clarified the scope
`as a “device that is operating in the role of a server and that is not the client
`device.” See Ex. 1017, 13–14; Ex. 1020, 7–11. In the Preliminary
`Response, Patent Owner argues that “the second server is separate and
`distinct from ‘the first client device’ of the claims, consistent with the
`Court’s constructions, and more particularly, that a server is structurally
`different from any client device disclosed in the specification or recited in
`the patent claims.” Prelim. Resp. 56 (citing Ex. 2025 ¶ 70).
`We have considered Patent Owner’s evidence and arguments in the
`Preliminary Response but, for purposes of this decision, we concur with the
`
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`IPR2022-00915
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`district court’s reasoning and agree with its clarified construction of the
`claim term “second server” as a “device that is operating in the role of a
`server and that is not the client device.”
`D. Prior Art References
`Crowds (Ex. 1006)
`
`Crowds is an article that “introduce[s] a new approach for increasing
`the privacy of web transactions.” Ex. 1006, 2. In this approach, a user joins
`a “crowd” of other users, wherein the user’s request to a web server is
`passed to a random member of the crowd, and possibly forwarded to one or
`more other members, prior to being submitted to the end server. Id. In this
`way, “[w]hen the request is eventually submitted, it is submitted by a
`random member, thus preventing the end server from identifying its true
`initiator.” Id. In Crowds, “[a] user is represented by a process on her
`computer called a jondo (pronounced ‘John Doe’ and meant to convey the
`image of a faceless participant).” Id. at 8. “When the jondo is started, it
`contacts a server called the blender to request admittance to the crowd.” Id.
`Exemplary paths for web requests from crowd users are shown in Figure 2
`(id. at 9), reproduced below:
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`In Figure 2 of Crowds, when a jondo receives a user request from a
`browser, it “initiates the establishment of a random path of jondos that
`carries its users’ transactions to and from their intended web servers.” Id. at
`8. For example, the paths in Figure 2 among the jondos labeled 1 to 6 are as
`follows: “1 → 5 → server; 2 → 6 → 2 → server; 3 → 1 → 6 → server; 4
`→ 4 → server; 5 → 4 → 6 → server; and 6 → 3 → server.” Id. “[S]erver
`replies traverse the same path as the requests, only in reverse.” Id. at 9.
`Border (Ex. 1012)
`
`Border is a patent titled “System and Method of Reading Ahead of
`Objects for Delivery to an HTTP Proxy Server.” Ex. 1012, (54). Border
`describes “a system for retrieving web content.” Id. at (57). In Border, “[a]
`downstream proxy server receives a URL request message from a web
`browser. Id. at 3:35–36. Thereafter, “[a]n upstream proxy server receives
`the URL request message from the downstream proxy server” and
`“selectively forwards the URL request message to a web server and receives
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`the URL content from the web server.” Id. at 3:38–42. Then, “[t]he
`upstream proxy server forwards the URL content to the downstream proxy
`server.” Id. at 3:42–43. An exemplary system employing downstream and
`upstream proxy servers for accessing a web server is shown in Figure 1,
`reproduced below:
`
`
`
`As depicted in Border’s Figure 1, user station 101, for example, a personal
`computer, uses standard web browser 103. Id. at 3:55–61. User station 101
`is connected to downstream proxy server 105, which communicates over
`network 111 with upstream proxy server 107. Id. at 3:61–66. Proxy servers
`105 and 107 are HTTP proxy servers with HTTP caches 115 and 117. Id. at
`4:8–11. Upstream proxy server 107 is connected to web server 109 through
`IP network 113, for example, the Internet. Id. at 4:5–7. In this system,
`proxy servers 105 and 107 “act as an intermediary between one or more
`browsers and many web servers (e.g., server 109).” Id. at 4:30–31.
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` MorphMix (Ex. 1008)
`MorphMix is a doctoral thesis that identifies the lack of anonymity on
`the Internet as a problem that “limits the privacy protection of Internet
`users.” Ex. 1008, Abstract. Accordingly, MorphMix is focused on
`“achieving anonymous Internet access for low-latency applications such as
`web browsing.” Id. MorphMix describes “a peer-to-peer-based mix
`network” where “[e]very node joining the system can itself establish circuits
`via other nodes to access a server anonymously, but can also be part of
`circuits established by other nodes and relay data for t
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