UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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` MAJOR DATA UAB,
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`Petitioner
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`v.
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`BRIGHT DATA LTD.,
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`Patent Owner
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`Case IPR2022-00915
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`Patent No. 10,257,319
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`PATENT OWNER’S NOTICE OF APPEAL
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`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`_________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_________________________
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` MAJOR DATA UAB,
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`Petitioner
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`v.
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`BRIGHT DATA LTD.,
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`Patent Owner
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`_________________________
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`Case IPR2022-00915
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`Patent No. 10,257,319
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`_________________________
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`PATENT OWNER’S NOTICE OF APPEAL
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`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`IPR2022-00915 of Patent No. 10,257,319
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`Pursuant to 35 U.S.C. §§ 141, 142, and 319, and 37 C.F.R. §§ 90.2 and 90.3,
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`notice is hereby given that Patent Owner Bright Data Ltd. appeals to the U.S. Court
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`of Appeals for the Federal Circuit from the Final Written Decision (Paper 50) entered
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`on September 13, 2023 in IPR2022-00915, and from all underlying orders,
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`decisions, ruling, and opinions that are adverse to Patent Owner.1,2 The public
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`version of the Final Written Decision (Paper 51) entered on September 15, 2023 is
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`1 Lead Case No. 23-2144, pending in its early stages before the Fed. Cir., involves
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`the same patent, the same disputed claim terms, and the same primary prior art
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`reference (Crowds).
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`2 Patent Owner is simultaneously filing a Notice of Appeal in IPR2022-00915 and
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`IPR2022-00916, which involve related patents having the same specification, the
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`same disputed claim terms, and the same prior art references. There are also similar
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`claim construction issues in pending administrative matters: IPR2021-01492,
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`IPR2021-01493, and IPR2022-00687; as well as Reexamination Control Nos.
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`90/014,652, 90/014,816, 90/014,624, and 90/014,827; all which involve related
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`patents having the same specification. There are also similar claim construction
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`issues in stayed Reexamination Control Nos. 90/014,875 and 90/014,876, as well as
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`stayed district court matters: Case Nos. 2:19-cv-395, 2:19-cv-396, and 2:19-cv-414
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`in the Eastern District Court of Texas.
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`1
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`attached to this Notice as Exhibit A.
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`IPR2022-00915 of Patent No. 10,257,319
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`In accordance with 37 C.F.R. § 90.2(a)(3)(ii), Patent Owner intends to appeal
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`at least the following issues:
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`i. Whether the Board’s construction of the claim term “client device” was
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`incorrect and/or not reasonable in light of the evidence of record;
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`ii. Whether the Board’s construction of the claim term “second server”
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`was incorrect and/or not reasonable in light of the evidence of record;
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`iii. Whether the Board erred in determining that Petitioner established by
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`a preponderance of the evidence that claims 1 and 21-29 of U.S. Patent
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`No. 10,257,319 (“the ‘319 Patent”) are unpatentable as anticipated by
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`Crowds3;
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`iv. Whether the Board erred in determining that Petitioner established by
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`a preponderance of the evidence that claims 2, 14, 15, and 17-19 of the
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`‘319 Patent are unpatentable as obvious over the combination of
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`3 Michael Reiter & Aviel Rubin, Crowds: Anonymity for Web Transactions, ACM
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`Transactions on Information and System Security, Vol. 1, No. 1 (Nov. 1998) (Ex.
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`1006, “Crowds”).
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`Crowds and RFC 26164;
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`IPR2022-00915 of Patent No. 10,257,319
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`v. Whether the Board erred in determining that Petitioner established by
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`a preponderance of the evidence that claim 12 of the ‘319 Patent is
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`unpatentable as anticipated by Border5; and
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`vi. Whether the Board erred in any further findings or determinations
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`supporting or relating to the issues above, including the Board’s
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`consideration of
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`the expert
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`testimony, prior art, secondary
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`considerations of non-obviousness, and other evidence in the record.
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`Pursuant to 37 C.F.R. § 90.3, this Notice is timely, having been duly filed
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`within 63 days after the date of the Final Written Decision.
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`A complete and entire copy of this Notice is being filed simultaneously with
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`each of the Patent Trial and Appeal Board and the Clerk’s Office for the U.S. Court
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`of Appeals for the Federal Circuit, along with the required fee. A complete and entire
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`copy of this Notice is being served simultaneously on each of the Director of the
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`4 Fielding, et al., RFC 2616, Hypertext Transfer Protocol -- HTTP/1.1, Internet
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`Engineering Task Force, Network Working Group (June 1999) (Ex. 1013, “RFC
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`2616”).
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`5 Border, et al., U.S. Patent No. 6,795,848 B1 (Sep. 21, 2004) (Ex. 1012, “Border”).
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`IPR2022-00915 of Patent No. 10,257,319
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`U.S. Patent and Trademark Office and the petitioner.
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`No fees are believed to be due to the U.S. Patent and Trademark Office in
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`connection with this filing, but authorization is hereby given for any requisite fees
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`to be charged to Deposit Account No. 603803 (Customer No. 144371).
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`Date: September 18, 2023
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`Respectfully submitted,
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`By: /s/ Thomas M. Dunham
`Thomas M. Dunham
`Reg. No. 39,965
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`Cherian LLP
`1901 L Street NW, Suite 700
`Washington, D.C. 20036
`(202) 838-1567
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`ATTORNEY FOR PATENT OWNER,
`BRIGHT DATA LTD.
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`IPR2022-00915 of Patent No. 10,257,319
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`CERTIFICATE OF FILING AND SERVICE
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`The undersigned hereby certifies a complete and entire copy of this paper
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`was served on the undersigned date by hand on the Director of the USPTO at the
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`following address:
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`Office of the General Counsel
`United States Patent and Trademark Office
`Madison Building East, Room 10B20
`600 Dulany Street
`Alexandria, VA 22314
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`
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`The undersigned hereby certifies a complete and entire copy of this paper
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`was filed on the undersigned date with the Clerk’s Office for the United States
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`Court of Appeals for the Federal Circuit and that the required docket fee was paid
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`electronically through the Court’s CM/ECF system.
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`The undersigned hereby certifies a complete and entire copy of this paper
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`was served on the undersigned date via email, as authorized by Petitioner, at the
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`following email addresses:
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`rhuang@mkwllp.com
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`vma@mkwllp.com
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`jbartlett@mkwllp.com
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`5
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`Date: September 18, 2023
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`IPR2022-00915 of Patent No. 10,257,319
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`Respectfully submitted,
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`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
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`ATTORNEY FOR PATENT OWNER,
`BRIGHT DATA LTD.
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`6
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`EXHIBIT A
`EXHIBIT A
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`Trials@uspto.gov
`Tel: 571-272-7822
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`PUBLIC VERSION
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`Paper 51
`Entered: September 15, 2023
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`MAJOR DATA UAB,
`Petitioner,
`v.
`BRIGHT DATA LTD.,
`Patent Owner.
`
`IPR2022-00915
`Patent 10,257,319 B2
`
`
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`Before THOMAS L. GIANNETTI, KEVIN C. TROCK, and
`SHEILA F. McSHANE, Administrative Patent Judges.
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`TROCK, Administrative Patent Judge.
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`
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`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`Granting Motion to Seal and Protective Order
`35 U.S.C. § 318(a); 37 C.F.R. § 42.14
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`IPR2022-00915
`Patent 10,257,319 B2
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`
`INTRODUCTION
`I.
`We have authority to hear this inter partes review under 35 U.S.C.
`§ 6. This Final Written Decision issues pursuant to 35 U.S.C. § 318(a) and
`37 C.F.R. § 42.73. For the reasons discussed herein, we determine that
`Petitioner, Major Data UAB, has shown by a preponderance of the evidence
`that 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”) are unpatentable. See 35
`U.S.C. § 316(e) (2018); 37 C.F.R. § 42.1(d) (2019).
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`II. BACKGROUND
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`A. Procedural History
`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
`of the ’319 patent (the “challenged claims”). Bright Data Ltd.1 (“Patent
`Owner”) filed a Preliminary Response. Paper 12. With authorization from
`the panel, Petitioner filed a Preliminary Reply (Paper 16), and Patent Owner
`filed a Preliminary Sur-reply (Paper 17). Based upon the record at that time,
`we instituted inter partes review on all challenged claims on grounds
`presented in the Petition. Paper 18 (“Institution Decision” or “Dec.”).
`After institution, Patent Owner filed a Response (Paper 30,
`“PO Resp.”), Petitioner filed a Reply (Paper 37, “Pet. Reply”), and Patent
`Owner filed a Sur-reply (Paper 38, “PO Sur-reply”).
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`1 According to Petitioner, Bright Data Ltd. was formerly known as Luminati
`Networks, Ltd. See Pet. 1.
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`2
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`IPR2022-00915
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`On June 9, 2023, an oral hearing was held. A transcript of the hearing
`is made part of the record. See Paper 48.
`B. 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
`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 has been 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
`and ordered for the ’319 and ’510 patents, respectively, Control No.
`90/014,875 and Control No. 90/014,876, and which have been stayed. Paper
`6, 2; IPR2021-01492, Paper 14; IPR2021-01493, Paper 13.
`C. Real Parties-in-Interest
`Petitioner identifies Major Data UAB as the real party-in-interest.
`Pet. 2. Patent Owner “certifies that Bright Data Ltd. is the real party-in-
`interest.” Paper 6, 1. In its Response, Patent Owner does not challenge
`Petitioner’s identification of Major Data UAB as the real party-in-interest.
`See generally PO Resp.
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`Patent 10,257,319 B2
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`D. The ’319 Patent
`The ’319 patent is titled “System Providing Faster and More Efficient
`Data Communication.” Ex. 1001, code (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.
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`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.
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`Acceleration server 162 includes an acceleration server storage device 164
`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.
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`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,
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`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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`E. Illustrative Claim
`The ’319 patent has 29 claims. Claim 1 is the only independent claim
`of the ’319 patent, and is illustrative of the claimed subject matter.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.
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`2 Paragraph references in brackets proposed by Petitioner. See Pet. 25–34.
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`Patent 10,257,319 B2
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`F. Prior Art References and Other Evidence
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`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 relies on the
`Declaration of Tim A. Williams, Ph.D. Ex. 2065 (“Williams Decl.”).
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`IPR2022-00915
`Patent 10,257,319 B2
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`G. Asserted Grounds ofUnpatentability
`Petitioner asserts the following grounds ofunpatentability. Pet. 11.
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`Claim(s) Challenged
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`35 U.S.C. §
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`Reference(s)?
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`MorphMix, RFC 2616
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`1, 19, 21-22, 24-294
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`1, 2, 14, 15, 17-19, 21-29
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`1, 12, 14,21, 22, 24, 25,
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`1, 12, 14, 15, 17-18, 21, 22,
`24, 25, 27-296
`1, 17, 19, 21-29
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`1, 2, 14, 15, 17-19, 21-29
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`Crowds, RFC 2616
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`Border, RFC 2616
`MorphMix
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`3 Petitioner’s obviousnesschallengesadditionally refer to the “[k]nowledge
`of [a person ofordinary skillin theart].” Pet. 11. Weunderstandthis to
`refer toa person ofordinary skill in the art’s understanding ofthe applied
`references and not to supplying missing limitations or incorporating an
`unspecified disclosure by reference to supply missing claim limitations.
`General knowledgein the art, unsupportedby the references, cannot supply
`a missing limitation. See Patent Trial and Appeal Board Consolidated Trial
`Practice Guide 36 (Nov. 2019), available at https://www.uspto.gov/
`TrialPracticeGuideConsolidated.
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`4 We notethat Petitioner’s listing ofthe asserted grounds excludesclaim 23
`for this ground. See Pet. 11. However, Petitioner includes claim 23in its
`analysis ofanticipation based on Crowds(see id. at 35).
`> Becausethe application from which the ’319 patentissued has an earliest
`effective filing date before March 16, 2013 (Ex. 1001, code (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.
`° We notethat Petitioner’s listing ofthe asserted grounds excludesclaim 19
`for this ground. See Pet. 11. However, Petitioner includes claim 19 in its
`analysis ofobviousness based on Border(see id. at 57).
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`IPR2022-00915
`Patent 10,257,319 B2
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`III. 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):
`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).
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`B. Level of Ordinary Skill in the Art
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`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
`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 Ex. 1005 ¶¶ 25–27).
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`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.” PO Resp. 2 (citing Ex. 2065 ¶ 25). Patent
`Owner notes that its analysis does not change under the Board’s preliminary
`assessment of a person of ordinary skill in the art in the Institution Decision,
`wherein Petitioner’s proposed level of qualifications was adopted. Id.; Dec.
`15.
`We regard Petitioner’s more specific definition as consistent with the
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`’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, we adopt Petitioner’s formulation.
`C. Claim Construction
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`Pursuant to 37 C.F.R. § 42.100(b) (2023), we apply the claim
`construction standard as set forth in Phillips v. AWH Corp., 415 F.3d 1303
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`(Fed. Cir. 2005) (en banc). Under Phillips, 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. Id. at 1312–
`13 (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 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”)7, 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
`
`
`7 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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`constructions that were subsequently 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.”
`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. (emphasis omitted); 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 PO Resp. 22–31. We discuss
`Patent Owner’s proposed constructions below.
`Client Device
`1.
`In our Institution Decision, we concurred with the district court’s
`reasoning and agreed with its construction for the claim term “client device”
`as a “communication device that is operating in the role of a client.” Dec.
`17–18.
`In its Response, Patent Owner contends that a person of ordinary skill
`in the art “would understand the term ‘client device’ to mean a ‘consumer
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`computer,’” or alternatively, “would understand the term ‘client device’ to
`mean a ‘consumer communication device.’” PO Resp. 22. Patent Owner
`argues that “[t]hese proposed constructions are consistent with the claim
`language, the specification, and the prosecution histories distinguishing
`client devices and servers.” Id. at 22–23.
`Patent Owner’s proposed construction of the claim term “client
`“device” as a “consumer computer,” however, was previously considered,
`and rejected, by the district court in the Teso Litigation. See, e.g., Ex. 1017,
`10–12. 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., PO Resp. 23–27.
`Patent Owner argues that the district court’s rejection of its proposed
`construction of a “client device” as “consumer computer” is wrong for three
`reasons. Id. at 23–24. First, Patent Owner asserts that, although the district
`court found that there was no express lexicography in the specification, the
`specification states that “computers of consumers” are “referred to herein as
`client devices” and the term “client device” is used in the claims. Id. at 23
`(citing Ex. 1001, 2:44–46). Patent Owner asserts that “the term ‘client
`device’ has a special meaning in the context of the ’319 Patent” and that,
`therefore, upon reading the specification, a person of ordinary skill in the art
`“would understand a ‘client device’ is a consumer computer in the context of
`the ’319 Patent.” PO Resp. 23 (citing Ex. 2065 ¶ 112).
`Second, Patent Owner disagrees with the district court’s finding that
`in the specification the term “consumer” refers to a consumer of content as
`opposed to a broadcaster of content. PO Resp. 24 (citing Ex. 1017, 11).
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`Patent Owner argues, instead, that the common understanding of
`“consumer” is “a person who buys goods or services for their own use” or
`“someone who buys goods or services for personal use.” PO Resp. 24
`(citing Ex. 2007; Ex. 2035, 5; Ex. 2037, 4; Ex. 2065 ¶ 119.
`Third, Patent Owner disagrees with the district court’s finding that the
`term “consumer” does not appear in connection with the description of the
`claimed invention, contending instead that the specification “defines client
`devices as consumer computers.” PO Resp. 24.
`Patent Owner argues that a person of ordinary skill in the art “would
`understand a client device is a ‘communication device’ in the context of the
`specification” and that “a client device is a consumer computer with specific
`software to operate in accordance with the claims.” PO Resp. 25 (citing Ex.
`2065 ¶¶ 113, 114; Ex. 1017; Ex. 1020; Ex. 2006; see also Ex. 1001 at 4:44–
`50; 5:21–29; 9:12–50). Patent Owner argues that “[i]n the context of the
`specification, a client device would be understood to be, more specifically, a
`consumer computer like a laptop, desktop, tablet, or smartphone.” PO Resp.
`25 (citing Ex. 2065 ¶ 118). Patent Owner further argues that a person of
`ordinary skill in the art “would understand that a client device is typically
`portable and easily moved, like, for example, a laptop, desktop, tablet or
`smartphone.” PO Resp. 26 (citing Ex. 2065 ¶ 122).
`Patent Owner also argues that a person of ordinary skill in the art
`would understand that a client device is typically understood (a)
`to be regularly switched off and taken offline; (b) to be capable
`of processing only a limited number of requests at any given
`time, which may for example include a single user login; and/or
`(c) to have lesser fault tolerance, lesser reliability, and lesser
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`scalability, prioritizing value to client device users over system
`costs. EX.2065 at ¶123.
`PO Resp. 27. “These client device-attributes,” Patent Owner argues,
`“distinguish a client device from a server.” Id.
`Patent Owner argues that a person of ordinary skill in the art “would
`understand there are structural differences between client devices and
`servers in the context of the specification and there is no contradictory
`disclosure in the specification or in the prosecution histories.” Id. (citing Ex.
`2065 ¶ 126). “Rather,” Patent Owner argues, “client devices are repeatedly
`distinguished from servers in the specification and the prosecution
`histories.” PO Resp. 27.
`We have considered Patent Owner’s evidence and arguments that the
`district court’s construction of the claim term “client device” is incorrect.
`For the reasons discussed below, however, we determine that the evidence of
`record supports the district court’s construction of the term “client device” as
`a “communication device that is operating in the role of a client” that we
`adopted in our Institution Decision and continue to apply here. Conversely,
`we find that the evidence does not support Patent Owner’s view that a
`“client device” is a “consumer computer,” or alternatively, a “consumer
`communication device,” where the “client device” cannot be a server.
`Claim Language
`a)
`Under Phillips, we begin with the language of the claims themselves.
`See Phillips, 415 F.3d at 1314. In claim 1, the method is for use with a “first
`client device.” In step 1[b], the first client device, “send[s], to the first
`server over the Internet, a Hypertext Transfer Protocol (HTTP) request that
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`comprises the first content identifier,” which serves to request content from
`the first server (web server). See Ex. 1001, 19:24–26. In step 1[b], the first
`client device is acting as a client in requesting content. In step 1[d], the first
`client device “send[s], the first content by the first client device to the
`second server, in response to the receiving of the first content identifier.”
`See id. at 19:30–32. In step 1[d], the first client device is acting as a server
`to forward content.
`The parties address the issue that the “first client device” acts in
`differing roles in claim 1. Petitioner asserts that the claim’s required
`functionality is consistent with the district court’s determinations on the
`role-based nature of the term and the specification. Pet. Reply 13– 16.
`Patent Owner agrees that under a role-based construction, “a client device
`may operate in the role of a server at some points in time.” PO Resp. 25.
`According to Petitioner, in district court Patent Owner “affirmatively
`argued in its claim-construction brief that the claimed ‘second server’
`mapped to the Client 102 role (in green) and the ‘client device’ mapped to
`the Agent 122 role (in red), per PO’s annotated Figure 3” confirming a role-
`based construction. Pet. Reply 14–15 (citing Ex. 1126, 8; Ex. 1004, 19–20).
`Patent Owner’s annotated version of Figure 3 of the ’319 patent is shown
`below.
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`As shown above, Patent Owner’s annotated Figure 3 of the ’319
`patent, presented in the district court litigation, equates the claimed “first
`client device” (shown in red) to agent 122, which sends the first content
`identifier to the web server (arrow C), receives content requested from the
`web server (arrow D), and sends that content to client 102 (the second
`server) (arrow E). Ex 1126, 4. Thus, under this understanding, the “first
`client device” (agent 122) is acting as a client when it sends the first content
`identifier to the web server and receives content in response, and is acting as
`a server when it sends content to client 102 in response to a request for the
`content from client 102. This reflects a role-based interpretation of the claim
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`terms; different devices are defined by their function and can be either
`clients or servers depending on the function they perform.
`Patent Owner argues that “the district court briefing was taken out of
`context and merely used to illustrate the lines of communication.” PO Sur-
`reply 9, n.4
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