Paper 20
`Trials@uspto.gov
`571-272-7822 Entered: December 12, 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.
`____________
`
`IPR2022-01109
`Patent 10,257,319 B2
`____________
`
`
`
`Before THOMAS L. GIANNETTI, SHEILA F. McSHANE, and
`RUSSELL E. CASS, Administrative Patent Judges
`
`GIANNETTI, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`Denying Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. § 42.122
`
`
`
`Trials@uspto.gov
`571-272-7822 Entered: December 12, 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.
`____________
`
`IPR2022-01109
`Patent 10,257,319 B2
`____________
`
`
`
`Before THOMAS L. GIANNETTI, SHEILA F. McSHANE, and
`RUSSELL E. CASS, Administrative Patent Judges
`
`GIANNETTI, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`Denying Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. § 42.122
`
`
`
`
`IPR2022-01109
`Patent 10,257,319 B2
`
`
`I. INTRODUCTION
`Code200, UAB; Teso LT, UAB; Metacluster LT; UAB, Oxysales;
`UAB; and coretech LT, UAB (collectively, “Petitioner” or “Code200”) filed
`a Petition for inter partes review of claims 1–29 of U.S. Patent No.
`10,257,319 B2 (Ex. 1001, “the ’319 patent”). Paper 1 (“Pet.”). Bright Data,
`Ltd. (“Patent Owner”) filed a Preliminary Response (Paper 16, “Prelim.
`Resp.”), Petitioner filed a Reply to the Preliminary Response (Paper 17), and
`Patent Owner filed a Sur-reply (Paper 19).
`With the Petition, Petitioner filed a Motion for Joinder with The Data
`Company. v. Bright Data Ltd., IPR2022-00135 (“the 135 IPR”). Paper 7
`(“Joinder Mot.”). Patent Owner filed an Opposition to the Joinder Motion
`(Paper 13, “Joinder Opp.”) and Petitioner filed a Reply to Patent Owner’s
`Joinder Opposition (Paper 14, “Joinder Reply”).
`In addition to opposing joinder, Patent Owner also presents arguments
`on the merits and for discretionary denial of the Petition under Fintiv1 and
`General Plastic.2 See, generally, Prelim. Resp. 5–11 (General Plastic), 12–
`17 (Fintiv), and 49–68 (merits).
`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.” However, under 35 U.S.C. § 315(b),
`
`
`1 Apple Inc. v. Fintiv Inc., IPR2020-00019, Paper 11 (PTAB March 20,
`2020) (precedential) (“Fintiv”).
`2 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”).
`
`2
`
`
`
`IPR2022-01109
`Patent 10,257,319 B2
`
`“[a]n inter partes review may not be instituted if the petition requesting the
`proceeding is filed more than 1 year after the date on which the petitioner,
`real party in interest, or privy of the petitioner is served with a complaint
`alleging infringement of the patent.” Section 315(b) of 35 U.S.C. further
`provides that “[t]he time limitation set forth in the preceding sentence shall
`not apply to a request for joinder under subsection (c).”
`We have authority to consider Petitioner’s joinder motion under
`35 U.S.C. § 315(c), which provides that “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. Furthermore, we deny the Petition as time-barred under 35 U.S.C.
`§ 315(b). We do not reach Patent Owner’s additional contentions including
`those based on Fintiv or General Plastic.
`
`II. BACKGROUND
`
`A. Related Matters
`The ’319 patent is currently the subject of four proceedings pending
`before the USPTO and numerous proceedings in district court. We discuss
`those proceedings in Section III.A, infra.
`
`B. Real Parties-in-Interest
`Petitioner identifies Code200, UAB; Teso LT, UAB; Metacluster LT;
`UAB; Oxysales, UAB; and coretech LT, UAB as the real parties-in-interest.
`Pet. xiii.
`
`3
`
`
`
`IPR2022-01109
`Patent 10,257,319 B2
`
`
`Patent Owner identifies Bright Data Ltd. as the real party-in-interest.
`Paper 12, 1.
`
`C. The ’319 Patent
`The ’319 patent is titled “System Providing Faster and More Efficient
`
`Data Communication.” Ex. 1001, (54). The ’319 patent describes a system
`and method “for faster and more efficient data communication within a
`communication network.” Id. at 4:41–44; Fig. 3.
`
`D. Prior Art References
`Petitioner relies principally on Plamondon3 in all grounds of its
`
`challenge. Pet. 3.
`
`III. PETITIONER’S MOTION FOR JOINDER
`
`A. Introduction
`The Petition in this proceeding is a “me-too” petition asserting the
`
`same grounds of unpatentability as those upon which we instituted review in
`the 135 IPR filed by The Data Company. Pet. 2. As noted supra, Petitioner
`has moved to join the 135 IPR. Joinder Mot. 1. Petitioner asserts that “[t]he
`present Petition concerns the same patent and the same claims as the [135
`IPR].” Id. at 2. Petitioner further argues that “[t]he present Petition and
`supporting expert declaration are substantively identical to the [135 IPR]
`petition and expert declaration.” Id. Petitioner agrees to take an
`“understudy” role if joined, thus contending that “[j]oinder will not cause
`any delay in the resolution of the [135 IPR].” Id.
`
`
`3 U.S. Patent Application Publication US 2008/0228938 A1, published
`September 18, 2008 (Ex. 1010).
`
`4
`
`
`
`IPR2022-01109
`Patent 10,257,319 B2
`
`Patent Owner opposes the joinder motion. See Joinder Opp. Patent
`
`Owner asserts that Petitioner was sued for infringement of the ’319 patent in
`December 2019, and therefore, “[w]ithout joinder, the petition is time-barred
`under 35 U.S.C. § 315(b).” Id. at 1. Patent Owner argues that the Petition is
`“the [t]hird Code200 IPR Petition challenging the ’319 Patent.” Id. Patent
`Owner asserts that “Petitioners have now filed three IPRs, requested 1
`reexamination, and conducted 1 jury trial as to the ’319 Patent.” Id. at 1–2.
`
`Patent Owner contends that Petitioner continues to “harass” Patent
`Owner by “establishing a pattern of behavior where they are/will be
`attempting to join any instituted proceeding against any Bright Data patent
`without regard to justice.” Id. at 10–11.
`
`For the reasons that follow, we deny the motion for joinder. We
`therefore do not reach the other issues raised by Patent Owner as we
`determine that absent joinder, the Petition is time-barred under 35 U.S.C.
`§ 315(b).
`
`B. Background
`As noted infra, the ’319 patent is currently the subject of several
`
`proceedings before the USPTO and in district court. All told, there are
`currently three IPRs, one ex parte reexamination, and one district court
`proceeding already pending involving challenges to the ’319 patent.
`
`Petitioner is involved in the pending district court proceeding and one
`of the three IPRs. Another of these proceedings is the 135 IPR, which
`Petitioner seeks to join as a party in the motion that is before us.
`
`We summarize those proceedings in the following sections.
`
`5
`
`
`
`IPR2022-01109
`Patent 10,257,319 B2
`
`
`1. Teso District Court Litigation
`The parties indicate that there are several related district court
`litigations involving the ’319 patent, including, most particularly, Bright
`Data Ltd. v. Teso LT, UAB, 2:19-cv-00395-JRG (E.D. Tex.) (“the Teso
`Litigation”). Pet. xiv; Paper 12, 3.
`
`In the Teso Litigation, Bright Data Ltd., Patent Owner, sued Teso LT,
`as well as other members of the petitioner group here (Metacluster LT,
`UAB, and Oxysales, UAB) for infringement of the ’319 patent, among other
`patents. Joinder Mot. 2.
`At trial, the issue of whether claims 1 and 26 of the ’319 patent are
`invalid was presented to the jury. Id. at 3. On November 5, 2021, the jury
`found that that the defendants did not prove that these claims were invalid by
`clear and convincing evidence. Id.; Ex. 1080, 5. Currently, the Teso
`litigation is stayed. Joinder Mot. 3.
`
`2. The Ex Parte Patent Reexamination
`The ’319 patent is the subject of an ex parte reexamination, Control
`No. 90/014,875, requested by Petitioner, which has been stayed. Joinder
`Mot. 4–5; Paper 18, 2.
`
`3. 1492 IPR
`On September 3, 2021, NetNut Ltd. filed a petition seeking inter
`partes review of the ’319 patent. IPR2021-01492 (“the 1492 IPR”), Paper 2.
`
`6
`
`
`
`IPR2022-01109
`Patent 10,257,319 B2
`
`
`Petitioner’s principal references were Crowds,4 Border,5 and
`MorphMix.6 1492 IPR, Paper 2 at 10.
`On March 21, 2022, we instituted 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.
`
`The 1492 IPR petition was the first that we granted for inter partes
`review of the ’319 patent.7 After institution, Patent Owner reached a
`settlement with NetNut, and as a result, on May 27, 2022, NetNut was
`terminated as petitioner in the 1492 IPR. 1492 IPR, Paper 20. The 1492
`IPR proceeding, however, was not terminated. Instead, as is discussed in the
`immediately following section, Code200 was joined as a party to the 1492
`IPR and is now the only petitioner left in the case.
`
`4. 861 IPR
`On April 18, 2022, Petitioner filed a “me-too” petition in IPR2022-
`
`00861 (“the 861 IPR”), asserting the same grounds of unpatentability based
`on Crowds, Border, and MorphMix, the references upon which we instituted
`review in the 1492 IPR. See 861 IPR, Paper 1, 2–3. With the petition,
`Petitioner filed a motion to join the 1492 IPR. Id., Paper 7.
`
`
`4 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”).
`5 U.S. Patent No. 6,795,848 B1 (Sep. 21, 2004) (Ex. 1012, “Border”).
`6 Marc Rennhard, MorphMix – A Peer-to-Peer-based System for Anonymous
`Internet Access (2004) (Ex. 1008, “MorphMix”).
`7 A previous petition filed by Petitioner challenging certain claims of the
`’319 patent was denied on discretionary grounds. Joinder Mot. 4; Paper 18,
`1; Joinder Opp. 4. IPR2020-01266, Paper 18.
`7
`
`
`
`IPR2022-01109
`Patent 10,257,319 B2
`
`On October 19, 2022, the panel in the 861 IPR issued a decision
`
`granting institution of inter partes review in the 861 IPR and granting
`Petitioner’s motion to join the 1492 IPR. 861 IPR, Paper 19.8
`
`Because NetNut, the sole petitioner in the 1492 IPR, had been
`terminated (see supra), the effect of this joinder was to place Petitioner in
`control of the 1492 IPR.
`
`5. 135 IPR
`On November 3, 2021, The Data Company Technologies Inc. filed a
`
`petition in the 135 IPR, challenging certain claims of the ’319 patent based
`on the Plamondon reference. See supra, Section I. On June 1, 2022, we
`granted the petition and instituted a second inter partes review of the ’319
`patent. 135 IPR, Paper 12.
`
`7. 915 IPR
`Major Data UAB filed a petition challenging the ’319 patent on April
`21, 2022. IPR2022-00915, Paper 1. Major Data also sought joinder with
`the 1492 IPR. Id., Paper 3. On July 29, 2022, we denied the motion for
`joinder. Id., Paper 14. However, as Major Data was not time-barred under
`35 U.S.C. § 315(b), on September 15, 2022, we granted the petition and
`instituted a third inter partes review of the ’319 patent. Id., Paper 18.
`
`
`8 The Director of the U.S. Patent and Trademark Office, sua sponte, vacated
`the panel’s initial decision denying institution and remanded the proceeding
`to the panel for reconsideration. 861 IPR, Paper 18. On remand, the panel
`granted the motion for joinder and instituted inter partes review. Id., Paper
`19. The panel has denied Patent Owner’s request for rehearing of that
`decision. Id., Paper 25.
`
`8
`
`
`
`IPR2022-01109
`Patent 10,257,319 B2
`
`
`C. Discussion
`Joinder may be authorized when warranted, but the decision to grant
`
`joinder is discretionary. Kyocera Corp. v. Softview LLC, IPR2013-00004,
`Paper 15 at 3 (PTAB Apr. 24, 2013); Consolidated Trial Practice Guide 76
`(Nov. 2019) (“TPG” ).9 For the reasons that follow, we determine that
`Petitioner has not shown that joinder is warranted under the circumstances of
`this case and we therefore exercise our discretion to deny Petitioner’s
`Motion for Joinder.
`
`In considering Petitioner’s joinder motion, Patent Owner urges us to
`consider the fact that, absent joinder, Petitioner is time-barred from this
`challenge. Joinder Opp. 7. Our Trial Practice Guide cautions that “when an
`otherwise time-barred petitioner requests same party and/or issue joinder,
`the Board may exercise its discretion to permit joinder, but will do so only
`where fairness requires it and to avoid undue prejudice to a party.” TPG, at
`75–76 (citing Proppant Express Invs. v. Oren Techs., IPR2018-00914, Paper
`38 at 3–4 (PTAB Mar. 13, 2019) (precedential)).
`
`Patent Owner asserts also that Petitioner has “missed [the] opportunity
`to challenge the ’319 patent based on Plamondon.” Joinder Opp. 7–9.
`Patent Owner argues that Petitioner “should have been aware of the
`Plamondon reference before the First Code200 IPR Petition was filed on
`7/14/20.” Id. at 9.
`
`Patent Owner opposes joinder also on the ground that Petitioner has
`taken “inconsistent positions” on Plamondon, and that Petitioner’s actions
`“continue to harass” Patent Owner. Id. at 9–11. In support of its
`
`
`9 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`9
`
`
`
`IPR2022-01109
`Patent 10,257,319 B2
`
`“harassment” argument, Patent Owner points to the Teso Litigation, and to
`previous requests for inter partes reviews filed by Petitioner where joinder
`was denied as “unduly prejudicial and not in the interest of justice.” See
`IPR2021-01502, Paper 13, 9; see also IPR2021-01503, Paper 13, 8.
`
`Petitioner does not deny its previous activities challenging the ’319
`patent. Joinder Reply 1–2. Petitioner acknowledges also the pendency of
`other challenges to the ’319 patent including the 1492 IPR (involving
`Crowds, Border, and MorphMix) brought by NetNut, and the 135 IPR
`(involving Plamondon), brought by The Data Company. Id. at 1.
`
`Petitioner responds by repeating that Petitioner seeks only an
`“understudy role” in this case. Id. at 3. Petitioner explains it has not used
`the prior decisions to craft new arguments (“no roadmap exists”) because the
`Petition here copies the petition filed by The Data Company and therefore
`“does not introduce any new arguments and evidence.” Id.
`
`Petitioner responds further that it “could not have reasonably learned
`of [Plamondon’s] existence” before filing of the 135 IPR by The Data
`Company. Id. Petitioner denies that its position on claim construction has
`been inconsistent, and contends that granting joinder would not “risk
`inconsistent outcomes” because the primary prior art (i.e., Plamondon) does
`not overlap with Petitioner’s prior petitions or the Texas litigation. Id. at 4–
`5.
`But Petitioner’s main argument is that if joinder is granted and inter
`
`partes review is instituted, “it will represent Petitioner’s first and only IPR
`directed to the ’319 patent that will have been instituted.” Joinder Reply 2.
`
`While we are not persuaded that Petitioner’s actions were intended to
`“harass” Patent Owner, or that Petitioner has engaged in “road-mapping,”
`
`10
`
`
`
`IPR2022-01109
`Patent 10,257,319 B2
`
`we recognize that the timing of Petitioner’s challenges to the ’319 patent,
`and our rulings on those challenges, impact our decision on whether to grant
`joinder here. Since the filing of the Petition, we have granted the petition in
`the 861 IPR and joined Code200 to the 1492 IPR, where it is now the sole
`petitioner. Thus, Petitioner’s principal argument for joinder, that this inter
`partes review, if instituted, “will represent Petitioner’s first and only IPR
`directed to the ’319 patent that will have been instituted,” is now incorrect,
`because we have granted Petitioner’s request to join the 1492 IPR, which
`Petitioner will now control due to the NetNut settlement.
`
`Our Consolidated Trial Practice Guide provides guidance on handling
`situations involving multiple petitions by a single petitioner challenging the
`same patent claims:
`Based on the Board’s experience, one petition should be
`sufficient to challenge the claims of a patent in most situations.
`. . . . In addition, multiple petitions by a petitioner are not
`necessary in the vast majority of cases. To date, a substantial
`majority of patents have been challenged with a single petition.
`
`TPG 59 (emphasis added). The Trial Practice Guide continues: “Further,
`based on prior experience, the Board finds it unlikely that circumstances will
`arise where three or more petitions by a petitioner with respect to a
`particular patent will be appropriate.” Id. (emphases added).
`
`While recognizing that multiple petitions by the same petitioner will
`be “rare,” the Trial Practice Guide provides a set procedure to follow when
`more than one petition is deemed necessary. Id. at 59–60. That procedure
`involves the petitioner providing “(1) a ranking of the petitions in the order
`in which it wishes the Board to consider the merits, if the Board uses its
`discretion to institute any of the petitions, and (2) a succinct explanation of
`
`11
`
`
`
`IPR2022-01109
`Patent 10,257,319 B2
`
`the differences between the petitions, why the issues addressed by the
`differences are material, and why the Board should exercise its discretion to
`institute additional petitions if it identifies one petition that satisfies
`petitioner’s burden under 35 U.S.C. § 314(a).” Id. at 60.
`While not specifically referring to a joinder request,10 the Trial
`
`Practice Guide instructs us that a party seeking to maintain multiple
`challenges to the same patent claims carries a heavy burden of establishing
`that multiple petitions are necessary. Petitioner contends that Patent Owner
`has not carried that burden. Joinder Opp. 1. We agree. Petitioner has not
`explained why the 1492 IPR is an insufficient challenge.
`
`It is true that the 135 IPR involves Plamondon, another reference. But
`Petitioner has not explained how Plamondon differs from Crowds, Border,
`or MorphMix, or why granting joinder with the 135 IPR would be in the
`interest of justice, given Petitioner’s involvement managing the1492 IPR
`challenging substantially the same claims. In the words of our Trial
`Practice Guide, Petitioner fails to show “why the Board should exercise its
`discretion to institute additional petitions if it identifies one petition that
`satisfies petitioner’s burden under 35 U.S.C. § 314(a).” TPG 60.
`
`We see no evidence in the record suggesting that The Data Company
`is unqualified to manage the 135 IPR, or that Petitioner would add anything
`significant to that proceeding in its understudy role.
`
`As for the possibility that The Data Company, like NetNut, might
`reach a settlement with Patent Owner and move to terminate the 135 IPR,
`
`
`10 By joining the 1492 IPR, Petitioner is deemed to have filed a petition
`previously directed to the same patent. Valve Corp. v. Elect. Scripting
`Prods. Inc., IPR2019-00064, Paper 10 at 10 (PTAB May 1, 2019).
`12
`
`
`
`IPR2022-01109
`Patent 10,257,319 B2
`
`we regard this as speculation. In any case, if such a settlement were to occur
`and the Board were to terminate the 135 IPR, Petitioner would still control
`the 1492 IPR, and Petitioner does not explain why the 1492 IPR would not
`be sufficient to assure that the merits of the ’319 patent were properly tested.
`See 861 IPR Paper 18, 6 (Director’s Decision, stressing “the Board’s mission
`‘to improve patent quality and restore confidence in the presumption of
`validity that comes with issued patents,’” quoting Cuozzo Speed Techs., LLC
`v. Lee, 579 U.S. 261, 272 (2016)).
`
`D. Conclusion
`For the foregoing reasons, we deny Petitioner’s Motion for Joinder.
`
`We determine that Petitioner has not demonstrated that the interest of justice
`would be served by permitting Petitioner to join the 135 IPR.
`
`III. DENIAL OF INTER PARTES REVIEW
`It is undisputed that Petitioner was served with a complaint alleging
`
`infringement of the ’319 patent more than one year prior to filing the
`Petition in this proceeding. See Joinder Mot. 2; Joinder Opp. 1.
`Accordingly, in view of the denial of the requested relief of joinder with the
`135 IPR, institution of inter partes review as requested by Petitioner is
`barred by statute. See 35 U.S.C. § 315(b); 37 C.F.R. § 42.101(b).
`
`IV. CONCLUSION
`For the foregoing reasons, we deny Petitioner’s Motion for Joinder.
`
`Because Petitioner is barred under 35 U.S.C. § 315(b) from seeking inter
`partes review of the ’319 patent, we deny the Petition and do not institute
`review as to any of the challenged claims.
`
`
`13
`
`
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`IPR2022-01109
`Patent 10,257,319 B2
`
`
`V. ORDER
`
`
`
`Accordingly, it is:
` ORDERED that the Motion for Joinder is denied; and
`FURTHER ORDERED that the Petition is denied as to all challenged
`
`claims and grounds and no trial is instituted.
`
`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@cherianllp.com
`elizabetho@cherianllp.com
`
`
`
`
`14
`
`
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