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`U.S. Patent No. 10,257,319
`Inter Partes Review
`Petitioners’ Motion to Terminate and Dismiss Petition
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`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,
`Petitioners,
`
`v.
`
`BRIGHT DATA LTD.,
`Patent Owner.
`____________
`
`Inter Partes Review No. IPR2023-00038
`Patent No. 10,257,319
`____________
`
`PETITIONERS’ UNOPPOSED MOTION TO TERMINATE AND
`DISMISS INTER PARTES REVIEW OF U.S. PATENT 10,257,319
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`I.
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`
`INTRODUCTION
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`The Board authorized Petitioners Code200, UAB, Teso LT, UAB, Metaclus-
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`ter LT, UAB, Oxysales, UAB, and coretech LT UAB (collectively, “Petitioners”) to
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`file the present motion to dismiss the IPR petition and terminate IPR2023-00038
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`regarding U.S. Patent No. 10,257,319 (the “’319 patent”). Patent Owner does not
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`oppose this Motion.
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`The present petition is substantively identical to IPR2021-01492 (the “NetNut
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`IPR”) challenging the same patent on the same grounds, which the Board instituted
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`and to which Petitioners were joined.1 Patent Owner filed a Request for Rehearing
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`of the Board’s joinder decision, and the Board recently denied that request. IPR2022-
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`00861, Paper 25.
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`As such, Petitioners and Patent Owner are presently parties to two IPRs chal-
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`lenging the same patent on the same grounds. The present petition is in its
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`1 When Petitioners filed the instant petition, the Board had not joined Petition-
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`ers to the NetNut IPR. Once the Board joined Petitioners to the NetNut IPR, Peti-
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`tioners advised Patent Owner of Petitioners’ intention to seek dismissal of the instant
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`IPR. Patent Owner originally opposed dismissal, in view of its Motion for Rehearing
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`in the NetNut IPR. With its Motion for Rehearing in the NetNut IPR denied, Patent
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`Owner no longer opposes the instant motion to dismiss.
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`1
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`preliminary phase. Patent Owner has not filed a Preliminary Response and the Board
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`has yet to reach the merits and issue a decision on institution. In interest of judicial
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`economy and to conserve the parties’ and the Board’s resources, Petitioners move
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`to terminate the present petition and dismiss IPR2023-00038, as the present petition
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`and IPR2023-00038 are no longer necessary in view of the NetNut IPR, in which
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`Petitioners are now lead petitioners.
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`II. BACKGROUND AND PROCEDURAL HISTORY
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`A. Related Litigation
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`Patent Owner asserts claims 1 and 26 of the ’319 patent against Teso LT,
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`UAB, Metacluster LT, UAB, and Oxysales, UAB1(collectively, “Oxylabs”)2 in a
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`lawsuit styled Bright Data Ltd. v. Teso LT, UAB et al., 2:19-cv-00395-JRG (E.D.
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`Tex.) filed on December 6, 2019 (the “District Court Action”). The jury returned a
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`verdict answering “no” to the question “[d]id Oxylabs prove by clear and convincing
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`evidence any of the following Asserted Claims [1 and 26] are invalid?” See Ex. 1024,
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`District Court Action, Jury Verdict Form, ECF No. 516 at 5.
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`
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`1
`2 Certain of the Petitioners recently underwent a reorganization whereby Meta-
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`cluster LT, UAB and Oxysales, UAB were merged into Teso LT, UAB and Teso
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`LT, UAB changed its name to Oxylabs, UAB.
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`2
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`
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`On December 15, 2021, the district court stayed the District Court Action to
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`allow for mediation. Ex. 1026, ECF No. 543. On September 21, 2022, the district
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`court lifted the stay after mediations ended in impasse. Ex. 1027, ECF No. 601. The
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`district court has not yet entered a post-verdict scheduling order.
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`B.
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`Inter Partes Reviews
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`Previously, Petitioners filed a petition styled Code200, UAB, et al. v. Luminati
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`Networks Ltd. [now Bright Data Ltd.], IPR2020-01266 (the “First Code200 IPR”)
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`on July 14, 2020, challenging certain claims of the ’319 patent. See First Code200
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`IPR, Paper 5. On December 23, 2020, the Board denied the First Code200 Petition
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`solely based on discretionary grounds in view of the pending District Court Action.
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`See id., Paper 18 (citing Apple Inc. v. Fintiv Inc., IPR2020-00019, Paper 11 (PTAB
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`Mar. 20, 2020)).
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`Following the discretionary denial of the First Code200 Petition, on October
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`7, 2021, Teso LT, UAB requested Ex Parte Reexamination of the ’319 patent, EPR
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`No. 90/014,875 (the “’319 EPR”). On November 12, 2021, the Patent Office found
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`a substantial new question of patentability with respect to the challenged claims. On
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`March 25, 2022, the Patent Office issued a Non-Final Office Action rejecting those
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`claims. Ex. 1029. On April 7, 2022, the PTAB stayed the ’319 EPR pending the
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`termination or completion of IPR2021-01492 (the “NetNut IPR,” discussed directly
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`below). See NetNut IPR, Paper 14.
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`3
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`On September 3, 2021, NetNut Ltd. filed the NetNut IPR, requesting cancel-
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`lation of certain claims of the ’319 patent. See NetNut IPR, Paper 2. On March 21,
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`2022, the Board instituted the NetNut IPR as to all challenged claims and entered a
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`Scheduling Order. Id., Papers 12 and 13. Petitioners in the present Petition filed a
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`petition and motion for joinder to the NetNut IPR. See IPR2022-00861 (“Second
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`Code200 IPR”), Paper 7.
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`On July 25, 2022, the Board denied institution of the Second Code200 IPR
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`and denied joinder with the NetNut IPR. Second Code200 IPR, Paper 16. The Board
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`determined that the factors articulated in General Plastic weighed in favor of exer-
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`cising discretion to deny institution under 35 U.S.C. § 314(a). Id. at 10-11. On Au-
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`gust 23, 2022, Director Vidal sua sponte vacated the Board’s decision denying in-
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`stitution of the Second Code200 IPR and remanded to the Board for further proceed-
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`ings. NetNut IPR, Paper 18 (“Vidal Dec.”). The Board then granted Petitioners’ Mo-
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`tion for Joinder and instituted the Petition on October 19, 2022. See Second Code200
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`IPR, Paper 19. Patent Owner filed a Request for Rehearing (Paper 22), which the
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`Board recently denied. Id., Paper 25.
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`On November 3, 2021, The Data Company Technologies Inc. filed a petition
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`for IPR challenging certain claims of the ’319 patent based on prior art not cited in
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`the present IPR. See IPR2022-00135 (“TDC IPR”), Paper 2. The Board instituted
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`the TDC IPR on June 1, 2022. Id., Paper 12. Petitioners filed IPR2022-01109 (the
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`4
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`
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`“Third Code200 IPR”) and motion for joinder to the TDC IPR. The Board recently
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`denied joinder with respect to the Third Code200 IPR and dismissed the petition.
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`Id., Paper 20.
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`On April 21, 2022, Major Data UAB filed a petition for IPR challenging cer-
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`tain claims of the ’319 patent. See IPR2022-00915 (“Major Data IPR”), Paper 1.
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`Major Data also moved to join the NetNut IPR. Id., Paper 3. The Board denied Major
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`Data’s Motion for Joinder (Paper 14), and instituted the Major Data IPR as to all
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`challenged claims on all grounds because “there is a reasonable likelihood that Peti-
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`tioner would prevail with respect to at least one of the claims challenged in the Pe-
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`tition.” Id., Paper 18.
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`Along with a Motion for Joinder, Petitioners filed the present “copycat” Peti-
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`tion to join the Major Data IPR. IPR2023-00038 (“Fourth Code200 IPR”), Papers 7
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`and 13. The present Petition is substantially identical to the Petition filed in the
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`NetNut IPR, which the Board permitted Petitioners to join. See NetNut IPR, Paper
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`19. Thus, to preserve the Board’s and the parties’ resources, and because the present
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`Petition is no longer necessary (in view of the NetNut IPR that Petitioners are now
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`lead petitioners in), Petitioners move to dismiss the present Petition and terminate
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`the Fourth Code200 IPR.
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`5
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`III. ARGUMENT
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`Good cause exists to dismiss Petitioners’ IPR Petition and terminate the
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`Fourth Code200 IPR. Termination would preserve the Board’s and the parties’ re-
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`sources, furthering the purpose of IPR challenges. See 37 C.F.R. § 42.1(b). The pre-
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`sent IPR is substantively identical to the NetNut IPR, to which Petitioners have been
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`joined and which will continue. Further, the present IPR is in its preliminary stage
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`as Patent Owner has not yet filed its Patent Owner’s Preliminary Response and the
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`Board has not yet reached the merits or issued a decision on institution. Patent Owner
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`would not be prejudiced by termination and does not oppose the present Motion.
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`The Board “may take up petitions or motions for decisions in any order, [and]
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`may grant, deny, or dismiss any petition or motion” (37 C.F.R. § 42.71(a)) and “may
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`terminate a trial without rendering a final written decision, where appropriate.” 37
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`C.F.R. § 42.72. The Rules governing IPR proceedings “shall be construed to secure
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`the just, speedy, and inexpensive resolution of every proceeding.” 37 C.F.R. §
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`42.1(b). In determining whether a termination request is “appropriate,” the Board
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`has looked primarily to the stage of the proceedings. See, e.g., Staylinked Corp. v.
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`Ivanti, Inc., IPR2021-00022, Paper 10 (PTAB Feb. 4, 2021).
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`The Board will have to expend additional and unnecessary resources if it were
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`to decline to terminate the present IPR. Instead, termination here will reduce the
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`overall burden of this dispute on the Board. Termination is also a just resolution, as
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`6
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`Patent Owner does not oppose the Motion and will not be prejudiced by this Board
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`terminating the Fourth Code200 IPR.
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`IV. CONCLUSION
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`For these reasons, Petitioners respectfully request that the Board dismiss the
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`IPR petition and terminate IPR2023-00038.
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`Dated: December 14, 2022
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`
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`Respectfully submitted,
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`CHARHON CALLAHAN ROBSON &
`GARZA, PLLC
`
`
`/John C. Heuton/
`
`George “Jorde” Scott (Reg. No. 62,859)
`(Lead Attorney for Petitioners)
`John C. Heuton (Reg. No. 62,467)
`Craig Tolliver (Reg. No. 45,975)
`3333 Lee Parkway, Suite 460
`Dallas, TX 75219
`(214) 521-6400
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`7
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`CERTIFICATE OF SERVICE
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`The above Motion was served via e-mail on December 14, 2022 on Patent
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`Owner’s U.S. counsel in the present IPR and pending litigation concerning the ’319
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`patent as follows:
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`Tom Dunham
`Cherian LLP
`901 L Street NW, Suite 700
`Washington, DC 20036
`tomd@cherianllp.com
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`The above Motion was also served via e-mail on December 14, 2022 on Peti-
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`tioners’ counsel in Major Data UAB v. Bright Data Ltd., IPR2022-00915:
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`Liang Huang
`Mauriel, Kapouytian Woods LLP
`450 Sansome Street, Suite 1005
`San Francisco, California 94111
`rhuang@mkwllp.com
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`
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`Date: December 14, 2022
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`
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`CHARHON CALLAHAN ROBSON &
`GARZA, PLLC
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`
`
`/John C. Heuton/
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`John C. Heuton (Reg. No. 62,467)
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`8
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