DCT
2:18-cv-00299
Luminati Networks Ltd v. UAB Tesonet
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Luminati Networks Ltd. (Israel)
- Defendants: UAB Tesonet and UAB Metacluster LT (Lithuania)
- Plaintiff’s Counsel: Capshaw DeRieux, LLP; RuyakCherian LLP
- Case Identification: 2:18-cv-00299, E.D. Tex., 07/23/2019
- Venue Allegations: Venue is alleged to be proper because Defendants are foreign entities, and they have allegedly conducted business in Texas, placed infringing software into the stream of commerce with the intent it be used in Texas, and derived revenue from services provided in Texas.
- Core Dispute: Plaintiff alleges that Defendants’ residential proxy and web-crawling services infringe patents related to methods for improving internet communication by fetching content through intermediate network nodes.
- Technical Context: The technology relates to peer-to-peer and proxy networks that route internet traffic through intermediate user devices to accelerate content delivery, provide anonymity, or enable large-scale data gathering.
- Key Procedural History: The complaint alleges that Plaintiff provided Defendant with notice of the ’044 Patent on June 1, 2017, and the ’866 Patent on February 14, 2018, prior to the initial complaint filing. The complaint also alleges that after the initial filing, Defendants launched a public campaign offering a bounty for prior art to invalidate Plaintiff's patents.
Case Timeline
| Date | Event |
|---|---|
| 2013-08-28 | Earliest Priority Date for ’044 and ’866 Patents |
| 2016-01-19 | U.S. Patent No. 9,241,044 Issues |
| 2017-06-01 | Plaintiff allegedly sends letter to Defendant identifying the ’044 Patent |
| 2017-08-22 | U.S. Patent No. 9,742,866 Issues |
| 2018-02-14 | Plaintiff allegedly sends letter to Defendant identifying the ’866 Patent and alleging infringement |
| 2018-07-19 | Original Complaint Filed |
| 2019-07-23 | Second Amended Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,241,044 - "System and Method for Improving Internet Communication by Using Intermediate Nodes"
- Issued: January 19, 2016 (’044 Patent)
The Invention Explained
- Problem Addressed: The patent background describes the standard TCP/IP protocol for internet communication, noting that while it is robust, it can be inefficient for delivering content from a data server to an end-user due to network congestion or distance, leading to latency. (’044 Patent, col. 2:22-44).
- The Patented Solution: The invention proposes a system where a client device, instead of fetching content directly from a data server, uses an "acceleration server" to get a list of available intermediate "tunnel devices" (other nodes on the network). The client then requests the content through one or more of these tunnel devices, which fetch the content from the data server and forward it to the client, potentially improving speed and reliability. (’044 Patent, Abstract; col. 51:20-35).
- Technical Importance: This architecture creates a distributed content delivery network that can bypass bottlenecks and provide alternative data paths, a foundational concept for services that rely on routing traffic through diverse endpoints. (Compl. ¶12).
Key Claims at a Glance
- The complaint asserts independent Claim 81. (Compl. ¶39).
- The essential elements of Claim 81 include:
- A method for fetching a first content (identified by a first content identifier) by a first device (identified by a first identifier) from a second server (identified by a third identifier) via a second device (identified by a second identifier), using a first server.
- (a) sending the first identifier to the first server.
- (b) sending a first request to the first server.
- (c) receiving the second identifier from the first server.
- (d) sending a second request to the second device using the second identifier, where the second request includes the first content identifier and the third identifier.
- (e) receiving the first content from the second device.
- The complaint does not explicitly reserve the right to assert dependent claims.
U.S. Patent No. 9,742,866 - "System and Method for Improving Internet Communication by Using Intermediate Nodes"
- Issued: August 22, 2017 (’866 Patent)
The Invention Explained
- Problem Addressed: As a divisional of the ’044 Patent, the ’866 Patent addresses the same general problem of inefficient direct data fetching over the internet. (’866 Patent, col. 1:10-15).
- The Patented Solution: This patent focuses more specifically on a method where the desired content is partitioned into a "plurality of content slices." A client device then selects one or more devices from a group of intermediate nodes and sends requests for specific content slices to the selected devices. The client receives the individual slices and constructs the full content from them, allowing for parallelized downloading. (’866 Patent, Abstract; col. 58:11-23).
- Technical Importance: By breaking content into slices and fetching them in parallel from multiple nodes, this method can significantly accelerate the download of large files and complex web pages. (Compl. ¶26).
Key Claims at a Glance
- The complaint asserts independent Claim 15. (Compl. ¶54).
- The essential elements of Claim 15 include:
- A method for fetching a content from a first server (identified by a second identifier) via a group of multiple devices (each identified by a group device identifier).
- The method comprises partitioning the content into a plurality of content slices, each identified by a content slice identifier.
- For each content slice, the method comprises: (a) selecting a device from the group; (b) sending a first request to the selected device including the content slice identifier and the second identifier; and (c) receiving the content slice from the selected device.
- The method further comprises constructing the content from the received plurality of content slices.
- Each of the devices in the group is a client device.
- The complaint does not explicitly reserve the right to assert dependent claims.
III. The Accused Instrumentality
Product Identification
- Defendants' "Oxylabs Residential Proxy Service" and "Real-Time Crawler" services. (Compl. ¶4).
Functionality and Market Context
- The complaint alleges that Defendants operate a residential proxy network consisting of numerous user devices that have downloaded applications containing Defendants' embedded code. (Compl. ¶22). A diagram on the Oxylabs website, included in the complaint, depicts a "User" routing a request through a "Super Node," which then uses one of several residential IPs to access a "Target" website. (Compl. p. 8). This system allows customers to send requests that appear to originate from residential IP addresses, which is useful for activities like web crawling and data extraction without being blocked. (Compl. ¶¶ 21, 27). The complaint alleges the network includes ten million residential IP addresses across more than 180 countries. (Compl. ¶21). The "Real-Time Crawler" is described as a service that uses this proxy network to extract data from e-commerce and search engine websites. (Compl. p. 9).
IV. Analysis of Infringement Allegations
'044 Patent Infringement Allegations
| Claim Element (from Independent Claim 81) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A method for fetching over the Internet a first content, identified by a first content identifier, by a first device, identified in the Internet by a first identifier, from a second server identified in the Internet by a third identifier via a second device identified in the Internet by a second identifier, using a first server | The OxyLabs network allows a customer (first device) to access Internet content (first content, e.g., a URL) from a target server (second server) via a proxy user device (second device) by coordinating with an OxyLabs server (first server). | ¶41, ¶43 | col. 52:36-51 |
| (a) sending the first identifier to the first server | User devices in the OxyLabs network send their IP address (first identifier) to an OxyLabs server (first server), which stores these identifiers. | ¶42 | col. 52:41-42 |
| (b) sending a first request to the first server | An OxyLabs customer (first device) sends a request (first request) to the OxyLabs server to utilize the network. | ¶43 | col. 52:43-44 |
| (c) receiving the second identifier from the first server | The OxyLabs server responds to the customer's request by sending back the IP address (second identifier) of an available proxy device (second device). | ¶25, ¶43 | col. 52:45-46 |
| (d) sending a second request to the second device using the second identifier, the second request includes the first content identifier and the third identifier | The customer's device sends a request for specific Internet data (first content identifier, e.g., a URL) to the proxy device (second device) using its IP address (second identifier), with the request identifying the target server (third identifier). | ¶26, ¶43 | col. 52:47-51 |
| (e) receiving the first content from the second device | The proxy device forwards the request to the target server, receives the content, and forwards it back to the customer's device. | ¶26, ¶43 | col. 52:52-53 |
- Identified Points of Contention:
- Scope Questions: The case may turn on whether the various network addresses (IP addresses, URLs) and actors (customer device, proxy server, proxy node, target server) in the accused system correspond to the specific roles of the "first identifier," "second identifier," "third identifier," "first content identifier," "first device," "second device," "first server," and "second server" as recited in the claim. The mapping of these terms is alleged but will require factual proof and claim construction.
- Technical Questions: A factual question is whether the architecture operates as a two-step process as claimed, where the customer's device first requests and receives a proxy identifier from a central server and then separately sends the content request to that proxy. The complaint alleges this flow (Compl. ¶¶ 25-26), but the actual implementation may differ.
'866 Patent Infringement Allegations
| Claim Element (from Independent Claim 15) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A method for fetching a content over the Internet from a first server...via a group of multiple devices...the method comprising the step of partitioning the content into a plurality of content slices | The OxyLabs residential network allegedly permits customers to request content that "may be divided into portions ('Content Slices')" from a target server via a group of client devices. | ¶55 | col. 58:14-17 |
| for each of the content slices, comprising the steps of: (a) selecting a device from the group; | The customer's device (First Device) is permitted to select a proxy device (Second Device) from the group of available residential proxies. | ¶56 | col. 58:18-19 |
| (b) sending over the Internet a first request to the selected device using the group device identifier of the selected device, the first request including the content slice identifier and the second identifier; | The customer's device sends a request for a portion of the content ("Content Slice Identifier") to the selected proxy device using its IP address ("Second Device Identifier"). | ¶56 | col. 58:20-23 |
| (c) in response to receiving the sent first request by the selected device, receiving over the Internet the content slice from the selected device; | The proxy device retrieves the requested content slice from the target server and forwards it to the customer's device. | ¶57 | col. 58:24-26 |
| and wherein the method further comprising the step of constructing the content from the received plurality of content slices | The complaint alleges that the customer's device "can construct the content from the plurality of Content Slices" and "then constructs the content from the plurality of Content Slices." | ¶26, ¶57 | col. 58:27-29 |
| and wherein each of the devices in the group is a client device. | The devices in the OxyLabs residential proxy network are alleged to be "numerous user devices" and "client device[s]." | ¶22, ¶55 | col. 58:30-31 |
- Identified Points of Contention:
- Scope Questions: The central question for this patent will be the interpretation of "partitioning the content into a plurality of content slices." Does this require the system to actively divide a single file, or can it be met by fetching discrete, pre-existing components of a larger resource (e.g., the multiple images, scripts, and text files that comprise a modern webpage)?
- Technical Questions: The complaint's allegation on this point is conditional: "to the extent that the requested content is divided into portions or slices..." (Compl. ¶26). This suggests a key factual dispute will be whether the accused services actually perform any function that could be characterized as partitioning and reconstructing content slices, or if they simply proxy requests for whole assets.
V. Key Claim Terms for Construction
- The Term: "identifier" (appearing as "first identifier," "second identifier," "third identifier," and "first content identifier" in Claim 81 of the ’044 Patent).
- Context and Importance: The infringement theory depends on mapping different types of network addresses (e.g., client IP address, proxy IP address, target server IP address, and a URL) to these four distinct "identifier" roles. The scope of "identifier" will be critical to determining if the accused system's architecture meets the claim's structural limitations.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification states that an identifier may be an IP address in IPv4 or IPv6 form, or it may be a URL. (’044 Patent, col. 52:36-40). This language may support construing the term broadly to cover different types of network locators.
- Evidence for a Narrower Interpretation: The claim recites four distinct identifiers for four distinct entities/data objects. Defendants may argue that the prosecution history or specific embodiments limit how these terms can be applied, or that the same type of identifier (e.g., an IP address) cannot be used for different roles in a way that renders the claim's structure indistinct.
- The Term: "partitioning the content into a plurality of content slices" (from Claim 15 of the ’866 Patent).
- Context and Importance: This term is the core of the asserted claim of the ’866 Patent. Whether the accused proxy service performs an action that meets this definition will likely be the dispositive issue for infringement of this patent.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent states that content "may be a website composed of multiple webpages" and that partitioning can be "based on web-page level." (’866 Patent, col. 58:59-62). This could support an argument that fetching different components of a website (e.g., HTML file, CSS file, image files) constitutes "partitioning."
- Evidence for a Narrower Interpretation: The patent also describes partitioning in terms of dividing a single data object by byte-level, nibble-level, or bit-level. (’866 Patent, col. 94:1-12). This language suggests a more granular division of a contiguous data stream, which a defendant might argue is not performed by a simple proxy service that forwards requests for distinct, whole files.
VI. Other Allegations
- Indirect Infringement: The complaint alleges that Defendants indirectly infringe by providing their residential proxy services to customers, knowing that the customers' use of the service constitutes direct infringement of the asserted method claims. (Compl. ¶46, ¶60).
- Willful Infringement: The complaint alleges willfulness based on pre-suit knowledge. It cites a June 1, 2017 letter notifying Defendants of the ’044 Patent and a February 14, 2018 letter notifying them of the ’866 Patent and specifically alleging infringement by the "OxyLabs" brand. (Compl. ¶¶ 18-19, 49, 63). The complaint further supports this allegation with evidence of post-suit conduct, including screenshots of Defendants' advertisements offering a "$100,000 for Prior Art" bounty to invalidate Luminati's patents, which allegedly targeted Luminati's brand and customers. (Compl. ¶¶ 28-29, pp. 12-14).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional mapping: do the components of the accused Oxylabs network (customer, proxy server, proxy node, target website) and their associated network addresses (IPs, URLs) align with the specific roles of the four distinct "devices" and "identifiers" recited in Claim 81 of the ’044 Patent? The case may depend on whether the alleged sequence of operations in the accused system can be mapped onto the claim's specific multi-step method.
- A second central issue will be one of technical operation: does the accused Oxylabs service perform an act of "partitioning the content into a plurality of content slices" as required by Claim 15 of the ’866 Patent? The dispute may focus on whether fetching discrete, pre-existing components of a web page is equivalent to the "partitioning" and "constructing" steps described in the patent.
- A final question will be one of intent: given the detailed allegations of pre-suit notice letters and the post-suit "bounty" campaign, the court will likely need to evaluate whether Defendants' alleged infringement, if found, was willful.