Code200 UAB v. Luminati Networks Ltd

1. Case Identification

• Case #: IPR2020-01266
• Patent #: 10,257,319
• Filed: July 14, 2020
• Petitioner(s): Code200, UAB; Teso LT, UAB; Metacluster LT, UAB; and Oxysales, UAB
• Patent Owner(s): Luminati Networks Ltd.
• Challenged Claims: 1-2, 12, 14-15, 17-19, 21-22, and 24-29

2. Patent Overview

• Title: Method and System for an Accelerated Proxy
• Brief Description: The ’319 patent describes a method for routing internet traffic through a proxy system. The method involves a "first client device" acting as an intermediary to retrieve content from a "first server" (web server) on behalf of a "second server" and returning the content to that second server.

3. Grounds for Unpatentability

Ground 1: Anticipation over Crowds - Claims 1, 21-22, and 24-27 are anticipated by Crowds.

• Prior Art Relied Upon: Crowds (Michael Reiter & Aviel Rubin, Crowds: Anonymity for Web Transactions, a 1998 article).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Crowds, a system for protecting user anonymity, discloses every limitation of the challenged claims. In the Crowds system, a user’s request travels through a "random path of jondos" (applications on user computers) before reaching the target web server. Petitioner mapped the claim terms to an example path in Crowds (e.g., path "5→4→6→server"), where jondo "6" is the "first client device," jondo "4" is the "second server," and the target is the "first server." Jondo "6" (first client device) receives a content identifier (URL) from jondo "4" (second server), sends an HTTP request to the web server, receives the content, and sends the content back to jondo "4". Petitioner asserted that Crowds also discloses the use of TCP/IP (claim 21-22, 24-25) and client operating systems (claim 26), and that the claim steps are performed sequentially (claim 27).

Ground 2: Anticipation over Border - Claims 1, 12, 14, 21-22, 24-25, and 27-29 are anticipated by Border.

• Prior Art Relied Upon: Border (Patent 6,795,848).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner contended that Border, which relates to retrieving web content using proxy servers to relieve traffic congestion, anticipates the challenged claims. Petitioner mapped the claim terms to Border's system, identifying the "upstream proxy server 107" as the "first client device," the "downstream proxy server 105" as the "second server," and the "web server 109" as the "first server." In this system, the upstream server receives a request (content identifier) from the downstream server, sends a GET request to the web server, receives the content, and forwards it back to the downstream server. Petitioner argued Border explicitly discloses that its proxy servers can be general-purpose computers, use caching (claim 12), validate content (claim 14), operate over TCP/IP (claims 21-22, 24-25), perform steps sequentially (claim 27), and comprise a non-transitory computer-readable medium (claims 28-29).

Ground 3: Anticipation over MorphMix - Claims 1, 2, 17, 19, 21-22, and 24-27 are anticipated by MorphMix.

• Prior Art Relied Upon: MorphMix (Marc Rennhard, MorphMix - A Peer-to-Peer-based System for Anonymous Internet Access, a 2004 doctoral thesis).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner argued that MorphMix, a peer-to-peer system for anonymous internet access, anticipates the challenged claims. In MorphMix, a user request is routed through an "anonymous tunnel" of nodes. Petitioner mapped the "last node" in a tunnel (node 'c') as the "first client device," an "intermediate node" (node 'b') as the "second server," and the target server as the "first server." Node 'c' receives the content identifier from node 'b', sends the request to the server, receives the content, and relays it back to node 'b'. Petitioner asserted that MorphMix also discloses nodes communicating their IP addresses during setup (claim 2), periodic communication between nodes (claim 17), downloading and installing the MorphMix application (claim 19), and using TCP/IP (claims 21-22, 24-25).

• Additional Grounds: Petitioner asserted additional obviousness challenges (Grounds 2, 4, and 6) arguing that if any claim is not anticipated by Crowds, Border, or MorphMix respectively, it would have been obvious to a POSITA to combine the teachings of that primary reference with the general knowledge of a POSITA and/or the teachings of RFC 2616 (the HTTP/1.1 standard).

4. Key Claim Construction Positions

• Petitioner argued that no express construction is necessary and that plain and ordinary meaning should apply. However, Petitioner highlighted that the terms "first client device," "second server," and "first server" should be understood not as specialized hardware but as describing the functional roles of general-purpose computers in a transaction.
• This position was supported by citing the patent owner's own representations in parallel litigation, where the patent owner equated the "first client device" with an "agent" and the "second server" with a "client" in the patent's own figures, both of which are described in the specification as standard computer devices. This broad interpretation is central to Petitioner's mapping of the prior art systems, which use general-purpose computers or nodes to perform the claimed proxying functions.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise its discretion to deny institution under §314(a) based on the Fintiv factors, asserting the following:
  • Factor 1 (Stay): The parallel district court litigation was in a very early stage, and no stay had been requested.
  • Factor 2 (Trial Date): While a trial date was set for approximately one year after the petition filing, Petitioner argued the patent owner had a history of delaying trials in other cases, making the date unreliable.
  • Factor 3 (Investment): Investment in the parallel case was minimal as it was in the early stages, with infringement contentions having been served only 10 weeks prior to the IPR filing.
  • Factor 4 (Overlap): While there was overlap in the challenged claims and prior art, the petition challenged several claims not at issue in the litigation, favoring institution.
  • Factor 5 (Parties): There was not a complete overlap in parties, as Petitioner CODE200 was not a defendant in the parallel lawsuit involving the other co-petitioners.
  • Factor 6 (Other Circumstances): Petitioner argued the patent is exceptionally weak, claiming a basic and well-known internet proxy concept, which weighs in favor of institution to serve the public interest.

6. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-2, 12, 14-15, 17-19, 21-22, and 24-29 of the ’319 patent as unpatentable.