Code200 UAB v. Luminati Networks Ltd

1. Case Identification

• Case #: IPR2020-01506
• Patent #: 10,469,614
• Filed: September 4, 2020
• Petitioner(s): Code200, UAB; Teso LT, UAB; Metacluster LT, UAB; and Oxysales, UAB
• Patent Owner(s): Luminati Networks Ltd.
• Challenged Claims: 1-2, 4-13, 15-20, 22-23, 25-26, and 28-29

2. Patent Overview

• Title: System and method for exchanging information over a computer network
• Brief Description: The ’614 patent discloses methods for a client device to act as an intermediary or proxy for a server. The client device determines its own resource availability, and if sufficient resources exist, it accepts tasks from the server to fetch internet content from a third-party web server and return that content to the server.

3. Grounds for Unpatentability

Ground 1: Anticipation by Mithyantha - Claims 1-2, 4-13, 15-20, 22-23, 25-26, and 29 are anticipated by Mithyantha under 35 U.S.C. §102.

• Prior Art Relied Upon: Mithyantha (Patent 8,972,602).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Mithyantha, which discloses a system for traffic distribution in a network cluster environment, teaches every limitation of the challenged claims. Petitioner mapped the claimed "client device" to a second intermediary "appliance 200'" in Mithyantha's network and the "first server" to a first "appliance 200." Mithyantha's appliances explicitly monitor their own resource utilization (e.g., CPU, memory, bandwidth) against a set criterion or threshold. Based on this monitoring, an appliance is determined to be in a first state (active/available) or a second state (inactive/unavailable). When in the first state, the client device appliance (200') is disclosed as being able to receive a request from the first server appliance (200), perform the task of fetching content from a distinct web server (106), and send the received content back to the first server appliance, thereby anticipating the method of independent claim 1. Petitioner further mapped elements of Mithyantha to the various dependent claims, such as the use of TCP/IP protocols and status monitors.

Ground 2: Anticipation by MorphMix - Claims 1-2, 4-5, 7-10, 13, 17-20, 22-23, 25-26, and 29 are anticipated by MorphMix under 35 U.S.C. §102.

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

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner contended that MorphMix, a system for creating anonymous communication tunnels using peer-to-peer nodes, anticipates the challenged claims. In Petitioner's mapping, the claimed "client device" corresponds to the final node in a communication tunnel (node c), while the "first server" corresponds to an intermediate node in the tunnel (node b). MorphMix's nodes periodically or continuously determine whether they have sufficient "spare resources" to accept a request to join a tunnel. This determination satisfies the "resource utilization" and "criterion" limitations, with the node's resulting willingness to participate corresponding to the "first state" (available) and unwillingness corresponding to the "second state" (unavailable). When available, the client device (node c) receives a request from the first server (node b), performs the task of forwarding the request to a target web server (s), receives the requested web content, and sends it back to the first server (node b). This sequence, inherent to MorphMix's operation as an anonymous proxy, was argued to meet all limitations of claim 1 and the challenged dependent claims.

• Additional Grounds: Petitioner asserted alternative obviousness grounds under 35 U.S.C. §103. These grounds argued that if either Mithyantha or MorphMix were found not to anticipate, a person of ordinary skill in the art (POSITA) would have found it obvious to combine their respective teachings with the general knowledge of a POSITA and standard internet protocols. Specifically, a POSITA would combine the systems of Mithyantha or MorphMix with knowledge of HTTP (as documented in RFC 2616), TCP/IP, and common computer functions (like resource monitoring via Windows Task Manager) to arrive at the claimed invention.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise discretionary denial under 35 U.S.C. § 314(a) based on Fintiv factors, despite a co-pending district court litigation involving some of the Petitioners.
• Petitioner contended that the parallel litigation was at a very early stage, with the initial scheduling order having been recently issued and expert discovery not closing until January 2021.
• It was argued that the trial date was more than a year away and subject to potential delays, making the proximity to a Final Written Decision (FWD) neutral.
• Petitioner asserted that the petition was filed promptly after the patent became available for an inter partes review (IPR) and that the patent is "extraordinarily weak." Therefore, they argued that public policy favored institution to avoid continued litigation over claims that were allegedly invalid based on prior art that was not before the Examiner during prosecution.

5. Relief Requested

• Petitioner requests the institution of an inter partes review and the cancellation of claims 1-2, 4-13, 15-20, 22-23, 25-26, and 28-29 of Patent 10,469,614 as unpatentable.