PTAB

IPR2023-00185

Bright Data Ltd v. Oxylabs UAB

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Web page script management
  • Brief Description: The ’498 patent relates to managing embedded scripts in web pages using a network appliance. The appliance is positioned between a client device and a server to intercept web page traffic, remove or replace an embedded script, execute the removed script on the appliance itself, and then send a modified web page to the client browser.

3. Grounds for Unpatentability

Ground 1: Anticipation by WebShield - Claims 1, 10, and 19 are anticipated by WebShield under 35 U.S.C. §102.

  • Prior Art Relied Upon: WebShield (a 2010 article by Li, et al., titled "WebShield: Enabling Various Web Defense Techniques without Client Side Modifications").
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that WebShield, a security framework using a proxy server, discloses every limitation of the challenged independent claims. WebShield’s proxy server functions as the claimed "network appliance," positioned between a client and a web server. It intercepts an HTML web page, removes all script content by encoding DOM data structures without the scripts, and executes the original JavaScript on a "shadow browser" within the proxy. Finally, it sends the modified, scriptless web page to the client browser for rendering, thereby anticipating the core inventive concept of the ’498 patent.

Ground 2: Obviousness over Kothari and WebShield - Claims 1, 10, and 19 are obvious over Kothari in view of WebShield under 35 U.S.C. §103.

  • Prior Art Relied Upon: Kothari (Application # 2007/0061700) and WebShield.
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Kothari discloses a server that simulates a client-side environment to execute scripts before sending the final web page representation to the client. Kothari’s server extracts a client script from a DOM, executes it, and then sends the resulting HTML to the client. While Kothari’s server performs the claimed functions, Petitioner argued that if the Board finds Kothari does not teach a separate network appliance, WebShield supplies this element. WebShield explicitly teaches a "middlebox-based" proxy architecture for enhancing security.
    • Motivation to Combine: A POSITA would combine WebShield's separate proxy architecture with Kothari's server-side script execution functionality. The motivation would be to gain the known security and performance benefits of a dedicated network appliance (firewalling, caching, shared connections) while implementing Kothari’s method of pre-rendering script-dependent content. This combines known prior art elements for their predictable functions.
    • Expectation of Success: The combination involves using a standard proxy architecture (WebShield) to host a known server-side rendering process (Kothari), which would have been a straightforward implementation for a POSITA with a high expectation of success.

Ground 3: Obviousness over Hallak and Matthys - Claims 1-10 and 14-19 are obvious over Hallak in view of Matthys under §103.

  • Prior Art Relied Upon: Hallak (Patent 8,464,318) and Matthys (Application # 2008/0306816).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner contended that Hallak discloses the core system: a secure gateway between a client and server that intercepts web pages, removes all original scripts to prevent malicious code execution, executes the scripts on the gateway, and sends a modified, static version of the page to the client. To address dependent claims requiring analysis of network packets (e.g., claim 2), Petitioner introduced Matthys. Matthys teaches a network device that performs detailed packet-level filtering and analysis to detect and replace scripts, specifically for advertisement substitution.
    • Motivation to Combine: A POSITA would be motivated to enhance Hallak's security gateway with the more granular packet-level analysis taught by Matthys. Hallak’s system protects against malicious scripts, and Matthys provides a known method for inspecting packet content to identify specific scripts. Combining these teachings would create a more robust and precise script detection and filtering system, a predictable improvement.
    • Expectation of Success: Implementing Matthys's packet analysis techniques within Hallak's gateway architecture would be a predictable application of known network monitoring methods to improve an existing security system.

  • Additional Grounds: Petitioner asserted additional challenges, including that claims 1, 10, and 19 are obvious over WebShield in view of common knowledge; claim 1, 10, and 19 are anticipated by Hallak; and claims 10-13 are obvious over Hallak in view of RFC 1812 (a standards document for IP routers).

4. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under Fintiv is not warranted. The parallel district court litigation is in its infancy, with no claim construction order entered and discovery ongoing. The IPR challenges all 19 claims of the ’498 patent, whereas the district court case involves fewer claims, meaning the IPR promotes a more efficient and complete resolution. Petitioner also stipulated that, if instituted, it would not pursue the same invalidity grounds in the district court litigation, which weighs against denial. Finally, Petitioner asserted that the petition presents compelling evidence of unpatentability, which serves the public interest in cancelling invalid patent claims.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-19 of Patent 9,503,498 as unpatentable.