Bright Data Ltd v. Oxylabs UAB

1. Case Identification

• Case #: IPR2023-00186
• Patent #: 9,516,091
• Filed: November 15, 2022
• Petitioner(s): Bright Data Ltd.
• Patent Owner(s): Metacluster LT, UAB.
• Challenged Claims: 1-20

2. Patent Overview

• Title: Web page script management
• Brief Description: The ’091 patent discloses a system and method where a network appliance, positioned between a client device and a web server, intercepts a web page before it reaches the client. The appliance removes an embedded script (e.g., JavaScript for analytics), executes it on the appliance itself, and then sends a modified, script-free web page to the client to accelerate page loading and perform script functions remotely.

3. Grounds for Unpatentability

Ground 1: Obviousness of Claims 1-20 over Scoda in view of Matthys

• Prior Art Relied Upon: Scoda (Application # 2011/0307238) and Matthys (Application # 2008/0306816).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Scoda disclosed the core elements of the independent claims. Scoda teaches a proxy server positioned between a client and web servers that intercepts a web page, removes at least one JavaScript instruction set, executes the removed script on the proxy server to obtain dynamic content, appends that content to an optimized version of the page, and sends the modified page to the client. This process, Petitioner asserted, met the key limitations of a network appliance modifying and executing scripts on behalf of a client.
  • Motivation to Combine: Petitioner contended that Scoda’s system could be improved by incorporating the more detailed analytics taught by Matthys. Matthys discloses a network device that monitors web traffic using metadata and packet-level analysis to perform functions like replacing advertisements based on user profiles. A person of ordinary skill in the art (POSITA) would combine Matthys’s granular analytics with Scoda's proxy architecture to provide more robust monitoring, filtering, and user analysis, leading to improved security and performance.
  • Expectation of Success: The petition argued that combining these elements was merely applying a known technique (packet-level analytics) to a known system (a content-modifying proxy server) to achieve the predictable result of an improved system.

Ground 2: Obviousness of Claims 1-20 over Hallak in view of Matthys

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

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner asserted that Hallak, like Scoda, disclosed the fundamental invention. Hallak teaches a secure gateway deployed between a web client and a web server to protect against malicious attacks. The gateway intercepts web pages, removes all client-side scripts (e.g., JavaScript), and executes them in a secure sandbox on the gateway "on behalf of the web client." The gateway then sends a modified page, containing only static visual parts and UI updates, to the client browser. Petitioner argued this directly maps to the claimed method of intercepting, removing, executing, and modifying a web page.
  • Motivation to Combine: Petitioner repeated its rationale that a POSITA would be motivated to enhance Hallak's security-focused gateway with the advanced monitoring and packet-level analytics taught in Matthys. Incorporating Matthys’s techniques would allow the Hallak gateway to perform more detailed filtering and detection, improving its ability to protect web clients. This would have been an obvious improvement to make the gateway’s security features more robust and effective.
  • Expectation of Success: Petitioner asserted a POSITA would have reasonably expected success, as the combination represents the integration of known analytics methods into a known secure gateway architecture to predictably improve its core security function.

• Additional Grounds: Petitioner asserted that independent claims 1, 13, and 19 are anticipated by Scoda alone (Ground 1) and by Hallak alone (Ground 3), as both references allegedly disclose every element of those claims.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §314(a), based on the Fintiv factors, was not warranted. The petition asserted that the parallel district court litigation was in its infancy, with fact discovery ongoing and a claim construction hearing not yet held. Petitioner further argued that this inter partes review (IPR) would be more efficient, as it challenges all 20 claims of the ’091 patent, whereas the district court case involves only a subset of claims. Finally, Petitioner stipulated that if the IPR is instituted, it will not pursue the same invalidity grounds in the parallel litigation, which weighs against denial.

5. Relief Requested

• Petitioner requests institution of IPR and cancellation of claims 1-20 of Patent 9,516,091 as unpatentable.