IPR2022-00861

This Inter Partes Review (IPR) case, IPR2022-00861, involves a patent challenge by several Lithuanian software and technology companies against an Israeli web data platform provider. The Petitioners are CODE200, UAB, along with TESO LT, UAB, METACLUSTER LT, UAB, OXYSALES, UAB, and CORETECH LT, UAB, all of whom appear to be operating companies with interests in software development and potentially data or proxy services. The Patent Owner, BRIGHT DATA LTD. (formerly Luminati Networks), is an Israeli technology company that offers web data collection, proxy networks, web scraping tools, and datasets to over 20,000 organizations across various industries. While the IPR itself focuses on patent validity, the underlying dispute from which this IPR likely stems concerns allegations of patent infringement related to services utilizing residential proxy networks and web scraping technologies.

The patent at issue is U.S. Patent No. 10,257,319 B2, which broadly relates to systems designed for faster and more efficient data communication. More specifically, the patent encompasses aspects of computer networks, data transfer, and content sharing using protocols like HTTP and TCP/IP, likely in the context of proxy-based web data collection, which is central to Bright Data's business model. The procedural posture of this case is particularly notable, taking place before the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office. The PTAB initially denied institution of the IPR, but USPTO Director Kathi Vidal sua sponte intervened, vacated the denial, and remanded the case for further proceedings. This intervention was significant as it issued a precedential decision clarifying the application of General Plastic factors, which govern discretionary denials for "serial" or "follow-on" petitions, especially when previous petitions were denied on procedural rather than substantive grounds.

This case is highly notable due to the Director's sua sponte review, which provided crucial guidance on IPR institution practices and emphasized the PTAB's role in improving patent quality by addressing issues like "road-mapping" in serial petitions. Beyond the PTAB proceedings, the dispute highlights broader tensions within the web data collection and proxy service industry regarding intellectual property and access methods. The Final Written Decision of the PTAB ultimately found the claims of U.S. Patent No. 10,257,319 and other related patents to be unpatentable. This unpatentability finding was affirmed by the Court of Appeals for the Federal Circuit on August 1, 2025. Bright Data has subsequently sought a writ of certiorari from the Supreme Court, challenging the Federal Circuit's treatment of claim construction and prosecution disclaimers in IPR proceedings, underscoring the ongoing legal significance and industry impact of this patent dispute.

Key Legal Developments and Outcome for IPR2022-00861 and Related Litigation

This summary outlines the key legal developments and outcomes concerning Patent No. 10,257,319, primarily focusing on Inter Partes Review (IPR) case IPR2022-00861 and the related district court litigation Bright Data Ltd. v. Teso LT, UAB et al., Case No. 2:19-cv-00395-JRG (E.D. Tex.).

Parallel PTAB IPR Proceedings

IPR2020-01266 (Code200, UAB v. Luminati Networks Ltd.): This earlier IPR petition, also challenging claims of the '319 patent, was denied on discretionary grounds on December 23, 2020.

IPR2021-01492 (NetNut Ltd. v. Bright Data Ltd.): This IPR, which also involved the '319 patent, saw the Patent Owner (Bright Data Ltd.) settle with the Petitioner (NetNut Ltd.), leading to the termination of NetNut as a party.

IPR2022-00861 (Code200, UAB et al. v. Bright Data Ltd.):

• Filing and Initial Decision (July 25, 2022): Code200, UAB, Teso LT, UAB, Metacluster LT, UAB, Oxysales, UAB, and Coretech LT, UAB (collectively, "Petitioner") filed a petition for inter partes review of claims 1, 2, 12, 14, 15, 17–19, and 21–29 of U.S. Patent No. 10,257,319. The Patent Trial and Appeal Board (PTAB) initially denied institution of the IPR, as well as a motion for joinder with IPR2021-01492, citing discretionary grounds under 35 U.S.C. § 314(a) based on the factors set forth in General Plastic Industrial Co. v. Canon Kabushiki Kaisha.
• Director Review and Remand (August 23, 2022): USPTO Director Katherine K. Vidal initiated a sua sponte review of the PTAB's denial. Director Vidal vacated the Board's decision denying institution and the decision denying the motion for joinder, remanding the cases for further proceedings consistent with her decision. The Director clarified how the General Plastic factors should be applied, particularly when a serial petition has substantial overlap with an original petition denied on discretionary grounds and "road-mapping" concerns are minimized.
• Reconsideration and Institution (October 19, 2022): Following the Director's remand, the PTAB panel was directed to reconsider the institution decision and joinder. In Paper 19, issued on October 19, 2022, the Director concluded that the Petitioner's invalidity grounds presented "compelling unpatentability challenges," overriding the Patent Owner's fairness concerns and prioritizing the benefit to the patent system of reviewing the merits of the challenges. While the exact date of institution after remand is not explicitly stated, the analysis in Paper 19 strongly indicates that institution was granted.
• Final Written Decision (Outcome not explicitly detailed in search results): The status provided for this case is "Final Written Decision." However, the available search results do not explicitly detail the ultimate outcome of IPR2022-00861's Final Written Decision (i.e., which specific claims, if any, were found unpatentable). It's common for such decisions to be followed by appeals or further proceedings.

IPR2022-01109 and IPR2022-00135: As of July 25, 2022, IPR2022-01109 was a newly filed petition challenging the '319 patent, and the Petitioner in IPR2022-01109 sought joinder with IPR2022-00135, in which institution had already been granted regarding the '319 patent. The ultimate status of these is not detailed in the provided search results.

District Court Litigation

Bright Data Ltd. v. Teso LT, UAB et al., Civil Action No. 2:19-cv-00395-JRG (E.D. Tex.):

• Filing (December 6, 2019): Bright Data Ltd. (formerly Luminati Networks Ltd.) filed a patent infringement complaint against Teso LT, UAB, Metacluster LT, UAB, and Oxysales, UAB (collectively, "Oxylabs") in the Eastern District of Texas. [cite: 4, 13 (from previous search)] The complaint asserted infringement of U.S. Patent Nos. 10,257,319, 10,484,510, and 10,469,614. Some of the defendants in this litigation were also petitioners in IPR2022-00861.
• Jury Trial and Verdict (November 2021): A jury trial was conducted in November 2021. The jury found that Oxylabs infringed at least one claim of the asserted patents, that none of the asserted patents (including the '319 patent) were invalid (specifically, the defendants did not prove by clear and convincing evidence that claims 1 and 26 of the '319 patent were invalid), and that Oxylabs's infringement was willful. [cite: 4, 12 (from previous search), 15] The jury awarded Bright Data $7,474,876.00 in lost profits.
• Post-Trial Motions and Injunction Denial (February 10, 2022): Bright Data's motion for a preliminary and permanent injunction against infringement was denied by the court on February 10, 2022. This denial was based in part on the court having no doubts regarding Oxylabs's ability to satisfy a monetary judgment.
• Case Status (Stayed): As of the initial institution decision for IPR2022-00861 on July 25, 2022, the district court case had been stayed, with the parties having undergone mediation after the jury verdict. [cite: 4, 10 (from previous search)] The ultimate final judgment and any appeals for this district court case are not explicitly available in the provided search results.

Effect of IPR on Litigation

The IPR proceedings, particularly IPR2022-00861, challenged the validity of Patent No. 10,257,319, which was also at issue in the Bright Data v. Teso LT district court litigation. While the district court jury found the '319 patent not invalid, the PTAB's subsequent decision to institute IPR on "compelling unpatentability challenges" in IPR2022-00861 (after the Director's remand) indicates that the PTAB independently assessed the patent's validity. The outcome of the IPR's Final Written Decision would have a significant impact on the finality and enforceability of the district court's validity finding, potentially leading to estoppel in future litigation if claims were found unpatentable. The stay in the district court case likely allowed the parties to await the outcome of the IPR. [cite: 4, 10 (from previous search), 15]

In IPR2022-00861, concerning patent 10257319, the petitioners are CODE200, UAB; TESO LT, UAB; METACLUSTER LT, UAB; OXYSALES, UAB; and CORETECH LT, UAB. Their counsel of record, as identified in a related Federal Circuit appeal, include attorneys from Norton Rose Fulbright US LLP:

• Daniel Leventhal

  • Role: Counsel
  • Firm: Norton Rose Fulbright US LLP, Houston, TX
  • Experience Note: Mr. Leventhal argued for all appellees (which included CODE200 et al.) in the Federal Circuit appeal stemming from these IPRs, indicating a lead role in appellate patent litigation.

• Stephanie DeBrow

  • Role: Counsel
  • Firm: Norton Rose Fulbright US LLP, Austin, TX
  • Experience Note: Ms. DeBrow was also listed as representing the appellees (petitioners in the IPR) in the Federal Circuit case.

• Mark T. Garrett

  • Role: Counsel
  • Firm: Norton Rose Fulbright US LLP, Austin, TX
  • Experience Note: Mr. Garrett was identified as counsel for the appellees (petitioners in the IPR) in the Federal Circuit appeal.

• Jonathan S. Franklin

  • Role: Counsel
  • Firm: Norton Rose Fulbright US LLP, Washington, DC
  • Experience Note: Mr. Franklin was listed as counsel representing the appellees (petitioners in the IPR) in the Federal Circuit appeal.

This case, IPR2022-00861, is an Inter Partes Review (IPR) proceeding before the Patent Trial and Appeal Board (PTAB), not a patent infringement lawsuit. In an IPR, the parties are the "Patent Owner" and the "Petitioner." The Patent Owner in this IPR is Bright Data Ltd..

Based on available information, the counsel of record representing Bright Data Ltd. (Patent Owner) in IPR2022-00861 includes:

• Jonathan E. Singer (Lead Counsel)
  • Firm: Fish & Richardson P.C., San Diego, California.
  • Experience Note: Jonathan Singer is a renowned life sciences trial attorney with over three decades of experience, specializing in complex pharmaceutical and Hatch-Waxman litigation. He has successfully litigated significant pharmaceutical disputes, including twice achieving reversal of a Federal Circuit Court of Appeals decision in Prometheus Laboratories v. Mayo Collaborative Services at the U.S. Supreme Court, and securing a complete vacatur of a $2.5 billion jury verdict against Gilead Sciences, Inc.

Further specific counsel information for Bright Data Ltd. beyond Jonathan E. Singer in this particular IPR was not readily available through public web searches of docket entries, firm websites, or legal news outlets, which often focus on precedential decisions rather than detailed attorney listings for every party in an IPR. Therefore, no other specific attorneys and their roles, firms, or detailed experience can be reliably provided at this time.This case, IPR2022-00861, is an Inter Partes Review (IPR) proceeding before the Patent Trial and Appeal Board (PTAB), where Bright Data Ltd. is the Patent Owner. The search results identify specific counsel for Bright Data Ltd.

Counsel of Record representing Bright Data Ltd. (Patent Owner):

• Jonathan E. Singer
  • Role: Lead Counsel
  • Firm: Fish & Richardson P.C.
  • Office Location: San Diego, California
  • Relevant Patent Litigation Experience: Jonathan Singer is a highly recognized life sciences trial attorney with over three decades of experience in complex pharmaceutical patent litigation, including Hatch-Waxman cases. He has successfully handled significant disputes, notably twice reversing a Federal Circuit Court of Appeals decision in Prometheus Laboratories v. Mayo Collaborative Services at the U.S. Supreme Court. He also secured the vacatur of a $2.5 billion jury verdict against Gilead Sciences, Inc. in Idenix Pharmaceuticals LLC et al. v. Gilead Sciences, Inc., and led a bench trial that resulted in a district court setting aside a $200 million jury verdict against Gilead in Gilead Sciences, Inc. v. Merck & Co. due to unclean hands.

While Fish & Richardson P.C. is a large firm with extensive intellectual property experience, and Jonathan Singer is a principal in their San Diego office, further specific counsel (e.g., co-counsel, local counsel, or "of counsel") representing Bright Data Ltd. in IPR2022-00861 were not explicitly identified in the provided search results. Legal proceedings of this nature often involve a team, but detailed listings for all attorneys on the record are not always publicly highlighted in summary reports or news.