IPR2023-00038

IPR2023-00038 is an Inter Partes Review proceeding before the Patent Trial and Appeal Board (PTAB) concerning U.S. Patent No. 10,257,319. While the specific petitioner for IPR2023-00038 isn't immediately clear from available snippet results, an entity called Unified Patents frequently acts as a petitioner in IPRs to challenge patents asserted by Non-Practicing Entities (NPEs) or "patent trolls." Unified Patents is a membership organization that seeks to deter NPEs and protect against frivolous patent litigation. The Patent Owner for the '319 patent is not readily available in the provided snippets. However, in a different IPR case, IPR2023-00381, Bardy Diagnostics, Inc. was the Patent Owner and Vital Connect, Inc. was the Petitioner, relating to an "Electrocardiographic Patch" patent.

U.S. Patent No. 10,257,319, which is at issue in this IPR, pertains to an "Adaptive security appliance". A technical sketch of the patent indicates it relates to methods and systems for providing network security using an adaptive security appliance. The details of any specific accused product, service, or technology that allegedly infringes this patent are not specified in the provided information for this IPR case. IPRs are typically filed in response to district court litigation where a patent is asserted against an accused product.

The case's procedural posture is an Inter Partes Review before the Patent Trial and Appeal Board (PTAB) and its status is "Procedural Termination." A procedural termination in an IPR can occur for various reasons, including settlement between the parties or the dismissal of a parallel district court case. The PTAB is an administrative body within the U.S. Patent and Trademark Office (USPTO) that reviews the patentability of claims in an issued patent, often serving as a less costly and more expedited alternative to federal court litigation for challenging patent validity. This venue is crucial as PTAB decisions can have a significant impact on parallel district court litigation by invalidating claims or shaping claim construction.

This case is notable in the broader context of IPRs and patent litigation trends. In 2023, there was a decline in overall PTAB filings, partly attributed to uncertainty surrounding proposed rulemaking at the USPTO. Organizations like Unified Patents are active in filing IPRs, particularly against patents held by NPEs, influencing patent assertion patterns and aiming to reduce what they consider "frivolous" litigation. The termination of an IPR, particularly a procedural one, often signals a resolution or change in the underlying district court litigation, highlighting the interconnectedness of these forums in patent disputes.

Key Legal Developments and Outcome for IPR2023-00038 and Related Litigation

This case summary covers the Inter Partes Review (IPR) IPR2023-00038, which was procedurally terminated, and related patent infringement litigation concerning U.S. Patent No. 10,257,319.

IPR2023-00038

Status: Procedurally Terminated.
Patent at Issue: U.S. Patent No. 10,257,319.
The specific details regarding the Petitioner, Patent Owner, and the exact date of procedural termination for IPR2023-00038 are not readily available in public summaries. A procedural termination typically indicates that the IPR did not proceed to a full review on the merits, often due to settlement, withdrawal, or a preliminary procedural issue.

Related District Court Litigation: Bright Data Ltd. v. Teso LT, UAB, Metacluster LT, UAB, Oxysales, UAB (E.D. Tex. Case No. 2:19-cv-00395-JRG)

This patent infringement case involved U.S. Patent No. 10,257,319, along with U.S. Patent Nos. 10,484,510 and 10,469,614.

Chronological Developments:

• Filing & Initial Pleadings (2019-12-06): Plaintiff Bright Data Ltd. (formerly Luminati Networks Ltd.) filed a complaint against Teso LT, UAB, Metacluster LT, UAB, and Oxysales, UAB (collectively referred to as Oxylabs) in the Eastern District of Texas, asserting infringement of U.S. Patent Nos. 10,257,319, 10,484,510, and 10,469,614.
• Pre-trial Motions & Claim Construction (2021-06-24): The parties engaged in discovery and filed various motions, including Daubert and dispositive motions. The court considered motions related to claim construction, and the parties had agreed to certain claim constructions adopted by the district court. [cite: "Paper 19 - USPTO", October 19, 2022] A motion for a hearing regarding an "O2 Micro issue" pertaining to the interpretation of "server" claim terms was filed by Oxylabs. [cite: "Oxylabs, UAB EX1012 Page 1 of 5", February 04, 2021]
• Trial Events & Verdict (2021-11-01 to 2021-11-05): A jury trial commenced on November 1, 2021. On November 5, 2021, the jury returned a verdict finding that Oxylabs infringed at least one claim of the asserted patents, that none of the asserted patents were invalid, and that Oxylabs's infringement was willful. The jury awarded Bright Data $7,474,876.00 in lost profits.
• Post-Trial Motions (2022-02-10): Following the verdict, Bright Data filed a motion for a preliminary and permanent injunction against Oxylabs, which the District Court denied on February 10, 2022.
• Mediation (2021-12-12 to 2022-01-06): The court ordered mediation, staying all deadlines on December 12, 2021. Mediation was held on January 6, 2022, but the parties were unable to resolve their disputes.

Parallel PTAB IPR Proceedings

• IPR2020-01266 (U.S. Patent No. 10,257,319): This IPR was filed by Oxysales, UAB (a part of Oxylabs) against Luminati Networks Ltd. (Bright Data). The Patent Trial and Appeal Board (PTAB) denied institution of this IPR on discretionary grounds on December 23, 2020. [cite: "Paper 19 - USPTO", October 19, 2022] This meant the PTAB did not proceed to a full merits review of the patentability of the challenged claims in this specific IPR.

Federal Circuit Appeal and Final Disposition

A significant development impacting the validity of Patent No. 10,257,319 occurred at the Federal Circuit. The U.S. Court of Appeals for the Federal Circuit affirmed earlier U.S. Patent and Trademark Office decisions invalidating claims from two patents held by Bright Data, specifically U.S. Patent Nos. 10,257,319 and 10,484,510. [cite: "Legal Timeline Between Oxylabs and Luminati (now Bright Data)", undated (from previous search step)] This Federal Circuit decision, likely an appeal from a PTAB Final Written Decision in a different IPR or an ex parte reexamination for these patents, would have a preclusive effect on the validity findings from the district court's jury verdict. However, the specific Federal Circuit case number, the parties to that appeal (if different from the district court litigation), and the precise date of this invalidation decision were not found in the provided search results. Consequently, the final disposition of the district court litigation, particularly concerning the infringement judgment and damages awarded for Patent No. 10,257,319, would depend on how this Federal Circuit invalidity ruling was applied (e.g., via a post-judgment motion or appeal).

I was unable to identify the counsel of record representing the petitioner(s) in IPR2023-00038. My searches for "IPR2023-00038 parties," "IPR2023-00038 petitioner," and "IPR2023-00038 patent 10257319 parties" did not yield specific information about the petitioner or patent owner for this particular Inter Partes Review (IPR).

The search results primarily provided details for IPR2023-00381, a different IPR case, where Vital Connect Inc. was the Petitioner and Bardy Diagnostics Inc. was the Patent Owner, concerning U.S. Patent No. 11,051,743 B2. While there are related district court proceedings between Bardy Diagnostics, Inc. and Vital Connect, Inc. concerning other patents, this information does not directly identify the parties or their counsel for IPR2023-00038, which involves patent 10257319.

Given that IPR2023-00038 is listed as "Procedural Termination," it is likely that the petition was not instituted or was withdrawn early, which may explain the lack of readily available public information regarding the specific parties and their counsel of record.

IPR2023-00038 is an Inter Partes Review (IPR) before the Patent Trial and Appeal Board (PTAB), not a patent infringement case in a district court. In an IPR, there is a Petitioner who challenges the patent and a Patent Owner who defends the patent. Therefore, instead of identifying counsel for a "defendant," I will identify counsel for the Patent Owner, as they are the party defending the patent at issue.

The case IPR2023-00038 concerns U.S. Patent No. 10,257,319. While the provided prompt refers to "defendant(s)" and a "patent infringement case," IPR2023-00038 is an Inter Partes Review (IPR) proceeding before the Patent Trial and Appeal Board (PTAB). In an IPR, the party defending the patent is the Patent Owner.

Based on available information for related IPRs that involved motions for pro hac vice admission, the Patent Owner for U.S. Patent No. 10,257,319, and therefore the party whose counsel would be analogous to "defendant's counsel," is likely Bright Data, Ltd. (formerly known as Luminati Networks Ltd.). Conversely, "Oxylabs" (Teso LT, UAB, Oxysales, UAB, and Metacluster LT, UAB) are identified as defendants in district court litigation concerning the '319 patent, with Bright Data, Ltd. as the plaintiff. Given the context of the IPR, it is more appropriate to identify counsel for the Patent Owner of U.S. Patent No. 10,257,319 in IPR2023-00038.

Based on motions for pro hac vice admission in related IPRs, the following attorneys have been associated with representing Patent Owners in defending patents:

• Cliff Win, Jr.

  • Role: Back-up counsel (pro hac vice admission was granted conditionally for this role).
  • Firm: Not explicitly stated in the provided snippet for IPR2023-00038, but typically associated with a firm for pro hac vice admission.
  • Note: Mr. Win was granted conditional pro hac vice admission in several IPRs, including those related to IPR2023-00945, IPR2023-00946, and IPR2023-00947, indicating experience in PTAB proceedings.

• Theresa M. Dawson, Esq.

  • Role: Counsel (moved for pro hac vice admission).
  • Firm: Carter Arnett PLLC, Dallas, Texas.
  • Note: Ms. Dawson is an experienced litigation attorney with 14 years of practice, including patent cases in district court and intellectual property disputes in federal courts and the ITC. She has argued cases before the Fifth and Federal Circuits and has familiarity with patent prosecution history and prior art.

• Bradley D. Liddle

  • Role: Lead counsel (registered patent practitioner).
  • Firm: Not explicitly stated in the provided snippet, but identified as a registered practitioner.
  • Note: Mr. Liddle is a registered patent practitioner (Reg. No. 71,106) and served as lead counsel in related IPRs, fulfilling the requirement for pro hac vice admission of other counsel.

It is important to note that the provided information specifically mentions conditional pro hac vice admission for Cliff Win, Jr. as back-up counsel, and for Theresa M. Dawson, Esq. as counsel, with Bradley D. Liddle as lead counsel in related IPR proceedings. While these attorneys have been associated with defending patents in IPRs, the exact counsel of record for the specific IPR2023-00038 at all stages, especially given its procedural termination, may require direct access to the full docket. The provided snippets indicate these individuals were involved in defending patents for Patent Owners in similar IPR contexts.