The story’s first chapter dates back to July 2018, when Luminati (now Bright Data) sued Oxylabs, claiming that Oxylabs’ technology infringed Bright Data’s patents. Oxylabs has always maintained the position that Oxylabs has not infringed on any of Bright Data’s patents.
In fact, Bright Data’s allegations were resolved in the first concluded case, as a settlement was reached between both parties, resulting in all claims and counterclaims in the case being dismissed with prejudice. Hence, our existing and future partners should not be concerned regarding Bright Data’s messages regarding Oxylabs' products.
That said, little did we know at the time, for Bright Data, it wasn’t necessarily all about winning the case. As further actions against us have shown, it seems Bright Data’s aim might be all about tying up its competition in endless legal proceedings, distracting its rivals from their core business operations, and discouraging regular companies from using non-Bright Data proxy providers. Indeed, Bright Data filed two additional lawsuits against Oxylabs. In those lawsuits, Oxylabs asserts that Bright Data’s patents are not infringed, are invalid, and are not eligible for patent protection.
Hence, Oxylabs will continue to protect its technology and reputation utilizing all available legal remedies, including appellate process to ensure fair market practices that encourage legitimate competition for all market stakeholders’ interests.
CEO at Oxylabs
July 19, 2018
Case No. 299
Luminati (now Bright Data) sued Oxylabs, claiming that two Oxylabs’ products - Oxylabs’ residential proxy network service and Real-Time Crawler - allegedly infringed Bright Data’s two patents, U.S. Patents 9,241,044 and 9,742,866
August 21, 2019
Case No. 299
The Court issued its claim construction opinion (a so-called Markman opinion), which proved to be critical for the later stages of Case No. 299. With this decision, at Oxylabs’ request, the Court invalidated one of the three independent claims of Bright Data’s patents (Claim 108) as indefinite and issued an order construing the claims of Bright Data’s patents.
September 09, 2019
Case No. 299
Oxylabs filed its Motion for Judgment on the Pleadings (a so-called Alice Motion) seeking a ruling that Bright Data’s patents were invalid for impermissibly claiming an abstract idea.
November 04, 2019
Case No. 299
Oxylabs also filed a Motion for Summary Judgment that Oxylabs did not infringe Bright Data’s patents. Both motions (i.e., Motion for Judgment on the Pleadings and Motion for Summary Judgment) were pending, and if the Court had granted either of them, the lawsuit would have concluded on the merits in Oxylabs’ favor.
November 05, 2019
Case No. 299
On December 12, 2018, in Case No. 299, Bright Data asserted certain non-patent claims against Oxylabs. Oxylabs wrote to Bright Data on September 10, 2019, and advised that these additional claims asserted in Case No. 299 were frivolous and that the continued pursuit of the claims would subject Bright Data to liability for Oxylabs’ attorney’s fees. On November 4, 2019, rather than pursue these additional non-patent claims asserted in Case No. 299, Bright Data voluntarily withdrew them without prejudice.
Bright Data filed two new patent lawsuits against Oxylabs, claiming that Oxylabs’ technologies allegedly infringed on five additional patents, U.S. Patents 10,469,614, 10,257,319, 10,484,510 (Case No. 395) and 10,484,511 10,637,968 (Case No. 396). In Case No. 395, Bright Data also once again asserted the same additional non-patent claims, which Bright Data voluntarily withdrew in Case No. 299 back in November 2019.
February 04, 2020
Case No. 299
As the settlement was reached by both parties, Case No. 299 was dismissed with prejudice in accordance with the parties’ settlement agreement. An important point to note is that Bright Data agreed to resolve the case while fully understanding that it can never again assert infringement against Oxylabs’ accused products on the same patents.
March 05, 2020
Case No. 73
After witnessing what we believed to be continuous efforts of Bright Data to mislead the market regarding Oxylabs’ products, Oxylabs sued Bright Data and its investor EMK Capital LLP on the following claims: unfair competition, false advertising, false patent marking, defamation/business disparagement, tortious interference with prospective business relations, tortious interference with the existing contract, breach of contract, and conspiracy (Case No. 73).
May 26, 2020
Case No. 395
Oxylabs filed antitrust counterclaims against Bright Data, and claims against Bright Data’s investor EMK Capital LLP and Hola (Hola VPN Ltd. and Hola Networks Ltd.) in Case No. 395. The claims asserted by Oxylabs include: violation and conspiracy to violate the antitrust laws of the United States, monopolization and attempted monopolization of the residential proxy marketplace, and the filing of sham patent-infringement lawsuits against competitors, including Oxylabs. To promote fair marketplace practices, Oxylabs sought to redress the injuries it has suffered and hold Bright Data, EMK Capital, and Hola accountable for their actions.
April 19, 2021
Case No. 395
Luminati (now Bright Data) and Oxylabs dismissed their non-patent claims through stipulation. Oxylabs’ antitrust claims against EMK were dismissed after the Court found that EMK could not conspire under the antitrust laws with its related entity, Bright Data.
July 01, 2021
Case No. 396
The parties filed a Joint Stipulation and Motion to Dismiss With Prejudice Patent Infringement Claims Against Metacluster LT, UAB (the “Stipulation”). In the Stipulation, Bright Data represented what acts it accused of infringement and Metacluster represented that it had not performed any such acts. Subject to the Stipulation, Bright Data moved to dismiss its claims of infringement against Metacluster with prejudice, and defendants agreed to the dismissal. Based on the parties’ Stipulation, the Court entered an Order on July 2, 2021, dismissing Bright Data’s claims against Metacluster with prejudice.
November 05, 2021
Case No. 395
The jury issued a verdict finding certain claims infringed and not invalid. While we are disappointed in the decision, we thank the jury for their service. We note that the jury’s decision relates solely to a claim for monetary damages. Oxylabs is legally entitled to continue providing the accused services. The Court has not issued any orders related to continued use of Oxylabs’ residential proxy service. We intend to continue to pursue our positions both with the District Court and, if necessary, at the Court of Appeals. Oxylabs continues to offer its services in an uninterrupted manner.
January 07, 2022
Case No. 011
Oxylabs has filed the lawsuit against Bright Data claiming the infringement of three patents of Oxylabs. Oxylabs alleges that its competitor infringes on Oxylabs’ patents claiming Smart Proxy Rotator and web script management technologies for the provisioning of web scraping and other business services.
September 06, 2022
Case No. 396
The Court issued a sua sponte order staying and administratively closing Case No. 396 (concerning the alleged infringement of Bright Data patents on data center IP technologies) pending any appeal and entry of a final and non-appealable judgment in Case No. 395 (concerning the alleged infringement of Bright Data patents on residential proxy technologies).
|Patent||USPTO actions||Status||Relevant to Case Nos.|
|10,257,319||IPR No. IPR2021-01492||Instituted and stayed in view of Director Vidal’s decision in IPR2021-00861||395|
|IPR No. IPR2022-00135||Instituted|
|Oxylabs IPR No. IPR2022-00861 with joinder to IPR2021-01492||Denial vacated and remanded by Director Vidal for further consideration|
|IPR No. IPR2022-00915||Institution decision pending|
|EPR No. 90/014,875||Instituted and stayed pending IPR2021-01492|
|Oxylabs IPR No. IPR2022-01109 with joinder to IPR2022-00135||Institution decision pending|
|10,484,510||IPR No. IPR2021-01493||Instituted and stayed in view of Director Vidal’s decision in IPR2021-00862||395|
|IPR No. IPR2022-00138||Instituted|
|Oxylabs IPR No. IPR2022-00862 with joinder to IPR2021-01493||Denial vacated and remanded by Director Vidal for further consideration|
|IPR No. IPR2022-00916||Institution decision pending|
|EPR No. 90/014,876||Instituted and stayed pending IPR2021-01493|
|Oxylabs IPR No. IPR2022-01110 with joinder to IPR2022-00138||Institution decision pending|
|10,469,614||EPR. No. 90/014,880||Final office action rejecting all claims asserted against Oxylabs||395|
|10484511||EPR No. 90/014827 & 90/014624||Final office action rejecting all claims asserted against Oxylabs||396|
|10637968||EPR No. 90/014,816 & 90/014,652||Non-final office action rejecting all claims asserted against Oxylabs||396|
|11044342||IPR No. IPR2022-00103||Instituted||N/A|
|11044344||IPR No. IPR2022-00353||Instituted||N/A|
|11190622||IPR No. IPR2022-00687||Institution decision pending||N/A|
|11206317||IPR No. IPR2022-00936||Institution decision pending||N/A|
|10491713||EPR No. 90/019,041||Non-final office action rejecting all claims subject to reexamination||N/A|
|11050852||EPR No. 90/014,920||Non-final office action rejecting all claims subject to reexamination||N/A|
|11044346||EPR No. 90/014,940||Non-final office action rejecting all claims subject to reexamination||N/A|
|11272034||PGR No. PGR2022-00052||Institution decision pending||N/A|
1. Claim Construction Order is the process of giving meaning to a patent’s claims by defining selected claim terms.
2. Markman Hearing is a pretrial hearing in a U.S. District Court during which a judge examines evidence from all parties on the appropriate meanings of relevant keywords used in a patent claim. “Markman” comes from the United States Supreme Court’s decision in Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996), which held that it is up to the Court (as opposed to a jury) to interpret a patent’s claims. A Markman hearing is also known as a “claim construction hearing.”
3. Motion for Judgment on the Pleadings/Motion to Dismiss are motions that a party to a lawsuit may file, asking the Court to dismiss the case before it proceeds to discovery and a trial. They are motions taking issue with a party’s claim as a matter of law.
4. Alice Motion refers to the United States Supreme Court’s decision in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208 (2014), which held that a trial court must determine whether a patent is invalid for claiming unpatentable subject matter. The trial court must first determine whether the challenged claims “are directed to a patent-ineligible concept,” i.e., an abstract idea. If the claims are directed to an abstract idea, the Court then must determine whether the claims recite “additional elements” that “transform the nature” of the claims into a patent-eligible application of the abstract idea.
5. Pretrial conference is a Court hearing with the Judge and the parties to a case conducted prior to trial.
6. Inter Partes Review (IPR) - Inter partes review is a trial proceeding conducted at the Patent Trial and Appeals Board to review the patentability of one or more claims in a patent only on a ground that could be raised under §§ 102 or 103, and only on the basis of prior art consisting of patents or printed publications.
7. Ex Partes Reexamination (EPR) - Ex parte reexamination may be requested by either a patent owner or a third party in order to challenge the novelty or nonobviousness of one or more claims in a patent. The scope of prior art submitted in support of the challenge is limited to printed publications and patents, while other types of prior art (such as product prior art) cannot be raised in a request for ex parte reexamination.
8. Post Grant Review (PGR) – With respect to newer issued patents, Post Grant Review process begins with a third party filing a petition on or prior to 9 months after the grant of the patent or issuance of a reissue patent. A post grant review may be instituted upon a showing that it is more likely than not that at least one claim challenged is unpatentable.
Oxylabs’ Council Profile:
Charhon Callahan Robson & Garza is a Dallas, Texas based law firm that handles business and intellectual-property litigation. Since its founding in 2013, CCRG has represented leading corporations — including Berkshire Hathaway companies (McLane and MBM), Ericsson, Samsung, OpenTable, Denbury, Cloudflare, and VTech — in business and intellectual-property disputes. The firm regularly litigates patent-infringement lawsuits on its clients’ behalves across the United States, including in the Eastern District of Texas, District of Delaware, and Northern District of California.
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