Case: 20-2118 Document: 128 Page: 1 Filed: 08/30/2023
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
BRIGHT DATA LTD.,
Plaintiff-Cross-Appellant
v.
BI SCIENCE (2009) LTD.,
Defendant-Appellant
BI SCIENCE INC.,
Defendant
______________________
2020-2118, 2020-2181, 2021-1664, 2021-1667
______________________
Appeals from the United States District Court for the
Eastern District of Texas in No. 2:18-cv-00483-JRG, Chief
Judge J. Rodney Gilstrap.
______________________
Decided: August 30, 2023
______________________
ROBERT M. HARKINS, JR., Cherian LLP, Berkeley, CA,
argued for plaintiff-cross-appellant. Also represented by
KORULA T. CHERIAN; RONALD WIELKOPOLSKI, Washington,
DC; COLBY DAVIS, Allen & Overy LLP, Washington, DC.
MICHAEL A. CHARISH, Charish Law Group PC, New
York, NY, argued for defendant-appellant. Also argued by
Case: 20-2118 Document: 128 Page: 2 Filed: 08/30/2023
2 BRIGHT DATA LTD. v. BI SCIENCE (2009) LTD.
WILLIAM MILLIKEN, Sterne Kessler Goldstein & Fox, PLLC,
Washington, DC. Also represented by JOHN CHRISTOPHER
ROZENDAAL,.
______________________
Before PROST, SCHALL, and HUGHES, Circuit Judges.
PROST, Circuit Judge.
Bright Data Ltd. (“Bright Data”)1 sued BI Science
(2009) Ltd. and BI Science Inc. (individually or collectively,
“BI Science”) 2 for patent infringement in the Eastern Dis-
trict of Texas. The district court entered final judgment
that: (1) incorporated all terms of the parties’ mediated set-
tlement agreement; (2) incorporated all terms of the arbi-
tration award (the product of an arbitration that followed
the district court’s enforcement of the settlement); and
(3) held claim 108 of
U.S. Patent No. 9,241,044 (“the ’044
patent”) invalid as indefinite. J.A. 3. BI Science appeals,
arguing that the district court erred by finding an enforce-
able agreement. Bright Data cross-appeals the district
court’s determination that claim 108 of the ’044 patent is
invalid as indefinite. We affirm.
BACKGROUND
Bright Data brought claims of patent infringement—
asserting the ’044 patent and
U.S. Patent No. 9,742,866
(“the ’866 patent”)—and false advertising against BI
1 Bright Data was formerly known as Luminati Net-
works Ltd. Order (June 9, 2021), ECF No. 40.
2 The district court indicated that it is unclear
whether BI Science (2009) Ltd. and BI Science Inc. are
merely two names for the same entity or whether the two
entities are separate. J.A. 2 n.1.
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BRIGHT DATA LTD. v. BI SCIENCE (2009) LTD. 3
Science. 3 J.A. 656–83; see also Am. Compl., Luminati Net-
works Ltd. v. BI Sci. Inc., No. 2:18-cv-00483 (E.D. Tex. Feb.
19, 2019), ECF No. 28. BI Science, a company headquar-
tered and with its principal place of business in Israel,
moved to dismiss for lack of personal jurisdiction.
J.A. 727–32. The district court denied that motion, deter-
mining that it had specific personal jurisdiction over BI
Science based on its purposeful contacts with Texas and
the direct relationship between those contacts and its al-
leged infringement and false advertising. J.A. 858–68.
After its motion to dismiss was denied, BI Science an-
swered and counterclaimed for declaratory judgment of in-
validity. Answer to Am. Compl. and Countercl. ¶¶ 109–
114, Luminati Networks Ltd., No. 2:18-cv-00483 (E.D. Tex.
May 28, 2019), ECF No. 85. Subsequently, as part of claim
construction, claim 108 of the ’044 patent was determined
to be invalid as indefinite. J.A. 1373–74, 1410. This deter-
mination was later incorporated into the district court’s fi-
nal judgment, J.A. 3, and is the subject of Bright Data’s
cross-appeal.
Following its claim construction order, the district
court noted its “opinion that th[e] case could benefit from
renewed mediation efforts” and ordered the parties to con-
duct a mediation session within ten days. J.A. 1449. Nine-
teen days later, on February 23, 2020, the parties filed a
joint motion to stay and notice of settlement, which
(1) stated “[t]he Parties hereby notify the Court that all
matters in controversy between the Parties have been set-
tled, in principle,” (2) requested a thirty-day stay “so that
appropriate dismissal papers may be submitted,” and
(3) was signed by counsel for Bright Data and BI Science.
J.A. 1474–75. The district court granted the joint motion
3 Bright Data also brought claims of tortious inter-
ference, J.A. 683, but the district court declined to exercise
supplemental jurisdiction over those claims, J.A. 861–63.
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4 BRIGHT DATA LTD. v. BI SCIENCE (2009) LTD.
to stay and cancelled the hearing set for the following day.
J.A. 1477. The next day, the mediator also filed a report
indicating that mediation had “resulted in settlement of all
claims.” J.A. 1478.
Bright Data moved to enforce the settlement about a
month after the joint notice of settlement was filed.
J.A. 1479–95. BI Science opposed with arguments related
to why its performance should be excused. J.A. 1547–54.
At a hearing on the motion to enforce, BI Science argued
for the first time that there was no binding agreement be-
tween the parties. The district court disagreed, determin-
ing that “[i]t’s clear that the major points were agreed to
and a meeting of the minds was reached at the time the
Court was informed of the settlement.” J.A. 1694. And
since “that resolution includes at a minimum a binding pro-
vision that any unresolved issues . . . would be resolved by
binding arbitration,” the court instructed the parties to ei-
ther work together to resolve, or submit to arbitration to
resolve, any outstanding issues related to the settlement
terms. J.A. 1693–94.
After arbitration, the district court entered final judg-
ment that fully incorporated the settlement agreement and
arbitration award. J.A. 3. The judgment also incorporated
the court’s indefiniteness determination on claim 108 of the
’044 patent.
Id. BI Science timely appealed. Bright Data
timely cross-appealed. We have jurisdiction under
28
U.S.C. § 1295(a)(1).
DISCUSSION
BI Science raises two issues on appeal. First, it argues
that the district court erred by denying its motion to dis-
miss for lack of personal jurisdiction. Second, it argues
that the district court erred by finding a binding agreement
between the parties. As for the cross-appeal, Bright Data
raises a single issue. It argues that the district court’s in-
definiteness determination as to claim 108 of the ’044 pa-
tent was erroneous. We address these issues in that order:
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BRIGHT DATA LTD. v. BI SCIENCE (2009) LTD. 5
(1) personal jurisdiction; (2) existence of an enforceable
agreement; and (3) indefiniteness.
I
Because jurisdiction is a threshold matter, we address
it first. Unlike with subject-matter jurisdiction, a party
can consent to personal jurisdiction. Ins. Corp. of Ir. v.
Compagnie des Bauxites de Guinee,
456 U.S. 694, 702–04
(1982). BI Science dedicated significant briefing to its ar-
gument that the district court erred by denying BI Sci-
ence’s motion to dismiss for lack of personal jurisdiction.
See Appellant’s Br. 21–38; Appellant’s Reply Br. 24–31.
But BI Science also acknowledged that if we affirm the dis-
trict court’s determination that a binding settlement agree-
ment was formed, then the district court had personal
jurisdiction over BI Science for purposes of enforcing that
settlement agreement—i.e., it had consented to personal
jurisdiction at least to that extent. Oral Arg. at 0:40–57. 4
For the reasons discussed below, we affirm the district
court’s determination that there was an enforceable agree-
ment. As a result, we need not reach BI Science’s personal-
jurisdiction arguments related to the underlying lawsuit. 5
II
We apply the law of the regional circuit, here the Fifth
Circuit, when reviewing a district court’s enforcement of a
settlement agreement. Panduit Corp. v. HellermannTyton
Corp.,
451 F.3d 819, 825 (Fed. Cir. 2006). Under Fifth
4 https://oralarguments.cafc.uscourts.gov/default.as
px?fl=20-2118_06072023.mp3.
5 This dispute about personal jurisdiction also does
not impact the cross-appeal issue because BI Science itself
brought a counterclaim of invalidity. See Answer to Am.
Compl. and Countercl. ¶¶ 109–114, Luminati Networks
Ltd., No. 2:18-cv-00483 (E.D. Tex. May 28, 2019), ECF
No. 85.
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6 BRIGHT DATA LTD. v. BI SCIENCE (2009) LTD.
Circuit law, “[a] district court may summarily enforce a set-
tlement agreement if no material facts are in dispute, and
in such circumstances we review the district court’s order
for abuse of discretion only.” In re Deepwater Horizon,
786
F.3d 344, 354 (5th Cir. 2015) (footnote omitted); cf. Haggart
v. United States,
943 F.3d 943, 947 (Fed. Cir. 2019) (“[W]e
join the majority of our sibling courts in holding that a dis-
trict court’s decision whether to summarily enforce a set-
tlement agreement is reviewed for an abuse of discretion.”).
When the district court’s enforcement of a settlement
agreement does depend on resolution of factual disputes,
its factfindings are reviewed for clear error. Sundown En-
ergy, L.P. v. Haller,
773 F.3d 606, 614 (5th Cir. 2014).
BI Science argues that any finding by the district court
that there was a meeting of the minds related to the settle-
ment agreement was clearly erroneous. Appellant’s Br. 39.
Considering the record before the district court and the po-
sitions taken before it, we discern no error.
When Bright Data moved to enforce the settlement
against BI Science, it represented that “[a] full and com-
plete set of terms was reduced to writing and agreed upon
by both sides and confirmed in writing,” and it attached
that writing as an exhibit. J.A. 1482. Additionally, Bright
Data presented a detailed factual narrative about media-
tion and the parties’ resulting seventeen-term agreement.
J.A. 1482–85. In opposition, BI Science did not contest
Bright Data’s position that there was an agreement be-
tween the parties, nor did it challenge Bright Data’s factual
narrative. Instead, BI Science’s arguments were premised
on the existence of an agreement; it asked that perfor-
mance under the settlement be either excused or delayed.
J.A. 1549–50. BI Science did contend, in support of its ex-
cuse or delay arguments, that the operative agreement was
not the final or formal version of the settlement. J.A. 1550
n.3; J.A. 1552. Still, regardless of this characterization of
the agreement’s formality, one would search in vain for any
hint that BI Science did not consider itself bound or did not
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BRIGHT DATA LTD. v. BI SCIENCE (2009) LTD. 7
intend to bind itself to the agreement when it filed this op-
position.
When the district court held a hearing on the motion to
enforce, BI Science argued for the first time that the medi-
ated settlement “by itself is not a fully binding settlement”
and that it did not “contain[] all the material elements and
requirements needed to form a completely binding settle-
ment agreement.” J.A. 1659–60. However, its attorney
also affirmed that he had knowingly participated in the fil-
ing of the joint notice of settlement representing that all
matters were resolved, J.A. 1658–59—the precise type of
notice the district court noted BI Science’s counsel had
“signed off on . . . probably hundreds of times in [his] prac-
tice before th[at] [c]ourt,” J.A. 1676. Further, while BI Sci-
ence’s counsel was careful not to call the parties’ agreement
a settlement, he still acknowledged that something was
agreed to. J.A. 1661 (“We agreed and came to an agree-
ment on a framework to settle the case.”); J.A. 1672 (“[W]e
agreed to a framework proposed by the mediator as a way
to hopefully get this case resolved.”); J.A. 1676–77 (“[W]e
had an agreement to settle the case in principle based on
the mediator’s proposal in that framework, if you will.”);
J.A. 1692 (“There’s no question that was part of the agree-
ment.”). The district court also heard testimony from the
mediator that he understood both parties to have accepted
his proposal and resolved the dispute. J.A. 1692–93.
The district court did not err in concluding that the par-
ties’ correspondence and conduct, both at the time of agree-
ment and in response to the motion to enforce, objectively
indicated mutual assent. Thus, we see no basis to disturb
the district court’s conclusion that when “both sides know-
ingly caused to be filed a joint notice . . . there was a reso-
lution and a settlement of this case,” which included “at a
minimum a binding provision that . . . any unresolved is-
sues would be resolved by binding arbitration.”
J.A. 1693–94.
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8 BRIGHT DATA LTD. v. BI SCIENCE (2009) LTD.
We also note that the extent to which BI Science raised
factual disputes related to a meeting of the minds is diffi-
cult to discern. Indeed, even on appeal, BI Science confus-
ingly argues both that the facts surrounding the mediated
settlement are undisputed, Appellant’s Br. 39, while also
contending that “Bright Data cannot demonstrate that
there are no disputed issues of material fact . . . because
there is no objective evidence of a meeting of the minds, or
mutual assent,” id. at 56. The district court made reason-
able inferences about mutual assent based on the facts as
presented in Bright Data’s motion, which BI Science did
not contest or challenge, and in light of representations BI
Science’s counsel made to the court. BI Science has not
shown clear error in those inferences or, to whatever extent
they were put at issue, pointed to a clearly erroneous ap-
prehension of the facts that underlie them.
As for BI Science’s additional argument that the dis-
trict court erred in finding a binding agreement because
the mediated settlement was missing material terms, we
disagree. Appellant’s Br. 51–53. We note that this argu-
ment too was not presented in BI Science’s opposition to
the motion to enforce. At the hearing, BI Science argued
that the mediated settlement was “a multifaceted, compli-
cated agreement,” and given this complexity it was missing
key terms. J.A. 1673. The district court did not err in re-
jecting this contention. See J.A. 1694.
BI Science primarily argues that the absence of terms
defining time for performance rendered the agreement
nonbinding—i.e., timing was essential or material. We are
not persuaded. “Generally, the materiality of a contract
term is determined on a contract-by-contract basis, in light
of the circumstances of the contract.” Amedisys, Inc. v.
Kingwood Home Health Care, LLC,
437 S.W.3d 507, 514
(Tex. 2014). BI Science has not explained, either here or at
the district court, why terms specifying the timing of per-
forming certain obligations were necessarily essential to
this particular settlement agreement. Time for
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BRIGHT DATA LTD. v. BI SCIENCE (2009) LTD. 9
performance has been found nonessential in other settle-
ment agreements. See CherCo Props. v. Law, Snakard &
Gambill, P.C.,
985 S.W.2d 262, 266 (Tex. App. 1999); cf.
Houston Cnty. v. Leo L. Landauer & Assocs.,
424 S.W.2d
458, 463 (Tex. App. 1968) (“[W]here the contract does not
fix a time for performance, the law allows reasonable time
for its performance.”); Jennings v. Jennings,
625 S.W.3d
854, 865 (Tex. App. 2021) (noting that even where timing
is included as a term, “a date of performance in a contract
does not in itself mean that the parties intended timely per-
formance to be of the essence”). We do not see a reason to
conclude otherwise based on the circumstances here. 6
Next, BI Science argues that the district court erred by
concluding that there was an enforceable settlement agree-
ment because the agreement does not comply with the re-
quirements of Texas Rule of Civil Procedure 11 (“Texas
Rule 11”). We need not address whether the agreement
here complies with Texas Rule 11 because BI Science for-
feited this argument by failing to raise it at the district
court. Indeed, there are several independent reasons to
find forfeiture here. First, BI Science never mentioned
Texas Rule 11 at the district court until after a final judg-
ment was entered. Oral Arg. at 20:36–21:19; see also Ap-
pellant’s Reply Br. 16 (citing only briefing on a motion to
stay enforcement of the final judgment in support of its ar-
gument that this issue was raised at the district court).
Next, even setting aside BI Science’s failure to raise the
specific rule, its applicability is contingent on a threshold
choice-of-law argument that BI Science also failed to pre-
sent. Finally, evaluating compliance with Texas Rule 11
would require resolving factual issues that were not
6 We also reject BI Science’s argument that terms 10
and 12 of the agreement are facially contradictory. The
terms simply refer to the separate obligations of each
party.
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10 BRIGHT DATA LTD. v. BI SCIENCE (2009) LTD.
presented based on a record that was not developed with
those issues in mind.
At the outset, we are unpersuaded that noncompliance
with Texas Rule 11 is merely a new argument supplied in
support of a properly raised issue—namely, contract inva-
lidity. BI Science’s position would require us to find that
any assertion that a contract is invalid preserves all argu-
ments about every possible basis for contract invalidity.
This asks too much. See Thomas v. Ameritas Life Ins.
Corp.,
34 F.4th 395, 401–02 (5th Cir. 2022) (where the dis-
trict court had passed on contract enforceability in general,
the issue of contract invalidity under a particular state
statute was forfeited where it was raised for the first time
on appeal); cf. In re KP Eng’g, L.P.,
63 F.4th 452, 457 (5th
Cir. 2023) (theory of unjust enrichment based on fraud, du-
ress, or undue advantage presented for the first time on
appeal was forfeited even where theory of unjust enrich-
ment based on passive receipt of a benefit was presented at
the district court); Green Tree Servicing v. House,
890 F.3d
493, 503 (5th Cir. 2018) (finding new theory in support of
invalidity of arbitration clause was forfeited because it was
not raised before the district court even where a different
theory of invalidity was raised at the district court); Colony
Ins. Co. v. Wright ex rel. Wrongful Death Beneficiaries of
Wright,
16 F.4th 1186, 1189 n.1 (5th Cir. 2021) (finding for-
feiture where party pointed to a new clause in insurance
policy on appeal to support its previously raised position
that there was coverage);
id. at 1191 (Costa, J., concurring)
(explaining why even though contract interpretation is a
legal question subject to de novo review, it is not a “pure
question of law” such that it should be excepted from the
rules of forfeiture); cf. also Digital-Vending Servs. Int’l,
LLC v. Univ. of Phoenix, Inc.,
672 F.3d 1270, 1273 (Fed.
Cir. 2012) (“This court reviews claim constructions without
deference. However, a party may not introduce new claim
construction arguments on appeal or alter the scope of the
claim construction positions it took below.” (cleaned up)).
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BRIGHT DATA LTD. v. BI SCIENCE (2009) LTD. 11
Simply put, BI Science’s Texas Rule 11 arguments do not
amount to “supplementing an [existing invalidity] argu-
ment with new authority.” Thomas, 34 F.4th at 402. In-
stead, compliance with Texas Rule 11 is a new issue, which
was not presented—via BI Science’s cursory arguments
about contract invalidity at the hearing—or passed upon at
the district court.
Regardless, BI Science’s failure to raise an issue about
the applicability of Texas state law at the district court is
another reason to find forfeiture here. The Fifth Circuit
has concluded that “[f]ailure to raise an argument before
the district court waives that argument, including an argu-
ment for choice-of-law analysis.” Fruge v. Amerisure Mut.
Ins. Co.,
663 F.3d 743, 747 (5th Cir. 2011); see also Am. Int’l
Trading Corp. v. Petroleos Mexicanos,
835 F.2d 536, 540
(5th Cir. 1987). 7 Even though Bright Data’s motion to en-
force the settlement argued that federal law governed
questions of contract validity because of the underlying fed-
eral claims, J.A. 1489, BI Science did not ask the district
court to engage in a choice-of-law analysis, assert that
Texas law applied, or identify any particularities to Texas
contract law (even aside from Texas Rule 11) that might
impact the district court’s determination that there was an
enforceable agreement between the parties. The applica-
tion of Texas Rule 11 was predicated on BI Science first
prevailing on this unadvanced choice-of-law argument at
the district court. 8
7 “Though previous cases may have used the term
‘waiver’ instead of ‘forfeiture,’ their holdings are good law
for a case, like this one, involving the issue of forfeiture.”
In re Google Tech. Holdings LLC,
980 F.3d 858, 863 n.8
(Fed. Cir. 2020).
8 Because the only substantive contract law differ-
ence identified between federal common law and Texas
state law relates to BI Science’s forfeited argument about
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12 BRIGHT DATA LTD. v. BI SCIENCE (2009) LTD.
Finally, even if the applicability of Texas law and non-
compliance with Texas Rule 11 were both proper new ar-
guments in support of an issue already presented, BI
Science still failed to preserve the factual disputes required
to resolve the question of compliance with Texas Rule 11.
Texas Rule 11 requires, among other things, that a settle-
ment “be in writing, signed and filed with the papers as
part of the record.” Tex. R. Civ. P. 11. However, the district
court was never asked to pass upon the question of whether
the series of emails between the parties and the mediator
culminating in the agreement to file a joint notice of settle-
ment were, taken together, sufficient to satisfy the writing
requirement—or which emails should be considered part of
the whole. Likewise, the district court was never asked to
determine which emails from BI Science’s attorney could
be considered “signed” by considering “the context and sur-
rounding circumstances.” Cunningham v. Zurich Am. Ins.
Co.,
352 S.W.3d 519, 529 (Tex. App. 2011). Indeed, at oral
argument, BI Science could not point to anywhere in the
record where its counsel raised the issue of signatures at
all. Oral Arg. at 23:46–24:40. “Once we start dissecting
the record, we find ourselves exactly where the forfeiture
rule says we should not be—deciding issues based on inad-
equately developed facts.” Colony Ins. Co., 16 F.4th at 1191
(Costa, J., concurring).
In sum, we affirm the district court’s determination
that there was a binding settlement agreement between
the parties. Since BI Science does not challenge any of the
arbitrator’s determinations about disputed contract terms,
we affirm the district court’s judgment to the extent it
Texas Rule 11, we decline to resolve the parties’ dispute
about which law applies. Citations to Texas contract cases
in this opinion are illustrative of general contract princi-
ples and do not indicate an implicit resolution of this dis-
pute.
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BRIGHT DATA LTD. v. BI SCIENCE (2009) LTD. 13
incorporated the settlement agreement and incorporated
the arbitration award.
III
On cross-appeal we also affirm the district court’s de-
termination that claim 108 of the ’044 patent is indefinite.
The ’044 patent generally relates to “an apparatus and
method for improving communication over the Internet by
using intermediate nodes, and in particular, to using de-
vices that may doubly function as an end-user and as an
intermediate node.” ’044 patent col. 1 ll. 13–17.
Claim 108 is reproduced below:
108. A method for fetching over the Internet a
first content, identified by a first content identifier,
by a first device, identified in the Internet by a first
identifier, from a second server identified in the In-
ternet by a third identifier via a second device iden-
tified in the Internet by a second identifier, using a
first server, the method comprising the steps of:
(a) sending the second identifier to the first
server;
(b) receiving a second request from the first
device, the second request includes the first
content identifier and the third identifier;
(c) in response to receiving the second re-
quest, sending the first content identifier to
the second server using the third identifier;
(d) receiving the first content from the sec-
ond server; and
(e) in response to receiving the first con-
tent, sending the first content to the first
device using the first identifier.
’044 patent claim 108 (emphasis added).
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14 BRIGHT DATA LTD. v. BI SCIENCE (2009) LTD.
Section 112’s definiteness requirement mandates that
“a patent’s claims, viewed in light of the specification and
prosecution history, inform those skilled in the art about
the scope of the invention with reasonable certainty.” Nau-
tilus, Inc. v. Biosig Instruments, Inc.,
572 U.S. 898, 910
(2014). “We review a determination of indefiniteness de
novo.” BASF Corp. v. Johnson Matthey Inc.,
875 F.3d 1360,
1365 (Fed. Cir. 2017). To the extent reliance on extrinsic
evidence is appropriate, we review any relevant factfind-
ings for clear error.
Id.
The district court first concluded that the preamble of
claim 108 is limiting. J.A. 1366. Bright Data does not chal-
lenge that determination. Next, the district court con-
cluded that the claim is indefinite because “[t]he recital of
‘via a second device’ in Claim 108 fails to find any reasona-
bly clear meaning in the context of the remainder of the
claim, in particular as to the steps recited in the body of the
claim.” J.A. 1373. The court also found Bright Data’s ar-
guments and expert testimony about whether all the steps
can be performed by the second device unhelpful in provid-
ing reasonable certainty about which steps must be per-
formed by the second device. J.A. 1374. We agree with the
district court’s analysis.
Bright Data argues that a person of ordinary skill in
the art (“POSA”) would understand that all the steps of
claim 108 are performed by the “second device.” In other
words, despite the preamble’s requirement that the steps
are, among other things, “[a] method for fetching over the
Internet a first content, identified by a first content identi-
fier, by a first device,” ’044 patent claim 108 (emphasis
added), a POSA would understand that a first device need
not perform any of the enumerated steps. In support of this
argument, Bright Data contends that a POSA would un-
derstand both that “second device” is synonymous with the
specification’s discussion of “tunnel device” and that the fo-
cus of claim 108 is on the steps performed by this sec-
ond/tunnel device. Bright Data contrasts this
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BRIGHT DATA LTD. v. BI SCIENCE (2009) LTD. 15
understanding with claim 81, bearing an identical pream-
ble, which it contends involves steps a POSA would under-
stand to be performed by the client/first device. In
addition, Bright Data points to expert testimony explain-
ing that the enumerated steps in claim 108 could be per-
formed by a second device. Cross-Appellant’s Br. 48 (citing
J.A. 1047–51). We are not persuaded that the specification
or this expert testimony resolves the uncertainty created
by the language of claim 108.
The specification does not define a tunnel device as a
second device. In fact, the specification explains that “[a]
device may be both a client device and a tunnel device, and
the roles may be assumed one at a time, or may be em-
ployed in parallel using multitasking or multiprocessing.”
’044 patent col. 51 ll. 43–46 (emphasis added). Thus, even
if we look to the specification’s descriptions of a tunnel de-
vice, there is still a zone of uncertainty about the roles of a
“first device” and a “second device” required to practice
claim 108.
Similarly, Bright Data’s expert’s testimony that a sec-
ond device could perform the steps does not resolve this un-
certainty. If all the steps are performed by the “second
device,” then the role of “by a first device” in the preamble
is unknown. Alternatively, if “by a first device” means that
some of the steps are performed by that device (Bright Data
insists this is not the case), then it is uncertain which steps
those are. Thus, even if Bright Data is correct that a POSA
would understand from the language of the steps alone
that they can be performed by a second device, there is no
reasonable certainty about how to harmonize an under-
standing of the limiting preamble with the body of the
claim.
For these reasons, we affirm the district court’s deter-
mination that claim 108 of the ’044 patent is invalid as in-
definite.
Case: 20-2118 Document: 128 Page: 16 Filed: 08/30/2023
16 BRIGHT DATA LTD. v. BI SCIENCE (2009) LTD.
CONCLUSION
We have considered the parties’ remaining arguments
and find them unpersuasive. We affirm the district court’s
final judgment.
AFFIRMED
COSTS
No Costs.
