Trials@uspto.gov
`571-272-7822
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` Paper 43
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` Entered: January 12, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`TWILIO INC.,
`Petitioner,
`
`v.
`
`TELESIGN CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2016-00360
`Patent 7,945,034 B2
`____________
`
`
`Before SALLY C. MEDLEY, JUSTIN T. ARBES, and KIMBERLY
`McGRAW, Administrative Patent Judges.
`
`
`PER CURIAM.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`On January 4, 2017, a conference call was held between counsel for
`
`the parties and Judges Medley and Arbes in response to Patent Owner’s
`
`email request of December 29, 2016 that the Board rule now to expunge or
`
`otherwise indicate (1) Petitioner’s Reply (Paper 37) and (2) declaration by
`
`Petitioner’s declarant David H. Williams (Exhibit 1039) will be disregarded
`
`or, alternatively, that the Board authorize Patent Owner to submit a paper
`
`detailing the alleged contradictions or material contained in the Reply and
`
`
`571-272-7822
`
`
`
`
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`
`
`
`
`
`
` Paper 43
`
`
`
` Entered: January 12, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`TWILIO INC.,
`Petitioner,
`
`v.
`
`TELESIGN CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2016-00360
`Patent 7,945,034 B2
`____________
`
`
`Before SALLY C. MEDLEY, JUSTIN T. ARBES, and KIMBERLY
`McGRAW, Administrative Patent Judges.
`
`
`PER CURIAM.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`On January 4, 2017, a conference call was held between counsel for
`
`the parties and Judges Medley and Arbes in response to Patent Owner’s
`
`email request of December 29, 2016 that the Board rule now to expunge or
`
`otherwise indicate (1) Petitioner’s Reply (Paper 37) and (2) declaration by
`
`Petitioner’s declarant David H. Williams (Exhibit 1039) will be disregarded
`
`or, alternatively, that the Board authorize Patent Owner to submit a paper
`
`detailing the alleged contradictions or material contained in the Reply and
`
`
`
`IPR2016-00360
`Patent 7,945,034 B2
`
`
`
`declaration that go beyond the scope of Patent Owner’s Response. Patent
`
`Owner provided a court reporter and a transcript of the call was filed as
`
`Exhibit 2035 (“Tr.”).
`
`During the call, Patent Owner provided two reasons for requesting
`
`that the Reply and Exhibit 1039 be stricken in their entirety. Tr. 4:18–25.
`
`First, Patent Owner states that paragraph 15 of Exhibit 1039 presents a new
`
`proposed definition of the level of ordinary skill in the art and that such a
`
`change “reaches back in time and revises all of the former references” to the
`
`level of ordinary skill in the art “throughout the Petition, the original expert
`
`Declaration, and arguably even [Patent Owner’s] response.” Id. at 6:11–7:5;
`
`see also id. at 7:6–8:17, 15:11–16:1. Second, Patent Owner states that the
`
`Reply introduces new evidence and Exhibit 1039 provides testimony about
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`arrival of location information during a 911 call that is contradictory to
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`testimony provided by Petitioner’s original declarant. See, e.g., id. at 20:17–
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`22:18 (discussing Ex. 2025, 65:4–10, 72:17–20; Ex. 1039 ¶¶ 43, 44). Patent
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`Owner’s email request of December 29, 2016 for the conference call also
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`provided two examples, reproduced below, to support their requests:
`
`1) Level of skill in the art. Compare the level of skill
`in the art described in the Petition and by
`Petitioner’s first expert (Pet. § IV and Ex. 1002 at
`¶ 20) to that of its new expert (Ex. 1039 at ¶ 15).
`2) Location Information automatically arriving at a
`PSAP (emergency dispatcher) during a 911
`call. Compare:
`a.
`Ex. 2025 at 65:4-10, 72:17-20
`(Petitioner’s first expert), and
`
`2
`
`
`
`IPR2016-00360
`Patent 7,945,034 B2
`
`
`
`b.
`
`c.
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`Ex. 1039 at ¶¶ 10, 24, 42, 43, 44
`(Petitioner’s new expert); in view of
`Ex. 1003 at 12:39-41 (the primary
`reference).
`
`
`Patent Owner does not seek leave to file a sur-reply. Tr. 15:4–10.
`
`Petitioner responds that only four sentences in the Reply are at issue,
`
`that these sentences cite to only a few paragraphs of the declaration, and that
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`these sentences are “pure Reply material in that they are directly challenging
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`the assertion made by Patent Owner and Patent Owner’s expert in their
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`Brief.” Id. at 10:6–11:17. Petitioner further states that these sentences are
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`not necessary to establish its prima facie case, but rather confirm testimony
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`from Petitioner’s original declarant and therefore are relevant to determining
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`the credibility of the various declarants. Id. at 11:18–23, 12:3–24.
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`Petitioner also states the Reply does not raise a new issue regarding the level
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`of ordinary skill in the art and that the declarant is merely addressing a
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`subissue in one of the asserted references about how to use geolocation
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`technology. Id. at 12:25–13:12. Petitioner also responds that the majority of
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`Exhibit 1039 is directed to opposing Patent Owner’s Motion to Amend and
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`that striking the entire Declaration is unnecessary. Id. at 9:8–14, 10:17–
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`11:5.
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`Upon considering both parties’ arguments, Patent Owner’s request
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`that the Board rule now to strike or expunge the Reply (Paper 37) and
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`Exhibit 1039 in their entirety is denied.
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`A reply may only respond to arguments raised in the patent owner’s
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`response. 37 C.F.R. § 42.23(b). Patent Owner has identified the material
`
`3
`
`
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`IPR2016-00360
`Patent 7,945,034 B2
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`that it alleges is new or contradictory to material provided in the Petition.
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`The panel will determine for itself whether this material is outside the proper
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`scope of a reply when the parties’ briefs are reviewed and the final written
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`decision is prepared, and can discount any such evidence or arguments
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`accordingly.
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`Counsel for Patent Owner also requested that if reasons provided by
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`Patent Owner during the conference call were “not enough” for the Board to
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`strike the Reply and Exhibit 1039 “right now,” Patent Owner should be
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`authorized to submit a paper setting forth in writing why the material should
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`be stricken. Tr. 18:3–9. As explained during the conference call, this
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`request is denied. Id. at 18:10–14. The conference call itself provided
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`Patent Owner an opportunity to identify the material that it believes is
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`outside the proper scope of a reply and explain why the material should be
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`stricken. Id. Further, the parties can address the issue during the oral
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`hearing, should a hearing be requested.
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`In consideration of the foregoing, it is hereby:
`
`ORDERED that Patent Owner’s request that the Board rule now to
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`expunge or otherwise indicate that Petitioner’s Reply (Paper 37) and Exhibit
`
`1039 will be disregarded as improper is DENIED; and
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`FURTHER ORDERED that Patent Owner’s request for authorization
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`to file a paper setting forth in writing its position regarding the Reply and
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`Exhibit 1039 is DENIED.
`
`
`
`4
`
`
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`5
`
`IPR2016-00360
`Patent 7,945,034 B2
`
`
`
`FOR PETITIONER:
`
`Wayne Stacy
`wayne.stacy@bakerbotts.com
`
`
`
`FOR PATENT OWNER:
`Jesse Camacho
`JCAMACHO@shb.com
`
`Elena McFarland
`EMCFARLAND@shb.com
`
`Amy Foust
`TeleSignIPR@shb.com
`
`
`Mary J. Peal
`mpeal@shb.com
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