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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_________________________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_________________________________________
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`Twilio Inc.
`Petitioner
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`v.
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`TeleSign Corporation
`Patent Owner
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`Patent No. 7,945,034
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`Patent Filing Date: October 31, 2005
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`Title: PROCESS FOR DETERMINING CHARACTERISTICS OF A
`TELEPHONE NUMBER
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`__________________________________________________
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`Inter Partes Review No.: IPR2016-00360
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`_________________________________________________
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`PATENT OWNER’S MOTION FOR OBSERVATIONS
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`7977972
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`1
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`Patent Owner TeleSign submits the following observations on the January
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`16, 2017 cross-examination of Petitioner Twilio’s reply declarant Mr. David H.
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`Williams (Ex. 2036).
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`1. Williams testified that he could not opine on what someone without 4 years
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`of direct e911 experience would understand Nguyen to disclose, at 150:25-158:2,
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`165:16-167:20 and 169:12-171:3. This testimony is relevant to paragraphs 12, 14,
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`46, 48, 49, and 50 of Mr. Williams’s declaration (Ex. 1039) and to the assertions
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`regarding how a formerly agreed-upon POSA would understand Nguyen’s
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`discussion of the E911 system, for example at pages 16-17 of the Reply (Paper No.
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`37), pages 1-2, 14, 28-29, and 52-53 of the Petition (Paper No. 2), and pages 60-64
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`in the Response (Paper No. 27). This testimony is relevant because it shows that
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`Mr. Williams disqualified himself from opining on what a POSA would
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`understand Nguyen to disclose given that the parties have agreed that a POSA does
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`not require such four years of direct work experience. (See Resp. at § 3, p. 10.)
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`2. Williams testified that he is not offering claim-construction opinions at
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`210:17-19. This testimony is relevant to ¶ 31 of his declaration (Ex. 1039), which
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`addresses a claim-construction dispute regarding the scope of “carrier.” The
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`testimony is relevant because it confirms that Mr. Williams is not offering a claim-
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`construction position for the term “carrier” (or any other term).
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`3. Williams testified that his declaration contains a typo in ¶ 15 of his
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`declaration, at 171:7-172:5 and 192:22-193:12. The opening sentences refers to
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`the ’034 patent when it should refer to Nguyen. The testimony is inherently
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`relevant to correct a substantive inaccuracy in an expert declaration regarding what
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`document is being referenced.
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`4. Williams testified that he had not fully considered how the allegedly relevant
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`portions of the system of De Petris work or how Nguyen would be modified to
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`apply the teachings of De Petris at 196:4-198:20 and 200:16-201:16. This
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`testimony is relevant to ¶ 52 of his declaration, and to assertions regarding the
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`combination of De Petris and Nguyen at pages 2-13 in the Reply (Paper No. 37),
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`pages 19-21 and 31-34 in the Petition (Paper No. 2), and pages 32-36 in the
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`Response (Paper No. 27). The testimony is relevant because it confirms that ¶ 52
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`is not offered (nor is any paragraph offered) to show combinability of Nguyen with
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`De Petris or any other aspect of obviousness or invalidity of the ’034 patent.
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`5. Williams testified that the level of ordinary skill in the art regarding Nguyen
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`would require four years of direct E911 work experience, and that “expecting
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`anybody who just happens to have a bit of a technical bent to come in and
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`understand this in any sort of detailed level is just not reasonable,” at 113:19-
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`114:16, 129:6-130:21, 171:7-172:5, 177:6-17 and 192:22-193:12. But the level of
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`skill in the art regarding the ’034 patent and De Petris would not require such work
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`experience. See, Pet. 9-10; Resp. 10-11. This testimony is relevant because it
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`contradicts the Petitioner’s position that Nguyen is analogous art to the ’034 patent
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`and that Nguyen is analogous art to De Petris, as neither the ‘034 patent nor De
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`Petris discuss E911 systems.
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`6. Williams testified that he is not offering any opinions regarding invalidity,
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`obviousness, claim construction, written description, or patent-subject-matter
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`eligibility, at 200:16-201:16 and 210:17-19. This is relevant to confirm the scope
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`of Mr. Williams’ opinions.
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`7. Williams testified that carriers do forward location information of an
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`incoming call to an ALI database and that PSAPs do not need to make location
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`requests “to a wireless carrier” for location information, at 33:10-34:8, 48:24-56:17
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`and 137:1-139:10. This testimony is relevant to ¶¶ 10, 42 of his declaration (Ex.
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`1039), and to assertions regarding whether the game server of Nguyen must
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`identify and contact the carrier of a telephone number to obtain location
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`information, at pages 16-17 in the Reply (Paper No. 37), at pages 2, 14, 28-31 and
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`46-47 in the Petition (Paper No. 2), and pages 28-36 and 54-64 in the Response
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`(Paper No. 27). The testimony is relevant because it indicates the technological
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`feasibility of a phone company initially forwarding location information to a third
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`party with an incoming call, without the need to query a carrier for the location
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`information.
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`8. Williams testified that the examples he draws from are among many possible
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`system configurations, for example, at 17:16-18:20, 19:23-22:6, 76:5-77:14, and
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`79:12-81:1. This testimony is relevant to statements regarding what the game
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`server of Nguyen allegedly must do to obtain location information, for example, at
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`4-5, 9-16 and 18-19 in the Reply (Paper No. 37), at pages 2, 6-7, 14 and 28-31 in
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`the Petition (Paper No. 2), and at 28-32, 49, 54 and 58-63 in the Response (Paper
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`No. 27). This testimony is relevant because it suggests what a system would do
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`“depends” on system and network “choices,” rather than a single, unavoidable (i.e.,
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`necessary) technical approach.
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`9. Williams testified that the wireless ALI database stores location information
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`from multiple telephone carriers, at 38:1-3 and 59:2-14. This testimony is relevant
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`to statements regarding the necessity of identifying and contacting a particular
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`carrier to obtain location information, at pages 13-14 in the Reply (Paper No. 37),
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`at 30-31 and 33-34 in the Petition (Paper No. 2), and at page 29 in the Response
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`(Paper No. 27). This testimony is relevant because it speaks to the existence of a
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`third-party database that stored location information reported by multiple carriers,
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`apart from databases maintained by individual carriers.
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`10. Williams testified that he was interpreting Nguyen to suggest commercial
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`alternatives to the e911 system and explaining what those commercial alternatives
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`might be, at 84:24-86:11, 124:3-23 and 152:24-153:18. This testimony is relevant
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`to statements regarding what Nguyen teaches, and particularly to whether
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`Nguyen’s game server necessarily identifies and contacts a phone carrier, at pages
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`16-17 in the Reply (Paper No. 37), at 1-2, 6-7, 14-15, 20, 28-31 and 46-47 in the
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`Petition (Paper No. 2), and at 28-30 and 49 in the Response (Paper No. 27). This
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`testimony is relevant because it calls into question whether the processes described
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`in Mr. Williams’ declaration are necessarily present in the teachings of Nguyen, or
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`provide information or context that is not necessary to the practice of Nguyen.
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`February 20, 2017
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`Respectfully Submitted,
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`/Jesse J. Camacho/
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`Jesse J. Camacho (Reg. No. 51,258)
`Counsel for Patent Owner
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`7977972
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that on February 20, 2017, a copy of the
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`foregoing was served by electronic mail (or is being served by electronic mail
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`simultaneously with its filing on even date) on the persons listed below at their
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`corresponding addresses, which includes all counsel of record.
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`Wayne Stacy
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`wayne.stacy@bakerbotts.com
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`Eliot D. Williams
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`eliot.williams@bakerbotts.com
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`Sarah J. Guske
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`sarah.guske@bakerbotts.com
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`Respectfully submitted,
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`By: /AMY M. FOUST/
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`Amy M. Foust
`Reg. No. 57,782
`Counsel for Patent Owner
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`Dated: February 20, 2017
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`SHOOK, HARDY & BACON L.L.P.
`2555 Grand Blvd.
`Kansas City, MO 64108
`(816) 474-6550
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`7977972
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