`
`
`IPR2016-00360, Paper No. 56
`May 9, 2017
`
`trials@uspto.gov
`571-272-7822
`
`
`
`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
`
`____________
`
`Held: March 27, 2017
`____________
`
`
`
`
`
`
`
`BEFORE: KIMBERLY MCGRAW, JUSTIN T. ARBES, and
`SALLY C. MEDLEY, Administrative Patent Judges.
`
`
`
`The above-entitled matter came on for hearing on Monday,
`March 27, 2017, commencing at 9:00 a.m., at the U.S. Patent
`and Trademark Office, 600 Dulany Street, Alexandria,
`Virginia.
`
`
`
`
`
`IPR2016-00360
`Patent 7,945,034 B2
`
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`
`
`
`
`WAYNE STACY, ESQ.
`Baker Botts LLP
`2001 Ross Avenue
`Dallas, Texas 75201-2980
`
`
`
`
`
`
`
`
`
`JESSE J. CAMACHO, ESQ.
`ELENA MCFARLAND, ESQ.
`Shook, Hardy & Bacon, LLP
`2555 Grand Boulevard
`Kansas City, Missouri 64108-2613
`
`
`
`
`
` 2
`
`
`
`
`
`
`ON BEHALF OF PATENT OWNER:
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2016-00360
`Patent 7,945,034 B2
`
`
`P R O C E E D I N G S
`- - - - -
`JUDGE MCGRAW: Good morning, everyone. We
`will now hear argument in Case IPR2016-00360, concerning U.S.
`patent number 7,954,034, with Twilio, Incorporated as the
`Petitioner, and Telesign Corporation as the Patent Owner.
`I'm Judge McGraw. To my right is Judge Medley, and
`to my left is Judge Arbes.
`Counsel for the parties, could you please introduce
`yourselves, starting with the Petitioner?
`MR. STACY: I am Wayne Stacy for Twilio, the
`Petitioner.
`JUDGE MCGRAW: Good morning.
`MR. CAMACHO: Your Honor, I'm Jesse Camacho for
`Telesign, and with me also is Ms. Elena McFarland.
`MS. MCFARLAND: Good morning.
`JUDGE MCGRAW: Welcome. Good morning.
`Thank you for being here. As we set forth in our hearing notice,
`we did set forth the procedure that we will operate under, but I
`did want to go over it just to make sure everyone understands.
`Each side will have a total of one hour argument. The
`Petitioner will argue first and will present its case with regard to
`the challenged claims and the grounds on which we instituted
`trial. Thereafter, Patent Owner will offer its opposition to the
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
` 3
`
`
`
`
`
`
`
`IPR2016-00360
`Patent 7,945,034 B2
`
`Petitioner's case and may argue its motion to exclude and
`contingent motion to amend if it chooses.
`Petitioner may reserve time to rebut, and Patent Owner
`may reserve time to rebut Petitioner's opposition to the motion to
`exclude and contingent motion to amend.
`I'll remind the parties that the Petitioner bears the
`burden of proving its proposition of unpatentability by a
`preponderance of the evidence, and also as we noted in our order,
`this hearing is open to the public, and a transcript of it will
`become part of the public record.
`We also ask that you mention your slides by number so
`that it can be reflected in the record.
`With that, I invite Mr. Stacy to begin, and would you
`like to reserve -- I'm sorry, let me ask: How much time would
`you like to reserve?
`MR. STACY: Thirty minutes.
`JUDGE MCGRAW: And how much would you like to
`
`reserve?
`
`MR. CAMACHO: Ten minutes. Your Honor, can I
`put a finer point on that, if possible?
`JUDGE MCGRAW: Sure.
`MR. CAMACHO: If it's agreeable to the Board and
`the Patent Owner, if I don't use my full time, is it okay if I use the
`balance of my time for rebuttal but then not more than 10
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
` 4
`
`
`
`
`
`
`
`IPR2016-00360
`Patent 7,945,034 B2
`
`minutes? I don't know if I would need it. Like if I only go for 20
`minutes, can I use the rest for rebuttal of 30 minutes?
`JUDGE MCGRAW: Only to rebut issues that were --
`MR. CAMACHO: Only to rebut the motion -- the
`opposition to motion to amend to be excluded, yes, of course.
`JUDGE MCGRAW: Are you ready to begin?
`MR. STACY: I am. So unless the Board had a
`specific place it wanted to start, out of all the briefing, I pulled
`three issues that seemed to be most important. The first was
`electronically determining the carrier; the second, registering
`based on the phone carrier; and to a lesser extent, there was some
`argument about actually registering based on verification code.
`Again, unless you want to change the order, I was
`going to start at the top and talk about electronically determining
`the carrier first.
`JUDGE MCGRAW: It might be helpful if you address
`“based on” and its claim construction and your support that the
`references teach registering “based on the phone carrier.”
`MR. STACY: Perfect. So going to slide 30 is the
`introduction slide there. So when we look at the disputed claim
`language, it's registering the user through at least one of the
`communication networks based on, and then it gives a list of
`criteria, based on the phone or type of phone, the phone carrier
`and the geographic characteristics.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
` 5
`
`
`
`
`
`
`
`IPR2016-00360
`Patent 7,945,034 B2
`
`
`So we can look at the spec for any one of those to try to
`understand what based on means, and when you look to the spec,
`the term "based on" is not there, so it shows up first in an
`amendment and later on in the prosecution, so what do we know
`about based on?
`Plain ordinary meaning is all that we have put forward
`as a construction. Patent Owner came back and proposed the
`following -- this straight out of their briefing, their construction
`was "using the recited items, the geography, the phone type, the
`carrier, as criteria or factors," and notice that criteria or factors, so
`that's their proposal.
`We asked their expert what that meant, and their
`experts very interestingly came forward and said, Well, one of the
`issues here is, Does it influence, and really what the Patent
`Owner's own expert was saying is that based on is a broad
`meaning, that it can be direct, so I'm putting in as a direct input,
`or I can use it as an indirect input, and you can again see that, and
`any decision would be fully supported by the Patent Owner's own
`expert in that particular regard.
`But what he said was nothing more than plain meaning.
`Based on has a broad meaning, and then you have to go to the
`disclaimer. Is there anything in the spec or the file history that
`disclaims based on and says based on must be -- unequivocally
`must be a direct input into the process rather than an indirect
`input?
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` 6
`
`
`
`
`
`
`
`IPR2016-00360
`Patent 7,945,034 B2
`
`
`JUDGE ARBES: Counsel, just to go back to the Patent
`Owner's declarant again.
`MR. STACY: Yes.
`JUDGE ARBES: Did he say indirect or he said
`influencing as opposed to rendering a final decision?
`MR. STACY: Correct. He said influence, so if you
`look at line 13, my screen is a little smaller than yours, so if you
`look at line 13:
`"ANSWER: I would say a factor is -- it's a piece of
`information that influences a decision."
`JUDGE ARBES: But he didn't say indirectly.
`MR. STACY: No. No, he didn't.
`JUDGE ARBES: So why does that support your
`reading of the claim that an indirect factor is sufficient?
`MR. STACY: Because an indirect factor influences. A
`direct factor influences. An indirect factor influences. He would
`not take the position that a direct factor is the only thing taught by
`the spec, and the broader meaning of direct and indirect would be
`excluded.
`JUDGE ARBES: So if I have a lot of determinations
`that are made in series, and any one factor that is looked at in that
`whole series of determinations and calculations, as long as I
`finally reach a decision on whether to register the user, anything
`along the way is an indirect factor in your view, right?
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
` 7
`
`
`
`
`
`
`
`IPR2016-00360
`Patent 7,945,034 B2
`
`
`MR. STACY: I'm not sure I would go with anything
`along the way. I think their whole example is, Well, I plug it into
`the electricity and to the socket and I get electricity. Is that based
`on? Well, that's not how a normal person would read criteria
`going into a computer system. That's the whole butterfly beats its
`wings and does it change the world?
`Well, if you go far enough, yes. That's kind of the
`absurd version of what Patent Owner was putting out there, but in
`terms of actual data criteria going in, if I have determined them,
`this step requires that they be used in the registration process in
`some way, either directly as a direct input or indirectly as an
`influencer on one of those inputs.
`And in this particular claim, for example, you can
`determine those things upfront, and you could register based on
`those things, other things. There's no direct correlation that's
`necessary until you look at the claim language and specifically go
`to, What am I registering on?
`I'm registering on these things, so, for example, I could
`determine type of phone by using area code or quality of service.
`I wouldn't have to use carrier, but in this particular claim, it wants
`all of these inputs into registration either directly or indirectly,
`and in fact the spec -- these are the only examples in the spec or I
`guess I should say there are -- the primary examples in the spec
`are using indirect calculations.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
` 8
`
`
`
`
`
`
`
`IPR2016-00360
`Patent 7,945,034 B2
`
`
`So you remember I think the Board pointed out about
`Nigeria in their opening remarks. There's also some kind of dig
`on Nebraska. You don't want to register people from Nebraska
`either. There you're looking at geography and how is this patent
`teaching determining geography?
`Well, one of the prime examples is this whole issue of I
`take the phone. I look at the phone number. I determine the
`carrier. From the carrier, I know what type of phone that carrier
`offers, so I determine phone type, and from phone type, I can then
`determine whether geography is to be trusted or not. That's a
`geographic characteristic. That's the Nigeria example.
`How do I know if the call is from Burbank or Nigeria?
`Well, if it is a landline with an address in Burbank, I got it, but if
`it's just an area code, it doesn't tell me enough. I need to,
`according to this example, indirectly determine geography, and so
`that's what the registering is in this specification.
`JUDGE ARBES: But the end result, the geographic
`characteristic, is used directly in making the determination of
`whether to register the user. If I figure out the geographic
`characteristic is Nigeria or Nebraska, I might not register the user.
`It's a direct factor, correct?
`MR. STACY: In this example, geography is one direct
`factor or actually it's -- I cannot trust geography based on the area
`code. That is the direct input in this particular example.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
` 9
`
`
`
`
`
`
`
`IPR2016-00360
`Patent 7,945,034 B2
`
`
`JUDGE ARBES: So the end result is a geographic
`characteristic, and that could be -- this user is located in
`Nebraska. That is a direct factor in making a decision whether to
`register the user, right?
`MR. STACY: If you're going with the positive, this
`user is located in Nebraska, that's an example in the spec,
`absolutely direct.
`JUDGE ARBES: So why does that not match up with
`the Patent Owner's reading of the claim that in order to register
`based on these four things, it has to be a direct factor or direct
`influence on the decision?
`MR. STACY: There's no example in the spec that
`takes all four of those things as direct inputs.
`JUDGE ARBES: But you would acknowledge there is
`one -- there is at least one using geographic characteristic as a
`direct factor, right?
`MR. STACY: There is an example that uses -- takes
`based on and uses the criteria as a direct input.
`JUDGE ARBES: Okay.
`MR. STACY: So that's perfectly fitting with the plain
`meaning and perfectly fitting with the Patent Owner's own
`definition. It's a broad term based on it can be direct or indirect,
`and there's -- when you go and look at that, you have to find some
`reason to exclude an indirect, an influence, and there's nothing in
`the spec that does that.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` 10
`
`
`
`
`
`
`
`IPR2016-00360
`Patent 7,945,034 B2
`
`
`All the examples in the spec use -- when you go with
`these multiple elements use them indirectly to determine other
`things. You could use geography without using carrier, no
`question. You could do geography without doing carrier.
`JUDGE ARBES: You could, but that's not what the
`Patent Owner claimed.
`MR. STACY: Not what they claimed, but we're talking
`about claim construction, so we're looking at what the spec has to
`say, so the question is: Is based on narrow in terms of does it go
`to what's direct input or is based on something broader, direct and
`indirect?
`And their own expert says it influences, and there's no
`question in their example that carrier influences the determination
`of phone type, and that phone type influences the determination
`of whether I can trust geography or not.
`It doesn't tell you about geography. It tells you, Can I
`trust it or not, and that's a broader geographic characteristic, so in
`that particular example, you're not putting geography, per se, in.
`I'm not saying, This call comes from Nebraska. I'm saying, I
`don't know where this calls comes from. It's an indirect
`influencer.
`JUDGE ARBES: Can I ask you about, according to the
`specification, in the first paragraph on the right-hand side under
`Summary of the Invention, I believe the Patent Owner has
`pointed to this language about determining a lot of different
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` 11
`
`
`
`
`
`
`
`IPR2016-00360
`Patent 7,945,034 B2
`
`things, and in this paragraph determining phone type, determining
`geographic characteristics, and also determining phone carrier.
`I believe Patent Owner has tied this first paragraph to
`the paragraph beginning at column 2, line 44, that the
`determination of the telephone number characteristics can be used
`in denying or granting access.
`Why does that not support the Patent Owner's view that
`we have a paragraph talking about determining all these different
`things including the things that are in the claim now, and then I'm
`saying, I use those telephone number characteristics to deny or
`grant access?
`MR. STACY: I think that it's completely consistent
`with Patent Owner's construction, the portion related to direct
`input. It's not a disclaimer of the broader portion. There's
`nothing here that says it has to be that way, that I've got to take
`those, and I put them in in a flow chart. Yes, yes, yes or no, one
`of the diagonal diamond box. There's nothing here that mandates
`they are direct inputs, and that's what you're looking for because
`based on is a broader term.
`There's something I would like to point you to. If you
`look at column 9, lines 10 through 12, and I pulled a clip here for
`you to make it easy. But this is reference to the breadth. The
`phone number characteristics then have been determined, and it
`goes: "A determination can then be made regarding how to use
`this extrapolated data."
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` 12
`
`
`
`
`
`
`
`IPR2016-00360
`Patent 7,945,034 B2
`
`
`It's a broad indication of how this can be used. It's not
`saying it must be one-to-one correspondence. It must be a direct
`input. It's just saying it can be used. You can decide, and then
`when you go in that paragraph it says, Oh, who can make the
`decision? A third party can make the decision. The website
`registration process could make the decision. Telesign could
`make the decision.
`It leaves a lot of breadth in this term, so it comes back
`to the number 1 rule of claim construction, if you're going to bury
`plain and ordinary meaning, you need express disclaimer, and
`there's nothing in here that is an express disclaimer.
`There is support for using it directly. I would argue
`there's no support for using all four directly like they're claiming,
`but there is support for using these factors directly. There's also
`support for using the factors indirectly, and on top of that, you all
`know the case law, even if that was a single embodiment like in
`the Vas-Cath (phonetic) case. If there was only a single
`embodiment in here, you would need express disclaimer language
`to limit the based on to something narrower than its plain and
`ordinary meaning.
`JUDGE ARBES: What would Patent Owner have to
`have added to have such a disclaimer? I don't believe the spec
`uses the terms direct or indirect, right?
`MR. STACY: The spec is broad on this. That's the
`whole point. The spec does not narrow the issue down. It leaves
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` 13
`
`
`
`
`
`
`
`IPR2016-00360
`Patent 7,945,034 B2
`
`it broad, and you know if you're in an infringement suit, they're
`going to be looking for the broadest definition possible on what
`“based on” its.
`And it's only in this unique proceeding that they come
`in with this narrow reading, with no support in the file history for
`narrowing it down, no support in the spec. If they wanted to have
`it as a direct input where it was not just an influencer, where it
`was a direct input, they could have described that in the spec.
`They could have actually put that in the claim and said directly
`based on.
`When they tried to amend their claims they could have
`done that, but notice they didn't even try to amend their claims to
`specific that issue while they were addressing other claim
`construction issues.
`JUDGE ARBES: Just as a general proposition, isn't
`that the ordinary meaning? If I say doing something based on A,
`B and C, isn't the ordinary meaning of that that I'm using A, B
`and C as some sort of factor or criteria in the calculation? Isn't
`that the ordinary reading of that phrase?
`MR. STACY: There's absolutely no support in the
`record for that, and I would say no. When you look at the
`definition, based on does not require it be a direct input. It could
`be based on several factors that help calculate other factors, and
`in this particular instance based on you're using -- for example,
`you're using the phone carrier to determine the type of phone.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` 14
`
`
`
`
`
`
`
`IPR2016-00360
`Patent 7,945,034 B2
`
`
`So if I'm making a decision based on the type of phone,
`how did I get there? It's based on my inputs, so all of them are
`inputs. We're just talking about the order of how you come out
`with your determination, but for that particular example, if I took
`carrier out, I did determine carrier, I wouldn't know phone type
`and I wouldn't know if I could trust geography.
`So then you could even make your decision. Based on
`would be meaningless at that point in time. You could not
`operate the system, and I would challenge the Board to find the
`specific example in the spec where based on is using all of these
`directly as inputs. It's not there.
`The place where you're using multiple inputs is where
`you're using them as influencers to calculate all of these things.
`The Patent Owner could have said based on or directly based on
`or using as an input, those type of things had it wanted to, but it
`went with the broadest language possible, based on.
`That's in that same line of terms like associated with,
`adjacent to. The Board, the Patent Office, the Federal Circuit has
`always viewed those as very, very broad lists.
`JUDGE MCGRAW: But the claim lists type of phone,
`carrier and geographically characteristic as separate elements.
`MR. STACY: Yes.
`JUDGE MCGRAW: So I'm not sure I follow your
`argument that you could combine them. The claim recites them
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
` 15
`
`
`
`
`
`
`
`IPR2016-00360
`Patent 7,945,034 B2
`
`as separate elements, so why shouldn't we assume they each have
`a separate meaning?
`MR. STACY: They should have a separate meaning,
`and an invention or an accused product that determines or did
`registration based on geography alone, where I use geography
`based on something completely independent, that wouldn't be an
`infringing system. It wouldn't be a covered system, but if I'm
`determining geography on the other factors, then they all have to
`be read in.
`They have a very specific embodiment here, and if you
`think, their whole goal was to address this issue about there
`wasn't sufficient information to know whether you could trust an
`area code, but I could register just on area code. That would be
`geography alone, but they said that wouldn't work, so I need to
`put in other factors, so what do I put in? Phone type.
`What else do I put in? So they don't trust phone type
`exactly, so they want to know carrier. This is a built upon system
`to give it more accuracy, so you have to put all of those things in,
`so the reading that we're giving with the broad based on being
`indirect or direct absolutely encompass all of those things because
`if you look at the prior art, it's got carrier. It's got the phone type,
`and it's got geography.
`So all of them are there, so each of them have been
`given specific meaning, but there's absolutely nothing -- when the
`Board has to write the decision that says based on means a direct
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` 16
`
`
`
`
`
`
`
`IPR2016-00360
`Patent 7,945,034 B2
`
`input and excludes an indirect input, there's going to be no
`support for that in the spec. The Patent Owner didn't point to the
`file history. There's nothing showing express disclaimer.
`When you look at the dictionary definitions, the
`dictionary definitions are broad. They don't exclude an influencer
`in that factor.
`I'll just leave you again with column 9. When you look
`at this, the determination can then be made regarding how to use
`this extrapolated data. This is the proof that there's an extreme
`breadth in how this claim construction based on should be, or I
`guess I should say not extreme breadth, but it's plain and ordinary
`meaning. There's nothing here that limits exactly how based on
`how should be construed.
`So I think it would be a very aggressive construction
`that said based on means a direct input and not as an influencing
`factor because there's nothing to support that.
`JUDGE ARBES: Counsel, can you respond to Patent
`Owner's argument about Dr. Shamos's testimony at Exhibit 2025,
`page 51, where he said that users register based on electrical
`power to the gaming server? He said that that's not -- he wouldn't
`understand that to be based on because it's not a factor in
`determining.
`Can you respond to Patent Owner's argument on that?
`MR. STACY: Yes, and that's what I'm saying. You're
`taking things to an extreme. Notice their construction, using the
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` 17
`
`
`
`
`
`
`
`IPR2016-00360
`Patent 7,945,034 B2
`
`recited items as criteria or factor when storing user specific data.
`Power is not a data input as anyone would understand it. I mean,
`again, this goes back to are you going to say that a butterfly beats
`its wings halfway around the world? It gets extreme at that point
`in time.
`
`What you're looking for are data inputs into a computer
`
`system.
`
`JUDGE ARBES: What about other data inputs then?
`Obviously when the user applies commands to the system, they're
`going to input demographic information maybe. They're going to
`say their name or their age, something like that. That's all
`inputted into the system. Why is that not an indirect determiner?
`MR. STACY: If they would have wanted to put that in
`the claim, they could have, but the way this claim is put together,
`it recites those four elements.
`JUDGE ARBES: I guess what I'm asking is: In your
`view, any input along the way is an indirect factor, right, just like
`the phone carrier is an indirect factor because it gets you the
`geographic characteristics?
`MR. STACY: No, I don't think I've said that. I don't
`think that's what the record supports. We're looking at the factors
`that are recited in that particular claim. You've got some that
`you're determining, some that you're registering based on, and
`when you look at those factors, those are in the prior art.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
` 18
`
`
`
`
`
`
`
`IPR2016-00360
`Patent 7,945,034 B2
`
`
`Now, could Patent Owner have drafted something else
`and come up with other embodiments in their specifications? I
`suppose, but I'm not sure how the hypothetical has anything to do
`with this particular claim construction.
`JUDGE ARBES: I guess what I'm trying to figure out
`is what is indirect and what is not because it seems to me that
`indirect is a very broad term and could potentially encompass any
`input along the way, up to the determination of whether to
`register. It seems a bit broad.
`MR. STACY: Well, in this particular instance -- well,
`first of all I would say, theirs is a bit narrowed and not supported
`that it has got to be a direct input. What we're looking for is in
`terms of this prior art.
`JUDGE ARBES: Well, let's confine ourselves to claim
`interpretation now.
`MR. STACY: In terms of this specification, how does
`it use this information, and it uses this information in a string in
`one embodiment to calculate geography. That's the embodiment
`that I showed you where you go through, you determine it's level
`3 based on the phone number, so we have the specific example.
`So if you're choosing between direct and indirect, direct
`is a narrowing construction that has no support. You're basically
`saying they've disclaimed a broad meaning, and now we're
`focusing on the far extreme about what if you put electricity or
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
` 19
`
`
`
`
`
`
`
`IPR2016-00360
`Patent 7,945,034 B2
`
`other factors in? Again, the spec doesn't talk about the other
`factors. The claim doesn't talk about other factors.
`So in this respect based on means using these three
`factors together which matches the specification's entire goal to
`fix the problem with not being able to trust geography. It cannot
`trust the area code, so I could put in one of those things directly,
`but I'm better off evaluating all of the things together.
`And there is no -- there is absolutely no requirement
`that I look at each one separately in that process. The point is I
`have to get the information in to the determination process -- or
`sorry, into the registering process.
`They absolutely get it into that registering process, and
`you can see that, I mean, again right here. You can determine
`how to use it. There is no specific way that you have to put it in,
`and you will not find in the spec a limiting embodiment that says
`it must be a direct input.
`JUDGE MCGRAW: Does the spec show an
`embodiment where they use an indirect input in the registering
`phase?
`
`MR. STACY: I didn't get that? I'm sorry.
`JUDGE MCGRAW: Is there support in the spec for
`your argument that they use an indirect factor in registering?
`Where does the spec show use of an indirect characteristic in the
`registering step?
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
` 20
`
`
`
`
`
`
`
`IPR2016-00360
`Patent 7,945,034 B2
`
`
`MR. STACY: So if you look at the patent, registering
`seems to be almost an afterthought. There's very little description
`about registering. There's a lot about determination. This
`material right here shows that registering is broad, and how you're
`using that data would be broad.
`The only direct -- the only registering that's directly put
`in the patent -- I guess let me say it again. The only registering
`that talks about direct is the registering where they compare it to
`what's in a database. They just do the database compare, but I
`think you've seen the challenge that there is really no support in
`the spec for a direct input for all of these factors anywhere.
`So now you're looking back at the goal of the patent, to
`register website users. What you know here is from column 1,
`"knowing the characteristics of the telephone number can be
`helpful," so it's talking broadly about things, not specifically
`about a direct and only a direct input.
`So again it comes back to based on has a broad
`meaning, and you can do -- use it indirectly or directly. If the
`Board wants to go with direct input and only direct input, that
`would -- you would have to clarify the construction that Patent
`Owner has offered, and when you went with that, you're going to
`have to explain the disclaimer, and there is no explanation of that
`disclaimer off of the dictionary definition.
`And especially when you look at what Patent Owner's
`own expert pointed to. He talks about an influencer. The factor
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` 21
`
`
`
`
`
`
`
`IPR2016-00360
`Patent 7,945,034 B2
`
`is, it's a piece of information that influences a decision. They
`make a distinction. Their own expert makes a distinction
`between something that influences and something that is a direct
`input.
`
`And you would be hard pressed to say that in that
`embodiment that the final decision of what geography is is not
`influenced by determining the carrier. In fact, it's dependent upon
`the carrier. In that embodiment, I have to determine carrier, I
`have to determine phone type, and then I can determine whether I
`trust geography, and that's the way you block calls from Nigeria.
`Any other questions there?
`So one point I wanted to make sure that was clear,
`there had been a lot of hankering about electronically determining
`the carrier, and I did want to make sure that it came out of the
`briefing clearly that the briefing and the instituted grounds talk
`about three separate ways of electronically determining the
`carrier, and each one stands alone. The whole brouhaha over Dr.
`Williams relates to the third of those, so the first one is, and the
`one that's briefed highest, is DePetris.
`DePetris, I don't think anyone disputes, teaches
`determining a carrier. The Board recognized that itself, that it
`uses the area code to determine carrier, stores it in a database,
`pulls that information out later, so that's number 1.
`Number 2 is the Nguyen phone book method which
`their own expert acknowledged, Well, that could be a carrier, and
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` 22
`
`
`
`
`
`
`
`IPR2016-00360
`Patent 7,945,034 B2
`
`the third was Nguyen's use of the E911 technology, and the third
`one is the only place Williams is relevant. The other two have
`nothing to do with Dr. or I guess Mr. Williams.
`The issue with DePetris, the only real challenge from
`Patent Owner was that it's not combinable. I think they said it
`wasn't analogous, and it wasn't combinable, but at the end of the
`day when you look at it, what does Nguyen want to know? Well,
`it's got a log-in process. It wants to know where you're physically
`standing at that point in time because if you're in California and
`you're gambling in Nevada, it's illegal, so that's the log-in
`process.
`
`What about the registration process? Well, Nguyen
`specifically says it wants to know the laws of the jurisdiction
`where you are located, and if you look at the registration process,
`Nguyen talks about location and address. It wants to know both
`because it could be relevant. If you even register for an Internet
`casino -- while standing in Virginia, can I register for an Internet
`casino in Neva
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
