`Trials@uspto.gov
`571-272-7822 Entered: September 29, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TWILIO INC.,
`Petitioner,
`
`v.
`
`TELESIGN CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2016-00451
`Patent 8,687,038 B2
`
`____________
`
`
`
`
`
`
`Before SALLY C. MEDLEY, JUSTIN T. ARBES, and
`KIMBERLY McGRAW, Administrative Patent Judges.
`
`McGRAW, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`Petitioner submitted a Request for Rehearing (Paper 18) asserting,
`
`inter alia, that the Board’s Decision denying institution of inter partes
`review (Paper 17) overlooked arguments and evidence presented in
`connection with Petitioner’s arguments that dependent claims 11 and 21 are
`
`
`
`IPR2016-00451
`Patent 8,687,038 B2
`
`
`
`unpatentable. See Paper 18, 1–10. Petitioner asserts that because “Claims
`11 and 21 use the term ‘notification event’ in nearly the same way that the
`Board construed the term for claim 1,” “Petition[er]’s arguments for claims
`11 and 21 are highly relevant to the ‘notification event’” limitations recited
`in the independent claims from which claims 11 and 21 depend. Id. at 6–7.
`Petitioner also asserts that because claims 11 and 21 depend from claims 1
`and 13, respectively, Petitioner’s arguments for claims 11 and 21 apply
`equally to claims 1 and 13. Id. at 8.
`IT IS
`ORDERED that Patent Owner is authorized to file an opposition to
`Petitioner’s Request for Rehearing;
`FURTHER ORDERED that Patent Owner’s opposition shall not
`exceed twelve pages and is due no later than October 6, 2016; and
`FURTHER ORDERED that Petitioner is authorized to file a reply to
`Patent Owner’s opposition, where Petitioner’s reply shall not exceed three
`pages and is due no later than October 11, 2016.
`
`
`
`2
`
`
`
`3
`
`IPR2016-00451
`Patent 8,687,038 B2
`
`
`
`FOR PETITIONER:
`Wayne Stacy
`Mikaela Stone
`Britton Davis
`zTwilioIPR@cooley.com
`bdavis@cooley.com
`
`
`
`
`
`FOR PATENT OWNER:
`Tawni L. Wilhelm
`Jesse J. Camacho
`Elena S.K. McFarland
`Amy Foust
`telesignipr@shb.com
`jcamacho@shb.com
`emcfarland@shb.com
`afoust@shb.com
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