Paper 28
`Trials@uspto.gov
`571-272-7822 Entered: November 15, 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.
`
`DECISION
`Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822 Entered: November 15, 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.
`
`DECISION
`Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
`
`
`
`
`
`IPR2016-00451
`Patent 8,687,038 B2
`
`
`I. SUMMARY
`Petitioner filed a Request for Rehearing (Paper 18, “Req. Reh’g”) of
`the Board’s decision (Paper 17, “Dec. on Inst.”), which declined to institute
`inter partes review of claims 1–22 of U.S. Patent No. 8,687,038 B2
`(Ex. 1001, “the ’038 patent”). In its Request, Petitioner seeks
`reconsideration of the denial of institution of (1) claims 1, 11, 13, and 21 in
`light of Petitioner’s arguments regarding the unpatentability of dependent
`claims 11 and 21 (Req. Reh’g 6–10), and (2) all challenged claims in light
`of Petitioner’s argument that Bennett (Ex. 1005) allegedly teaches notifying
`the user of the occurrence of a notification event during the reverification
`process (Req. Reh’g 10–12). Pursuant to our authorization (Paper 19),
`Patent Owner filed an Opposition (Paper 24) opposing Petitioner’s Request
`for Rehearing and Petitioner filed a Reply (Paper 27).
`For the reasons stated below, Petitioner’s Request for Rehearing is
`denied.
`
`II. STANDARD FOR RECONSIDERATION
`When rehearing a decision on petition, the Board will review the
`decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of
`discretion may be determined if a decision is based on an erroneous
`interpretation of law, if a factual finding is not supported by substantial
`evidence, or if the decision represents an unreasonable judgment in weighing
`relevant factors. Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281
`(Fed. Cir. 2005). The party requesting rehearing has the burden of showing
`that the decision should be modified and “[t]he request must specifically
`identify all matters the party believes the Board misapprehended or
`overlooked.” 37 C.F.R. § 42.71(d).
`
`2
`
`
`
`IPR2016-00451
`Patent 8,687,038 B2
`
`
`III. DISCUSSION
`The ’038 patent states the invention generally relates to on-line
`website registration and a process for notifying registrants of predetermined
`events using information obtained during the registration process. Ex. 1001,
`1:19–26. Independent claims 1 and 13 of the ’038 patent each recite two
`limitations regarding “notification event,” namely: (1) “establishing a
`notification event associated with the user;” and (2) “upon detecting an
`occurrence of the established notification event, re-verifying the electronic
`contact address, wherein re-verifying the electronic contact address
`includes” certain steps.
`In the Petition, Petitioner argued that the broadest reasonable
`interpretation of “notification event” is “an event that results in the user
`being contacted either for re-verification or for notification that event
`occurred.” Paper 9 (“Pet”), 18. Petitioner repeatedly argued that a
`notification event does not require notifying the user that the notification
`event occurred and that it is sufficient if the user is reverified. See id. at 10
`(stating “a ‘notification event’ does not necessarily result in notifying the
`user of the occurrence” and that a notification event “may result in either re-
`verification or notification”) (italics added, underlining in original), 18
`(stating a notification event is an event that results in the user being
`contacted either for re-verification or for notification that event occurred), 23
`(stating “[a]s explained above . . . notification events are detected for the
`purpose of re-verifying the user”).
`Petitioner asserted Bennett discloses the “notification event”
`limitations of claims 1 and 13 because Bennett discloses events, including
`“decision rules,” that can result in the re-verification of the user. See, e.g.,
`
`3
`
`
`
`IPR2016-00451
`Patent 8,687,038 B2
`
`id. at 19 (“Bennett teaches that all attempts to access an account are
`subjected to reverification”), 20 (stating “Bennett expressly teaches
`establishing rules to determine whether to require subsequent two-factor
`authentication based on the user logging in from a different device than she
`had used in the past” and that any rule in Bennett’s decision engine
`corresponds to the claimed notification event because the engine can be
`configured to implement per-user decisions as to whether a return user must
`be re-verified). Petitioner also argued that if Bennett does not expressly
`disclose configuring the rules in Bennett’s decision making module to
`correspond to the claimed notification event associated with a registrant, it
`would have been obvious to modify Bennett to do so “because the purpose
`of Bennett’s decision engine is to determine whether to require a subsequent
`two-factor authentication for a particular user during a particular
`transaction.” Id. at 21.
`Patent Owner argued, inter alia, the Petitioner’s construction reads
`“notification” out of “notification event” and that a notification event is “an
`event that results in the user being notified that the event occurred.” Paper
`7, 5, 12, 16.
`We agreed with Patent Owner’s proposed claim construction and
`construed a “notification event” as an event that results in the registrant
`being notified that the event occurred. Dec. on Inst. 7–11. We determined
`that Petitioner failed to show sufficiently that Bennett teaches a “notification
`event” as required by claim 1. Id. at 12–14. We noted that Petitioner did not
`argue that Bennett teaches notifying the user that the notification event
`occurred, but rather, in accordance with its proposed interpretation of
`“notification event” as allowing for re-verification or notification that the
`
`4
`
`
`
`IPR2016-00451
`Patent 8,687,038 B2
`
`event occurred, that the notification event in Bennett is an event that results
`in the subsequent two-factor authentication (reverification) of the user. Id. at
`13–14. Consequently, we determined the information presented in the
`Petition did not demonstrate a reasonable likelihood that Petitioner would
`prevail in its challenge to claims 1 or 13 or the claims that depend therefrom.
`Id. at 14.
`Petitioner argues in its Request for Rehearing that our Decision
`“overlooked two arguments in the Petition that show the Board’s only
`rationale for denying institution was based on an incorrect finding of fact.”
`Req. Reh’g 5–6. First, Petitioner asserts that the Board overlooked
`Petitioner’s arguments, made only in connection with claims 11 and 21, that
`(1) Bennett and (2) Bennett in view of Rolfe (Ex. 1006) render obvious
`notifying the registrant of the occurrence of the notification event. Id. at 6–
`10. Next, Petitioner asserts the Board overlooked arguments that Bennett
`discloses notifying the registrant of the occurrence of the notification event
`as part of the re-verification process. Id. at 10–12.
`We address these arguments in turn.
`Request for Rehearing of Denial of Institution of Inter Partes Review
`of Claims 1, 11, 13, and 21 in Light of Arguments Regarding
`Unpatentability of Claims 11 and 21
`
`Petitioner asserts the Board overlooked arguments and evidence
`(1) that Bennett in view of Rolfe render obvious notifying the user of the
`occurrence of the notification event and (2) that it would have been obvious
`to modify Bennett to notify the registrant of the occurrence of the
`established notification event. Req. Reh’g 6–10 (citing Pet. 45–49, 25–26,
`54, 58–59). Petitioner requests the Board rehear its denial of institution of
`
`1.
`
`5
`
`
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`IPR2016-00451
`Patent 8,687,038 B2
`
`inter partes review of claims 1, 11, 13, and 21. Id.
`Contrary to Petitioner’s assertion, we did not overlook arguments or
`evidence supporting Petitioner’s position. Rather, Petitioner only made
`these arguments in connection with the dependent claims1 and did not state
`that these arguments were applicable to Petitioner’s asserted grounds of
`unpatentability of the independent claims. Pet. 45–49, 58–59.
`As noted in the Decision, the Petition only asserted two grounds of
`unpatentability as to claims 1 and 13, namely that the claims are
`unpatentable either over Bennett alone or over Bennett and Thoursie (Ex.
`1008). See Dec. on Inst. 12; Pet. 4, 13–34, 51–56. Significantly, the
`Petition did not assert the Rolfe reference as a basis for its challenge to the
`independent claims. See, e.g., Pet. 3–4 (only asserting Rolfe in Grounds 3
`and 4 relating to dependent claims 6, 11, 17, and 21, not independent claims
`1 or 13). Similarly, the Petition did not assert in connection with the
`independent claims that it would have been obvious to modify the re-
`verification process of Bennett to include, along with the verification code, a
`message that a notification event occurred, as now asserted in the Petition
`for Rehearing. Req. Reh’g 7. We will not consider a ground not asserted in
`the Petition and first raised in the Request for Rehearing.
`Petitioner next asserts that the Board incorrectly denied institution as
`to claims 11 and 21 because they depend from claims 1 and 13, respectively,
`
`
`1 Claim 11, which depends from claim 1, and claim 21, which depends from
`claim 13, both recite “wherein communicating a second communicated
`verification code to the user through the second telephonic connection
`includes notifying the user of the occurrence of the established notification
`event.”
`
`6
`
`
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`IPR2016-00451
`Patent 8,687,038 B2
`
`and the unpatentability analysis of the dependent claims necessarily extends
`to the claims from which they depend. Req. Reh’g 8–9. We disagree.
`A petition must identify, “in writing and with particularity, each claim
`challenged, the grounds on which the challenge to each claim is based, and
`the evidence that supports the grounds for the challenge to each claim.” 35
`U.S.C. § 312(a)(3) (emphasis added). Our regulations explain the petition
`must provide “a statement of the precise relief requested for each claim
`challenged” and that the statement must identify the claim, “the specific
`statutory grounds [] on which the challenge to the claim is based and the
`patents or printed publications relied upon for each ground,” “[h]ow the
`construed claim is unpatentable,” and “where each element of the claim is
`found in the prior art patents or printed publications relied upon.” 37 C.F.R.
`§ 42.104; see also Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756,
`48,757 (Aug. 14, 2012) (stating the proceeding “begin[s] with the filing of a
`petition that identifies all of the claims challenged and the grounds and
`supporting evidence on a claim-by-claim basis” (emphasis added)).
`Petitioner provided no indication in the Petition that the arguments as
`to dependent claims 11 and 21 should be applied to independent claims 1
`and 13. Rather, the arguments set forth in the Petition regarding the
`dependent claims only relate to the additional limitations found in those
`claims. See e.g., Pet. 47 (stating if “Bennett, alone, does not render obvious
`claim 4, Bennett in view of Rolfe (Ground 3) renders this limitation obvious,
`or Bennett and Thoursie in view of Rolfe (Ground 4) render this limitation
`
`7
`
`
`
`IPR2016-00451
`Patent 8,687,038 B2
`
`obvious”)2 (emphasis added), 45–49 (only discussing the notification event
`of claim 11), 58–59 (stating that claim 21 is unpatentable “for the same
`reasons discussed in” claim 11).
`Neither Patent Owner nor the Board has an obligation to evaluate the
`similarities and differences in claim limitations of different claims to
`determine whether the limitations are sufficiently similar, or insufficiently
`different, such that Petitioner’s arguments as to one should be deemed
`automatically as also directed to another. See Medtronic, Inc. v. Lifeport
`Sciences LLC, Case IPR2014-00284, PTAB, July 22, 2014) (Paper 15)
`(determining the Board did not abuse its discretion when arguments made in
`the Petition with respect to claim 3 were not considered with regard to
`claims 4 and 5).
`Petitioner, in its Request for Rehearing, also asserts the Board
`improperly denied inter partes review of dependent claims 11 and 21
`without articulating its reasoning or explaining the basis for its finding, as
`the Decision did not address the Petition’s arguments regarding notifying the
`user of the occurrence of the notification event. Req. Reh’g 9–10.
`This argument is not persuasive. The Decision stated that Petitioner
`did not establish a reasonable likelihood of prevailing with respect to the
`dependent claims because the Petition did not establish a reasonable
`likelihood of prevailing with respect to independent claims 1 and 13. See
`Dec. on Inst. 15; see also Ortho-McNeil Pharm., Inc. v. Mylan Labs., Inc.,
`520 F.3d 1358, 1365 (Fed. Cir. 2008) (“[D]ependent claims are nonobvious
`
`
`2 The Petition’s reference to claim 4 instead of claim 11 appears to be a
`typographical error.
`
`8
`
`
`
`IPR2016-00451
`Patent 8,687,038 B2
`
`if the independent claims from which they depend are nonobvious.”). Even
`if the Board were to determine that Bennett or Bennett and Rolfe would have
`rendered obvious the specific limitations set forth in dependent claims 11
`and 21, the Petition’s arguments regarding independent claims 1 and 13
`were insufficient to demonstrate a reasonable likelihood of prevailing as to
`the independent claims; therefore, Petitioner also had not established a
`reasonable likelihood of prevailing as to claims dependent from claims 1 and
`13. Petitioner has not demonstrated that we abused our discretion in denying
`inter partes review of claims 1, 11, 13, and 21 of the ’038 patent.
`2.
`Request for Rehearing of Denial of Institution of Inter Partes Review
`of Claims 1–22 in Light of Arguments that a Completion Code
`Provides Notification of Occurrence of Notification Event
`
`
`
`Petitioner also asserts that the Board overlooked Petitioner’s evidence
`and argument that Bennett discloses notifying the registrant of the
`occurrence of a “notification event” as part of the two-factor authentication
`“reverification process.” Req. Reh’g 10 (citing Pet. 18–20, 25–26).
`Specifically, Petitioner asserts the Board overlooked that Bennett’s re-
`verification process includes notifying the user of the occurrence of the
`notification event in the form of communicating a verification code to the
`user for use in two-factor authentication. Id.
`This argument is not persuasive as the Petition did not assert in
`connection with claims 1 or 13 that communicating the verification code to
`the registrant results in the registrant being notified that the event occurred.
`The Petition stated that the broadest reasonable interpretation of a
`“notification event” is an event that either (1) results in the user being
`contacted for re-verification or (2) results in the use being contacted for
`
`9
`
`
`
`IPR2016-00451
`Patent 8,687,038 B2
`
`notification that the event occurred. Pet. 9; see also id. at 10 (“a
`‘notification event’ does not necessarily result in notifying the user of the
`occurrence; it may result in either re-verification or notification”).
`Petitioner’s declarant testified that the ’038 patent’s Specification “indicates
`that the occurrence of the particular ‘notification event’ is not necessarily
`communicated to the user.” Ex. 1002 ¶ 28. In accordance with its proposed
`“either/or” interpretation of “notification event,” the Petition argued that
`Bennett teaches a notification event because Bennett satisfied the first prong
`of its proposed construction as Bennett requires the user to be contacted
`during the two-factor authentication “reverification” process. Pet. 18–23;
`Dec. on Inst. 13–14.
`We disagreed with Petitioner’s construction and determined that a
`notification event is an event that results in the registrant being notified that
`the event occurred, not an event that results in the registrant being contacted
`for re-verification. Dec. on Inst. 7–11, 14.
`We recognized that Bennett’s two-factor authentication “reverification
`process” involved transmission of a verification code to the user. Id. at 12–
`13. However, we determined that Petitioner did not establish Bennett
`teaches notifying the user of the occurrence of a notification event. Id. at 14.
`Therefore, we did not overlook or misapprehend Petitioner’s
`arguments relating to Bennett, but considered these arguments in our
`analysis and found them insufficient. Petitioner’s contention in this Request
`for Rehearing is merely a disagreement with the Board’s Decision. Mere
`disagreement with the Board’s decision is not a sufficient basis on which to
`request rehearing. Petitioner has shown no abuse of discretion in the
`Decision denying institution of inter partes review of claims 1–22 of the
`
`10
`
`
`
`IPR2016-00451
`Patent 8,687,038 B2
`
`’038 patent.
`
`IV. CONCLUSION
`For the foregoing reasons, Petitioner has not demonstrated that we
`abused our discretion in denying inter partes review of claims 1–22 of the
`’038 patent and Petitioner’s Request for Rehearing is denied.
`
`
`
`11
`
`
`
`12
`
`IPR2016-00451
`Patent 8,687,038 B2
`
`PETITIONER:
`
`Wayne Stacy
`ztwilioipr@cooley.com
`
`Mikaela Stone
`ztwilioipr@cooley.com
`
`Britton Davis
`bdavis@cooley.com
`
`
`
`PATENT OWNER:
`
`Tawni Wilhelm
`telesignipr@shb.com
`
`Elena S.K. McFarland
`emcfarland@shb.com
`
`Jesse Camacho
`jcamacho@shb.com
`
`Amy Foust
`afoust@shb.com
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