Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 11
`Entered: March 9, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`TELESIGN CORPORATION,
`Petitioner,
`
`v.
`
`TWILIO INC.,
`Patent Owner.
`_______________
`
`Case IPR2017-01976
`Patent 8,837,465 B2
`_______________
`
`
`Before ROBERT J. WEINSCHENK, KIMBERLY MCGRAW, and
`SCOTT C. MOORE, Administrative Patent Judges.
`
`WEINSCHENK, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`Paper 11
`Entered: March 9, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`TELESIGN CORPORATION,
`Petitioner,
`
`v.
`
`TWILIO INC.,
`Patent Owner.
`_______________
`
`Case IPR2017-01976
`Patent 8,837,465 B2
`_______________
`
`
`Before ROBERT J. WEINSCHENK, KIMBERLY MCGRAW, and
`SCOTT C. MOORE, Administrative Patent Judges.
`
`WEINSCHENK, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`IPR2017-01976
`Patent 8,837,465 B2
`
`
`INTRODUCTION
`I.
`TeleSign Corporation (“Petitioner”) filed a Petition (Paper 2, “Pet.”)
`requesting an inter partes review of claims 1–6, 9, and 13 of U.S. Patent
`No. 8,837,465 B2 (Ex. 1001, “the ’465 patent”). Twilio Inc. (“Patent
`Owner”) filed a Preliminary Response (Paper 10, “Prelim. Resp.”) to the
`Petition. An inter partes review may not be instituted unless “the
`information presented in the petition . . . and any response . . . shows that
`there is a reasonable likelihood that the petitioner would prevail with respect
`to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a).
`For the reasons set forth below, Petitioner demonstrates a reasonable
`likelihood of prevailing in showing the unpatentability of claims 1–6, 9, and
`13 of the ’465 patent. Accordingly, we institute an inter partes review as to
`claims 1–6, 9, and 13 of the ’465 patent on the grounds specified below.
`A.
`Related Proceedings
`The parties indicate that the ’465 patent is the subject of the following
`district court case: Twilio Inc. v. TeleSign Corporation, No. 5:16-cv-06925
`(N.D. Cal.). Pet. 61; Paper 4, 1. Patent Owner also indicates that the
`following petitions for inter partes review are related to this case:
`Case No.
`Involved U.S. Patent No.
`IPR2017-01977
`U.S. Patent No. 8,755,376
`IPR2017-01978
`U.S. Patent No. 8,306,021
`Paper 4, 1.
`B.
`The ’465 Patent
`The ’465 patent relates to “processing telephony sessions.” Ex. 1001,
`1:22–24. The ’465 patent explains that deploying telephony services
`“requires developers to train in new languages, tools, and development
`environments,” and, thus, involves “significant upfront and ongoing
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`investment.” Id. at 1:35–54. To address this problem, the ’465 patent
`describes a method and system for processing telephony sessions that
`“enables web developers to use their existing skills and tools with the
`esoteric world of telephony, making telephony application development as
`easy as web programming.” Id. at 1:61–2:3. For example, the method and
`system of the ’465 patent “use the familiar web site visitor model to interact
`with a web developer’s application, with each step of the phone call
`analogous to a traditional page view.” Id. at 2:3–6.
`C.
`Illustrative Claim
`Claim 1 is independent and is reproduced below.
`1. A method for processing a telephony communication
`comprising:
`associating an initial URI1 with a telephony endpoint;
`initiating a telephony voice session for a telephony
`communication to the telephony endpoint;
`mapping the initial URI to the telephony session;
`sending an application layer protocol request to an
`application resource specified by the URI and embedding state
`information of the telephony voice session in the request;
`receiving a response to the application layer protocol
`request sent to the application resource, wherein the response
`includes a document of telephony instructions; and
`executing telephony actions during the telephony voice
`session according to a sequential processing of at least a subset
`of the telephony instructions of the response.
`Ex. 1001, 18:38–54.
`D.
`Evidence of Record
`Petitioner submits the following references and declaration (Pet. 5–6):
`
`1 URI stands for Universal Resource Identifier. Ex. 1001, 2:63–64.
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`
`Exhibit No.
`Ex. 1003
`
`Ex. 1004
`
`Ex. 1005
`
`Ex. 1006
`
`Ex. 1007
`
`Ex. 1008
`
`Ex. 1009
`
`Reference or Declaration
`Maes et al., U.S. Patent No. 6,801,604 B2 (filed June 25,
`2002, issued Oct. 5, 2004) (“Maes”)
`Ransom et al., U.S. Patent Application Publication No.
`2003/0204756 A1 (filed Jan. 9, 2003, published Oct. 30,
`2003) (“Ransom”)
`European Telecommunications Standards Institute, ETSI
`ES 202 391-4 V1.2.1 (2006) (“ETSI 391-4”)
`European Telecommunications Standards Institute, ETSI
`ES 202 391-11 V1.2.1 (2006) (“ETSI 391-11”)
`European Telecommunications Standards Institute, ETSI
`ES 202 391-3 V1.2.1 (2006) (“ETSI 391-3”)
`European Telecommunications Standards Institute, ETSI
`ES 202 391-2 V1.2.1 (2006) (“ETSI 391-2”)
`Sungjune Hong et al., The Semantic PARLAY for 4G
`Network, 2nd International Conference on Mobile
`Technology (2005) (“Hong”)
`Declaration of Dr. Seth Nielson (“Nielson Declaration”)
`E.
`Asserted Grounds of Unpatentability
`Petitioner asserts that the challenged claims are unpatentable on the
`following grounds (Pet. 5–6):
`Claim(s)
`Basis
`1–6, 9, and 13
`35 U.S.C. § 103(a)
`1, 4, 5, and 9
`35 U.S.C. § 103(a)
`2
`35 U.S.C. § 103(a)
`
`Ex. 1010
`
`References
`Maes and Ransom
`ETSI 391-4 and ETSI 391-11
`ETSI 391-4, ETSI 391-11,
`and ETSI 391-3
`ETSI 391-4, ETSI 391-11,
`ETSI 391-3, and Hong
`ETSI 391-4, ETSI 391-11,
`and Hong
`ETSI 391-4, ETSI 391-11,
`and ETSI 391-2
`
`3
`
`6
`
`13
`
`35 U.S.C. § 103(a)
`
`35 U.S.C. § 103(a)
`
`35 U.S.C. § 103(a)
`
`3
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`II. ANALYSIS
`A. Claim Construction
`The claims of an unexpired patent are interpreted using the broadest
`reasonable interpretation in light of the specification of the patent in which
`they appear. 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136
`S. Ct. 2131, 2144–45 (2016). Petitioner proposes that “[a]ll claim terms
`should be given their broadest reasonable construction in light of the
`specification,” but Petitioner does not propose express constructions for any
`claim terms. Pet. 7. Patent Owner argues that “Petitioner knew that the
`terms ‘URI,’ ‘initial URI,’ and ‘REST’ were important in both the District
`Court and in this proceeding,” but Petitioner failed to address any claim
`construction issues relating to those terms. Prelim. Resp. 3–7. Patent
`Owner, however, does not propose express constructions for any claim terms
`either. See id. On this record and for purposes of this Decision, we
`determine that no claim terms require express construction to resolve the
`parties’ disputes regarding the asserted grounds of unpatentability in this
`case. See infra Section II.B; Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,
`200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed
`that are in controversy, and only to the extent necessary to resolve the
`controversy.”).
`B.
`Asserted Grounds of Unpatentability
`1.
`Obviousness of Claims 1–6, 9, and 13 over Maes and
`Ransom
`Petitioner argues that claims 1–6, 9, and 13 would have been obvious
`over Maes and Ransom. Pet. 5. We have reviewed the parties’ assertions
`and supporting evidence. For the reasons discussed below, Petitioner
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`demonstrates a reasonable likelihood of prevailing in showing that claims 1–
`6, 9, and 13 would have been obvious over Maes and Ransom.
`a.
`Claim 1
`Claim 1 recites “[a] method for processing a telephony
`communication.” Ex. 1001, 18:38–39. Petitioner identifies evidence
`indicating that Maes teaches a method for processing an incoming call. Pet.
`13 (citing Ex. 1003, 15:42–44, Fig. 1). On this record, Petitioner has shown
`sufficiently that the combination of Maes and Ransom teaches the preamble
`of claim 1.
`Claim 1 recites “associating an initial URI with a telephony
`endpoint.” Ex. 1001, 18:40. Petitioner identifies evidence indicating that
`Maes teaches assigning an application to an incoming call and sending a
`request to that application over the Internet. Pet. 14 (citing Ex. 1003, 15:44–
`57). Petitioner also identifies evidence indicating that Ransom teaches that a
`request sent over the Internet is addressed to the recipient’s URI. Pet. 15–17
`(citing Ex. 1004 ¶¶ 63, 70, 162, Fig. 1).
`Patent Owner responds that Petitioner does not identify any portion of
`Maes that teaches an initial URI, or any portion of Ransom that teaches
`associating an initial URI with a telephony endpoint. Prelim. Resp. 9–13.
`Patent Owner’s argument is not persuasive because it addresses Maes and
`Ransom individually, not the combination of Maes and Ransom proposed by
`Petitioner. See In re Keller, 642 F.2d 413, 426 (CCPA 1981) (“[O]ne cannot
`show non-obviousness by attacking references individually where, as here,
`the rejections are based on combinations of references.”). As discussed
`above, Petitioner explains that Maes and Ransom, when combined, teach
`assigning an application to an incoming call and sending a request to that
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`application over the Internet using a URI, thereby associating the initial URI
`with the incoming call. Pet. 14–17 (citing Ex. 1003, 15:44–57; Ex. 1004
`¶¶ 63, 70, 162, Fig. 1).
`Patent Owner also responds that Petitioner’s failure to propose an
`express construction for the term “initial URI,” or to apply the construction
`of “URI” adopted in a related district court case, is fatal to the Petition.
`Prelim. Resp. 3–7, 10–12. Patent Owner’s argument is not persuasive. As
`discussed above, Petitioner explains that Maes and Ransom, when
`combined, teach assigning an application to an incoming call and sending a
`request to that application over the Internet using a URI. Pet. 14–17 (citing
`Ex. 1003, 15:44–57; Ex. 1004 ¶¶ 63, 70, 162, Fig. 1). We understand
`Petitioner’s position to be that the URI of the application initially assigned to
`the incoming call is the initial URI. Pet. 14–17; Ex. 1003, 15:44–57; Ex.
`1010 ¶ 59. On this record, and at this stage of the proceeding, Petitioner has
`shown sufficiently that the combination of Maes and Ransom teaches an
`initial URI under a plain reading of the claim language.
`Claim 1 recites “initiating a telephony voice session for a telephony
`communication to the telephony endpoint.” Ex. 1001, 18:41–42. Petitioner
`identifies evidence indicating that Maes teaches receiving an incoming call.
`Pet. 14 (citing Ex. 1003, 15:44–48). On this record, Petitioner has shown
`sufficiently that the combination of Maes and Ransom teaches the above
`limitation of claim 1.
`Claim 1 recites “mapping the initial URI to the telephony session.”
`Ex. 1001, 18:43. Petitioner identifies evidence indicating that Maes and
`Ransom, when combined, teach assigning an application to an incoming call
`and sending a request to that application over the Internet using a URI. Pet.
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`14–17 (citing Ex. 1003, 15:44–57; Ex. 1004 ¶¶ 63, 70, 162, Fig. 1).
`Petitioner also identifies evidence indicating that Maes teaches that the
`request sent to the application includes information relating to the telephony
`session, thereby mapping the initial URI to the telephony session. Pet. 17–
`18 (citing Ex. 1003, 15:58–62).
`Patent Owner responds that Petitioner fails to explain how Maes or
`Ransom teaches mapping the initial URI to the telephony session,
`particularly since Petitioner does not propose an express construction of the
`term “mapping.” Prelim. Resp. 15–19. Patent Owner’s argument is not
`persuasive because it addresses Maes and Ransom individually, not the
`combination of Maes and Ransom proposed by Petitioner. See Keller, 642
`F.2d at 426 (“[O]ne cannot show non-obviousness by attacking references
`individually where, as here, the rejections are based on combinations of
`references.”). Petitioner explains that, according to the specification of the
`’465 patent, mapping the initial URI to the telephony session includes
`creating a request that contains both the initial URI and information relating
`to the telephony session. Pet 17–18 (citing Ex. 1001, 3:54–4:9, 4:44–56).
`As discussed above, Petitioner identifies evidence indicating that the
`combination of Maes and Ransom teaches sending a request that contains
`both the initial URI and information relating to the telephony session. Pet.
`18–20 (citing Ex. 1003, 15:58–62; Ex. 1004 ¶ 162). On this record, and at
`this stage of the proceeding, Petitioner has shown sufficiently that the
`combination of Maes and Ransom teaches mapping the initial URI to the
`telephony session.
`Claim 1 recites “sending an application layer protocol request to an
`application resource specified by the URI and embedding state information
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`of the telephony voice session in the request.” Ex. 1001, 18:44–47.
`Petitioner identifies evidence indicating that the combination of Maes and
`Ransom teaches sending a request that contains both the initial URI and
`information relating to the telephony session. Pet. 20–22 (citing Ex. 1003,
`15:58–62; Ex. 1004 ¶ 162). On this record, Petitioner has shown sufficiently
`that the combination of Maes and Ransom teaches the above limitation of
`claim 1.
`Claim 1 recites “receiving a response to the application layer protocol
`request sent to the application resource, wherein the response includes a
`document of telephony instructions.” Ex. 1001, 18:48–51. Petitioner
`identifies evidence indicating that Maes teaches receiving a response that
`includes a control message in the form of an XML document. Pet. 23–24
`(citing Ex. 1003, 15:66–16:4, 28:21–36). On this record, Petitioner has
`shown sufficiently that the combination of Maes and Ransom teaches the
`above limitation of claim 1.
`Claim 1 recites “executing telephony actions during the telephony
`voice session according to a sequential processing of at least a subset of the
`telephony instructions of the response.” Ex. 1001, 18:52–54. Petitioner
`identifies evidence indicating that Maes teaches executing telephony actions
`by processing the commands in the received control message. Pet. 24–25
`(citing Ex. 1003, 16:14–26). On this record, Petitioner has shown
`sufficiently that the combination of Maes and Ransom teaches the above
`limitation of claim 1.
`Petitioner argues that a person of ordinary skill in the art would have
`had a reason to combine the cited teachings of Maes and Ransom. Pet. 17,
`19–20. Specifically, Petitioner identifies evidence indicating that combining
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`the cited teachings of Maes and Ransom would be nothing more than using
`the URI in Ransom according to its established function of identifying a
`message recipient to yield the predictable result of sending the message to
`the identified recipient. Id. at 17 (citing Ex. 1010 ¶¶ 58–62).
`Patent Owner responds that Petitioner’s rationale for combining Maes
`and Ransom is conclusory because Petitioner simply states that it would
`have been common sense to combine Maes and Ransom. Prelim. Resp. 13–
`15, 19–20. Patent Owner’s argument is not persuasive. As discussed above,
`Petitioner identifies evidence indicating that combining the cited teachings
`of Maes and Ransom would be nothing more than using the URI in Ransom
`according to its established function of identifying a message recipient to
`yield the predictable result of sending the message to the identified recipient.
`Pet. 17 (citing Ex. 1010 ¶¶ 58–62); see KSR Int’l Co. v. Teleflex Inc., 550
`U.S. 398, 416 (2007) (“The combination of familiar elements according to
`known methods is likely to be obvious when it does no more than yield
`predictable results.”).
`For the foregoing reasons, Petitioner demonstrates a reasonable
`likelihood of prevailing in showing that claim 1 would have been obvious
`over Maes and Ransom.
`b.
`Claims 2–6, 9, and 13
`Claims 2–6, 9, and 13 depend, directly or indirectly, from claim 1.
`Petitioner identifies evidence indicating that the combination of Maes and
`Ransom teaches the limitations of claims 2–6, 9, and 13. Pet. 25–33. Patent
`Owner does not raise any specific arguments relating to claims 2–6, 9, and
`13. On this record, we agree with Petitioner’s assertions and supporting
`evidence. Therefore, Petitioner demonstrates a reasonable likelihood of
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`prevailing in showing that claims 2–6, 9, and 13 would have been obvious
`over Maes and Ransom.
`c.
`Summary
`For the foregoing reasons, Petitioner demonstrates a reasonable
`likelihood of prevailing in showing that claims 1–6, 9, and 13 would have
`been obvious over Maes and Ransom.
`2.
`Obviousness of Claims 1, 4, 5, and 9 over ETSI 391-4
`and ETSI 391-11
`Petitioner argues that claims 1, 4, 5, and 9 would have been obvious
`over ETSI 391-4 and ETSI 391-11. Pet. 5. We have reviewed the parties’
`assertions and supporting evidence. For the reasons discussed below,
`Petitioner demonstrates a reasonable likelihood of prevailing in showing that
`claims 1, 4, 5, and 9 would have been obvious over ETSI 391-4 and ETSI
`391-11.
`
`a.
`Claim 1
`Claim 1 recites “[a] method for processing a telephony
`communication.” Ex. 1001, 18:38–39. Petitioner identifies evidence
`indicating that ETSI 391-4 teaches a method for initiating a call. Pet. 38–39
`(citing Ex. 1005, 8, Fig. 2). On this record, Petitioner has shown sufficiently
`that the combination of ETSI 391-4 and ETSI 391-11 teaches the preamble
`of claim 1.
`Claim 1 recites “associating an initial URI with a telephony
`endpoint.” Ex. 1001, 18:40. Petitioner identifies evidence indicating that
`ETSI 391-4 teaches sending an incoming message to an application over the
`Internet, thereby associating the incoming message with the application.
`Pet. 40–41 (citing Ex. 1005, 8, Fig. 2). Petitioner also identifies evidence
`indicating that it would have been within the common knowledge of a
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`person of ordinary skill in the art that a message sent over the Internet is
`addressed to the recipient’s URI. Pet. 41–42 (citing Ex. 1010 ¶ 76).
`Patent Owner responds that Petitioner does not identify any portion of
`ETSI 391-4 or ETSI 391-11 that teaches an initial URI. Prelim. Resp. 21–
`23. According to Patent Owner, Petitioner “appears to set forth an inherency
`argument,” but Petitioner’s argument and corresponding evidence “is not
`sufficient support to meet the requirements for showing inherency.” Id. at
`22. Patent Owner’s argument is not persuasive. Specifically, Petitioner
`does not appear to rely on inherency. Rather, as discussed above, Petitioner
`relies on the common knowledge of a person of ordinary skill in the art to
`show that it would have been obvious that the message sent over the Internet
`in ETSI 391-4 is addressed to the recipient’s URI. Pet. 41–42 (citing Ex.
`1010 ¶ 76); see Randall Mfg. v. Rea, 733 F.3d 1355, 1362–63 (Fed. Cir.
`2013); Ariosa Diagnostics v. Verinata Health, Inc., 805 F.3d 1359, 1365
`(Fed. Cir. 2015).
`Patent Owner also responds that Petitioner’s failure to propose an
`express construction for the term “initial URI,” or to apply the construction
`of “URI” adopted in a related district court case, is fatal to the Petition.
`Prelim. Resp. 3–7, 23–25. Patent Owner’s argument is not persuasive. As
`discussed above, Petitioner explains that ETSI 391-4, when read in light of
`the common knowledge of a person of ordinary skill in the art, teaches an
`initial URI. Pet. 40–42 (citing Ex. 1005, 8, Fig. 2; Ex. 1010 ¶ 76).
`Specifically, we understand Petitioner’s position to be that the URI of the
`application that is sent an incoming message in ETSI 391-4 is the initial
`URI. Pet. 40–42; Ex. 1005, 8, Fig. 2; Ex. 1010 ¶ 76. On this record, and at
`this stage of the proceeding, Petitioner has shown sufficiently that the
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`combination of ETSI 391-4 and ETSI 391-11 teaches an initial URI under a
`plain reading of the claim language.
`Claim 1 recites “initiating a telephony voice session for a telephony
`communication to the telephony endpoint.” Ex. 1001, 18:41–42. Petitioner
`identifies evidence indicating that ETSI 391-4 teaches receiving an incoming
`message. Pet. 39–40 (citing Ex. 1005, 8, Fig. 2). On this record, Petitioner
`has shown sufficiently that the combination of ETSI 391-4 and ETSI 391-11
`teaches the above limitation of claim 1.
`Claim 1 recites “mapping the initial URI to the telephony session.”
`Ex. 1001, 18:43. Petitioner identifies evidence indicating that ETSI 391-4,
`when read in light of the common knowledge of a person of ordinary skill in
`the art, teaches sending an incoming message to an application over the
`Internet using a URI. Pet. 40–42 (citing Ex. 1005, 8, Fig. 2; Ex. 1010 ¶ 76).
`Petitioner also identifies evidence indicating that ETSI 391-4 teaches that
`the message sent to the application includes information relating to the
`telephony session, thereby mapping the initial URI to the telephony session.
`Pet. 42–43 (citing Ex. 1005, 16).
`Patent Owner responds that Petitioner fails to explain how ETSI 391-4
`teaches mapping the initial URI to the telephony session, particularly since
`Petitioner does not propose an express construction of the term “mapping.”
`Prelim. Resp. 25–28. Patent Owner’s argument is not persuasive. Petitioner
`explains that, according to the specification of the ’465 patent, mapping the
`initial URI to the telephony session includes creating a request that contains
`both the initial URI and information relating to the telephony session. Pet
`17–18, 42 (citing Ex. 1001, 3:54–4:9, 4:44–56). As discussed above,
`Petitioner identifies evidence indicating that ETSI 391-4, when read in light
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`of the common knowledge of a person of ordinary skill in the art, teaches
`sending a message that contains both the initial URI and information relating
`to the telephony session. Pet. 40–43 (citing Ex. 1005, 8, 16, Fig. 2; Ex. 1010
`¶ 76). On this record, and at this stage of the proceeding, Petitioner has
`shown sufficiently that the combination of ETSI 391-4 and ETSI 391-11
`teaches mapping the initial URI to the telephony session.
`Claim 1 recites “sending an application layer protocol request to an
`application resource specified by the URI and embedding state information
`of the telephony voice session in the request.” Ex. 1001, 18:44–47.
`Petitioner identifies evidence indicating that ETSI 391-4, when read in light
`of the common knowledge of a person of ordinary skill in the art, teaches
`sending a message to an application that contains both the initial URI and
`information relating to the telephony session. Pet. 40–44 (citing Ex. 1005, 8,
`16, Fig. 2; Ex. 1010 ¶¶ 76, 78). On this record, Petitioner has shown
`sufficiently that the combination of ETSI 391-4 and ETSI 391-11 teaches the
`above limitation of claim 1.
`Claim 1 recites “receiving a response to the application layer protocol
`request sent to the application resource, wherein the response includes a
`document of telephony instructions.” Ex. 1001, 18:48–51. Petitioner
`identifies evidence indicating that ETSI 391-4 teaches receiving a response
`that includes an instruction to set up a call. Pet. 45–46 (citing Ex. 1005, 8,
`Fig. 2). Petitioner also identifies evidence indicating that ETSI 391-11
`teaches receiving a response that includes an instruction to play audio, such
`as a text message. Pet. 46 (citing Ex. 1006, 9). On this record, Petitioner
`has shown sufficiently that the combination of ETSI 391-4 and ETSI 391-11
`teaches the above limitation of claim 1.
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`Claim 1 recites “executing telephony actions during the telephony
`voice session according to a sequential processing of at least a subset of the
`telephony instructions of the response.” Ex. 1001, 18:52–54. Petitioner
`identifies evidence indicating that ETSI 391-4 teaches initiating a call
`according to the instruction in the received response. Pet. 47–48 (citing Ex.
`1005, 8, Fig. 2). Petitioner also identifies evidence indicating that ETSI
`391-11 teaches playing a text message according to the instruction in the
`received response. Pet. 48 (citing Ex. 1006, 9). On this record, Petitioner
`has shown sufficiently that the combination of ETSI 391-4 and ETSI 391-11
`teaches the above limitation of claim 1.
`Petitioner argues that a person of ordinary skill in the art would have
`had a reason to combine the cited teachings of ETSI 391-4 and ETSI 391-11.
`Pet. 46–47. Specifically, Petitioner identifies evidence indicating that ETSI
`391-4 and ETSI 391-11 “are two parts of the same standard,” and ETSI 391-
`4 “encourages combining the various web service APIs taught in the 12-
`parts of the Parlay X specification.” Id. at 47 (citing Ex. 1005, 8; Ex. 1010
`¶ 79). On this record, Petitioner has shown sufficiently that a person of
`ordinary skill in the art would have had a reason to combine the cited
`teachings of ETSI 391-4 and ETSI 391-11.
`For the foregoing reasons, Petitioner demonstrates a reasonable
`likelihood of prevailing in showing that claim 1 would have been obvious
`over ETSI 391-4 and ETSI 391-11.
`b.
`Claims 4, 5, and 9
`Claims 4, 5, and 9 depend directly from claim 1. Petitioner identifies
`evidence indicating that the combination of ETSI 391-4 and ETSI 391-11
`teaches the limitations of claims 4, 5, and 9. Pet. 49–50. Patent Owner does
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`
`IPR2017-01976
`Patent 8,837,465 B2
`
`not raise any specific arguments relating to claims 4, 5, and 9. On this
`record, we agree with Petitioner’s assertions and supporting evidence.
`Therefore, Petitioner demonstrates a reasonable likelihood of prevailing in
`showing that claims 4, 5, and 9 would have been obvious over ETSI 391-4
`and ETSI 391-11.
`
`c.
`Summary
`For the foregoing reasons, Petitioner demonstrates a reasonable
`likelihood of prevailing in showing that claims 1, 4, 5, and 9 would have
`been obvious over ETSI 391-4 and ETSI 391-11.
`3.
`Remaining Grounds
`Petitioner argues that claim 2 would have been obvious over ETSI
`391-4, ETSI 391-11, and ETSI 391-3; claim 3 would have been obvious
`over ETSI 391-4, ETSI 391-11, ETSI 391-3, and Hong; claim 6 would have
`been obvious over ETSI 391-4, ETSI 391-11, and Hong; and claim 13 would
`have been obvious over ETSI 391-4, ETSI 391-11, and ETSI 391-2. Pet. 5–
`6. Claims 2, 3, 6, and 13 depend, directly or indirectly, from claim 1.
`Petitioner identifies evidence indicating that the proposed combinations
`teach the limitations of claims 2, 3, 6, and 13, and that a person of ordinary
`skill in the art would have had a reason to combine the cited teachings. Pet.
`50–60. Patent Owner does not raise any specific arguments relating to
`claims 2, 3, 6, and 13. On this record, we agree with Petitioner’s assertions
`and supporting evidence. Therefore, Petitioner demonstrates a reasonable
`likelihood of prevailing in showing that claims 2, 3, 6, and 13 would have
`been obvious over the proposed combinations.
`
`15
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`IPR2017-01976
`Patent 8,837,465 B2
`
`
`III. CONCLUSION
`Petitioner demonstrates a reasonable likelihood of prevailing in
`showing the unpatentability of claims 1–6, 9, and 13 of the ’465 patent. At
`this stage in the proceeding, we have not made a final determination with
`respect to the patentability of any of the challenged claims.
`IV. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes
`
`review of claims 1–6, 9, and 13 of the ’465 patent is hereby instituted on the
`following grounds:
`A. Claims 1–6, 9, and 13 as unpatentable under 35 U.S.C. § 103 as
`obvious over Maes and Ransom;
`Claims 1, 4, 5, and 9 as unpatentable under 35 U.S.C. § 103 as
`B.
`obvious over ETSI 391-4 and ETSI 391-11;
`Claim 2 as unpatentable under 35 U.S.C. § 103 as obvious over
`C.
`ETSI 391-4, ETSI 391-11, and ETSI 391-3;
`D. Claim 3 as unpatentable under 35 U.S.C. § 103 as obvious over
`ETSI 391-4, ETSI 391-11, ETSI 391-3, and Hong;
`Claim 6 as unpatentable under 35 U.S.C. § 103 as obvious over
`E.
`ETSI 391-4, ETSI 391-11, and Hong; and
`Claim 13 as unpatentable under 35 U.S.C. § 103 as obvious
`F.
`over ETSI 391-4, ETSI 391-11, and ETSI 391-2;
`FURTHER ORDERED that, pursuant to 35 U.S.C. § 314(c) and
`37 C.F.R. § 42.4, notice is hereby given of the institution of a trial
`commencing on the entry date of this Decision; and
`
`16
`
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`IPR2017-01976
`Patent 8,837,465 B2
`
`FURTHER ORDERED that the trial is limited to the grounds
`
`identified, and no other grounds are authorized.
`
`
`
`17
`
`
`
`IPR2017-01976
`Patent 8,837,465 B2
`
`PETITIONER:
`
`Jesse J. Camacho
`Elena K. McFarland
`Christine Guastello
`Mary J. Peal
`SHOOK, HARDY & BACON L.L.P.
`jcamacho@shb.com
`emcfarland@shb.com
`cguastello@shb.com
`mpeal@shb.com
`
`
`PATENT OWNER:
`
`Wayne Stacy
`Sarah Guske
`Michelle Jacobson Eber
`Jay B. Schiller
`BAKER BOTTS L.L.P.
`wayne.stacy@bakerbotts.com
`sarah.guske@bakerbotts.com
`michelle.eber@bakerbotts.com
`jay.schiller@bakerbotts.com
`
`18
`
`
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