Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 13
`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 IPR2017-01977
`Patent 8,755,376 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 13
`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 IPR2017-01977
`Patent 8,755,376 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
`
`
`
`
`
`
`
`IPR2017-01977
`Patent 8,755,376 B2
`
`
`INTRODUCTION
`I.
`TeleSign Corporation (“Petitioner”) filed a Petition (Paper 1, “Pet.”)
`requesting an inter partes review of claims 1–3, 5, 14, 16, 17, and 19 of U.S.
`Patent No. 8,755,376 B2 (Ex. 1001, “the ’376 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 1–3, 5, 14,
`16, 17, and 19 of the ’376 patent. Accordingly, we institute an inter partes
`review as to claims 1–3, 5, 14, 16, 17, and 19 of the ’376 patent on the
`grounds specified below.
`A.
`Related Proceedings
`The parties indicate that the ’376 patent is the subject of the following
`district court case: Twilio Inc. v. TeleSign Corporation, No. 5:16-cv-06925
`(N.D. Cal.). Pet. 66; 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.
`IPR2017-01976
`U.S. Patent No. 8,837,465
`IPR2017-01978
`U.S. Patent No. 8,306,021
`Paper 4, 1.
`B.
`The ’376 Patent
`The ’376 patent relates to “processing telephony sessions.” Ex. 1001,
`1:22–24. The ’376 patent explains that deploying telephony services
`“requires developers to train in new languages, tools, and development
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`environments,” and, thus, involves “significant upfront and ongoing
`investment.” Id. at 1:35–54. To address this problem, the ’376 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 ’376 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 comprising:
`operating a telephony network and internet connected
`system cooperatively with a plurality of application
`programming Interface (API) resources, wherein operating the
`system comprises:
`initiating a telephony session,
`communicating with an application server to receive an
`application response,
`converting the application response into executable
`operations to process the telephony session,
`creating at least one informational API resource; and
`exposing the plurality of API resources through a
`representational state transfer (REST) API that comprises:
`receiving a REST API request that specifies an API
`resource URI,1 and
`responding to the API request according to the request
`and the specified resource URI.
`
`1 URI stands for Universal Resource Identifier. Ex. 1001, 2:61–62.
`
`2
`
`
`
`Ex. 1004
`
`Ex. 1005
`
`Ex. 1006
`
`Ex. 1007
`
`Ex. 1008
`
`Ex. 1009
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`Patent 8,755,376 B2
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`Ex. 1001, 18:29–45.
`D.
`Evidence of Record
`Petitioner submits the following references and declaration (Pet. 5–6):
`Reference or Declaration
`Exhibit No.
`Maes et al., U.S. Patent No. 6,801,604 B2 (filed June 25,
`Ex. 1003
`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”)
`Jiang et al., U.S. Patent No. 7,092,370 B2 (filed Aug. 16,
`2001, issued Aug. 15, 2006) (“Jiang”)
`European Telecommunications Standards Institute, ETSI
`ES 202 391-4 V1.2.1 (2006) (“ETSI 391-4”)
`European Telecommunications Standards Institute, ETSI
`ES 202 391-7 V1.2.1 (2006) (“ETSI 391-7”)
`European Telecommunications Standards Institute, ETSI
`ES 202 391-2 V1.2.1 (2006) (“ETSI 391-2”)
`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):
`References
`Claim(s)
`Basis
`1–3, 14, 16, and 19 35 U.S.C. § 103(a) Maes and Ransom
`5 and 17
`35 U.S.C. § 103(a) Maes, Ransom, and Jiang
`1–3, 5, 14, and 16
`35 U.S.C. § 103(a)
`ETSI 391-4 and Ransom
`17
`35 U.S.C. § 103(a)
`ETSI 391-4, Ransom, and
`ETSI 391-7
`ETSI 391-4, Ransom, and
`ETSI 391-2
`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
`
`35 U.S.C. § 103(a)
`
`19
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`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. 8–9. Patent Owner argues that “Petitioner knew that the
`terms ‘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. 3–8. 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 1–3, 14, 16 and 19 over Maes and
`Ransom
`Petitioner argues that claims 1–3, 14, 16, and 19 would have been
`obvious over Maes and Ransom. Pet. 5–6. 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 1–3, 14, 16, and 19 would have been obvious over Maes and
`Ransom.
`
`a.
`Claim 1
`Claim 1 recites “operating a telephony network and internet connected
`system cooperatively with a plurality of application programming Interface
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`(API) resources,” “initiating a telephony session,” “communicating with an
`application server to receive an application response,” “converting the
`application response into executable operations to process the telephony
`session,” and “creating at least one informational API resource.” Ex. 1001,
`18:30–39. Petitioner identifies evidence indicating that the combination of
`Maes and Ransom teaches the above recitations and limitations of claim 1.
`Pet. 14–20. On this record, we agree with Petitioner’s assertions and
`supporting evidence.
`Claim 1 recites “exposing the plurality of API resources through a
`representational state transfer (REST) API.” Ex. 1001, 18:40–41. Petitioner
`identifies evidence indicating that Meas teaches a plurality of resources,
`such as MakeCall, DropCall, and TransferCall, that are accessible through
`an API. Pet. 20–21 (citing Ex. 1003, 16:4–8, 34:20–35:28). Petitioner also
`identifies evidence indicating that Ransom teaches accessing resources using
`the REST model. Pet. 21–22 (citing Ex. 1004 ¶¶ 161–163, 184–185).
`Patent Owner responds that Petitioner does not identify any portion of
`Maes that teaches a REST API, or any portion of Ransom that teaches
`exposing API resources through a REST API. Prelim. Resp. 11–14. 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 identifies evidence indicating that Maes teaches accessing
`a plurality of resources through an API, and Ransom teaches accessing
`resources using the REST model. Pet. 20–22 (citing Ex. 1003, 16:4–8,
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`34:20–35:28; Ex. 1004 ¶¶ 161–163, 184–185). As a result, Petitioner
`explains that Maes and Ransom, when combined, teach accessing a plurality
`of resources through a REST API. Pet. 22–24.
`Claim 1 recites “receiving a REST API request that specifies an API
`resource URI.” Ex. 1001, 18:42–43. Petitioner identifies evidence
`indicating that Maes teaches receiving a request from an application over the
`Internet that specifies an API resource. Pet. 24–26 (citing Ex. 1003, 15:66–
`16:26, 34:20–35:28, Fig. 1). Petitioner also identifies evidence indicating
`that Ransom teaches accessing resources using a REST request that specifies
`the URI of the requested resource. Pet. 26–27 (citing Ex. 1004 ¶¶ 163, 185).
`Patent Owner responds that Petitioner does not identify any portion of
`Maes that teaches a REST API or a URI, or any portion of Ransom that
`teaches a REST API request that specifies an API resource URI. Prelim.
`Resp. 20–24. 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.”). As discussed
`above, Petitioner identifies evidence indicating that Maes teaches receiving a
`request from an application over the Internet that specifies an API resource,
`and Ransom teaches accessing resources using a REST request that specifies
`the URI of the requested resource. Pet. 24–27 (citing Ex. 1003, 15:66–
`16:26, 34:20–35:28, Fig. 1; Ex. 1004 ¶¶ 163, 185). As a result, Petitioner
`explains that Maes and Ransom, when combined, teach receiving a REST
`API request that specifies an API resource URI. Pet. 27–29.
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`Claim 1 recites “responding to the API request according to the
`request and the specified resource URI.” Ex. 1001, 18:44–45. Petitioner
`identifies evidence indicating that Maes teaches responding to the request
`that specifies an API resource, such as MakeCall or TransferCall, by
`modifying the state of a telephony session using that API resource (e.g., by
`initiating or transferring the call). Pet. 29 (citing Ex. 1003, 16:24–44,
`35:25–28).
`Patent Owner responds that Petitioner relies solely on Maes for the
`above limitation of claim 1, but Maes alone does not teach a REST API
`request that specifies an API resource URI. Prelim. Resp. 28. Patent Owner
`also argues that Petitioner does not address the portion of claim 1 that recites
`responding to the API request according to “the specified resource URI.” Id.
`at 28–29. Patent Owner’s argument is not persuasive. With respect to the
`above limitation of claim 1, Petitioner identifies evidence indicating that
`Maes teaches responding to a request that specifies an API resource by
`modifying the state of a telephony session using that API resource. Pet. 29
`(citing Ex. 1003, 16:24–44, 35:25–28). With respect to the previous
`limitation of claim 1, Petitioner identifies evidence indicating that the
`request is a REST API request that specifies an API resource URI. Pet. 24–
`27 (citing Ex. 1003, 15:66–16:26, 34:20–35:28, Fig. 1; Ex. 1004 ¶¶ 163,
`185). Thus, when Petitioner’s arguments and evidence regarding the final
`two limitations of claim 1 are considered together, Petitioner sufficiently
`shows that the response is according to the REST API request and the
`specified API resource URI.
`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. 22–
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`24, 27–29. Specifically, Petitioner identifies evidence indicating that using
`the REST model taught by Ransom instead of the SOAP model taught by
`Maes would have been an obvious design choice. Id. at 23–24 (citing Ex.
`1009 ¶¶ 62–75). Petitioner’s declarant, Dr. Seth Nielson, further explains
`that “there is no difference between REST or SOAP in terms of capabilities
`and functionality,” and, thus, “one of skill in the art would have chosen the
`approach based on preference.” Ex. 1009 ¶ 62.
`Patent Owner responds that Petitioner’s rationale for combining Maes
`and Ransom simply states that it would have been an obvious design choice,
`and does not explain why a person of ordinary skill in the art would have
`been motivated to combine Maes and Ransom. Prelim. Resp. 14–19, 24–28.
`Patent Owner’s argument is not persuasive. Petitioner does more than
`simply state that combining the cited teachings of Maes and Ransom would
`have been an obvious design choice. Pet. 22–24, 27–29. As discussed
`above, Petitioner identifies evidence indicating why the proposed
`combination would have been an obvious design choice. Id. Namely,
`Petitioner’s declarant, Dr. Nielson, explains that REST and SOAP were
`known models that offered the same capabilities and functionality, and, thus,
`a person of ordinary skill in the art would have selected one based on
`preference. Ex. 1009 ¶¶ 62, 70; see KSR Int’l Co. v. Teleflex Inc., 550 U.S.
`398, 418 (2007) (“a court can take account of the inferences and creative
`steps that a person of ordinary skill in the art would employ”).
`For the foregoing reasons, Petitioner demonstrates a reasonable
`likelihood of prevailing in showing that claim 1 would have been obvious
`over Maes and Ransom.
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`b.
`Claims 2, 3, 14, 16, and 19
`Claims 2, 3, 14, 16, and 19 depend, directly or indirectly, from claim
`1. Petitioner identifies evidence indicating that the combination of Maes and
`Ransom teaches the limitations of claims 2, 3, 14, 16, and 19. Pet. 30–35.
`Patent Owner does not raise any specific arguments relating to claims 2, 3,
`14, 16, and 19. 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, 14, 16, and 19 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 1–3, 14, 16, and 19 would
`have been obvious over Maes and Ransom.
`2.
`Obviousness of Claims 1–3, 5, 14, and 16 over ETSI 391-
`4 and Ransom
`Petitioner argues that claims 1–3, 5, 14, and 16 would have been
`obvious over ETSI 391-4 and Ransom. Pet. 6. 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 1–3, 5, 14, and 16 would have been obvious over ETSI
`391-4 and Ransom.
`a.
`Claim 1
`Claim 1 recites “operating a telephony network and internet connected
`system cooperatively with a plurality of application programming Interface
`(API) resources,” “initiating a telephony session,” “communicating with an
`application server to receive an application response,” “converting the
`application response into executable operations to process the telephony
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`session,” and “creating at least one informational API resource.” Ex. 1001,
`18:30–39. Petitioner identifies evidence indicating that the combination of
`ETSI 391-4 and Ransom teaches the above recitations and limitations of
`claim 1. Pet. 44–49. On this record, we agree with Petitioner’s assertions
`and supporting evidence.
`Claim 1 recites “exposing the plurality of API resources through a
`representational state transfer (REST) API.” Ex. 1001, 18:40–41. Petitioner
`identifies evidence indicating that ETSI 391-4 teaches a plurality of
`resources, such as the getReceivedSms resource, that are accessible through
`an API.2 Pet. 50 (citing Ex. 1006, 17). Petitioner also identifies evidence
`indicating that Ransom teaches accessing resources using the REST model.
`Pet. 50 (citing Ex. 1004 ¶¶ 161–163, 184–185).
`Patent Owner responds that Petitioner does not identify any portion of
`ETSI 391-4 that teaches a REST API, or any portion of Ransom that teaches
`exposing API resources through a REST API. Prelim. Resp. 30–33. Patent
`Owner’s argument is not persuasive because it addresses ETSI 391-4 and
`Ransom individually, not the combination of ETSI 391-4 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.”). As discussed above,
`
`
`2 Patent Owner argues that the getReceivedSms resource is a single resource,
`not a plurality of resources, as required by claim 1. Prelim. Resp. 30. We
`understand the getReceivedSms resource to be just one example of the
`plurality of resources that Petitioner identifies in the Petition. See, e.g., Pet.
`45 (“the Parlay X SMS and Third Party Call Web Services include the
`functionality of sending an SMS message and initiating a phone call,
`respectively, over a telephony network, i.e. a plurality of API resources”).
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`Petitioner identifies evidence indicating that ETSI 391-4 teaches accessing a
`plurality of resources through an API, and Ransom teaches accessing
`resources using the REST model. Pet. 50 (citing Ex. 1004 ¶¶ 161–163, 184–
`185; Ex. 1006, 17). As a result, Petitioner explains that ETSI 391-4 and
`Ransom, when combined, teach accessing a plurality of resources through a
`REST API. Pet. 50–52.
`Claim 1 recites “receiving a REST API request that specifies an API
`resource URI.” Ex. 1001, 18:42–43. Petitioner identifies evidence
`indicating that ETSI 391-4 teaches receiving a getReceivedSmsRequest that
`specifies the getReceivedSms resource. Pet. 52–53 (citing Ex. 1006, 17).
`Petitioner also identifies evidence indicating that Ransom teaches accessing
`resources using a REST request that specifies the URI of the requested
`resource. Pet. 53 (citing Ex. 1004 ¶¶ 163, 185).
`Patent Owner responds that Petitioner does not identify any portion of
`ETSI 391-4 that teaches a REST API or a URI, or any portion of Ransom
`that teaches a REST API request that specifies an API resource URI.
`Prelim. Resp. 38–41. Patent Owner’s argument is not persuasive because it
`addresses ETSI 391-4 and Ransom individually, not the combination of
`ETSI 391-4 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.”). As discussed above, Petitioner identifies evidence indicating
`that ETSI 391-4 teaches receiving a getReceivedSmsRequest that specifies
`the getReceivedSms resource, and Ransom teaches accessing resources
`using a REST request that specifies the URI of the requested resource. Pet.
`52–53 (citing Ex. 1004 ¶¶ 163, 185; Ex. 1006, 17). As a result, Petitioner
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`explains that ETSI 391-4 and Ransom, when combined, teach receiving a
`REST API request that specifies an API resource URI. Pet. 53–55.
`Claim 1 recites “responding to the API request according to the
`request and the specified resource URI.” Ex. 1001, 18:44–45. Petitioner
`identifies evidence indicating that ETSI 391-4 teaches responding to the
`getReceivedSmsRequest by sending a getReceivedSmsResponse with the
`received SMS messages. Pet. 55 (citing Ex. 1006, 17).
`Patent Owner responds that Petitioner relies solely on ETSI 391-4 for
`the above limitation of claim 1, but ETSI 391-4 alone does not teach a REST
`API request that specifies an API resource URI. Prelim. Resp. 46. Patent
`Owner also argues that Petitioner does not address the portion of claim 1 that
`recites responding to the API request according to “the specified resource
`URI.” Id. at 46–47. Patent Owner’s argument is not persuasive. With
`respect to the above limitation of claim 1, Petitioner identifies evidence
`indicating that ETSI 391-4 teaches responding to the
`getReceivedSmsRequest by sending a getReceivedSmsResponse with the
`received SMS messages. Pet. 55 (citing Ex. 1006, 17). With respect to the
`previous limitation of claim 1, Petitioner identifies evidence indicating that
`the request is a REST API request that specifies an API resource URI. Pet.
`52–53 (citing Ex. 1004 ¶¶ 163, 185; Ex. 1006, 17). Thus, when Petitioner’s
`arguments and evidence regarding the final two limitations of claim 1 are
`considered together, Petitioner sufficiently shows that the response is
`according to the REST API request and the specified API resource URI.
`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 Ransom.
`Pet. 50–55. Specifically, Petitioner identifies evidence indicating that using
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`the REST model taught by Ransom instead of the SOAP model taught by
`ETSI 391-4 would have been an obvious design choice. Id. at 50 (citing
`Ex. 1009 ¶¶ 97–101). Petitioner’s declarant, Dr. Nielson, further explains
`that “there is no difference between REST or SOAP in terms of capabilities
`and functionality,” and, thus, “one of skill in the art would have chosen the
`approach based on preference.” Ex. 1009 ¶ 98.
`Patent Owner responds that Petitioner’s rationale for combining ETSI
`391-4 and Ransom simply states that it would have been an obvious design
`choice, but does not explain why a person of ordinary skill in the art would
`have been motivated to combine ETSI 391-4 and Ransom. Prelim. Resp.
`33–37, 41–45. Patent Owner’s argument is not persuasive. Petitioner does
`more than simply state that combining the cited teachings of ETSI 391-4 and
`Ransom would have been an obvious design choice. Pet. 50–55. As
`discussed above, Petitioner identifies evidence indicating why the proposed
`combination would have been an obvious design choice. Id. Namely,
`Petitioner’s declarant, Dr. Nielson, explains that REST and SOAP were
`known models that offered the same capabilities and functionality, and, thus,
`a person of ordinary skill in the art would have selected one based on
`preference. Ex. 1009 ¶ 98; see KSR, 550 U.S. at 418 (“a court can take
`account of the inferences and creative steps that a person of ordinary skill in
`the art would employ”).
`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 Ransom.
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`b.
`Claims 2, 3, 5, 14, and 16
`Claims 2, 3, 5, 14, and 16 depend, directly or indirectly, from claim 1.
`Petitioner identifies evidence indicating that the combination of ETSI 391-4
`and Ransom teaches the limitations of claims 2, 3, 5, 14, and 16. Pet. 55–59.
`Patent Owner does not raise any specific arguments relating to claims 2, 3,
`5, 14, and 16. 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, 5, 14, and 16 would
`have been obvious over ETSI 391-4 and Ransom
`c.
`Summary
`For the foregoing reasons, Petitioner demonstrates a reasonable
`likelihood of prevailing in showing that claims 1–3, 5, 14, and 16 would
`have been obvious over ETSI 391-4 and Ransom.
`3.
`Remaining Grounds
`Petitioner argues that claims 5 and 7 would have been obvious over
`Maes, Ransom, and Jiang; claim 17 would have been obvious over ETSI
`391-4, Ransom, and ETSI 391-7; and claim 19 would have been obvious
`over ETSI 391-4, Ransom, and ETSI 391-2. Pet. 6. Claims 5, 7, 17, and 19
`depend, directly or indirectly, from claim 1. Petitioner identifies evidence
`indicating that the proposed combinations teach the limitations of claims 5,
`7, 17, and 19, and that a person of ordinary skill in the art would have had a
`reason to combine the cited teachings. Pet. 35–40, 59–65. Patent Owner
`does not raise any specific arguments relating to claims 5, 7, 17, and 19. On
`this record, we agree with Petitioner’s assertions and supporting evidence.
`Therefore, Petitioner demonstrates a reasonable likelihood of prevailing in
`showing that claims 5, 7, 17, and 19 would have been obvious over the
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`proposed combinations.
`
`III. CONCLUSION
`Petitioner demonstrates a reasonable likelihood of prevailing in
`showing the unpatentability of claims 1–3, 5, 14, 16, 17, and 19 of the ’376
`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 1–3, 5, 14, 16, 17, and 19 of the ’376 patent is hereby
`instituted on the following grounds:
`A. Claims 1–3, 14, 16, and 19 as unpatentable under 35 U.S.C.
`§ 103 as obvious over Maes and Ransom;
`Claims 5 and 17 as unpatentable under 35 U.S.C. § 103 as
`B.
`obvious over Maes, Ransom, and Jiang;
`Claims 1–3, 5, 14, and 16 as unpatentable under 35 U.S.C.
`C.
`§ 103 as obvious over ETSI 391-4 and Ransom;
`D. Claim 17 as unpatentable under 35 U.S.C. § 103 as obvious
`over ETSI 391-4, Ransom, and ETSI 391-7; and
`Claim 19 as unpatentable under 35 U.S.C. § 103 as obvious
`E.
`over ETSI 391-4, Ransom, 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
`
`15
`
`
`
`IPR2017-01977
`Patent 8,755,376 B2
`
`FURTHER ORDERED that the trial is limited to the grounds
`
`identified, and no other grounds are authorized.
`
`
`
`16
`
`
`
`IPR2017-01977
`Patent 8,755,376 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
`
`17
`
`
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