Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 17
`Entered: May 24, 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)
`Case IPR2017-01977 (Patent 8,755,376 B2)1
`_______________
`
`
`Before ROBERT J. WEINSCHENK, KIMBERLY MCGRAW, and
`SCOTT C. MOORE, Administrative Patent Judges.
`
`WEINSCHENK, Administrative Patent Judge.
`
`
`
`
`ORDER
`Authorizing Motion for Discovery
`37 C.F.R. § 42.51
`
`
`
`
`
`
`1 This Order pertains to both of these cases. Therefore, we exercise our
`discretion to issue a single Order to be filed in each case. The parties are not
`authorized to use this style heading for any subsequent papers.
`
`
`571-272-7822
`
`
`
`
`Paper 17
`Entered: May 24, 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)
`Case IPR2017-01977 (Patent 8,755,376 B2)1
`_______________
`
`
`Before ROBERT J. WEINSCHENK, KIMBERLY MCGRAW, and
`SCOTT C. MOORE, Administrative Patent Judges.
`
`WEINSCHENK, Administrative Patent Judge.
`
`
`
`
`ORDER
`Authorizing Motion for Discovery
`37 C.F.R. § 42.51
`
`
`
`
`
`
`1 This Order pertains to both of these cases. Therefore, we exercise our
`discretion to issue a single Order to be filed in each case. The parties are not
`authorized to use this style heading for any subsequent papers.
`
`
`
`IPR2017-01976 (Patent 8,837,465 B2)
`IPR2017-01977 (Patent 8,755,376 B2)
`
`
`INTRODUCTION
`I.
`On May 23, 2018, Judges Weinschenk, McGraw, and Moore held a
`telephone conference call with counsel for TeleSign Corporation
`(“Petitioner”) and counsel for Twilio Inc. (“Patent Owner”). A court
`reporter was present on the conference call. This order summarizes
`statements made during the conference call. A more complete record may
`be found in the court reporter’s transcript, which is to be filed by Patent
`Owner as an exhibit.
`
`II. ANALYSIS
`Patent Owner requested authorization to file a motion for discovery
`regarding four specific documents produced by Petitioner in a related district
`court case. Patent Owner explained that the requested documents are
`relevant to objective indicia of nonobviousness. Petitioner responded that
`the requested documents are not relevant. After hearing the respective
`positions of the parties, we authorized Patent Owner to file a motion for
`discovery by May 25, 2018, and we authorized Petitioner to file an
`opposition to Patent Owner’s motion for discovery by June 1, 2018. To
`accommodate the briefing schedule for Patent Owner’s motion for
`discovery, we extended the deadline for Patent Owner’s Response to the
`Petition from June 1, 2018, to June 8, 2018.
`According to Petitioner, the requested documents contain confidential
`information. The default Protective Order in the Office Patent Trial Practice
`Guide was “automatically entered into the proceeding upon the filing of a
`petition for review.” Office Patent Trial Practice Guide, 77 Fed. Reg.
`48,756, 48,771 (Aug. 14, 2012). Petitioner indicated, though, that it intends
`to propose modifications to the default Protective Order. In that regard, the
`
`2
`
`
`
`IPR2017-01976 (Patent 8,837,465 B2)
`IPR2017-01977 (Patent 8,755,376 B2)
`
`parties agreed to meet and confer regarding proposed modifications to the
`default Protective Order and to file a motion for entry of a protective order
`by May 25, 2018. We explained that the parties’ proposed Protective Order
`must be filed as an exhibit and must indicate in track changes any proposed
`modifications to the default Protective Order. In addition, the parties’
`motion for entry of a protective order must explain specifically why any
`proposed modifications to the default Protective Order are necessary.
`To the extent a party believes that Patent Owner’s motion for
`discovery, Petitioner’s opposition, or any accompanying documents contain
`confidential information, that party must file a motion to seal. The standard
`for granting a motion to seal is good cause. 37 C.F.R. § 42.54. That
`standard includes showing that the information addressed in the motion to
`seal is truly confidential, and that such confidentiality outweighs the strong
`public interest in having the record open to the public. Garmin Int’l, Inc. v.
`Cuozzo Speed Techs. LLC, IPR2012-00001, Paper 34, 1–2 (PTAB Mar. 14,
`2013). The parties are encouraged to redact confidential information, where
`possible, rather than seeking to seal entire documents. Office Patent Trial
`Practice Guide, 77 Fed. Reg. 48,756, 48,761 (Aug. 14, 2012).
`We also note that the parties should not submit confidential personal
`information that clearly has little relevance to the merits of the case. Garmin
`Int’l, Inc. v. Cuozzo Speed Techs. LLC, IPR2012-00001, Paper 37, 6–8
`(PTAB Apr. 5, 2013). Examples of confidential personal information
`include an account number on a check, a social security number, and a
`driving record. Id. Non-useful personal confidential information in a
`document should be redacted when the document is submitted, and the
`submission should be accompanied by a paper noting the reasons for the
`
`3
`
`
`
`IPR2017-01976 (Patent 8,837,465 B2)
`IPR2017-01977 (Patent 8,755,376 B2)
`
`redaction. Id.
`The parties are reminded that confidential information that is subject
`to a protective order ordinarily becomes public 45 days after final judgment
`in a trial. Id. However, after final judgment in a trial, a party may file a
`motion to expunge confidential information from the record prior to the
`information becoming public. 37 C.F.R. § 42.56.
`III. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that Patent Owner is authorized to file a motion for
`discovery by May 25, 2018;
`FURTHER ORDERED that Petitioner is authorized to file an
`opposition to Patent Owner’s motion for discovery by June 1, 2018;
`FURTHER ORDERED that no reply is authorized; and
`FURTHER ORDERED that the deadline for Patent Owner’s
`Response to the Petition is extended from June 1, 2018, to June 8, 2018.
`
`4
`
`
`
`IPR2017-01976 (Patent 8,837,465 B2)
`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
`
`5
`
`
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