Case IPR2017-01977
`Patent No. 8,755,376
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`TELESIGN CORPORATION
`Petitioner
`
`v.
`
`TWILIO INC.
`Patent Owner
`
`Case No. IPR2017-01977
`Patent: 8,755,376
`
`PATENT OWNER’S MOTION TO COMPEL ROUTINE DISCOVERY
`AND ALTERNATIVE MOTION FOR ADDITIONAL DISCOVERY
`
`
`Patent No. 8,755,376
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`TELESIGN CORPORATION
`Petitioner
`
`v.
`
`TWILIO INC.
`Patent Owner
`
`Case No. IPR2017-01977
`Patent: 8,755,376
`
`PATENT OWNER’S MOTION TO COMPEL ROUTINE DISCOVERY
`AND ALTERNATIVE MOTION FOR ADDITIONAL DISCOVERY
`
`
`
`Case IPR2017-01977
`Patent No. 8,755,376
`
`TABLE OF CONTENTS
`
`B.
`
`BACKGROUND ............................................................................................ 1
`I.
`LEGAL STANDARDS .................................................................................. 2
`II.
`III. ARGUMENT .................................................................................................. 3
`A.
`Petitioner is Obstructing Discovery into Highly Relevant Information
` ............................................................................................................... 3
`The Requested Documents Should Have Been Produced as a Part of
`Routine Discovery ................................................................................. 5
`Production of the Documents is in the Interests of Justice ................... 6
`1.
`The request is based on more than a mere possibility of finding
`something useful ......................................................................... 6
`The request does not seek Petitioner’s litigation positions ......... 8
`2.
`The information is not available through other means ............... 8
`3.
`The request is easily understandable and not burdensome ......... 9
`4.
`IV. CONCLUSION ............................................................................................10
`
`C.
`
`ii
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`
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`Case IPR2017-01977
`Patent No. 8,755,376
`I.
`BACKGROUND
`
`Patent Owner requests documents that are solely in Petitioner’s possession and
`
`relate to Petitioner’s development of its infringing products. Evidence in Patent
`
`Owner’s possession (Patent Owner’s own documents) demonstrates that in an effort
`
`led by Petitioner’s cofounder and product designer Stacy Stubblefield, Petitioner
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`copied Patent Owner’s claimed technology to develop Petitioner’s infringing
`
`products. Petitioner also trumpeted the release of its resulting practicing products as
`
`an achievement. Petitioner’s development of those products was the result of
`
`customer demand years after the priority date of the challenged patent. Patent Owner
`
`seeks information from Petitioner’s records that will give further weight to Patent
`
`Owner’s existing evidence that shows copying, Petitioner’s need to develop the
`
`infringing products to satisfy customer demand, and Petitioner’s efforts to develop its
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`infringing products.
`
`In particular, Patent Owner asks the Board to order production of information
`
`from Petitioner showing Petitioner’s cofounder’s and other employees’ access of
`
`Patent Owner’s patented technology, how that information was used by Petitioner,
`
`customer requests for Petitioner’s resulting infringing products, efforts and time
`
`invested in Petitioner’s infringing product development, and customer requests that
`
`led to the product development.
`
`Copying is an objective indicator of non-obviousness, rendering the sought
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`1
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`Case IPR2017-01977
`Patent No. 8,755,376
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`evidence relevant to Petitioner’s claims of obviousness. Petitioner knew of the
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`copying allegations well before it filed its Petition but withheld evidence inconsistent
`
`with its obviousness claims. The sought information is also relevant to other issues
`
`relating to non-obviousness, including long-felt need and failure by others.
`
`While Patent Owner could identify a small number of specific documents that
`
`would satisfy its request, Petitioner has threatened Patent Owner with sanctions for
`
`even providing the Board with information to identify the specific documents (e.g.,
`
`by district court Bates number)—even if the information was provided under seal.
`
`Petitioner and Patent Owner have those numbers and could provide them quickly if
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`requested by the Board. In an abundance of caution, Patent Owner is not identifying
`
`the requested documents more specifically.1
`
`The Board authorized filing the present motion in its May 24, 2018 Order.
`
`Paper No. 16.
`II.
`LEGAL STANDARDS
`
`A party “must serve relevant information that is inconsistent with a position
`
`advanced by the party during the proceeding concurrent with the filing of the
`
`1 Patent Owner does not object to the Petitioner providing copies of the requested
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`documents to the Board for in camera inspection. In the event of such an inspection,
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`Patent Owner contends that full unredacted copies should be provided for context.
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`2
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`Case IPR2017-01977
`Patent No. 8,755,376
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`documents or things that contains the inconsistency.” 37 C.F.R. § 42.51(b)(1)(iii).
`
`The Board may also authorize additional discovery if doing so would be “in the
`
`interests of justice.” 37 C.F.R. § 42.51(b)(2)(i). When authorizing additional
`
`discovery, the Board considers whether: (1) the request is based on more than a mere
`
`possibility of finding something useful; (2) the request does not seek the litigation
`
`positions of the other party; (3) the information is not reasonably available through
`
`other means; (4) the request is easily understandable; and (5) the request is not overly
`
`burdensome to answer. Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC, IPR 2012-
`
`00001, Paper 26, at 6–7 (P.T.A.B. Mar. 5, 2013).
`III. ARGUMENT
`
`A.
`
`Petitioner is Obstructing Discovery into Highly Relevant
`Information
`Petitioner objects to any characterization or attachment of the specific
`
`materials Patent Owner seeks—even if filed under seal. Ex. 2036 (May 25, 2018
`
`excerpt of email chain between counsel for the parties). Petitioner is therefore
`
`preventing Patent Owner from making the most specific, narrow request possible.
`
`Petitioner is using the illusion that its designation of its own documents under the
`
`district court protective order somehow prevents it from providing the information
`
`in this case. Petitioner is blocking the Board’s ability to assess discovery and the
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`merits in this case.
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`3
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`Case IPR2017-01977
`Patent No. 8,755,376
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`Petitioner is in effect demanding that Patent Owner should only be able to
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`pursue broader discovery requests. But Petitioner has already challenged the
`
`relevance of the specific documents and will no doubt challenge the relevance and
`
`breadth of any broader request. While Patent Owner does not agree that any district
`
`court protective order violation has occurred or will occur, Patent Owner has not
`
`attached or characterized the specific documents it requests in this filing because
`
`Petitioner has threatened to seek sanctions. Patent Owner’s Motion and
`
`characterizations herein are therefore based on Patent Owner’s own evidence of
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`Petitioner’s copying and publicly-available evidence—evidence that the requested
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`documents will give further weight to.
`
`In view of Petitioner’s objection to specific identification of the documents at
`
`issue, based on publicly-available evidence and evidence in Patent Owner’s records,
`
`the following document requests would yield production of the sought relevant
`
`information:
`
` Documents showing Stacy Stubblefield’s and other Petitioner agents’ or
`
`employees’ access of Patent Owner’s patented technology, including
`
`documents showing how that information was used by Petitioner or Stacy
`
`Stubblefield.
`
` Documents showing customer requests that led to Petitioner’s development of
`
`its products accused of infringement in the related district court proceeding.
`
`4
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`Case IPR2017-01977
`Patent No. 8,755,376
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`B.
`
`The Requested Documents Should Have Been Produced as a Part
`of Routine Discovery
`Patent Owner’s allegations of copying, as detailed in the district court
`
`complaint, were specific and known to Petitioner at the time it filed the initial
`
`Petition. See Compl., D.I. 1, Twilio, Inc. v. TeleSign Corp., Case No. 16–CV–
`
`06925–LHK (N.D. Cal. Dec. 1, 2016) (attached hereto as Exhibit 2017, ¶¶ 20-27).
`
`Patent Owner has documents showing that during Petitioner’s development of its
`
`infringing products, Petitioner had access to Patent Owner’s technology that
`
`practices the claims of the ’376 Patent. These documents include a non-disclosure
`
`agreement signed by Stacy Stubblefield (Petitioner’s cofounder and product
`
`designer), which gave Petitioner access to Patent Owner’s claimed technology.
`
`Patent Owner also has documents showing Stacy Stubblefield and other Petitioner
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`employees opened and used several accounts for Patent Owner’s products—most of
`
`which were opened using false identities. See also Exhibit 2017, ¶¶ 153-180
`
`(exemplary charts demonstrating that products developed by Petitioner infringe the
`
`challenged claims). Petitioner’s own evidence of its activities is undoubtedly
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`relevant to copying, which is an objective indicator of non-obviousness. Advanced
`
`Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1285 (Fed. Cir. 2000)
`
`(“Objective considerations such as failure by others to solve the problem and
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`copying, may often be the most probative and cogent evidence of nonobviousness.”)
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`5
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`Patent No. 8,755,376
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`(internal citations omitted). Given that the copying allegations were known to
`
`Petitioner when it filed the Petition, Petitioner should have already provided
`
`evidence in its possession relating to the activities it was conducting while it had
`
`access to Patent Owner’s patented technology.
`
`Additionally, Petitioner should be required to produce the sought documents
`
`because they are inconsistent with Petitioner’s arguments regarding obviousness and
`
`motivation to combine prior art references. The sought documents will show that
`
`Petitioner resorted to copying well after the timeframe Petitioner contends that the
`
`invention was obvious. In other words, Patent Owner seeks evidence in Petitioner’s
`
`possession that contradicts Petitioner’s allegation that that the claimed invention is
`
`an obvious, simple design choice. These documents should have been produced
`
`concurrently with the initial petition. See 37 C.F.R. § 42.51(b)(1)(iii).
`
`Production of the Documents is in the Interests of Justice
`C.
`To the extent that the Board finds that the requested documents do not
`
`constitute routine discovery, Petitioner should be ordered to produce the documents
`
`for the alternative reason that the request constitutes appropriate additional
`
`discovery. Patent Owner’s request satisfies all five of the Garmin factors. Garmin,
`
`IPR 2012-00001, Paper 26, at 6–7.
`
`1.
`
`The request is based on more than a mere possibility of
`finding something useful
`
`6
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`Case IPR2017-01977
`Patent No. 8,755,376
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`Patent Owner has documents in its possession that show Petitioner used false
`
`or misleading means to open accounts for Patent Owner’s products to access the
`
`claimed technology. See Section III.B., above. Patent Owner requests documents
`
`that show what Petitioner was doing with the Patent Owner information it was
`
`accessing, who was involved, and why Petitioner was conducting these activities.
`
`Accordingly, the additional discovery will confirm and give weight to the evidence
`
`Patent Owner already has showing Petitioner’s copying—an objective indicator of
`
`non-obviousness—by demonstrating that Petitioner was mining Patent Owner’s
`
`products for information while it was developing its own infringing products.
`
`Further, as addressed above in Section III.B, the sought documents will also
`
`show that the challenged claims are not an obvious, simple design choice as
`
`Petitioner alleges—Petitioner had to resort to copying. Additionally, Petitioner’s
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`publicly-available press release lauding the release of its infringing products
`
`indicates that the product development was an achievement years after Petitioner
`
`claims the invention was obvious. Ex. 2028. The press release also indicates that
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`Petitioner developed the products in response to customer demand. Id. Patent
`
`Owner seeks information in Petitioner’s records that underlie the press release
`
`statements—evidence of long-felt need and failure by others, which are also
`
`objective indicia of non-obviousness. In re Cyclobenzaprine Hydrochloride
`
`Extended-Release Capsule Patent Litig., 676 F.3d 1063, 1078 (Fed. Cir. 2012).
`
`7
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`Case IPR2017-01977
`Patent No. 8,755,376
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`To the extent Petitioner argues that the requested documents do not contradict
`
`a finding of obviousness, the Board has already reasoned that this sort of relevance
`
`argument “goes more to the weight to be given to the documents, rather than the first
`
`Garmin factor” and is not a valid reason to block the discovery. Baker Hughes Inc.,
`
`IPR2016-01901, Paper 29, at 5 (PTAB Oct. 13, 2017). Documents do not need to
`
`be determinative of an issue or fact to be discoverable in an inter partes review.
`
`Polygroup Limited v. Willis Elec. Col., Ltd., IPR2016-00800, Paper 28, at 2 (PTAB
`
`Jan. 13, 2017) (“we do not require the requested information to be determinative of
`
`an issue or fact”).
`
`The request does not seek Petitioner’s litigation positions
`2.
`Patent Owner seeks discoverable information that Patent Owner requested in
`
`the related district court proceeding and that Petitioner was therefore already
`
`obligated to collect and produce in the district court litigation. Patent Owner does
`
`not seek Petitioner’s litigation positions.
`
`The information is not available through other means
`3.
`The requested documents are only available through Petitioner and cannot be
`
`obtained through other means. In particular, Patent Owner seeks documents in
`
`Petitioner’s records. Patent Owner requests the documents to show Petitioner’s own
`
`records of its activities and motives at the time Petitioner had access to Patent
`
`Owner’s patented technology. Petitioner asserts that the ’376 Patent’s claims were
`
`8
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`Case IPR2017-01977
`Patent No. 8,755,376
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`obvious in view of the prior art, but evidence of Petitioner’s own actions from its
`
`own records will confirm that the claims were not obvious. The requested
`
`information is Petitioner’s information and cannot be obtained through other
`
`sources. Though Petitioner was already required to provide the requested documents
`
`in the related district court proceedings, Petitioner will not agree to provide those
`
`documents in the present case. The Board has previously held that a party is “unable
`
`to generate [the opposing party’s] own documents, or to generate comparable
`
`documents by other means, particularly when such documents are subject to the
`
`district court’s protective order.” Baker Hughes Inc., IPR2016-01901, Paper 29, at
`
`6 (PTAB Oct. 13, 2017).
`
`The request is easily understandable and not burdensome
`4.
`Patent Owner requests production of documents that should have already been
`
`produced in the related district court matter. In Chervon North America, Inc. et al.
`
`v. Milwaukee Electric Tool Corp., the Board held that a request for documents
`
`already identified and produced in a related district court litigation was “focused,
`
`easily understandable, and not overly burdensome.” IPR2015-00595, Paper 31 at 4
`
`(PTAB Oct. 30, 2015); see also Seadrill Americas et al. v. Transocean Offshore
`
`Deepwater Drilling, Inc., IPR2015-01929, Paper 67, at 5 (PTAB Oct. 27, 2016)
`
`(“Patent Owner argues that developing the testimony in the first instance was
`
`burdensome, but from the perspective of this proceeding, that is a sunk cost. There
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`9
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`Case IPR2017-01977
`Patent No. 8,755,376
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`is no meaningful burden to producing the Ambrose testimony at this point in time.”).
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`Petitioner should not need to parse requests, search for documents, or process
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`documents for production to provide the requested materials. It simply needs to
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`make the requested documents available for use in this case.
`IV. CONCLUSION
`
`Because the requested materials should have been produced as part of routine
`
`discovery and because Patent Owner’s document request satisfies the Garmin
`
`factors, Patent Owner respectfully requests the Board to order production of
`
`information from Petitioner showing its cofounder’s and other employees’ access of
`
`Patent Owner’s patented technology, how that information was used by Petitioner,
`
`customer requests for Petitioner’s resulting infringing products, and efforts and time
`
`invested in Petitioner’s infringing product development:
`
` Documents showing Stacy Stubblefield’s and other Petitioner agents’ or
`
`employees’ access of Patent Owner’s patented technology, including
`
`documents showing how that information was used by Petitioner or Stacy
`
`Stubblefield.
`
` Documents showing customer requests that led to Petitioner’s development of
`
`its products accused of infringement in the related district court proceeding.
`
`Further, because the names of the people involved in the activities underlying
`
`the requested documents are relevant to non-obviousness (i.e., to demonstrate those
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`10
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`Case IPR2017-01977
`Patent No. 8,755,376
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`involved in copying, such as cofounder Stacy Stubblefield), Petitioner should also
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`be ordered to not redact the names on the requested documents before providing the
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`documents in this case. Notably, the identities of Petitioner’s personnel are publicly
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`known on sites like LinkedIn.
`
`May 25, 2018
`
`BAKER BOTTS L.L.P.
`ATTN: Wayne O. Stacy
`101 California Street, Suite 3600
`San Francisco, CA 94111
`Tel: (415) 291-6206
`Fax: (415) 291-6306
`
`Respectfully submitted,
`
`BAKER BOTTS L.L.P.
`
`/Wayne O. Stacy/
`Wayne O. Stacy
`Reg. No. 45,125
`Lead Counsel
`
`11
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`Case IPR2017-01977
`Patent No. 8,755,376
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`CERTIFICATE OF COMPLIANCE
`
`Pursuant to 37 C.F.R. § 42.24(d), the undersigned certifies that the foregoing
`
`motion, exclusive of the exempted portions as provided in 37 C.F.R. § 42.24(a),
`
`complies with the page-limit limitations of 37 C.F.R. § 42.24(a) because this motion
`
`is 11 pages long.
`
`May 25, 2018
`
`By: /Wayne O. Stacy/
`Wayne O. Stacy
`Reg. No. 45,125
`Lead Counsel
`
`12
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`Case IPR2017-01977
`Patent No. 8,755,376
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`CERTIFICATE OF SERVICE
`
`I hereby certify that on May 25, 2018, a copy of the foregoing PATENT
`
`OWNER’S MOTION TO COMPEL ROUTINE DISCOVERY AND
`
`ALTERNATIVE MOTION FOR ADDITIONAL DISCOVERY was served
`
`electronically via email on the following:
`
`Elena McFarland
`(emcfarland@shb.com)
`Tawni Wilhelm
`(twilhelm@shb.com, TeleSignIPR@shb.com)
`Jesse Camacho
`(jcamacho@shb.com)
`Counsel for TeleSign Inc.
`Shook, Hardy & Bacon LLP
`2555 Grand Blvd.
`Kansas City, MO 64108
`
`Amy Foust
`(afoust@shb.com)
`Counsel for TeleSign Inc.
`Shook, Hardy & Bacon LLP
`201 S. Biscayne Blvd., Suite 3200
`Miami, FL 33131
`
`May 25, 2018
`
`By: /Wayne O. Stacy/
`Wayne O. Stacy
`Reg. No. 45,125
`Lead Counsel
`
`13
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