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` UNITED STATES PATENT AND TRADEMARK OFFICE
`
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`TELESIGN CORPORATION, ) Case No.
`
` ) 15-3240-PSG
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` Petitioner, )
`
` ) Case Nos.
`
` vs. ) IPR2017-01976
`
` ) IPR2017-01977
`
`TWILIO, INC., )
`
` ) Patent Nos.
`
` Patent Owner. ) 8,837,465
`
`-------------------------- ) 8,755,376
`
` PTAB CONFERENCE CALL
`
` Wednesday, May 23, 2018
`
`Reported by:
`
`Stacey L. Daywalt
`
`JOB NO. 142597
`
`TSG Reporting - Worldwide 877-702-9580
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`TWILIO INC., Ex 2039, Page 1
`TELESIGN CORPORATION v. TWILIO INC.
`IPR2017-01977
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`
`
` UNITED STATES PATENT AND TRADEMARK OFFICE
`
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`TELESIGN CORPORATION, ) Case No.
`
` ) 15-3240-PSG
`
` Petitioner, )
`
` ) Case Nos.
`
` vs. ) IPR2017-01976
`
` ) IPR2017-01977
`
`TWILIO, INC., )
`
` ) Patent Nos.
`
` Patent Owner. ) 8,837,465
`
`-------------------------- ) 8,755,376
`
` PTAB CONFERENCE CALL
`
` Wednesday, May 23, 2018
`
`Reported by:
`
`Stacey L. Daywalt
`
`JOB NO. 142597
`
`TSG Reporting - Worldwide 877-702-9580
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`TWILIO INC., Ex 2039, Page 1
`TELESIGN CORPORATION v. TWILIO INC.
`IPR2017-01977
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`Page 2
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` Wednesday, May 23, 2018
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` 1:00 p.m.
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` PTAB Conference Call, held before
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`Administrative Patent Judges Robert J.
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`Weinschenk, Kimberly McGraw and Scott C. Moore,
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`before Stacey L. Daywalt, a Court Reporter and
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`Notary Public of the District of Columbia.
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`TWILIO INC., Ex 2039, Page 2
`TELESIGN CORPORATION v. TWILIO INC.
`IPR2017-01977
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`Page 3
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`A P P E A R A N C E S:
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` SHOOK, HARDY & BACON
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` Attorneys for Petitioner
`
` 2555 Grand Boulevard
`
` Kansas City, Missouri 64108
`
` BY: JESSE CAMACHO, ESQ.
`
` BAKER BOTTS
`
` Attorneys for Patent Owner
`
` 101 California Street
`
` San Francisco, California 94111
`
` BY: SARAH GUSKE, ESQ
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`TWILIO INC., Ex 2039, Page 3
`TELESIGN CORPORATION v. TWILIO INC.
`IPR2017-01977
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` ADMINISTRATIVE PATENT JUDGE: Good
`
`afternoon. This is Judge Weinschenk. With me
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`on the line are Judge McGraw and Judge Moore.
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` This is a conference call for
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`IPR2017-01976 and 01977.
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` Who do we have on the line for
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`Petitioner?
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` MR. CAMACHO: Your Honor, this is
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`Jesse Camacho for Petitioner TeleSign.
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` ADMINISTRATIVE PATENT JUDGE: Okay.
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`And is that it on Petitioner's side today?
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` MR. CAMACHO: I think that is it,
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`yeah.
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` ADMINISTRATIVE PATENT JUDGE: Okay.
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`And Mr. Camacho, do you have a court reporter
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`on the line?
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` MR. CAMACHO: I do not, because I
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`did not request this call.
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` ADMINISTRATIVE PATENT JUDGE: Okay.
`
` And who do we have on the line for
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`Patent Owner?
`
` MS. GUSKE: This is Sarah Guske for
`
`Patent Owner Twilio.
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` And we do have a court reporter on
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`TSG Reporting - Worldwide 877-702-9580
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`TWILIO INC., Ex 2039, Page 4
`TELESIGN CORPORATION v. TWILIO INC.
`IPR2017-01977
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`the line.
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` ADMINISTRATIVE PATENT JUDGE: Okay.
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`Great.
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` And Ms. Guske, will you be doing the
`
`speaking for Patent Owner?
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` MS. GUSKE: Yes.
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` ADMINISTRATIVE PATENT JUDGE: Okay.
`
` And Ms. Guske, when the transcript
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`of this call is ready, you'll have it filed as
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`an exhibit. Is that correct?
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` MS. GUSKE: That's correct.
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` ADMINISTRATIVE PATENT JUDGE: Okay.
`
`I'll just ask that because we have a court
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`reporter on the line, please reintroduce
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`yourself before you start speaking each time so
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`that the court reporter can keep the transcript
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`accurate.
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` MS. GUSKE: Sure.
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` ADMINISTRATIVE PATENT JUDGE: So
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`Patent Owner requested this call. Sounds like
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`there may be a dispute about some discovery
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`issues here. So I'll turn it over to Patent
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`Owner in a minute. I just want to make one
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`comment before we get started.
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`TSG Reporting - Worldwide 877-702-9580
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`TWILIO INC., Ex 2039, Page 5
`TELESIGN CORPORATION v. TWILIO INC.
`IPR2017-01977
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` There was a bit of an e-mail
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`exchange between the parties over the course of
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`yesterday and today, and I think you all are
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`probably aware that we typically ask the
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`parties to keep e-mails to just sort of basic
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`requests for calls and the issues that will be
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`discussed during the call and not to really
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`trade sort of arguments over e-mail.
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` I understand that it's a sort of
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`thin line between what's argumentative and
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`what's not. I'm not here to nitpick that. But
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`just generally speaking, this sort of back and
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`forth over e-mail isn't usually an efficient
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`use of time for either the parties or us.
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` So just in the future, try to keep
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`them a little bit shorter and more succinct as
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`to what the issues are and not presenting a lot
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`of arguments about the issues until we get on
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`the call.
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` MR. CAMACHO: Certainly, Your Honor.
`
`And this is Jesse Camacho for Petitioner.
`
` I would normally not have done that.
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`The issue and the problem is is that what I
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`wanted to avoid was a protective order
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`TSG Reporting - Worldwide 877-702-9580
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`TWILIO INC., Ex 2039, Page 6
`TELESIGN CORPORATION v. TWILIO INC.
`IPR2017-01977
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`Page 7
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`violation happening at the outset of the call.
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`So that's why we sent that e-mail beforehand.
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` ADMINISTRATIVE PATENT JUDGE: Yeah.
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`And Mr. Camacho, I understand the issue. And
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`you know, we would never have the parties
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`reveal confidential information over a call
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`without a protective order in place.
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` So I understand your concern. I
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`just wanted to give that comment so that you
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`know going forward this isn't something that we
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`typically like to see. But I understand the
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`concern here.
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` And, you know, I'll caution both
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`parties, as we discuss the issues today, I
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`think we can resolve these issues without
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`discussing confidential information, so please
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`be careful not to do so when you're making your
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`argument today.
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` MR. CAMACHO: Thank you, Your Honor.
`
` ADMINISTRATIVE PATENT JUDGE: Sure.
`
` So with that, I'll turn it over to
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`Ms. Guske. Why don't you give us an overview
`
`of what the issue is here?
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` MS. GUSKE: Sure. And for the
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`TSG Reporting - Worldwide 877-702-9580
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`TWILIO INC., Ex 2039, Page 7
`TELESIGN CORPORATION v. TWILIO INC.
`IPR2017-01977
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`Page 8
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`purposes of the record, this is Sarah Guske for
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`Patent Owner.
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` So what the issue is here is there
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`are three documents -- I guess four if you
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`count one as two. It's an e-mail and an
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`attachment -- that we have specifically
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`requested in this case.
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` And the reason that we asked
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`Petitioner for permission to use them in this
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`case is that the requested documents go to the
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`weight of the evidence that we have of
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`Petitioner's copying and which is relevant to
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`secondary considerations of nonobviousness.
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`accessible on our side to show copying. The
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`materials that we were wanting in this case
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`from TeleSign, the Petitioner, is their
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`documents, their e-mails internally, so they're
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`not available from any other source. But those
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`materials go to what was happening on
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`TeleSign's side of things contemporaneous with
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`the evidence that we have to show copying.
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` And we think that, without trying to
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`get into too much detail, to avoid
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`TSG Reporting - Worldwide 877-702-9580
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`TWILIO INC., Ex 2039, Page 8
`TELESIGN CORPORATION v. TWILIO INC.
`IPR2017-01977
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`Page 9
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`confidentiality issues on the call, we also
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`think that those materials are relevant to
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`other secondary considerations of
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`nonobviousness.
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` So what we have here is -- this is
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`not a discovery request like I think you often
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`see where we're asking on a topic basis. We've
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`asked for very specific documents, which those
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`three documents also meet the Garmin factors,
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`and I'm happy to run through those.
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` But before I do, I just will note
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`that it -- we're identifying material with
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`enough specificity, low burden and direct
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`relevance here that the board can order these
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`to be produced. It's something that will take
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`minutes to produce. These are not documents
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`they have to go and search for. The parties
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`are all aware of them. And I think it's
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`something that the PTAB's current standing
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`protective order, the default protective order,
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`could cover, given the age of the materials.
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`There's nothing in them that -- at least that
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`we can see, that would justify some sort of
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`heightened protection for these materials.
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`TWILIO INC., Ex 2039, Page 9
`TELESIGN CORPORATION v. TWILIO INC.
`IPR2017-01977
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`Page 10
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` So with that, I'll go through --
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`unless you have questions, I'll go through the
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`Garmin factors for the documents, again, trying
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`to avoid -- I think Petitioner has indicated
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`that they would potentially seek sanctions
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`against us if we reveal any information on the
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`call without a protective order in place. So
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`I'll do what I can here within the --
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` ADMINISTRATIVE PATENT JUDGE: So let
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`me stop you first. Let's put this on hold
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`before you get into the Garmin factors.
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` MS. GUSKE: Sure.
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` ADMINISTRATIVE PATENT JUDGE: I want
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`to turn to Mr. Camacho for a second and see
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`what his take is on this in terms of -- if
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`they've identified three to four documents,
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`Mr. Camacho, do you have any issue with
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`producing those documents, or is it just the
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`protective order issue that we have here?
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` MR. CAMACHO: No. The main thing
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`is -- the protective order issue is we wanted a
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`protective order issue -- we wanted a
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`protective order in place so that if the board
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`needed to be able to have the information it
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`TWILIO INC., Ex 2039, Page 10
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`IPR2017-01977
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`Page 11
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`needed in order to do an analysis to determine
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`whether to grant Patent Owner's request for
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`authorization to move, that it had it.
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` We were prepared to give that, if we
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`could get a protective order in place. We have
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`not been able to do that yet.
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` Secondarily to that, yes, on
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`substance, Your Honor, we do have issues. What
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`seems to have been -- happened on our end, the
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`way we view this, is that there are some
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`documents that Patent Owner would like to use
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`in the case and they're trying to find a way to
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`deem them relevant, and they're using secondary
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`considerations.
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` We do not see them as relevant to
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`secondary considerations, and we have not also
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`had any explanation of any sort of a nexus that
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`would tie somehow any neither nominal aspect of
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`the invention or an embodiment of the invention
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`to the content in the e-mails.
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` The e-mails -- I don't think Twilio
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`is going to dispute that the e-mails do not
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`mention Twilio. They do not mention really
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`anything having to do with copying. And I'll
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`IPR2017-01977
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`Page 12
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`pause there.
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` ADMINISTRATIVE PATENT JUDGE: All
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`right. Yeah, let me ask you this, Mr. Camacho:
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`You know, setting aside the relevancy issue,
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`because I think to the extent Patent Owner uses
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`the documents and tries to argue they're
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`relevant, I think you'd have an opportunity in
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`your reply to explain why they're not relevant
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`or why they don't show copying or why there is
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`no nexus.
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` Outside of that, is there any real
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`burden on you here to turn over three to four
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`documents?
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` I mean, like Ms. Guske said, this
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`isn't an issue where they're asking for you to
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`search a bunch of documents and spend a bunch
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`of time. They've identified three or maybe
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`four specific documents.
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` Is there any real burden on you here
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`to produce them?
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` MR. CAMACHO: So the burden extends
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`not so much to produce them.
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` And this is an odd situation,
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`because normally -- I mean, what seems to be
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`IPR2017-01977
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`Page 13
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`happening is we're using the Rule 26 standard
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`of discovery instead of the IPR standard of
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`discovery.
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` When these documents were produced,
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`they shouldn't have been even reviewable to be
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`in this proceeding, but I understand that
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`that's not Ms. Guske's position. But there are
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`some other issues.
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` And here's one: It's the potential
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`that these documents, if they do get disclosed
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`somehow in the IPR, that they would become
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`public. I think that's the standard.
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` So protecting the public aspect
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`is -- it's not a burden in respect to counsel
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`itself producing the documents per se, but my
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`client has serious concerns over safeguarding
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`the material. That's really the major issue.
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` But we do think, before we go
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`through this -- and we don't know what might
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`come down the pike, whether we're going to get
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`additional requests as the proceedings go
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`along -- that it is incumbent and it's -- it's
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`Petitioner's burden to, first, show that these
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`should be produced in the interest of justice
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`TWILIO INC., Ex 2039, Page 13
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`and show the nexus.
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` I'll pause again.
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` ADMINISTRATIVE PATENT JUDGE: Sure.
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`One more question for you, Mr. Camacho.
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` Let's say -- you know, we do have a
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`default protective order. We do allow the
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`parties sometimes to modify that protective
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`order, if they can explain why some changes
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`need to be made. You know, Patent Owner could
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`file their response, you know, under seal and
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`then file a public version that redacts any
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`sort of allegedly confidential information.
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` So with those safeguards in place
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`where your information wouldn't be revealed,
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`would that alleviate your concerns about
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`producing these documents?
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` MR. CAMACHO: There's two things
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`that would help in that regard, Your Honor.
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` The first is when we reviewed the
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`protective order, the default one, we had one
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`concern -- and I think this one can be
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`addressed -- and it's this notion of
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`redactions.
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` I think what Twilio's ultimately
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`requesting is redacted versions of the
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`documents. I think the parties have been able
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`to agree that the documents contain other
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`relevant to secondary considerations, so I
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`think an approach that we've developed between
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`request.
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` But there's a provision in the
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`provided, then we have to provide a public
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`version and unredact it under seal. This would
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`redactions would redact irrelevant information,
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`and the unredacted material would actually be
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`the confidential information.
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` So if we could include a provision
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`in the protective order to accommodate that,
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`that would help.
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` ADMINISTRATIVE PATENT JUDGE: Yeah.
`
` So I think the way I would envision
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`this working -- I understand that you would
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`redact stuff that's irrelevant. I mean, I
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`would understand here you would file the entire
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`document under seal. To the extent that the
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`unredacted portions are confidential, that
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`would be under seal.
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` MR. CAMACHO: Correct.
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` ADMINISTRATIVE PATENT JUDGE: Yeah.
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` Would that alleviate your concerns?
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` MR. CAMACHO: That would -- I mean,
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`there's a provision -- yes, that would help.
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` I would also like to have a
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`provision that these would actually be expunged
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`at the end of the proceedings. The Practice
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`Guide indicates that these would not
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`necessarily be expunged, but if -- I mean, my
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`client, we're a tech company, and a lot of --
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`some of the information in here gets to
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`technical aspects, and we don't want our
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`competitors to -- Twilio's a competitor.
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` These documents are AEO. They've
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`never been seen by anybody in-house, internal.
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`So we want to make sure, yes, they'll be
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`protected and then they won't somehow become
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`unprotected after the proceeding ends.
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` So if we could have that provision
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`where they would be expunged at the end of the
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`proceeding or a certain time period after, 45
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`days after, that would help as well.
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` ADMINISTRATIVE PATENT JUDGE: Yeah.
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`I think the difficulty with the expungement
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`comes in is that, you know, if we write a final
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`written decision that doesn't rely on those
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`documents, then they certainly can be expunged.
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` If we rely on them, then I think
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`they need to be preserved, you know, at least
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`under seal in the record for an appeal, a
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`possible appeal.
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` So I don't know that we can
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`necessarily guarantee to you that they're going
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`to be expunged.
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` MR. CAMACHO: Correct.
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` And that was a bit of a tough
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`conversation with the client too, is that we
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`see that aspect, and that if the documents are
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`relied upon, the documents -- it's possible
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`that the documents themselves -- I think it's
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`possible that that information could become
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`public. So, you know, I understand that point.
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` If there's a provision that the
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`board would find acceptable, whereby instead of
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`saying by a motion if the parties don't appeal
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`or something like that, it would automatically
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`be expunged.
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` What I don't want is some time to go
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`by and somehow these come into the record or
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`they become public.
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` ADMINISTRATIVE PATENT JUDGE: Yeah.
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`Well, I'll be frank with you, Mr. Camacho. As
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`a practical matter, we don't have a procedure
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`here where we just sort of unseal stuff without
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`telling the parties.
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` So if we were at any point to sort
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`of unseal something or even consider unsealing
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`it, you know, we would notify the parties
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`first, so -- and you'd have an opportunity to
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`ask us to not do that or to expunge it.
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` So I think your concern about things
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`just sort of inadvertently becoming public at
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`some point, I don't think that happens.
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` MR. CAMACHO: Okay. That's great.
`
`Well, that would help.
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` ADMINISTRATIVE PATENT JUDGE: All
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`right. So let me ask you one final question
`
`here, Mr. Camacho.
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` With all that, with the sort of --
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`if we're able to work out a procedure here
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`where these things are maintained under seal,
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`with that, would that satisfy you in that you'd
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`be willing to produce these three to four
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`documents that Patent Owner is looking for?
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` MR. CAMACHO: My read of the case
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`law and my read of the PTAB positions is that
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`that's the sort of thing that would position
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`the board to make its opinion and push
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`everything else back to the parties.
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` If counselor wants to go forward and
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`use these in a proceeding even though she
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`shouldn't -- and I know the PTAB doesn't
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`enforce other people's protective orders --
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`that's fine. It would help on my end.
`
` The only other request that I would
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`make is we've had a longstanding family
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`vacation. We're going to Universal Studios
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`next week. We're leaving on Saturday.
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` If the board is inclined to grant
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`permission -- authorization to Patent Owner, I
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`would request that they have to file their
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`motion today so that we could respond by Friday
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`so we don't have to deal with this next week.
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` ADMINISTRATIVE PATENT JUDGE: Sorry.
`
`Repeat again.
`
` What kind of motion are you talking
`
`about?
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` MR. CAMACHO: I just -- that's --
`
`the only other thing I said, it sounds like you
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`were either going to confer with the other
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`board members or pass it back over.
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` I was going to say if the board is
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`inclined to grant Petitioner's request to
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`authorize the request to file a motion, that
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`they require that that motion be filed today so
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`that we could respond by Friday so that we
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`don't have to deal with this over the Memorial
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`Day week, because I'm going to -- the main
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`reason is I'll be out of the office next week.
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` ADMINISTRATIVE PATENT JUDGE: Okay.
`
`I understand, Mr. Camacho.
`
` I think the issue here is that what
`
`I'm trying to get a sense of is I don't know
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`that we need motion practice.
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` I think that, you know, if we get
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`the proper safeguards in place for protecting
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`your allegedly confidential information, then
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`you all can just agree to produce the
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`documents, that we don't need motions practice.
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` That's what I was hoping we could
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`get to a resolution here of.
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` MR. CAMACHO: Oh, I am so sorry.
`
`No. No, no, no, no. We would substantively
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`completely disagree with the assertion that
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`these documents have anything to do with
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`secondary considerations or that they indicate
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`anything to do with copying.
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` So no, we would not see -- I mean, I
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`still cannot tell whether Patent Owner's
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`requesting a motion to compel, a motion for
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`additional discovery or a motion for in camera
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`review.
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` But these documents should not be
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`produced and are not properly produced unless
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`the Garmin factors can be met. They still
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`disclose confidential information that we would
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`not want disclosed.
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` So no, we would absolutely want an
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`opportunity to oppose any motion for this
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`discovery. So on substance beyond the
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`procedural confidential aspects, we completely
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`disagree that these have anything to do with
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`copying or any inconsistencies, anything like
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`that.
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` ADMINISTRATIVE PATENT JUDGE: Okay.
`
`So Mr. Camacho, you're saying you're not going
`
`to produce the documents regardless of whether
`
`we have a protective order?
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` MR. CAMACHO: Well, I mean, unless
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`the board rules, unless the board orders me to
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`subject to motions.
`
` But no, willingly we will not
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`produce these, no.
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` ADMINISTRATIVE PATENT JUDGE: All
`
`right. Well, I'm going to give you what I hope
`
`is useful to you.
`
` My inclination here is that, seeing
`
`as though they've identified three to maybe
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`four documents they'd like produced, regardless
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`of whether you can contest that they're
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`relevant or not, I think you're going to have a
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`hard time defeating a motion for requesting
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`those three to four documents.
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` And I think if you think it's a
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`useful amount of your client's time and the
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`board's time and the parties' time to file that
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`motion and you'll oppose it, I don't think we
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`have a choice. But I think you should think
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`long and hard about just agreeing to produce
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`those documents subject to a protective order,
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`because I just don't see that there's a lot of
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`burden on you to produce those documents.
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` But I'll let you think about that
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`for a minute, and I'll turn it back to over to
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`Patent Owner to see if they have anything else
`
`to add.
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` MS. GUSKE: Sure, a few things that
`
`I do want to note.
`
` So first, to the extent that there
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`is motion practice required, while I understand
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`Petitioner's vacation plans, they're also
`
`taking the position that we need to get a
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`protective order in place before we present
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`these documents.
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` So given that that has not happened
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`yet, I don't see how it's a reasonable request
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`for us to be able to file the motion. We'd be
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`sort of trying to file our motion with our --
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`at least one hand, probably two hands, tied
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`behind our backs, because we couldn't do a full
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`description in that document, that motion, to
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`demonstrate the need for the information.
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`Happy to accelerate briefing if it's needed,
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`but that's a real challenge.
`
` In terms of just general relevance
`
`objections that Patent Owner has, one thing I
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`want to point out here and I want to make sure
`
`is very clear is the original complaint in the
`
`District Court in this case laid out a very
`
`clear allegation of copying. Copying has been
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`on the table since like literally day one in
`
`this case.
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` So the relevance of copying was
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`known to Petitioner when it submitted its
`
`petition, and it knows that we've been -- and
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`we've been seeking, since the beginning in the
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`District Court case, evidence on their side
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`relating to copying. And they elected to not
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`disclose that information, even though they
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`knew that copying is a secondary considerations
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`factor and evidence of copying would be
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`inconsistent with the obviousness positions
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`they've taken in their petition.
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` So while Petitioner complains about
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`relevance and timing, I think, you know,
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`everybody has known the importance of the
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`evidence relating to copying in this case for a
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`very long time.
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` The last piece that I'll take up is
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`the notion of redaction. I think, as
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`Petitioner's counsel indicated, the parties
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`have exchanged some proposals on redactions of
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`getting out, you know, the "irrelevant"
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`information to address Petitioner's concerns
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`regarding what could possibly be made public,
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`if it ever were made public.
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` And there is some challenge there.
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`I think fundamentally Patent Owner doesn't have
`
`a problem with that. But some of the
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`redactions that Petitioner requested stripped
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`out context, like the TeleSign personnel copied
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`on e-mails, for instance.
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` But I think aside from that issue, I
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`think we would be in a close position to have
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`the redactions in a format that would be agreed
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`to by the parties, aside from that one issue.
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` ADMINISTRATIVE PATENT JUDGE:
`
`Ms. Guske, how long have you known about these
`
`documents or known about this potential copying
`
`issue? And is there a reason you waited for so
`
`long and it got so close to your response
`
`deadline to seek the discovery?
`
` MS. GUSKE: So in preparing our full
`
`pattern response -- well, let me step back and
`
`answer your first question.
`
` The exact dates that these documents
`
`were produced in the District Court case I
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`don't have at my fingertips.
`
` But the issue about how long we've
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`known about their relevance to our Patent Owner
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`response is that it's developed over the course
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`of our preparation of that response since the
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`reviews were instituted in early April.
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` So as soon as we determined that
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`these materials would provide support for the
`
`copying issue in particular -- and like I said,
`
`there's potentially a couple of other secondary
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`considerations -- we alerted them early last
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`week, as that's almost three weeks before our
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`response.
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` We thought that that should be
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`sufficient time, not anticipating that on
`
`something of this limited nature that it would
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`take so long to try to work out an agreement.
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` ADMINISTRATIVE PATENT JUDGE: Okay.
`
`And Ms. Guske, are you contending that this is
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`routine discovery or additional discovery?
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` And if you think it's routine
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`discovery, do you have any PTAB cases where we
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`found that evidence of secondary considerations
`
`must be turned over as inconsistent with the
`
`petition?
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` MS. GUSKE: So I -- so first of all,
`
`I do think it's routine discovery because it
`
`says right in the rules that you're obligated
`
`to turn over evidence inconsistent with
`
`positions.
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` So if there is a -- I don't have a
`
`specific case at hand right now, but I think
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`the facts here are pretty clear, given how
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`crystallized the copying allegations were in
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`TSG Reporting - Worldwide 877-702-9580
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`TWILIO INC., Ex 2039, Page 27
`TELESIGN CORPORATION v. TWILIO INC.
`IPR2017-01977
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`Page 28
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