Case IPR2017-01976 (Patent 8,837,465)
`Case IPR2017-01977 (Patent 8,755,376)
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________________________________
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`TELESIGN CORPORATION
`Petitioner
`
`v.
`
`TWILIO INC.
`Patent Owner
`
`__________________________________________________
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`Case: IPR2017-01976 (Patent 8,837,465)
`Case: IPR2017-01977 (Patent 8,755,376)
`_________________________________________________
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`
`
`PETITIONER’S OPPOSITION TO PATENT OWNER’S
`MOTION TO COMPEL ROUTINE DISCOVERY AND ALTERNATIVE
`MOTION FOR ADDITIONAL DISCOVERY
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`
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`

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`Case IPR2017-01976 (Patent 8,837,465)
`Case IPR2017-01977 (Patent 8,755,376)
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`Table of Contents
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`I. 
`II. 
`III. 
`
`Overview ......................................................................................................... 1 
`Relevant Legal Standards ............................................................................... 2 
`Patent Owner’s First Request Should be Denied. .......................................... 3 
`A.  Garmin Factor 1 disfavors granting Patent Owner’s motion because 1)
`mere “access” is not relevant to copying and 2) Patent Owner fails to
`show more than mere allegations that something useful would be
`uncovered through discovery relating to copying. ............................... 4 
`1.  Mere Access to information is not relevant to copying. ............ 4 
`2. 
`Patent Owner relies on mere allegations. ................................... 6 
`Garmin Factor 2 disfavors granting Patent Owner’s motion because it
`seeks an admission that Petitioner did something inappropriate. ........ 9 
`Garmin Factor 4 disfavors granting Patent Owner’s motion because
`Patent Owner’s first document request is not easily understandable. .. 9 
`D.  Garmin Factor 5: Complying with Patent Owner’s first document
`request would subject Petitioner to an undue burden. ......................... 9 
`IV.  Patent Owner’s Second Request for Documents Should Be Denied. .......... 10 
`A.  Garmin Factor 1 disfavors granting Patent Owner’s motion because it
`would not yield useful information and is founded on allegations. ... 10 
`Garmin Factor 3 disfavors granting Patent Owner’s motion because
`Patent Owner could generate equivalent customer-request information
`on its own. .......................................................................................... 12 
`Garmin Factor 4 disfavors granting Patent Owner’s motion because
`Patent Owner’s first document request is not easily understandable. 12 
`D.  Garmin Factor 5 disfavors granting Patent Owner’s motion because it
`would subject Petitioner to an undue burden. .................................... 12 
`Patent Owner’s delay Should Not Be Rewarded. ......................................... 13 
`
`V. 
`
`B. 
`
`C. 
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`B. 
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`C. 
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`i
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`VI.  Patent Owner’s secondary considerations discovery requests do not constitute
`routine discovery. ......................................................................................... 14 
`VII.  Conclusion .................................................................................................... 15 
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`ii
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`Case IPR2017-01976 (Patent 8,837,465)
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`I.
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`OVERVIEW
`Patent Owner seeks the following broad and vague additional discovery:1
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` “Documents showing Stacy Stubblefield’s and other Petitioner agents’
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`or employees’ access of Patent Owner’s patented technology, including
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`documents showing how that information was used by Petitioner or
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`Stacy Stubblefield.”
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` “Documents showing customer requests that led to Petitioner’s
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`development of its products accused of infringement in the related
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`district court proceeding.”
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`Motion, p. 4. But by providing only allegations, Patent Owner has failed to
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`carry its burden to show that its requested discovery is “necessary” in the interest of
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`justice. Patent Owner advances nothing more than bare assertions and unfounded
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`conclusions to support its motion for additional discovery ostensibly relating to
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`secondary considerations that, even if taken as true, fail to establish more than a mere
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`1 Contrary to Patent Owner’s assertion (p. 2), Petitioner’s counsel never threatened
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`Patent Owner with sanctions if it disclosed Bates labels. It is common knowledge
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`that Bates labels themselves are not confidential. But the fact that Patent Owner has
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`chosen to submit discovery requests reveals their impropriety.
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`1
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`allegation that something useful will be discovered.
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`Patent Owner fails to provide even the most basic and fundamental
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`information relating to it assertion that it is entitled to discovery relating to secondary
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`indicia. For example, Patent Owner does not identify the novel aspects of the
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`challenged claims or identify any evidence or reasoning tending to show a nexus
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`between these novel aspects and its assertions relating to supposed copying, long-
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`felt unmet need, or customer demand. Nor does Patent Owner identify what Patent
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`Owner products Petitioner has allegedly copied, much less allege or provide any
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`evidence tending to show that these Patent Owner products encompass the
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`challenged claims. Essentially, Patent Owner asks the Board to grant it discovery
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`relating to secondary considerations because it has a hunch it might uncover
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`something useful. This is not the standard. Moreover, granting Patent Owner’s
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`motion would be unduly burdensome to Petitioner and stands to unnecessarily and
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`improperly increase the complexity and record of this proceeding inasmuch as
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`Petitioner would need to marshal competing evidence to place any documents into
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`their proper and non-distorted context (including, for example, supporting
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`declarations and obligatory depositions) within a compressed timeframe. Patent
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`Owner’s motion should be denied.
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`II. RELEVANT LEGAL STANDARDS
`“Discovery in an inter partes review proceeding [] is more limited than what
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`2
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`is normally available in district court patent litigation, as Congress intended inter
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`partes review to be a quick and cost effective alternative to litigation.” Prong, Inc.
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`v. Sorias, IPR2015-01317, Paper 22 at 3-4 (McGraw, J.) (citing H. Rep. No. 112-98
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`at 45-48 (2011). “In an inter partes review proceeding, a party seeking discovery
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`beyond what is expressly permitted by rule . . . must show that such additional
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`discovery is ‘necessary in the interest of justice.’” Id. (quoting 35 U.S.C. § 316(a)(5)
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`and citing 37 C.F.R. § 42.51(b)(2)(i)).
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`Patent Owner “has the burden of proof to establish that it is entitled to the
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`requested relief.” 37 C.F.R. § 42.20(c). “Thus, to meet its burden, Patent Owner
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`[Twilio] must explain with specificity the discovery requested and why the
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`discovery is necessary in the interest of justice.” Prong, Inc., IPR2015-01317, Paper
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`22 at 4. Of central importance to this motion is the factor requiring Patent Owner to
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`show “more than a mere possibility and mere allegation that something useful will
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`be discovered.” Garmin Int’l Inc. v. Cuozzo Speed Techs. LLC, IPR2012-00001,
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`slip op. at 6-7 (PTAB Mar. 5, 2013) (Paper 26) (emphasis added).
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`III. PATENT OWNER’S FIRST REQUEST SHOULD BE DENIED.
`This request seeks: “Documents showing Stacy Stubblefield’s and other
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`Petitioner agents’ or employees’ access of Patent Owner’s patented technology,
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`including documents showing how that information was used by Petitioner or Stacy
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`Stubblefield.” It should be denied in view of Garmin factors 1 (lack of usefulness),
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`3
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`4 (hard to understand) and 5 (substantial burden on Petitioner).
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`A. Garmin Factor 1 disfavors granting Patent Owner’s motion
`because 1) mere “access” is not relevant to copying and 2) Patent
`Owner fails to show more than mere allegations that something
`useful would be uncovered through discovery relating to copying.
`1. Mere Access to information is not relevant to copying.
`Patent Owner’s allegations relating to Petitioner’s “access” to its “patented
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`technology” is irrelevant to copying.2 The lone document that Petitioner couches as
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`evidence of copying is its own self-serving complaint, which is not evidence and
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`actually concedes that Patent Owner was not aware of actual evidence supporting its
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`contention that Ms. Stubblefield used information to develop competing products.
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`EX 2017 at ¶ 66.
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`Patent Owner alleges that Petitioner’s employees had access to Patent
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`2 Contrary to Patent Owner’s assertion, Petitioner is not an obstructionist by failing
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`to consent to Patent Owner’s use of the confidential documents Petitioner produced
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`in the underlying Northern District California litigation. Rather, Petitioner is abiding
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`by the protective order negotiated by the parties and entered by that court. If Patent
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`Owner wanted relief from this order, it could have followed the proper procedural
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`mechanism for doing so, namely moving the Northern District of California to
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`modify the order, but chose not to.
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`4
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`Owner’s patented technology via a non-disclosure agreement (“NDA”). Mot. at 5.
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`But Patent Owner did not provide this NDA to the Board to evaluate its scope or
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`relevance to the actual issue of copying a specific Patent Owner product. But even
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`if this were true, Patent Owner has not shown that access to information is somehow
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`relevant to copying a specific product, and namely, one that is embodied by the
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`claims at issue. Indeed, “[c]opying as objective evidence of nonobviousness
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`requires evidence of efforts to replicate a specific product.” Riverbed Tech., Inc.
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`v. Silver Peak Sys., Inc., IPR2014-00245, Paper 19 at 7 (emphasis added) (citing
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`(Wyers v. Master Lock Co., 616 F.3d 1231, 1246 (Fed. Cir. 2010); Iron Grip Barbell
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`Co. v. USA Sports, Inc., 392 F.3d 1317, 1325 (Fed. Cir. 2004)).
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`The Board has denied requests for discovery just like Patent Owner’s. For
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`example, in L’Oréal USA, Inc. v. Liqwd, Inc., patent owner sought discovery relating
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`to copying because it had given petitioner access to its patented technology via an
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`NDA just as Patent Owner alleges in this case. PGR2017-00012, Paper 37 at 6. In
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`denying the request for discovery for failing to meet the usefulness factor, the court
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`found that the allegation was irrelevant to copying “because it amount[ed] to
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`establishing the copying of a technology generally rather than the copying of a
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`specific product.” Id. This case involves even less of a showing. Patent Owner has
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`not provided any evidence that anyone had access to its patented technology and has
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`not shown any evidence of copying. “[S]ome evidence is needed to establish that
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`5
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`there is more than a mere possibility that [movant’s] discovery requests would
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`uncover something useful.” See Topgolf, IPR2017-00928, Paper 24, dated October
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`25, 2017 (citing IPR2012-00001, Paper 26, dated March 5, 2013 (“The party
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`requesting discovery should already be in possession of evidence tending to show
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`beyond speculation that in fact something useful will be uncovered.”)). The Board
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`should similarly deny Patent Owner’s request to serve its first document request
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`because it, and the information it would return, is irrelevant to the issue of copying.
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`2.
`Patent Owner relies on mere allegations.
`Patent Owner fatally fails to provide any evidence, let alone the threshold
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`amount of evidence or reasoning, showing more than a mere possibility and mere
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`allegation that something useful will be discovered relating to copying. “For
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`objective evidence of secondary considerations to be accorded substantial weight,
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`its proponent must establish a nexus between the evidence and the merits of the
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`claimed invention.” Wyers, 616 F.3d at 1246 (quotation omitted). “Where the
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`offered secondary consideration actually results from something other than what is
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`both claimed and novel in the claim, there is no nexus to the merits of the claimed
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`invention.” In re Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011) (emphasis added).
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`Moreover, “[i]n evaluating whether the requisite nexus exists, the identified
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`objective indicia must be directed to what was not known in the prior art.” Novartis
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`AG v. Torrent Pharms. Ltd., 853 F.3d 1316, 1331 (Fed. Cir. 2017).
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`Relying solely on unsupported and self-serving allegations and conclusions
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`that Patent Owner itself authored in its 2016 complaint against Petitioner, Patent
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`Owner vaguely asserts that Petitioner’s employees “opened and used several
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`accounts for Patent Owner’s products.” Mot. at 5. But that does not tend to show
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`copying even if true, nor establish more than a mere possibility and mere allegation
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`that something useful relating to copying will be discovered. Critically, Patent
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`Owner fails to even identify the novel aspects of the challenged claims. See Mot.
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`at 1-11. Nor does it attempt to argue that a nexus exists between these novel aspects
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`and Petitioner’s alleged copying. See id. In addition, Patent Owner does not identify
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`the names of the products that Petitioner had access to or allege much less provide
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`documentary support showing that these products practice the challenged claims.
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`See id.
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`The Board has consistently denied requests for additional discovery where, as
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`here, the movant failed to provide a threshold amount of evidence of a nexus between
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`the objective indicia and the novel aspects of the claimed invention. For example,
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`in Chums, Inc. v. Cablz, Inc., patent owner alleged that petitioner’s products
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`infringed the challenged claims but did not address any specific elements of the
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`claims responsible for the alleged commercial success or even allege that the
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`commercial success was due to the unique characteristics of the claim. IPR2014-
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`01240, Paper 18 at 4-5. The Board denied patent owner’s request for additional
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`7
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`discovery, holding that the discovery request was not likely to uncover something
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`useful given the absence of “some evidence of a nexus between the unique
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`characteristics of the claimed invention and Petitioner’s sale . . . .” E.g., Topgolf
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`Int’l, Inc. v. Agarwal, IPR2017-00928, Paper 24 at 6 (denying motion for additional
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`discovery where Patent Owner did not provide a threshold amount of evidence of an
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`alleged nexus between the claimed invention and the commercial success of
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`Petitioner’s products); Schott Gemtron Corp. v. SSW Holding Co., Inc., IPR2013-
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`00358, Paper 43 at 6 (denying motion for additional discovery relating to secondary
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`considerations and highlighting that “[a]bsent some evidence of nexus with respect
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`to Petitioner’s sales [and the unique characteristics of its claimed invention], Patent
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`Owner cannot demonstrate that its discovery request is likely to uncover something
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`useful.”).3 Patent Owner has not met its burden of showing that it is in the interest
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`3 That Patent Owner alleges that Petitioner infringes the challenged claims is
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`irrelevant to the issue of copying. Mot. at 5. Petitioner contends it does not infringe.
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`And as the Board has highlighted, “[m]erely offering competing products or alleging
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`infringement are not signs of non-obviousness. Dynacraft BSC, Inc. v. Mattel, Inc.,
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`IPR2018-00040, 2018 WL 1870473, at *9 (Apr. 17, 2018) (citing Wyers, 616 F.3d
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`at 1246). Indeed, “[n]ot every competing product that arguably falls within the scope
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`of a patent is evidence of copying. Otherwise every infringement suit would
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`of justice to allow it discovery relating to copying, and as such, its motion for this
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`discovery should be denied.
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`B. Garmin Factor 2 disfavors granting Patent Owner’s motion
`because it seeks an admission that Petitioner did something
`inappropriate.
`Patent Owner’s first request is worded such that producing documents would
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`tend to lend credibility that the accused acts occurred, such as Petitioner purportedly
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`gaining access to Patent Owner’s information and then using it at all and in the first
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`place.
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`C. Garmin Factor 4 disfavors granting Patent Owner’s motion
`because Patent Owner’s first document request is not easily
`understandable.
`Patent Owner’s first document request is confusing because the scope of the
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`following terms is unknown: “Petitioner’s agents;” “employees” (past and present?);
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`“access” (including public access?); patented “technology” (covered by which
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`patents and does this refer to a claimed invention or Patent Owner’s products?);
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`“used by petitioner” (in what respect?); and “customer requests” (actual customers,
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`prospective customers, queries?). Moreover, the timeframe requested is unclear.
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`D. Garmin Factor 5: Complying with Patent Owner’s first document
`
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`automatically confirm the nonobviousness of the patent.” Iron Grip, 392 F.3d at
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`1325.
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`9
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`request would subject Petitioner to an undue burden.
`Patent Owner’s first request on its face is overly broad and would subject
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`Petitioner to an undue burden. The request is so broad that it implicates any
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`document “showing an employees’ access of Patent Owner’s patented
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`technology”—even if access is public and unrestricted—“including documents
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`showing how that information was used by” Petitioner. Based on its improper and
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`sweeping breadth, an investigation could take weeks, and again—even if it showed
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`that Petitioner’s employees (along with the rest of the world) has had general access
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`to the internet, and thus to Patent Owner’s website, and thus to information that
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`describes Patent Owner’s purportedly patented products, that would not be relevant
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`to showing copying.
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`IV. PATENT OWNER’S SECOND REQUEST FOR DOCUMENTS
`SHOULD BE DENIED.
`Patent Owner’s second document request seeks: “Documents showing
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`customer requests that led to Petitioner’s development of its products accused of
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`infringement in the related district court proceeding.”
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`A. Garmin Factor 1 disfavors granting Patent Owner’s motion
`because it would not yield useful information and is founded on
`allegations.
`Patent Owner’s second document request as drafted is irrelevant to the issues
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`of long-felt unmet need and customer demand because it broadly seeks any customer
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`requests that led to Petitioner’s product development rather than customer requests
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`10
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`relating to the alleged novel aspects of the challenged claims. See Zoltek Corp. v.
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`United States, 95 Fed. Cl. 681, 702 (Fed. Cl. 2010) (“patentee must provide, for
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`example, ‘probative evidence that the claimed and novel features met a long-felt but
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`unresolved need’") (quoting Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1313
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`(Fed. Cir. 2006)); Baxter Healthcare Corp. v. Millenium Biologix, LLC, IPR2013-
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`00590, 2015 Pat. App. LEXIS 2564, *32-33 (PTAB March 18, 2015) (holding patent
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`owner did not explain how a nexus existed between the asserted long-felt need and
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`any “novel element not in the prior art”) (citing In re Kao, 639 F.3d 1057, 1068 (Fed.
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`Cir. 2011)).
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`Patent Owner advances one document – a TeleSign press release – in support
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`of its assertion that it is entitled to discovery relating to long-felt unmet need and
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`customer demand. Mot. at 7. But Patent Owner again fails to identify the novel
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`aspects of the challenged claims. Nor does it identify the long-felt unmet need and
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`customer demand. Moreover, it does not even attempt to argue that a nexus exists
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`between these novel aspects and the unidentified long-felt unmet need and customer
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`demand. Patent Owner also makes no attempt to explain how the press release tends
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`to show long-felt unmet need and customer demand.
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`Nor could it because this press release describes customer preference for an
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`API accessible via a REST interface given Patent Owner’s concessions in the
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`specification that REST APIs were known in the art. Patent Owner has not met its
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`11
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`burden of showing that it is in the interest of justice to grant it discovery relating to
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`long-felt unmet need and customer demand.
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`B. Garmin Factor 3 disfavors granting Patent Owner’s motion
`because Patent Owner could generate equivalent customer-request
`information on its own.
`Patent Owner’s second request alleges that customers made requests and that
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`those requests purportedly led to the development of Petitioner’s products and
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`services. But because Patent Owner contends that its products embody the
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`challenged patents, it could obtain customer requests on its own if they existed.
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`C. Garmin Factor 4 disfavors granting Patent Owner’s motion
`because Patent Owner’s first document request is not easily
`understandable.
`As alluded to in the overview section, Patent Owner’s second document
`
`request is confusing because the scope of the following terms is unknown:
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`“customer requests” (inquiries? requests for what? in what timeframe?); “products
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`accused of infringement” (Patent Owner is not clear on what products it is accusing
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`of infringement since the Court invalidated four of its patents—and some products
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`are accused of infringing patents not at issue in this or the related IPR).
`
`D. Garmin Factor 5 disfavors granting Patent Owner’s motion
`because it would subject Petitioner to an undue burden.
`As with Patent Owner’s first request, its second request is immensely broad
`
`on its face. Does it include random comments from customers that somehow
`
`implicated a product feature that Patent Owner contends is implicated by its patents?
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`12
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`How would Petitioner reasonably go about identifying such documents for this
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`proceeding? Searching for potentially responsive documents could also take weeks
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`and encroach on the time Petitioner needs to be preparing its Reply.
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`V.
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`PATENT OWNER’S DELAY SHOULD NOT BE REWARDED.
`Patent Owner’s delay in requesting additional discovery also weighs against
`
`granting its motion. The parties were directed to alert the Board within one month
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`of the March 2018 institution decisions regarding any proposed motions, but Patent
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`Owner failed to alert the Board that it intended to move for additional discovery
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`relating to secondary considerations. IPR2017-01977, Paper 12 at 2. Instead, Patent
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`Owner waited some two months after this decision and some two weeks before its
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`Patent Owner response was due to seek leave to file its discovery motion. Moreover,
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`its motion is based on information it has had for over a year, namely the bare
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`allegations in its 2016 complaint against Petitioner and Petitioner’s press release,
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`which the header of the document shows Patent Owner accessed on Wayback
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`Machine at least as early as July 2017.
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`Boards have consistently held that delay such as this warrants denial of a
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`request for additional discovery. See, e.g., Schott, IPR2013-00358, Paper 43 at 7
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`(denying motion for additional discovery where patent owner did not move until two
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`months after institution and three weeks before its response was due); Douglas
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`Dynamics, L.L.C. v. Myer Prods. LLC, IPR 2015-1839, 2016 WL 8969239 (PTAB
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`13
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`July 26, 2016) (denying motion for additional discovery where movant sought
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`authorization to file the motion one month before the due date for its response);
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`Apple, Inc. v. Achates Reference Publ’g, Inc., IPR2013-00080, 2013 Pat. App.
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`LEXIS 9006, *10 (denying motion for additional discovery where patent owner
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`“waited until nearly three months after Apple’s petitions were filed and one week
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`prior to the due date for its preliminary responses to make its request”).
`
`VI. PATENT
`CONSIDERATIONS
`SECONDARY
`OWNER’S
`DISCOVERY REQUESTS DO NOT CONSTITUTE ROUTINE
`DISCOVERY.
`In an attempt to circumvent its burden of showing that it is entitled to
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`additional discovery relating to secondary considerations, Patent Owner argues that
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`its requests constitute routine discovery. Mot. at 5-6. Contrary to Patent Owner’s
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`assertion, by arguing that the challenged claims are obvious Petitioner has not taken
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`an inconsistent position regarding secondary considerations of non-obviousness
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`such that Patent Owner’s discovery requests amount to routine discovery under 37
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`C.F.R. § 42.51(b)(1)(iii). Indeed, the Board has consistently rejected the argument
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`that by arguing that challenged claims are obvious a petitioner is required to produce
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`evidence of secondary considerations as routine discovery under 37 C.F.R. §
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`42.51(b)(1)(iii). For example, in Skechers U.S.A., Inc. v. Nike, Inc., the Board held
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`that discovery sought from Petitioner relating to secondary considerations of non-
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`obviousness was not inconsistent with the Petitioner’s position that the challenged
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`14
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`claims were obvious. IPR2017-00620, IPR2017-00621, Paper 19 at 3 (Sept. 15,
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`2017). Given that tribunals have found challenged patent claims obvious despite
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`substantial evidence of secondary considerations, the Board reasoned that “even
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`substantial evidence of objective indicia is not necessarily inconsistent with a party’s
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`position that claim would have been obvious.” Id. at 2-3; e.g. Tandus Flooring, Inc.
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`v. Interface, Inc., IPR2013-00333, Paper 30 at 3 (“Petitioner’s challenges to
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`patentability based on obviousness over prior art references does not require that
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`Petitioner to produce evidence of secondary indicia of non-obviousness under 37
`
`C.F.R. § 42.51(b)(1)(iii) as relevant information inconsistent with a position
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`advanced in the Petition.”). Patent Owner’s discovery requests relating to secondary
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`considerations do not constitute routine discovery under 37 C.F.R. § 42.51(b)(1)(iii).
`
`VII. CONCLUSION
`Petitioner was first, with products and patents. Patent Owner began offering
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`products that led to two lawsuits by Petitioner, which ultimately resulted in Patent
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`Owner filing a suit of its own. Light on the merits, Patent Owner included
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`sensational allegations of a temporal impossibility: that Petitioner somehow copied
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`its two-factor-authentication technology from later-arriving Patent Owner. This
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`being a red herring, Petitioner spares the Board a more robust response to Patent
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`Owner’s irresponsible personal attacks.
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`15
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`Respectfully submitted,
`
`/s/ Christine Guastello
`Jesse Camacho
`Reg No. 51,258
`Mary Jane Peal
`Reg. No. 63,978
`Elena K. McFarland
`Reg. No. 59,320
`Christine Guastello
`Reg. No. 58,716
`SHOOK, HARDY & BACON L.L.P.
`2555 Grand Blvd.
`Kansas City, MO 64108
`(816) 474-6550
`
`Counsel for Petitioner
`
`
`Case IPR2017-01976 (Patent 8,837,465)
`Case IPR2017-01977 (Patent 8,755,376)
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`
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`Dated: June 1, 2018
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`Case IPR2017-01976 (Patent 8,837,465)
`Case IPR2017-01977 (Patent 8,755,376)
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`
`CERTIFICATE OF SERVICE
`
`
` The undersigned hereby certifies that on June 1, 2018, a copy of the foregoing
`was served by electronic mail (or is being served by electronic mail simultaneously
`with its filing on even date) on the persons listed below at their corresponding
`addresses, which includes all counsel of record.
`
`
`Wayne Stacy
`Michelle Jacobson Eber
`
`wayne.stacy@bakerbotts.com
`michelle.eber@bakerbotts.com
`
`Dated: June 1, 2018
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`Respectfully submitted
`
`/s/ Mary Jane Peal
`Mary Jane Peal
`Reg. No. 63,978
`SHOOK, HARDY & BACON L.L.P.
`2555 Grand Blvd.
`Kansas City, MO 64108
`(816) 474-6550
`
`Counsel for Petitioner
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