Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 23
`Entered: June 7, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`TELESIGN CORPORATION,
`Petitioner,
`
`v.
`
`TWILIO INC.,
`Patent Owner.
`_______________
`
`Case IPR2017-01976 (Patent 8,837,465 B2)
`Case IPR2017-01977 (Patent 8,755,376 B2)1
`_______________
`
`
`Before ROBERT J. WEINSCHENK, KIMBERLY MCGRAW, and
`SCOTT C. MOORE, Administrative Patent Judges.
`
`WEINSCHENK, Administrative Patent Judge.
`
`
`
`
`DECISION
`Motion for Discovery
`37 C.F.R. § 42.51
`
`
`
`
`
`1 This Decision pertains to both of these cases. Therefore, we exercise our
`discretion to issue a single Decision to be filed in each case. The parties are
`not authorized to use this style heading for any subsequent papers.
`
`
`571-272-7822
`
`
`
`
`Paper 23
`Entered: June 7, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`TELESIGN CORPORATION,
`Petitioner,
`
`v.
`
`TWILIO INC.,
`Patent Owner.
`_______________
`
`Case IPR2017-01976 (Patent 8,837,465 B2)
`Case IPR2017-01977 (Patent 8,755,376 B2)1
`_______________
`
`
`Before ROBERT J. WEINSCHENK, KIMBERLY MCGRAW, and
`SCOTT C. MOORE, Administrative Patent Judges.
`
`WEINSCHENK, Administrative Patent Judge.
`
`
`
`
`DECISION
`Motion for Discovery
`37 C.F.R. § 42.51
`
`
`
`
`
`1 This Decision pertains to both of these cases. Therefore, we exercise our
`discretion to issue a single Decision to be filed in each case. The parties are
`not authorized to use this style heading for any subsequent papers.
`
`
`
`IPR2017-01976 (Patent 8,837,465 B2)
`IPR2017-01977 (Patent 8,755,376 B2)
`
`
`I.
`INTRODUCTION
`On May 23, 2018, we held a conference call with the parties to
`discuss Twilio Inc.’s (“Patent Owner”) request for authorization to file a
`motion for routine or additional discovery of evidence alleged to be related
`to the objective indicia of nonobviousness. We authorized Patent Owner to
`file a motion for discovery under 37 C.F.R. § 42.51. Paper 16, 4.2 Patent
`Owner filed a motion for discovery on May 25, 2018. Paper 18 (“Motion”
`or “Mot.”). TeleSign Corporation (“Petitioner”) filed an opposition to the
`Motion on June 1, 2018. Paper 21 (“Opposition” or “Opp.”). For the
`following reasons, the Motion is granted-in-part, subject to the limitations
`set forth herein.
`
`II. ANALYSIS
`Patent Owner requests discovery regarding several objective indicia of
`nonobviousness, namely, copying, long-felt but unmet need, and failure by
`others. Mot. 1–2. Specifically, Patent Owner seeks to serve the following
`document requests:
`1) Documents showing Stacy Stubblefield’s and other
`Petitioner agents’ or employees’ access of Patent Owner’s
`patented technology, including documents showing how that
`information was used by Petitioner or Stacy Stubblefield;
`and
`2) Documents showing customer requests that led to
`Petitioner’s development of its products accused of
`infringement in the related district court proceeding.
`Id. at 4. Patent Owner represents, though, that it “could identify a small
`number of specific documents that would satisfy its request . . . (e.g., by
`district court Bates number).” Id. at 2. We understand Patent Owner’s
`
`2 We cite to the record of IPR2017-01976, unless otherwise noted.
`
`2
`
`
`
`IPR2017-01976 (Patent 8,837,465 B2)
`IPR2017-01977 (Patent 8,755,376 B2)
`
`reference to “a small number of specific documents” to mean the four
`documents, which include Petitioner’s internal emails, that Patent Owner
`mentioned during the conference call with the Board on May 23, 2018. Ex.
`2039, 8:4–8, 8:16–20.
`
`Patent Owner argues that it is entitled to the requested discovery as
`either routine or additional discovery. Mot. 5–10. As discussed below, we
`determine that Patent Owner is entitled to discovery under the standard for
`additional discovery. Therefore, we do not address whether the discovery
`also would be considered routine discovery.
`A.
`Additional Discovery
`We may order additional discovery if the moving party shows “that
`such additional discovery is in the interests of justice.” 37 C.F.R.
`§ 42.51(b)(2)(i). The Board has identified several factors (“the Garmin
`factors”) that are important in determining whether additional discovery is in
`the interests of justice. Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC, Case
`IPR2012-00001, slip op. at 6–7 (PTAB Mar. 5, 2013) (Paper 26)
`(informative). Those factors include: 1) whether there is more than a mere
`possibility or allegation that something useful will be found; 2) whether the
`requesting party seeks the other party’s litigation positions and the
`underlying basis for those positions; 3) the requesting party’s ability to
`generate equivalent information by other means; 4) whether the instructions
`are easily understandable; and 5) whether the requested discovery is overly
`burdensome. Id.
`1.
`First Factor
`Patent Owner argues that there is more than a mere possibility or
`allegation that something useful will be found regarding the objective indicia
`
`3
`
`
`
`IPR2017-01976 (Patent 8,837,465 B2)
`IPR2017-01977 (Patent 8,755,376 B2)
`
`of nonobviousness. Mot. 5–8. Specifically, Patent Owner points out that the
`complaint it filed against Petitioner in a related district court case includes
`allegations of copying by Petitioner. Id. at 5 (citing Ex. 2017 ¶¶ 20–27).
`Patent Owner also asserts that Petitioner had access to Patent Owner’s
`patented technology, including pursuant to a non-disclosure agreement and
`by opening accounts for Patent Owner’s products allegedly using false
`identities. Mot. 5. Further, according to Patent Owner, one of Petitioner’s
`press releases indicates that Petitioner developed its products in response to
`customer demand. Id. at 7 (citing Ex. 2028).
`Petitioner responds that Patent Owner has not shown more than a
`mere possibility or allegation that something useful will be found. Opp. 4–
`12. Specifically, Petitioner argues that: 1) Petitioner’s alleged access to
`some of Patent Owner’s information does not show that Petitioner copied a
`specific product (id. at 4–6); 2) Petitioner’s press release does not show a
`long-felt but unmet need or failure by others (id. at 10–12); 3) Patent Owner
`fails to identify any novel aspects of the challenged claims (id. at 6–9, 11);
`and 4) Patent Owner fails to identify a nexus between any novel aspects of
`the challenged claims and the alleged copying, long-felt but unmet need, and
`failure by others (id.).
`We are persuaded by Patent Owner’s assertions in the Motion that
`there is more than a mere possibility or allegation that something useful will
`be found regarding the objective indicia of nonobviousness. Petitioner’s
`arguments in the Opposition are directed to whether Patent Owner ultimately
`will prevail in showing any of the objective indicia of nonobviousness.
`However, we are not persuaded that Patent Owner must demonstrate that it
`will succeed on the merits in order to obtain additional discovery. Further,
`
`4
`
`
`
`IPR2017-01976 (Patent 8,837,465 B2)
`IPR2017-01977 (Patent 8,755,376 B2)
`
`Petitioner will have an opportunity to address the merits of Patent Owner’s
`assertions regarding the objective indicia of nonobviousness in the reply to
`Patent Owner’s response.
`2.
`Second Factor
`Petitioner argues that “Patent Owner’s first request is worded such
`that producing documents would tend to lend credibility that the accused
`acts occurred, such as Petitioner purportedly gaining access to Patent
`Owner’s information and then using it at all and in the first place.” Opp. 9.
`Petitioner’s argument is not persuasive. The second factor addresses
`whether the requesting party is attempting to alter the Board’s trial
`procedures by requesting the other party’s litigation positions under the
`pretext of additional discovery. Garmin, Case IPR2012-00001, slip op. at 6
`(Paper 26). Here, Patent Owner requests Petitioner’s documents, not
`Petitioner’s litigation positions. Mot. 4. Further, as discussed above,
`Petitioner will have an opportunity to address the merits of Patent Owner’s
`assertions regarding the objective indicia of nonobviousness in the reply to
`Patent Owner’s response.
`3.
`Third Factor
`Petitioner argues that “Patent Owner’s second request alleges that
`customers made requests and that those requests purportedly led to the
`development of Petitioner’s products and services,” but “because Patent
`Owner contends that its products embody the challenged patents, it could
`obtain customer requests on its own if they existed.” Opp. 12. Petitioner’s
`argument is not persuasive. The third factor addresses whether the
`requesting party can generate the requested information without the need for
`discovery. Garmin, Case IPR2012-00001, slip op. at 6 (Paper 26). Here,
`
`5
`
`
`
`IPR2017-01976 (Patent 8,837,465 B2)
`IPR2017-01977 (Patent 8,755,376 B2)
`
`Patent Owner requests internal documents regarding customer demand for
`Petitioner’s products. Mot. 4. Even if Petitioner is correct that Patent
`Owner has information regarding customer requests for its own products, we
`do not see how Patent Owner can generate the information in Petitioner’s
`internal documents regarding customer requests for Petitioner’s products
`without the need for discovery.
`4.
`Fourth and Fifth Factors
`Petitioner argues that certain terms in Patent Owner’s requested
`discovery are unclear, and that Patent Owner’s requested discovery is
`overbroad and would place an undue burden on Petitioner. Id. at 9–10, 12–
`13. Petitioner also argues that Patent Owner waited until “two weeks before
`its Patent Owner response was due to seek leave to file its discovery
`motion,” and that this “delay in requesting additional discovery also weighs
`against granting its motion.” Id. at 13.
`We agree with Petitioner that Patent Owner’s discovery requests lack
`clarity and are overbroad. For example, the discovery requests do not set
`forth a relevant time frame nor do they specifically identify the products
`accused of infringement. See Opp. 12 (noting that the some of the products
`accused of infringement in the related district court case are not at issue in
`these proceedings). Additionally, we recognize that Patent Owner delayed
`in seeking the requested discovery.
`However, as discussed above, Patent Owner represents that it can
`identify four specific documents, which include Petitioner’s internal emails,
`that would satisfy the requested discovery. Mot. 2; Ex. 2039, 8:4–8, 8:16–
`20. Limiting the requested discovery in that manner would address
`Petitioner’s concerns about the clarity of Patent Owner’s requests, and also
`
`6
`
`
`
`IPR2017-01976 (Patent 8,837,465 B2)
`IPR2017-01977 (Patent 8,755,376 B2)
`
`would alleviate Petitioner’s burden to search for responsive documents. See
`Ex. 2039, 12:15–23.
`5.
`Conclusion
`After considering the Garmin factors, we determine that Patent Owner
`is entitled to additional discovery. However, in light of Patent Owner’s
`delay in seeking the requested discovery, the broad scope of the discovery
`requests, and the associated burden on Petitioner, we limit Patent Owner’s
`requested discovery to the four specific documents that Patent Owner has
`represented (in the Motion and during the conference call) will satisfy the
`discovery requests. Accordingly, Patent Owner will confirm with Petitioner
`the four specific documents that Patent Owner represents will satisfy its
`discovery requests by June 12, 2018. Petitioner will then produce the
`identified documents to Patent Owner by June 15, 2018. To accommodate
`this additional discovery, we extend the deadline for Patent Owner’s
`Response to the Petition from June 8, 2018, to June 22, 2018, and we extend
`the deadline for Petitioner’s Reply to Patent Owner’s Response from August
`24, 2018, to September 7, 2018.
`B.
`Confidential Information
`During a conference call with the parties on May 23, 2018, we
`discussed the use of confidential information in these proceedings.
`Ex. 2039. Subsequently, the parties filed a joint motion for entry of a
`proposed Protective Order that differed from the Board’s default Protective
`Order. Paper 19, 2. We denied that motion without prejudice because, inter
`alia, the proposed Protective Order improperly limited the Board’s ability to
`determine whether information qualifies for confidential treatment. Id. at 3,
`5. We explained that the parties may file another joint motion for entry of a
`
`7
`
`
`
`IPR2017-01976 (Patent 8,837,465 B2)
`IPR2017-01977 (Patent 8,755,376 B2)
`
`proposed Protective Order, but, in the meantime, we entered the default
`Protective Order from the Office Patent Trial Practice Guide, 77 Fed. Reg.
`48,756, 48,771 (Aug. 14, 2012), in these proceedings. Id. at 5–6. We
`understand that Petitioner may assert that the aforementioned documents
`contain confidential information that warrant additional protections beyond
`our default Protective Order. Therefore, we remind the parties that they may
`file another joint motion for entry of a proposed Protective Order.
`III. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that Patent Owner’s Motion is granted-in-part, subject to
`the limitations set forth herein;
`FURTHER ORDERED that Patent Owner will confirm with
`Petitioner the four specific documents that Patent Owner represents will
`satisfy its discovery requests by June 12, 2018;
`FURTHER ORDERED that Petitioner shall produce the four specific
`documents identified by Patent Owner to Patent Owner by June 15, 2018;
`FURTHER ORDERED that the deadline for Patent Owner’s
`Response to the Petition is extended from June 8, 2018, to June 22, 2018;
`and
`
`FURTHER ORDERED that the deadline for Petitioner’s Reply to
`Patent Owner’s Response is extended from August 24, 2018, to September
`7, 2018.
`
`
`
`
`8
`
`
`
`IPR2017-01976 (Patent 8,837,465 B2)
`IPR2017-01977 (Patent 8,755,376 B2)
`
`PETITIONER:
`
`Jesse J. Camacho
`Elena K. McFarland
`Christine Guastello
`Mary J. Peal
`SHOOK, HARDY & BACON L.L.P.
`jcamacho@shb.com
`emcfarland@shb.com
`cguastello@shb.com
`mpeal@shb.com
`
`
`PATENT OWNER:
`
`Wayne Stacy
`Sarah Guske
`Michelle Jacobson Eber
`Jay B. Schiller
`BAKER BOTTS L.L.P.
`wayne.stacy@bakerbotts.com
`sarah.guske@bakerbotts.com
`michelle.eber@bakerbotts.com
`jay.schiller@bakerbotts.com
`
`9
`
`
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