IPR2017-01977
`U.S. Patent No. 8,755,376
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`––––––––––
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`––––––––––
`
`TELESIGN CORPORATION
`Patent Owner,
`
`v.
`
`TWILIO INC.
`Patent Owner
`
`––––––––––
`
`Case IPR2017-01977
`Patent 8,755,376
`
`––––––––––
`
`PATENT OWNER’S UNOPPOSED MOTION TO SEAL PATENT
`OWNER’S RESPONSE and EXHIBITS 2025-2027, 2047-2054, and 2063-2066
`UNDER 37 C.F.R. §§ 42.14 and 42.54
`
`
`U.S. Patent No. 8,755,376
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`––––––––––
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`––––––––––
`
`TELESIGN CORPORATION
`Patent Owner,
`
`v.
`
`TWILIO INC.
`Patent Owner
`
`––––––––––
`
`Case IPR2017-01977
`Patent 8,755,376
`
`––––––––––
`
`PATENT OWNER’S UNOPPOSED MOTION TO SEAL PATENT
`OWNER’S RESPONSE and EXHIBITS 2025-2027, 2047-2054, and 2063-2066
`UNDER 37 C.F.R. §§ 42.14 and 42.54
`
`
`
`IPR2017-01977
`U.S. Patent No. 8,755,376
`
`Pursuant to 35 U.S.C. § 316(a)(1) and 37 C.F.R. §§ 42.14 and 42.54, Patent
`
`Owner Twilio Inc. (“Patent Owner”) respectfully requests that the Board seal
`
`Exhibit 2025, “January 13, 2014 Email from Darren Berkovitz and Charles
`
`McColgan with attachment, bates stamped TLS_00022310-18,” Exhibit 2026,
`
`“November 21, 2011 Email from Charles McColgan to Maya Sudhakar, bates
`
`stamped TLS_00021739-41,” Exhibit 2027, “April 19, 2012 Email from Raman
`
`Dhillon, bates stamped TLS_00021863,” and portions of Exhibits 2047-2054 and
`
`2063-2066, all labeled “Twilio Salesforce Account Summary.” Patent Owner
`
`additionally requests that the Board seal portions of Patent Owner’s Response that
`
`contain information from these Exhibits. Sealing the material set forth below is
`
`appropriate and necessary to protect the non-public information of Petitioner
`
`TeleSign Corp. (“Petitioner”) and the confidential personal information of non-
`
`parties to this proceeding.
`
`I.
`
`Reasons for Relief Requested
`
`On June 21, the Board granted the parties’ Joint Motion for Modification of
`
`the Default Protective Order and entered the attached Stipulated Protective Order
`
`(Appendix A). See Paper 25. The Stipulated Protective Order grants the same
`
`permissions regarding filing documents under seal or filing redacted versions of
`
`documents containing both confidential and non-confidential as the Default
`
`1
`
`
`
`IPR2017-01977
`U.S. Patent No. 8,755,376
`
`Protective Order of this Board (Appendix B of the Office Patent Trial Practice
`
`Guide, 77 Fed. Reg. 48756, 48771 (Aug. 14, 2012)). The standard for granting a
`
`motion to seal is “good cause.” 37 C.F.R. § 42.54. The Office Patent Trial Practice
`
`Guide provides that “the rules aim to strike a balance between the public’s interest
`
`in maintaining a complete and understandable file history and the parties’ interest
`
`in protecting truly sensitive information.” 77 Fed. Reg. at 48760. Those rules
`
`“identify confidential information in a manner consistent with Federal Rule of
`
`Civil Procedure 26(c)(1)(G), which provides for protective orders for trade secret
`
`or other confidential research, development, or commercial information.” Id.
`
`(citing 37 C.F.R. § 42.54). “Where confidentiality is alleged as to some but not all
`
`of the information submitted to the [Patent Trial and Appeal Board (‘PTAB’ or
`
`‘Board’)], the submitting party shall file confidential and non-confidential versions
`
`of its submission, together with a Motion to Seal the confidential version setting
`
`forth the reasons why the information redacted from the non-confidential version is
`
`confidential and should not be made publicly available.” Id. at 48770.
`
`Exhibits 2025-2027 are internal emails among Petitioner’s employees
`
`regarding product development. Petitioner produced these documents in this
`
`proceeding in response to the Board’s Decision Granting Patent Owner’s Motion
`
`for Discovery. See Paper 23. Petitioner marked the exhibits as “PROTECTIVE
`
`2
`
`
`
`IPR2017-01977
`U.S. Patent No. 8,755,376
`
`ORDER MATERIAL” in accordance with the provisions of the Stipulated
`
`Protective Order. These documents are relevant to these proceedings as they
`
`demonstrate a long-felt need for Patent Owner’s inventions existed in the market
`
`and show Petitioner’s copying of Patent Owner’s products. In particular, these
`
`documents contain information showing Petitioner’s cofounder’s and other
`
`employees’ access of Patent Owner’s patented technology, how that information
`
`was used by Petitioner, customer requests for Petitioner’s resulting infringing
`
`products, efforts and time invested in Petitioner’s infringing product development,
`
`and customer requests that led to the product development. Petitioner asserts that
`
`these documents contain confidential information that would damage Petitioner’s
`
`business if it were made public. Good cause exists to seal these emails to allow
`
`submission of relevant evidence in this proceeding that has been deemed
`
`confidential business information by Petitioner.
`
`Exhibits 2047-2054 and 2063-2066 are reports from Patent Owner’s internal
`
`database showing the account status of various Twilio accounts opened by
`
`Petitioner. Pursuant to paragraph 5(A)(ii) of the Stipulated Protective Order, Patent
`
`Owner has submitted both confidential and non-confidential versions of these
`
`exhibits. In the non-confidential versions, Patent Owner has redacted certain
`
`personal identification information from these exhibits, such as email addresses,
`
`3
`
`
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`IPR2017-01977
`U.S. Patent No. 8,755,376
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`account numbers, and names. These redactions are necessary to allow submission
`
`of relevant evidence in this proceeding while protecting confidential information of
`
`individuals, including non-parties.
`
`Patent Owner’s Response includes confidential information from the
`
`foregoing exhibits. See Paper No. 28 at 58-59, 64. Patent Owner requests that the
`
`unredacted copy of its Response be sealed as “PROTECTIVE ORDER
`
`MATERIAL.” Pursuant to paragraph 5(A)(ii) of the Stipulated Protective Order,
`
`Patent Owner has filed a non-confidential redacted version of its Response as
`
`Paper No. 26. The confidential version of Patent Owner’s Response and Exhibits
`
`2025-2027, 2047-2054, and 2063-2066 are being filed as accessible to “Parties and
`
`Board Only.”
`
`II.
`
`Certification of Conference with Opposing Party Pursuant to 37 C.F.R.
`§ 42.54
`Patent Owner, in good faith, met and conferred with Petitioner regarding this
`
`motion to seal. Petitioner does not object to sealing Exhibits 2025-2027 that were
`
`produced by Petitioner under
`
`the “PROTECTIVE ORDER MATERIAL”
`
`designation.
`
`4
`
`
`
`IPR2017-01977
`U.S. Patent No. 8,755,376
`
`III. Conclusion
`Because good cause exists
`
`to seal Patent Owner’s Response and
`
`accompanying Exhibits 2025-2027, 2047-2054, and 2063-2066, Patent Owner
`
`respectfully requests that this Motion to Seal be granted.
`
`Respectfully submitted this 22nd day of June, 2018.
`
`BAKER BOTTS L.L.P.
`
`/Wayne O. Stacy/
`Wayne Stacy
`Lead Counsel
`Reg. No. 45,125
`
`5
`
`
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`IPR2017-01977
`U.S. Patent No. 8,755,376
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. §§ 42.6(e), I hereby certify that on June 22, 2018,
`
`the foregoing document was filed with the PTAB through its E2E system and
`
`served via email on attorneys of record for the Petitioner at the following
`
`address:
`
`PETITIONER:
`
`Jesse J. Camacho
`Elena K. McFarland
`Christine Guastello
`Mary J. Peal
`SHOOK, HARDY & BACON LLP
`jcamacho@shb.com
`emcfarland@shb.com
`cguastello@shb.com
`mpeal@shb.com
`
`Date: June 22, 2018
`
`Respectfully submitted,
`BAKER BOTTS L.L.P.
`
`/Wayne O. Stacy/
`Wayne Stacy
`Lead Counsel
`
`1
`
`
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`IPR2017-01977
`
`IPR2017-01977
`U.S. Patent No. 8,755,376
`US. Patent No. 8,755,376
`
`APPENDIX A
`
`APPENDIX A
`
`
`
`IPR2017-01977
`U.S. Patent No. 8,755,376
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`––––––––––
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`––––––––––
`
`TELESIGN CORPORATION
`Petitioner,
`
`v.
`
`TWILIO INC.
`Petitioner
`
`––––––––––
`
`Case IPR2017-01977
`Patent 8,755,376
`
`––––––––––
`
`STIPULATED PROTECTIVE ORDER
`
`
`
`IPR2017-01977
`U.S. Patent No. 8,755,376
`
`Protective Order
`
`This protective order governs the treatment and filing of confidential
`
`information, including documents and testimony.
`
`1. Confidential information shall be clearly marked PROTECTIVE ORDER
`
`MATERIAL” or “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY
`
`MATERIAL.”
`
`2. Access to confidential information marked as “PROTECTIVE ORDER
`
`MATERIAL” is limited to the following individuals who have executed the
`
`Acknowledgment appended to this order:
`
`(A) Parties. Designated officers, directors, and employees of the
`
`Receiving Party to whom disclosure is reasonably necessary;
`
`(B) Outside Counsel. Outside counsel of record for a party in the
`
`Proceeding (and they shall have such access without the requirement to sign
`
`the Acknowledgement).
`
`(C) Experts. Retained experts of a party in the Proceeding who further
`
`certify in the Acknowledgement that they are not a competitor to any party,
`
`or a consultant for, or employed by, such a competitor with respect to the
`
`subject matter of the proceeding.
`
`(D) In-house counsel. In-house counsel of a party.
`
`1
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`
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`IPR2017-01977
`U.S. Patent No. 8,755,376
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`(E) Other Persons Associated With a Party. Consultants or other
`
`persons performing work for a party, other than in-house counsel and in-
`
`house counsel’s support staff, who sign the Acknowledgement shall be
`
`extended access to confidential information only upon agreement of the
`
`parties or by order of the Board upon a motion brought by the party seeking
`
`to disclose confidential information to that person. The party opposing
`
`disclosure to that person shall have the burden of proving that such person
`
`should be restricted from access to confidential information.
`
`(F) The Office. Employees and representatives of the Office who have
`
`a need for access to the confidential information shall have such access
`
`without the requirement to sign an Acknowledgement. Such employees and
`
`representatives shall include the Director, members of the Board and their
`
`clerical staff, other support personnel, court reporters, and other persons
`
`acting on behalf of the Office.
`
`(G) Support Personnel. Administrative assistants, clerical staff, court
`
`reporters and other support personnel of the foregoing persons who are
`
`reasonably necessary to assist those persons in the proceeding shall not be
`
`required to sign an Acknowledgement, but shall be informed of the terms
`
`and requirements of the Protective Order by the person they are supporting
`
`2
`
`
`
`IPR2017-01977
`U.S. Patent No. 8,755,376
`
`who receives confidential information.
`
`3. A party or non-party may designate certain confidential material as
`
`“HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY MATERIAL,” by
`
`marking it as such, provided that the party or non-party has a good faith basis to
`
`believe that such information is particularly sensitive and a substantial competitive
`
`harm might result if it were made public. Access to any material marked as
`
`“HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY MATERIAL” is
`
`limited to the individuals identified in subsections 2(F) and 2(G) and the following
`
`individuals who have executed the acknowledgment appended to this order:
`
`outside counsel of record for a party in this IPR Proceeding and the individuals
`
`identified in subsection 2(C). Nothing in this Order, or the parties’ consent thereto,
`
`should be construed to supersede or replace any other confidentiality obligations
`
`held by a disclosing party under a protective order entered by another tribunal
`
`including the International Trade Commission or any U.S. district court.
`
`4. Persons receiving confidential information shall use reasonable efforts to
`
`maintain the confidentiality of the information, including:
`
`(A) Maintaining such information in a secure location to which
`
`persons not authorized to receive the information shall not have access;
`
`(B) Otherwise using reasonable efforts to maintain the confidentiality
`
`3
`
`
`
`IPR2017-01977
`U.S. Patent No. 8,755,376
`
`of the information, which efforts shall be no less rigorous than those the
`
`recipient uses to maintain the confidentiality of information not received
`
`from the disclosing party;
`
`(C) Ensuring that support personnel of the recipient who have access
`
`to the confidential information understand and abide by the obligation to
`
`maintain the confidentiality of information received that is designated as
`
`confidential; and
`
`(D) Limiting the copying of confidential information to only those
`
`copies needed for conduct of the proceeding and maintaining a record of the
`
`locations of such copies.
`
`5. Persons receiving confidential information shall use the following
`
`procedures to maintain the confidentiality of the information:
`
`(A) Documents and Information Filed With the Board.
`
`(i) A party may file documents or information with the Board
`
`under seal, together with a non-confidential description of the nature
`
`of the confidential information that is under seal and the reasons why
`
`the information is confidential and should not be made available to
`
`the public. The submission shall be treated as confidential and remain
`
`under seal, unless, upon motion of a party and after a hearing on the
`
`4
`
`
`
`IPR2017-01977
`U.S. Patent No. 8,755,376
`
`issue, or sua sponte, the Board determines that the documents or
`
`information do not to qualify for confidential treatment.
`
`(ii) Where confidentiality is alleged as to some but not all of the
`
`information submitted to the Board, the submitting party shall file
`
`confidential and non-confidential versions of its submission, together
`
`with a Motion to Seal the confidential version setting forth the reasons
`
`why the information redacted from the non-confidential version is
`
`confidential and should not be made available to the public. The
`
`nonconfidential version of the submission shall clearly indicate the
`
`locations of information that has been redacted. The confidential
`
`version of the submission shall be filed under seal. The redacted
`
`information shall remain under seal unless, upon motion of a party
`
`and after a hearing on the issue, or sua sponte, the Board determines
`
`that some or all of the redacted information does not qualify for
`
`confidential treatment.
`
`(B) Documents and Information Exchanged Among the Parties.
`
`Information designated as confidential that is disclosed to another
`
`party during discovery or other proceedings before the Board shall be
`
`clearly marked as “PROTECTIVE ORDER MATERIAL” or
`
`5
`
`
`
`IPR2017-01977
`U.S. Patent No. 8,755,376
`
`“HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY
`
`MATERIAL” and shall be produced in a manner that maintains its
`
`confidentiality.
`
`6. If the producing party seeks to keep “PROTECTIVE ORDER
`
`MATERIAL” or “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY
`
`MATERIAL” sealed, the other party will cooperate in those efforts, including by
`
`not opposing a request by the producing party to keep the documents sealed.
`
`“Acknowledgement” of Protective Order. The following form may be used
`
`to acknowledge a protective order and gain access to information covered by the
`
`protective order:
`
`Dated: June 12, 2018
`
`
`
`Respectfully submitted,
`
`
`
`/Wayne O. Stacy/
`Wayne O. Stacy
`
`Reg. No. 67,771
`
`COUNSEL FOR PATENT OWNER
`TWILIO INC.
`
`
`/Jesse Camacho/
`Jesse Camacho
`Reg. No. 51,258
`COUNSEL FOR PETITIONER
`TELESIGN CORPORATION
`
`6
`
`
`
`IPR2017-01977
`U.S. Patent No. 8,755,376
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`––––––––––
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`––––––––––
`
`TELESIGN CORPORATION
`Petitioner,
`
`v.
`
`TWILIO INC.
`Petitioner
`
`––––––––––
`
`Case IPR2017-01977
`Patent 8,755,376
`
`––––––––––
`
`ACKNOWLEDGEMENT FOR ACCESS
`TO PROTECTIVE ORDER MATERIAL
`
`
`
`IPR2017-01977
`U.S. Patent No. 8,755,376
`
`Acknowledgment for Access to Protective Order Material
`
`I ________________, affirm that I have read the Protective Order; that I will
`
`abide by its terms; that I will use the confidential information only in connection
`
`with this proceeding and for no other purpose; that I will only allow access to
`
`support staff who are reasonably necessary to assist me in this proceeding; that
`
`prior to any disclosure to such support staff I informed or will inform them of the
`
`requirements of the Protective Order; that I am personally responsible for the
`
`requirements of the terms of the Protective Order and I agree to submit to the
`
`jurisdiction of the Office and the United States District Court for the Eastern
`
`District of Virginia for purposes of enforcing the terms of the Protective Order and
`
`providing remedies for its breach.
`
`By: _______________________
`
`Date:________________________
`
`
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