Case IPR2017-01977
`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 OBJECTIONS TO PETITIONER’S EVIDENCE AND
`A PORTION OF PETITIONER’S REPLY BRIEF PURSUANT TO 37 C.F.R.
`§ 42.64(b)(1)
`
`
`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 OBJECTIONS TO PETITIONER’S EVIDENCE AND
`A PORTION OF PETITIONER’S REPLY BRIEF PURSUANT TO 37 C.F.R.
`§ 42.64(b)(1)
`
`
`
`Case IPR2017-01977
`Patent No. 8,755,376
`
`Under the Federal Rules of Evidence and 37 C.F.R. § 42.64(b)(1), Patent
`
`Owner objects to the admissibility of Exhibits 1017, 1018, 1019, and 1020 (the
`
`“Challenged Exhibits”) cited in Petitioner’s Reply (Paper 30). Patent Owner also
`
`objects to the admissibility of Petitioner’s Reply (Paper 30) because it contains
`
`new evidence and argument that was not included in the Petition. These objections
`
`are being timely filed within five (5) business days of Petitioner’s service of the
`
`papers to which these objections are directed. Patent Owner files and serves
`
`Petitioner with these objections to provide notice that Patent Owner intends to
`
`move to exclude the Challenged Exhibits and Paper 30 under 37 C.F.R. § 42.64(c).
`
`I.
`
`EXS. 1017, 1018, AND 1020
`Patent Owner objects to Exhibits 1017, 1018, and 1020 as inadmissible
`
`hearsay under FRE 801 and 802 that does not fall under any exceptions.
`
`II.
`
`EX. 1019
`Patent Owner objects to Exhibit 1019 (Dr. Nielson’s Supplemental
`
`Declaration) as irrelevant and prejudicial under FRE 401-403 and outside the
`
`scope under FRE 611(b) as relying on untimely supplemental evidence under 37
`
`C.F.R. § 42.64(b)(2). See Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd.,
`
`821 F.3d 1359, 1369 (Fed. Cir. 2016).
`
`1
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`
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`Case IPR2017-01977
`Patent No. 8,755,376
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`III. REPLY BRIEF (PAPER 30)
`Petitioner’s Reply (Paper 30) identifies new evidence that was not included
`
`in the Petition and is therefore irrelevant and prejudicial under FRE 401-403 and
`
`outside the scope under FRE 611(b) as untimely supplemental evidence under 37
`
`C.F.R. § 42.64(b)(2). “It is of utmost importance that petitioners in the IPR
`
`proceedings adhere to the requirement that the initial petition identify ‘with
`
`particularity’ the ‘evidence that supports the grounds for the challenge to each
`
`claim.’” Intelligent Bio-Sys., Inc., 821 F.3d at 1369 (citing 35 U.S.C. § 312(a)(3)).
`
`Patent Owner objects to each of the following portions of the Reply as irrelevant
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`and prejudicial under FRE 401-403 and outside the scope under FRE 611(b) as
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`relying on untimely supplemental evidence under 37 C.F.R. § 42.64(b)(2):
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` Ground 1 – Claim 1[a]: “a plurality of API resources.” The Petition
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`identifies “various telephony-based servers” (e.g., TEL 20) as “a plurality
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`of API resources.” Petitioner points to new evidence in Reply, pointing
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`to Maes’s “enumeration values” such as MakeCall and TransferCall as “a
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`plurality of API resources” for the first time. (Ex. 1003 at cols. 34-35).
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`Reply, 7.
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` Ground 1 – Claim 1[b][ii]: “responding to the API request according to
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`the request and the specified resource URI.” Petitioner relies for the first
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`2
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`Case IPR2017-01977
`Patent No. 8,755,376
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`time in Reply on Ransom (and Figure 20 of Ransom) (Ex. 1004 at Figure
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`20) for this limitation. Reply, 14-15.
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` Ground 1 – Claim 16 – Petitioner relies for the first time in Reply on
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`Maes’ “TEL 20’s collecting-digits-functionality” as the “informational
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`API resource” required by Claim 1[a][iv]. Reply, 15-16 (compare Pet.,
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`20 (citing “the collected digits” of Maes (Ex. 1003))).
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` Ground 3 – Claim 1[a]: “a plurality of API resources.” The Petition
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`identifies “the functionality of sending an SMS message and initiating a
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`phone call, respectively, over a telephony network, i.e., a plurality of API
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`resources.” Pet., 44-45. In Reply, Petitioner points to the Parlay X Web
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`Services (Ex. 1006) more generally, constituting new evidence. Reply,
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`17.
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` Ground 3 – Claim 1[b]: “the plurality of API resources.” The Petition
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`identifies “the getReceivedSMS API resource, i.e., a plurality of API
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`resources.” Pet., 50. In Reply, Petitioner points to the Parlay X Web
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`Services (Ex. 1006) more generally, constituting new evidence. Reply,
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`17.
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` Ground 3 – Claim 16: Petitioner failed to address this claim in the
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`Petition and now asserts that its assertions for claim 1 satisfy the
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`3
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`Case IPR2017-01977
`Patent No. 8,755,376
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`limitations of claim 16. Reply, 21. All evidence (i.e., citations to Pet.,
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`49, 52-55) cited in the Reply is brand-new evidence for claim 16.
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` Portions of the Reply relying on Ex. 1019 (Paper 30 at 9)– Patent Owner
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`objects to the portions of the Reply relying on and citing to Ex. 1019 as
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`irrelevant and prejudicial under FRE 401-403 and outside the scope
`
`under FRE 611(b) as relying on untimely supplemental evidence under
`
`37 C.F.R. § 42.64(b)(2) and for the reasons for the reasons set forth for
`
`Ex. 1019, above.
`
` Portions of the Reply relying on Exs. 1017, 1018, and 1020 (Paper 30 at
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`6, 8, 25-26) – Patent Owner objects to the portions of the Reply relying
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`on and citing to Exs. 1017, 1018, and 1020 as irrelevant and prejudicial
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`under FRE 401-403 and outside the scope under FRE 611(b) as relying
`
`on untimely supplemental evidence under 37 C.F.R. § 42.64(b)(2) and for
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`the reasons for the reasons set forth for Exs. 1017, 1018, and 1020,
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`above.
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`Patent Owner objects to portions of the Reply relying on Ex. 2004 (Paper 30
`
`at 8) as incomplete under FRE 106.
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`4
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`
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`Case IPR2017-01977
`Patent No. 8,755,376
`
`Date: September 14, 2018
`
`Respectfully submitted,
`BAKER BOTTS L.L.P.
`
`/Wayne O. Stacy/
`Wayne Stacy
`Lead Counsel
`
`5
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`
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`Case IPR2017-01977
`Patent No. 8,755,376
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. §§ 42.6(e), I hereby certify that on September 14,
`
`2018, the foregoing document was 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: September 14, 2018
`
`Respectfully submitted,
`BAKER BOTTS L.L.P.
`
`/Wayne O. Stacy/
`Wayne Stacy
`Lead Counsel
`
`1
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