`571-272-7822
`
`
`
`
`Paper 33
`Entered: September 26, 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.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`1 This Order pertains to both of these cases. Therefore, we exercise our
`discretion to issue a single Order to be filed in each case. The parties are not
`authorized to use this heading style for any subsequent papers.
`
`
`
`IPR2017-01976 (Patent 8,837,465 B2)
`IPR2017-01977 (Patent 8,755,376 B2)
`
`
`I.
`INTRODUCTION
`On September 25, 2018, Judges Weinschenk, McGraw, and Moore
`held a telephone conference call with counsel for TeleSign Corporation
`(“Petitioner”) and counsel for Twilio Inc. (“Patent Owner”). A court
`reporter was present on the conference call. This order summarizes
`statements made during the conference call. A more complete record may
`be found in the court reporter’s transcript, which is to be filed by Patent
`Owner as an exhibit.
`
`II. ANALYSIS
`Patent Owner requested authorization to file a motion to strike certain
`portions of Petitioner’s Reply that allegedly exceed the scope set forth in 37
`C.F.R. § 42.23(b). Patent Owner argued that the Reply includes new
`theories of unpatentability that were not included in the Petition. Petitioner
`argued that the Reply properly responds to arguments made in Patent
`Owner’s Response.
`After considering the respective positions of the parties, we hereby
`authorize Patent Owner to file a 5-page motion to strike by October 5, 2018,
`and we authorize Petitioner to file a 5-page opposition to the motion to strike
`by October 17, 2018. In the motion to strike, Patent Owner should identify
`(by page and line numbers) exactly which arguments in Petitioner’s Reply
`allegedly exceed the proper scope set forth in 37 C.F.R. § 42.23(b), and
`explain specifically why those arguments exceed the proper scope. The
`parties are not permitted to submit any additional arguments regarding the
`patentability of the challenged claims in the motion to strike or the
`opposition. Further, no additional evidence may be submitted with the
`motion to strike or the opposition.
`
`2
`
`
`
`IPR2017-01976 (Patent 8,837,465 B2)
`IPR2017-01977 (Patent 8,755,376 B2)
`
`
`III. ORDER
`In consideration of the foregoing, it is hereby
`ORDERED that Patent Owner’s request for authorization to file a
`motion to strike is granted;
`FURTHER ORDERED that Patent Owner may file a 5-page motion
`to strike in each of the above-listed proceedings by October 5, 2018, in
`accordance with the instructions above;
`FURTHER ORDERED that Petitioner may file a 5-page opposition to
`the motion to strike in the above-listed proceedings by October 17, 2018, in
`accordance with the instructions above; and
`FURTHER ORDERED that no reply is authorized at this time.
`
`
`
`
`3
`
`
`
`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
`Michelle Jacobson Eber
`BAKER BOTTS L.L.P.
`wayne.stacy@bakerbotts.com
`michelle.eber@bakerbotts.com
`
`4
`
`
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