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 MOTION TO STRIKE PORTIONS OF
`PETITIONER’S REPLY BRIEF AND EXHIBIT 1019
`PURSUANT TO 37 C.F.R. § 42.23(b)
`
`
`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 MOTION TO STRIKE PORTIONS OF
`PETITIONER’S REPLY BRIEF AND EXHIBIT 1019
`PURSUANT TO 37 C.F.R. § 42.23(b)
`
`
`
`Case IPR2017-01977
`Patent No. 8,755,376
`
`As authorized by the Board (Paper 33), Patent Owner moves to strike certain
`
`portions of Petitioner’s Reply (Paper 30) and Exhibit 1019 that exceed the scope of
`
`reply. In its Petition, Petitioner was required to identify each ground with
`
`particularity. 35 U.S.C. § 312(a)(3). “A reply may only respond to arguments
`
`raised in the corresponding opposition or patent owner response.” 37 C.F.R. §
`
`42.23(b). Further, “Petitioner may not submit new evidence or argument in reply
`
`that it could have presented earlier, e.g. to make out a prima facie case of
`
`unpatentability.” Aug. 2018 PTAB Trial Practice Guide Update, 14.
`
`Petitioner’s Reply contains new evidence and argument that were not
`
`included in the Petition, constituting new grounds. The new grounds are not
`
`directly responsive rebuttal to the Patent Owner Response and should be struck
`
`from the record. The same is true of Exhibit 1019—a supplemental declaration
`
`from Petitioner’s expert that addresses claim construction positions Petitioner
`
`could have but never did raise in the Petition.
`
`If permitted, Petitioner’s new evidence and arguments would require new
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`analysis and expert testimony from Patent Owner. For example, does the newly-
`
`presented disclosure from Ransom (EX 1004) for Claim 1[b][ii] meet the claim
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`language? Are ETSI-4’s “Parlay X Web Services” “a plurality of API resources”
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`1
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`Case IPR2017-01977
`Patent No. 8,755,376
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`as claimed? The evidence and theories are the type of new reply evidence and
`
`arguments that 35 U.S.C. § 312(a)(3) and this Board’s Practice Guide prohibit.
`
`I.
`
`GROUND 1 – CLAIM 1[a]: “A PLURALITY OF API RESOURCES”
`The Petition relies on “various telephony-based servers” (e.g., TEL 20) of
`
`Maes as “a plurality of API resources” to make its prima facie case. Pet., 15.
`
`Petitioner changes its grounds in Reply, pointing instead to Maes’s “enumeration
`
`values” such as MakeCall and TransferCall as “a plurality of API resources” for
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`the first time. Paper 30, 7 (citing EX 1003 at cols. 34-35). This constitutes new
`
`evidence and a new argument and grounds that is outside the scope of proper
`
`rebuttal. Paper 30, page 7 (Section II.C.2 in its entirety) should be struck.
`
`II. GROUND 1 – CLAIM 1[b][ii]: “RESPONDING TO THE API
`REQUEST ACCORDING TO THE REQUEST AND THE SPECIFIED
`RESOURCE URI”
`Petitioner did not rely on Ransom at all in attempting to make its prima facie
`
`case for the “responding” limitation in the Petition. Pet., 29. Petitioner makes a
`
`wholesale addition of this prior art reference to its allegations for the “responding”
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`limitation for the first time in reply. Paper 30, 14-15. Petitioner also did not rely on
`
`Figure 20 of Ransom (EX1004) anywhere in the Petition, let alone for this claim
`
`limitation. This constitutes new evidence and a new argument and grounds that is
`
`outside the scope of proper rebuttal. Paper 30, page 14, second paragraph and page
`
`15 (EX1004, Fig. 20) should be struck.
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`Case IPR2017-01977
`Patent No. 8,755,376
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`III. GROUND 1 – CLAIM 16: “THE
`RESOURCE”
`Petitioner cited “the collected digits” of Maes (EX 1003) as “an
`
`INFORMATIONAL API
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`informational API resource” required by claim 1[a][iv] (which provides antecedent
`
`basis for “the informational API resource” in Claim 16). Pet., 20. Petitioner relies
`
`for the first time in reply on Maes’ “TEL 20’s collecting-digits-functionality” as an
`
`“informational API resource” for claim 1[a][iv] in an attempt to fix the antecedent
`
`basis issue in its allegations for claim 16. Paper 30, 15-16. This constitutes new
`
`evidence and new grounds that are outside the scope of proper rebuttal. Paper 30,
`
`page 15 (last four lines) and page 16 (first three lines) should be struck.
`
`IV. GROUND 3 – CLAIM 1[a]: “A PLURALITY OF API RESOURCES”
`The Petition identifies “the functionality of sending an SMS message and
`
`initiating a phone call, respectively, over a telephony network, i.e., a plurality of
`
`API resources” to make its prima facie case for “a plurality of API resources.” Pet.,
`
`44-45. In reply, Petitioner points to the Parlay X Web Services (EX 1006) to
`
`address the “plurality” requirement for the first time. Paper 30, 17. This constitutes
`
`new evidence and a new argument and grounds that is outside the scope of proper
`
`rebuttal. Paper 30, page 17 (Section III.A) should be struck.
`
`V.
`
`GROUND 3 – CLAIM 1[b]: “THE PLURALITY OF API
`RESOURCES”
`
`3
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`
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`Case IPR2017-01977
`Patent No. 8,755,376
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`The Petition identifies “the getReceivedSMS API resource, i.e., a plurality
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`of API resources” to make its prima facie case for “the plurality of API resources.”
`
`Pet., 50. In reply, Petitioner points to the Parlay X Web Services (EX 1006) to
`
`address the “plurality” requirement for the first time. This constitutes new evidence
`
`and a new argument and grounds that is outside the scope of proper rebuttal. Paper
`
`30, page 17 (Section III.B) should be struck.
`
`VI. GROUND 3 – CLAIM 16
`Petitioner failed to address claim 16 in the Petition. Pet., 59. Petitioner now
`
`asserts that its assertions for claim 1 satisfy claim 16. Paper 30, 21. All evidence
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`(i.e., citations to Pet., 49, 52-55) cited in the Reply is brand-new evidence for claim
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`16, constituting new grounds, that is outside the scope of proper rebuttal. Id. Paper
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`30, page 21 (first full paragraph, addressing claim 16) should be struck.
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`VII. EXHIBIT 1019
`With its reply, Petitioner for the first time submitted expert opinion applying
`
`a construction of “REST API” that it could have and should have addressed in the
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`Petition. EX1019. In Petitioner’s expert’s declaration submitted with the Petition,
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`he states: “I have been told that Patent Owner, Twilio, has construed a REST API
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`as ‘an application programming interface that is operable with the Representation
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`State Transfer (REST) conventions.” EX1009, ¶ 45. But at the time of the Petition,
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`he and Petitioner knew of the dissertation by Roy Fielding (EX2034) that defines
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`Case IPR2017-01977
`Patent No. 8,755,376
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`what the “REST conventions” are, as the dissertation was at issue in the district
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`court proceeding before the Petition was filed. See EX1010, 12-14. Yet he and
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`Petitioner failed to address any of the four REST conventions with the Petition.
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`For the first time in reply, Petitioner’s expert attempts to offer opinions
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`concerning whether Ransom (EX1004) discloses the four interface constraints
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`required of a “REST API.” EX1019. This is not “directly responsive rebuttal
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`evidence” but rather an attempt to backfill Petitioner’s prima facie case of
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`unpatentability. If Petitioner intended to rely on expert opinion concerning this
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`construction, it should have done so in the Petition.
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`VIII. PORTIONS OF THE REPLY RELYING ON EX 1019
`For the same reasons, Patent Owner also seeks to strike the portions of the
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`Reply relying on and citing to EX1019. Paper 30, page 9, first paragraph (relying
`
`on EX 1019) and single sentence spanning pages 17-18 should be struck.
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`IX. CONCLUSION
`Patent Owner requests that the following be struck:
`
` Paper 30, page 7 (Section II.C.2 in its entirety)
` Paper 30, page 14, second paragraph and page 15 (EX1004, Fig. 20)
` Paper 30, page 15 (last four lines) and page 16 (first three lines)
` Paper 30, page 17 (Sections III.A and III.B)
` Paper 30, page 21 (first full paragraph, addressing claim 16)
` Exhibit 1019 in its entirety
` Paper 30, page 9, first paragraph (relying on EX 1019) and single
`sentence spanning pages 17-18
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`5
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`Case IPR2017-01977
`Patent No. 8,755,376
`
`Date: October 5, 2018
`
`Respectfully submitted,
`BAKER BOTTS L.L.P.
`
`/Wayne O. Stacy/
`Wayne Stacy
`Lead Counsel
`
`6
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`Case IPR2017-01977
`Patent No. 8,755,376
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`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. §§ 42.6(e), I hereby certify that on October 5, 2018,
`
`the foregoing document was served via email on attorneys of record for the
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`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: October 5, 2018
`
`Respectfully submitted,
`BAKER BOTTS L.L.P.
`
`/Wayne O. Stacy/
`Wayne Stacy
`Lead Counsel
`
`1
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