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 EXCLUDE
`
`
`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 EXCLUDE
`
`
`
`Case IPR2017-01977
`Patent No. 8,755,376
`
`I.
`
`INTRODUCTION
`
`Patent Owner moves to exclude Exhibits 1017, 1018, 1019, and 1020 under
`
`the Federal Rules of Evidence. Petitioner relies on Exhibits 1017 and 1018 for the
`
`truth of statements made by its co-founder Stacy Stubblefield in out-of-court email
`
`chains. Therefore, these constitute inadmissible hearsay. Exhibit 1019 is a
`
`supplemental declaration from Petitioner’s expert that is irrelevant, prejudicial, and
`
`outside the proper scope of this proceeding. Finally, Patent Owner objects to a
`
`portion of the Reply brief that relies on incomplete excerpts of Exhibit 2004 under
`
`FRE 106. See Paper 30, 8. Patent Owner timely objected to these exhibits (Paper
`
`31).
`
`II.
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`REASONS THE REQUESTED RELIEF SHOULD BE GRANTED
`
`A.
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`Federal Rules of Evidence
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`The Federal Rules of Evidence (FRE) apply to inter partes reviews.
`
`37 C.F.R. § 42.62. FRE 801-802 provide that hearsay is not admissible. FRE 401
`
`and 402 provide that only relevant evidence is admissible. FRE 403 allows
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`exclusion for evidence whose probative value is substantially outweighed by a
`
`danger of “unfair prejudice” or “confusing the issues.” FRE 106 allows an adverse
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`party to introduce other parts of a writing “that in fairness ought to be considered at
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`the same time” as the part introduced by the other party.
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`1
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`
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`Case IPR2017-01977
`Patent No. 8,755,376
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`B.
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`Exhibits 1017 and 1018 are statements from Petitioner’s co-
`founder and constitute inadmissible hearsay.
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`Patent Owner objects to Exhibits 1017 and 1018 as inadmissible hearsay
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`under FRE 801 and 802 that do not fall under any exceptions.
`
`Exhibits 1017 and 1018 are both email chains between employees of Patent
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`Owner (Evan Cooke) and Petitioner (Stacy Stubblefield). Petitioner relies on these
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`exhibits for the truth of the matters asserted in Exhibit 1018 by Ms. Stubblefield—
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`namely, to assert an alternative reason why Petitioner and Patent Owner entered
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`into a non-disclosure agreement on February 28, 2010 (EX2041). Paper 30 at 25-
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`26. These out-of-court statements are the epitome of hearsay. If Petitioner wanted
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`to rely on statements from Ms. Stubblefield in this proceeding, it should have
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`submitted direct testimony from Ms. Stubblefield herself and made her available
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`for cross-examination by Patent Owner. Ms. Stubblefield is a co-founder of
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`Petitioner and is currently employed by Petitioner. She is an available declarant,
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`yet Petitioner chose to rely on hearsay and add its own interpretation of her
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`statements through attorney argument. Petitioner even had the opportunity to
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`serve a declaration from Ms. Stubblefield as supplemental evidence after Patent
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`Owner filed its hearsay objections, but Petitioner chose not to do so—apparently to
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`protect Ms. Stubblefield from deposition and to be able to push its attorney
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`argument interpretation of the hearsay statements without any opportunity for
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`2
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`
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`Case IPR2017-01977
`Patent No. 8,755,376
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`Patent Owner to cross-examine Ms. Stubblefield on the subject. See 37 CFR
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`§ 42.64(b)(2). Exhibits 1017 and 1018 should be excluded.
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`C.
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`Exhibit 1019 is irrelevant, prejudicial, and untimely.
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`Exhibit 1019 is a supplemental declaration from Petitioner’s expert, Dr.
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`Nielson that for the first time applies a construction of “REST API” that it could
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`have and should have addressed in the Petition. See Paper 35, 4-5. Because Dr.
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`Nielson’s new opinions cannot support Petitioner’s grounds submitted in the
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`Petition, they are irrelevant under FRE 401-402. And because they constitute new
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`grounds (which would require Petitioner to submit responsive argument and
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`potentially new expert testimony), they are unduly prejudicial under FRE 403.
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`Exhibit 1019 is also untimely and outside the proper scope of reply; Patent
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`Owner filed a motion to strike Exhibit 1019 on this basis. See Paper 35 at 4-5.
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`D.
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`Portions of Petitioner’s Reply Brief (Paper 30) relying on Ex. 2004
`(Paper 30, 8) are incomplete under FRE 106.
`
`Patent Owner objects to portions of the Reply relying on Exhibit 2004
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`(Paper 30 at 8) as incomplete under FRE 106. Petitioner relies on an incomplete
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`excerpt of the claim construction hearing transcript from the district court
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`proceeding. Paper 30, 8. Without their full context, the statements Petitioner
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`identifies are incomplete and should be excluded.
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`3
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`
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`Case IPR2017-01977
`Patent No. 8,755,376
`
`Date: October 12, 2018
`
`Respectfully submitted,
`BAKER BOTTS L.L.P.
`
`/Wayne O. Stacy/
`Wayne Stacy
`Lead Counsel
`
`4
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`
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`Case IPR2017-01977
`Patent No. 8,755,376
`
`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. §§ 42.6(e), I hereby certify that on October 12,
`
`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: October 12, 2018
`
`Respectfully submitted,
`BAKER BOTTS L.L.P.
`
`/Wayne O. Stacy/
`Wayne Stacy
`Lead Counsel
`
`
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