UNITED STATES PATENT AND TRADEMARK OFFICE
`
`________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________________________
`
`TELESIGN CORPORATION
`
`Petitioner
`
`v.
`
`TWILIO, INC.
`
`Patent Owner
`
`________________________________
`
`Patent 8,755,376
`
`IPR Case Number: IPR2017-01977
`
`________________________________
`
`PETITIONER’S MOTION TO EXCLUDE EVIDENCE SUBMITTED BY
`PATENT OWNER UNER 37 C.F.R. § 42.64
`
`
`
`
`
`
`________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________________________
`
`TELESIGN CORPORATION
`
`Petitioner
`
`v.
`
`TWILIO, INC.
`
`Patent Owner
`
`________________________________
`
`Patent 8,755,376
`
`IPR Case Number: IPR2017-01977
`
`________________________________
`
`PETITIONER’S MOTION TO EXCLUDE EVIDENCE SUBMITTED BY
`PATENT OWNER UNER 37 C.F.R. § 42.64
`
`
`
`
`
`
`Case IPR2017-01977
`Patent 8,755,376
`
`I.
`
`INTRODUCTION
`
`Although this proceeding involves a great many issues and Petitioner does not
`
`concede that numerous filings are improper, it brings this motion to exclude on only
`
`one evidentiary excerpt because of its severity: the Board should exclude paragraphs
`
`144-149 of Dr. Negus’s expert declaration EX2010. These paragraphs are merely a
`
`conduit for inadmissible hearsay by an interested witness, followed by an
`
`unsupported and prejudicial conclusion. Dr. Negus simply repeats back hearsay
`
`statements of Mr. John Wolthuis – Patent Owner’s co-founder and named co-
`
`inventor of the instant ’376 Patent. Mr. Wolthuis did not submit his own declaration.
`
`He was unwilling to provide sworn testimony. Instead, Dr. Negus purports to have
`
`heard from Mr. Wolthuis (instead of performing his own analysis) that Patent
`
`Owner’s Programmable Voice and Programmable Messaging products practice the
`
`challenged claims of the ’376 Patent. The Board should exclude these paragraphs
`
`of Dr. Negus’s expert declaration, namely paragraphs 144-148 as well as paragraph
`
`149, concluding that Patent Owner’s Programmable Voice and Programmable
`
`Messaging products practice the challenged ’376 Patent, because Dr. Negus’s
`
`ultimate opinion is not based on sufficient facts or data or the product of reliable
`
`principles or methods as Federal Rule of Evidence 702 requires. Petitioner timely
`
`served objections to this evidence on June 29, 2018.
`
`
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`2
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`
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`Case IPR2017-01977
`Patent 8,755,376
`
`II. FACTUAL BACKGROUND
`
`Dr. Negus opines that secondary indicia of non-obviousness, including the
`
`alleged commercial success of Patent Owner’s Programmable Voice and
`
`Programmable Messaging products, demonstrate the non-obviousness of the
`
`challenged ’376 Patent. EX2010 at ¶¶ 130-158. In an attempt to show the required
`
`nexus for his opinions regarding commercial success, Dr. Negus states that he spoke
`
`with Mr. Wolthuis – Patent Owner’s co-founder and co-inventor of the challenged
`
`’376 Patent. EX2010 at ¶¶ 144-148. According to Dr. Negus, Mr. Wolthuis told
`
`him “that the architecture and operating methodologies of [Patent Owner’s]
`
`Programmable Voice and Programmable Messaging products follows the teachings
`
`of the ‘376 Patent, including at least as described by challenged claim 1 . . . .”
`
`EX2010 at ¶¶ 146-148. Based exclusively on these unsubstantiated statements for
`
`certain required claim limitations, Dr. Negus concludes that these products practice
`
`the ’376 Patent. EX2010 at ¶ 149.
`
`III. ARGUMENT
`
`Dr. Negus’ ultimate opinion that Patent Owner’s Programmable Voice and
`
`Programmable Messaging products practice the challenged ’376 Patent, paragraph
`
`149 of EX2010, should be excluded under Federal Rule of Evidence 702 because it
`
`is not based on sufficient facts or data or the product of reliable principles or
`
`methods. Expert testimony is admissible if offered by a witness qualified as an
`
`
`
`3
`
`
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`Case IPR2017-01977
`Patent 8,755,376
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`expert “by knowledge, skill, experience, training, or education,” and if (1) the
`
`testimony is based upon sufficient facts or data, (2) the testimony is the product of
`
`reliable principles or methods, and (3) the witness has applied the principles and
`
`methods reliably to the facts of the case. Fed. R. Evid. 702
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`Here, Dr. Negus simply parrots back Mr. Wolthuis’s statements, which
`
`themselves are uncorroborated and conclusory averments that Patent Owner’s
`
`Programmable Voice and Programmable Messaging products practice the
`
`challenged claims of the ’376 Patent. Critically, this reflects no independent analysis
`
`of whether Patent Owner’s Programmable Voice and Programmable Messaging
`
`products practice the challenged ’376 Patent claims. Moreover, Mr. Wolthuis’s
`
`statements are hearsay under Federal Rule of Evidence 801, do not fall under any
`
`hearsay exception, and should therefore be excluded on Federal Rule of Evidence
`
`802.
`
`“Although experts may rely on hearsay or other inadmissible evidence if
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`experts in their field reasonably rely on such evidence in forming their opinions, see
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`Fed.R.Evid. 703, it is inappropriate for experts to testify as ‘mere conduits for others’
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`hearsay.” United States v. Am. Exp. Co., No. 10-CV-4496 NGG RER, 2014 WL
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`2879811, at *17 (E.D.N.Y. June 24, 2014) (quoting Island Intellectual Prop. LLC v.
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`Deutsche Bank AG, No. 09–CV–2675 (KBF), 2012 WL 526722, at *2 (S.D.N.Y.
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`Feb.14, 2012); Vondrak v. City of Las Cruces, No. CIV 05-0172 JBLFG, 2007 WL
`
`
`
`4
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`
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`Case IPR2017-01977
`Patent 8,755,376
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`2219449, at *3 (D.N.M. May 14, 2007), rev’d in part on other grounds, 535 F.3d
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`1198 (10th Cir. 2008) (“[R]ule 703 of the Federal Rules of Evidence allows an expert
`
`to rely on inadmissible facts in reaching an opinion or inference, but does not allow
`
`the proponent of the expert testimony to use the expert as a conduit for a party to get
`
`in otherwise inadmissible evidence, the Court will not consider those portions of
`
`Gaut’s report discussing statements . . . that are hearsay.”). Patent Owner should be
`
`precluded from performing an end-run around the rule against hearsay by having its
`
`expert Dr. Negus testify in his expert declaration as to unsworn statements of
`
`interested witness Mr. Wolthuis’s.
`
`Patent Owner might argue that the content in question need not be excluded
`
`in favor of giving it little weight. But exclusion is the proper remedy in view of the
`
`potential prejudice to Petitioner. The content violates Federal Rules of Evidence
`
`702 and 802 and retaining the paragraphs in question would allow Patent Owner to
`
`evade exclusion of Mr. Wolthuis’s hearsay statements simply by having its expert
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`repeat the hearsay in a declaration.
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`IV. CONCLUSION
`
`For the reasons discussed above, the Board should exclude paragraphs 144-
`
`149 of Dr. Negus’s expert declaration EX2010.
`
`
`
`
`
`
`
`
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`5
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`Case IPR2017-01977
`Patent 8,755,376
`
`Dated: October 12, 2018
`
`
`
`
`
`
`SHOOK, HARDY & BACON, LLP
`2555 Grand Boulevard
`Kansas City, MO 64108
`Tel: (816) 474-6550
`Fax: (816) 421-5547
`
`
`
`
`Respectfully submitted,
`
`
`
`
`/s/ Chrissie Guastello
`Chrissie Guastello (Reg. No. 58,716)
`Attorney for Petitioner
`
`
`
`
`
`6
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`Case IPR2017-01977
`Patent 8,755,376
`
`
`CERTIFICATE OF SERVICE
`
`
`
`
`I hereby certifying that on October 12th, 2018, a copy of the foregoing
`
`PETITIONER’S MOTION TO EXCLUDE EVIDENCE SUBMITTED BY
`
`PATENT OWNER UNER 37 C.F.R. § 42.6 was served on counsel of record via
`
`their email addresses of record:
`
`Wayne Stacy, wayne.stacy@bakerbotts.com
`
`Sarah J. Guske, sarah.guske@bakerbotts.com
`
`Michelle Eber, michelle.eber@bakerbotts.com
`
`Dated: October 12, 2018
`
`/s/ Dana E. Hardy
`Dana E. Hardy
`Paralegal for Petitioner
`
`
`
`
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`
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`7
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