Case IPR2017-01977
`Patent 8,755,376
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`________________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`________________________________
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`TELESIGN CORPORATION
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`Petitioner
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`v.
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`TWILIO, INC.
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`Patent Owner
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`________________________________
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`Patent 8,755,376
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`IPR Case Number: IPR2017-01977
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`________________________________
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`PETITIONER’S OPPOSITION TO
`PATENT OWNER’S MOTION TO STRIKE
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`Patent 8,755,376
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`________________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`________________________________
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`TELESIGN CORPORATION
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`Petitioner
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`v.
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`TWILIO, INC.
`
`Patent Owner
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`________________________________
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`Patent 8,755,376
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`IPR Case Number: IPR2017-01977
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`________________________________
`
`PETITIONER’S OPPOSITION TO
`PATENT OWNER’S MOTION TO STRIKE
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`Case IPR2017-01977
`Patent 8,755,376
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`Even though “striking the entirety or a portion of a party’s brief is an
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`exceptional remedy that the Board expects will be granted rarely,” Patent Owner
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`moves (Paper No. 35) to strike eight portions of Petitioner’s Reply.1 Trial Practice
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`Guide, August 2018 Update, 83 Fed. Reg. No. 156, 39989 (Aug. 13, 2018) at 18.
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`Indeed, all eight portions are properly responsive and do not present new
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`unpatentability theories. Petitioner’s Reply may properly respond to Patent Owner’s
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`arguments, including arguments raised “at least implicitly.” Idemitsu Kosan Co. v.
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`SFC Co., 870 F.3d 1376, 1381 (Fed. Cir. 2017).
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`Rebuttal I. Section II.C.2 of Petitioner’s Reply (p. 7) cannot properly be
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`stricken. First, it properly responds to POR’s argument that Petitioner violates
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`antecedent basis (Paper 26 at § V.B.1, p. 16). Second, the argument and evidence is
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`not new. The Petition pointed to Maes’s “enumeration values” which, for example,
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`allow modifying the state of a telephone session—such as via “MakeCall” and
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`“TransferCall”—as “a plurality of API resources.” Pet. 16:1-6 (discussing element
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`1[a]) (“Maes teaches that TEL 20, includes various functionalities that allow an
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`application to modify the state of a telephony session, such as setting up a call,
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`transferring a call, and recording audio during a call.”). And when the same element
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`is discussed again in element 1[e], the Petition expressly points to the enumeration
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`values as API Resources. Pet. 21.
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`1 Herein, all emphasis is added in quotations unless indicated otherwise.
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`Case IPR2017-01977
`Patent 8,755,376
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`Rebuttal II. The second paragraph at Reply 14 and FIG. 20 at Reply 15
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`cannot properly be stricken. First, ¶ 2 properly responds to POR’s erroneous
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`assertion that “Petitioner relies solely on Maes” to show the “responding . . .”
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`limitation 1[b][ii] (Paper 26 at 33, ¶ 2). Second, relying on Maes and Ransom for
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`the receiving and responding limitations is not new. The “receiving a REST API
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`request” and “responding to the API request” limitations are related. The Petition
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`relies on the collective teachings of Maes and Ransom, not just Maes (see Ground
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`1). The Petition’s analysis of the “responding” limitation (Pet. 29, § [1g])
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`immediately follows a lengthy analysis of the combined teachings of Maes and
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`Ransom (Pet. 24-29, § [1f]). The content under the subsequent heading builds on
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`that analysis. And FIG. 20 on page 15 of Petitioner’s Reply is not new. It is
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`described in Maes’s ¶ [0185], which the Petition expressly references and is
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`referenced via numerals (e.g., 2010, 2005) when describing the “REST” model. Pet.
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`26:6-12 – 27:1-2.
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`Rebuttal III. Reply at 15, last full paragraph cannot properly be stricken.
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`First, that excerpt properly responds to the POR’s assertion that the Petition contends
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`the collected digits are both an informational API resource and data of the API
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`Resource. POR 37-38 (spanning ¶). Second, this is not new because that is not what
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`the Petition contends. Claim 16 refers to two things: “an informational API
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`resource” and “data of the informational API resource.” The Petition maps the API
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`Case IPR2017-01977
`Patent 8,755,376
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`resource to the “CollectDigits” functionality and the data to the actual “collected
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`digits.” Pet. 19-20 § 1[d]; see particularly 20, ll. 6-13 (reproduced below):
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`Context and singular/plural agreement make clear that the media created are
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`the collected digits (plural), which “are” (plural) sent to application 14; while the
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`“i.e.” before “an informational API resource” (singular) refers to “the” application’s
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`instruction (singular). Any further ambiguity is resolved by the Petition’s consistent
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`explanation that an informational API resource is associated with functionality (such
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`as an instruction), not with mere data. See, e.g., Pet. 32 (“an informational API
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`resource . . . ‘functions to allow . . .’”); Pet. 19 (“call router resources . . . preferably
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`functions to expose information . . . .”); Pet. 19 (referring to functionality such as
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`allowing an application to retrieve or access information when discussing element
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`[1d]); Pet. 20 (“Maes discloses an application sending TEL 20 a SOAP message
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`instructing the collection of DTMF digits.”).
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`Rebuttal IV. Reply § III.A (p. 17) cannot properly be stricken. First, the
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`excerpt properly responds to the POR’s mischaracterization of the Petition’s
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`reference to “the functionality” (Paper 26 § VII.A at 40:10-11). Second, the excerpt
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`is not new. Patent Owner’s motion argues that “Petitioner points to the Parlay X
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`Web Services (EX 1006) to address the ‘plurality’ requirement for the first time.”
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`Case IPR2017-01977
`Patent 8,755,376
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`Mot. 3. Not so. The Petition plainly refers to these web services when discussing
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`this element. Pet. 44 (“ETSI ES 202 391-4 teaches Parlay X Web Services, including
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`the SMS and Third Party Call Web Services . . . .”) (the and term providing one
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`example of “plurality”). And ETSI ES 202 391-4 is EX1006. Pet. 68.
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`Rebuttal V. Reply § III.B (pp. 17-18) cannot properly be stricken. First,
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`that excerpt properly responds to the POR argument that the Petitioner fails to show
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`that ETSI-4 discloses “the plurality” of API resources. Paper 26, § VII.B.1 (pp. 41-
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`42). Second, the excerpt is not new. The motion reads too much into the “i.e.”
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`reference at Pet. 50, line 2. Element [1e] describes an “exposing” step. The Petition
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`need not copy and paste all instances of prior claim-limitation discussions where
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`each limitation is discussed. The Petition addressed the “a plurality of API
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`resources” limitation when it was first introduced in the preamble (Pet 44-45), which
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`expressly refers to both the Short Message (SMS) Web Service and the Third Party
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`Call Web Service. Pet. 44. How those are exposed is explained more fully in
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`element [1e], which mentions both the “Short Messaging Web Service” (Pet. 50, ¶
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`1) and the “Third Party Call Web Service” (Pet. 50, ¶ 2).
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`Rebuttal VI. Reply 21, first full paragraph cannot properly be stricken.
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`First, that excerpt responds to POR’s argument that the Petition failed to address
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`claim 16. Paper 26 at 56 (§§ 4). Second, the argument is not new. Patent Owner
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`Case IPR2017-01977
`Patent 8,755,376
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`misstates the record in contending that “Petitioner failed to address claim 16 in the
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`Petition.” Mot. 4. The Petition does indeed address claim 16 at Pet. 59.
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`Rebuttals VII and VII. EX 1019 and the portions of the Reply that refer
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`to or rely on it cannot properly be stricken. First, that excerpt properly responds to
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`Patent Owner’s newly presented “REST” construction and numerous REST-
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`deficient contentions, including those at POR 18 (“[] Ransom does not disclose any
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`resource that is identified through a URI, as required by the first REST convention.
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`Nor does Ransom disclose or use self-descriptive messages, as required by the third
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`REST convention.”). The Court did not issue its claim construction order until Oct
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`13, 2017. Petitioner could not have known of the Court’s construction when it filed
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`its Petition on Aug. 23, 2017. But Patent Owner did when it filed its Dec. 13, 2017
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`Prelim. Resp. yet chose not to set forth a construction. In its POR, Patent Owner
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`opportunistically advances and relies on a new claim construction, one from which
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`it distanced itself in litigation (Reply 8), and now argues that Petitioner should be
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`precluded from responding. That would violate Petitioner’s due-process rights. EX
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`1019 and the portions of the Reply that refer to or rely on it are properly responsive.
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`Edwards Lifesci.’s Corp. v. Boston Scientific Scimed, Inc., IPR2017-00444, 2018
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`WL 3203404, at *5 (PTAB June 28, 2018) (holding that Petitioner’s supplemental
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`expert declaration addressing claim construction positions raised for the first time in
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`Patent’s Owner’s response did not exceed the proper scope of 37 C.F.R. § 42.23).
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`Respectfully submitted,
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`By: /JESSE J. CAMACHO/
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`Jesse J. Camacho, Reg. No. 51,258
`Elena K. McFarland, Reg. No. 59,320
`Christine A. Guastello, Reg. No. 58,716
`Mary J. Peal, Reg. No. 63,978
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` ATTORNEYS FOR PETITIONER
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`Case IPR2017-01977
`Patent 8,755,376
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`Dated: October 17, 2018
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`SHOOK, HARDY & BACON, LLP
`2555 Grand Boulevard
`Kansas City, MO 64108
`Tel: (816) 474-6550
`Fax: (816) 421-5547
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`Case IPR2017-01977
`Patent 8,755,376
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`CERTIFICATE OF SERVICE
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`I hereby certify that on October 17th, 2018 a copy of the foregoing
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`PETITIONER’S OPPOSITION TO PATENT OWNER’S MOTION TO STRIKE
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`was served on counsel of record via their email addresses of record:
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`Wayne Stacy, wayne.stacy@bakerbotts.com
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`Sarah J. Guske, sarah.guske@bakerbotts.com
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`Michelle Eber, michelle.eber@bakerbotts.com
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`Dated: October 17, 2018
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`
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`/s/ Dana E. Hardy
`Dana E. Hardy
`Paralegal for Petitioner
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