IPR2017-01977
`U.S. 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 OPPOSITION TO
`PETITIONER’S MOTION TO EXCLUDE
`
`
`U.S. 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 OPPOSITION TO
`PETITIONER’S MOTION TO EXCLUDE
`
`
`
`IPR2017-01977
`U.S. Patent No. 8,755,376
`
`I.
`
`INTRODUCTION
`Patent Owner hereby opposes Petitioner’s Motion to Exclude paragraphs 144–
`
`149 of EX2010 (Declaration of Patent Owner’s expert, Dr. Negus). Paper 37. In
`
`forming his opinions, Dr. Negus relied on an interview with Mr. John Wolthuis, one
`
`of the co-inventors of the ‘376 Patent and a Product Architect for the practicing
`
`products, to better understand the technology behind the practicing product and how
`
`the invention came about. EX2010, ¶¶144–148. Petitioner moves to exclude Dr.
`
`Negus’s expert opinions on the basis that Dr. Negus relied on hearsay from Mr.
`
`Wolthuis. See Paper 37 at 4. However, Federal Rule of Evidence 703 permits an
`
`expert to testify to an opinion that is based on otherwise inadmissible facts or data.
`
`FRE 703; Williams v. Illinois, 132 S. Ct. 2221, 2242 (2012). Petitioner fails to carry
`
`its burden to explain why Dr. Negus cannot rely on “facts or data in the case that the
`
`expert has been made aware of or personally observed” as explicitly permitted by
`
`Federal Rule of Evidence 703. See Laird Techs. v. Graftech Int’l Holdings, Inc.,
`
`IPR2014-00023, Paper 49 at 36–37 (March 25, 2015).
`
`II.
`
`DR. NEGUS’S TESTIMONY (EXHIBIT 2010) SHOULD NOT BE
`EXCLUDED
`The Federal Rules of Evidence explicitly state that experts may rely on
`
`inadmissible facts or data. FRE 703 (“If experts in the particular field would
`
`reasonably rely on those kinds of facts or data in forming an opinion on the subject,
`
`1
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`IPR2017-01977
`U.S. Patent No. 8,755,376
`
`they need not be admissible for the opinion to be admitted.”). Under Federal Rule
`
`of Evidence 703, “[a]n expert may base an opinion on facts or data in the case that
`
`the expert has been made aware of or personally observed.” Thus, the mere fact that
`
`Dr. Negus’s opinions at paragraphs 144–149 rely on an interview with Mr. Wolthuis
`
`does not render his opinions inadmissible. Instead, Petitioner must carry the burden
`
`to show that the facts Dr. Negus relied upon are not the kinds of facts or data that an
`
`expert in this field would reasonably rely on. Petitioner failed to carry that burden.
`
`Petitioner’s Motion to Exclude does not address whether an expert would
`
`reasonably rely on an interview with an engineer and architect of a product to
`
`understand the features of the product. Dr. Negus found Mr. Wolthuis, one of the
`
`co-inventors of the ‘376 Patent and a Product Architect for the practicing products,
`
`to be a “knowledgeable and reliable source” for how Patent Owner’s products
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`worked. EX2010, ¶ 145. Mr. John Wolthuis was an engineer and Product Architect
`
`who was heavily involved in the design and technical implementation of the
`
`practicing product. It is logical and reasonable for Dr. Negus to rely on Mr.
`
`Wolthuis’s technical knowledge of the practicing product to better understand how
`
`the practicing product works. Dr. Negus also independently confirmed Mr.
`
`Wolthuis’s description of the products by examining publicly-available information
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`regarding the products. Id., ¶147. Petitioner makes no allegation that the
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`2
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`IPR2017-01977
`U.S. Patent No. 8,755,376
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`information Mr. Wolthuis provided to Dr. Negus is for any reason unreliable.
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`The Board has previously held that an expert’s reliance on a WebEx with
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`Patent Owner’s engineers was proper to establish nexus between practicing products
`
`and the challenged patent. Xactware Soln’s, Inc. v. Eagle View Techs., Inc.,
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`IPR2016-00592, Paper 50 at 26–29 (PTAB Aug. 25, 2017). The same is true as to
`
`Dr. Negus’s reliance on a discussion with Mr. Wolthuis who was the Product
`
`Architect for Patent Owner’s practicing products. EX2010, ¶¶ 144–149.
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`To the extent Patent Owner challenges Dr. Negus’s understanding of the
`
`products based on information received from Mr. Wolthuis, Dr. Negus is more than
`
`qualified to understand the technology in dispute and the technical features of the
`
`practicing products. EX2010 at ¶¶ 6–26. With this expertise, Dr. Negus is more
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`than qualified to opine that Patent Owner’s Programmable Messaging and Voice
`
`products practice the challenged claims. Id. at ¶¶ 144–149.
`
`Petitioner’s allegation that Patent Owner is performing an “end-run” around
`
`the rule against hearsay presumes that this tribunal cannot discern between hearsay
`
`and Dr. Negus’s expert opinions. Coleman Cable, LLC et al. v. Simon Nicholas
`
`Richmond, IPR2014-00935, Paper 65 at 13 (PTAB Dec. 21, 2015) (“The Board is
`
`comprised of a tribunal of judges of competent legal knowledge and scientific
`
`ability. There is no jury to impress, convince, or confuse in our proceedings.
`
`3
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`IPR2017-01977
`U.S. Patent No. 8,755,376
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`Moreover, we are capable of assigning the weight to be given evidence.”); Williams
`
`v. Illinois, 567 U.S. 50, 69 (2012) (“When the judge sits as the trier of fact, it is
`
`presumed that the judge will understand the limited reason for the disclosure of the
`
`underlying inadmissible information and will not rely on that information for any
`
`improper purpose.”).
`
`Ultimately, Petitioner’s objections are directed to the weight of Dr. Negus’s
`
`declaration, not its admissibility. See Fox Factory, Inc. v. SRAM, LLC, IPR2017-
`
`00118, Paper 59 at 62 (PTAB Apr. 2, 2018) (holding a declarant had sufficient
`
`experience in the industry to offer the challenged opinions and “Patent Owner’s
`
`arguments go more to the weight we should give his testimony rather than its
`
`admissibility.”); Flir Sys., Inc. v. Leak Surveys, Inc., IPR 2014-00411, Paper 113 at
`
`4 (PTAB Sept. 3, 2015) (“[a] motion to exclude is not a vehicle for addressing the
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`weight to be given evidence.”); id. at 13–14 (“Petitioner’s basis for exclusion in
`
`reality goes to the weight we are asked to assign Dr. Hausler’s testimony.”).
`
`Notably, Petitioner does not challenge the accuracy of Dr. Negus’s analysis and
`
`opinions, nor does it contest the fact that Patent Owner’s products practice the
`
`claims.
`
`III. CONCLUSION
`For the reasons stated above, Petitioner’s motion to exclude Dr. Negus’s
`
`opinions should be denied.
`
`4
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`
`
`IPR2017-01977
`U.S. Patent No. 8,755,376
`
`October 26, 2018
`
`By: /Wayne O. Stacy/
`Wayne O. Stacy
`Reg. No. 45,125
`Lead Counsel for Patent Owner
`
`
`
`
`
`IPR2017-01977
`U.S. Patent No. 8,755,376
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. §§ 42.6(e), I hereby certify that on October 26,
`
`2018, the foregoing document was filed with the PTAB through its E2E system
`
`and 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 26, 2018
`
`Respectfully submitted,
`BAKER BOTTS L.L.P.
`
`/Wayne O. Stacy/
`Wayne Stacy
`Lead Counsel
`
`
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