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 OPPOSITION TO PATENT OWNER’S
`MOTION TO EXCLUDE EVIDENCE
`
`
`
`
`
`________________________________
`
`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 OPPOSITION TO PATENT OWNER’S
`MOTION TO EXCLUDE EVIDENCE
`
`
`
`
`
`Case IPR2017-01977
`Patent 8,755,376
`
`
`A. EX1017 is a non-hearsay party admission.
`
`EX1017 includes only statements by Patent Owner via its co-founder Mr.
`
`Cooke. Thus, it is a non-hearsay party admission and cannot properly be excluded.
`
`FED. R. EVID. 801(d)(2).
`
`B.
`
`EX1018 is non-hearsay and/or hearsay but admissible under
`multiple hearsay exceptions.
`
`The key aspects of EX1018 are reproduced below.
`
`
`
`1
`
`
`
`Case IPR2017-01977
`Case IPR2017-01977
`Patent 8,755,376
`Patent 8,755,376
`
`
`On Feb 28, 2018, at 5:55 PM, Stacy StubbleField wrote:
`
`Evan,
`
`VVVVVVVVVVVVVVVVVVVVVVVVVVVVV
`
`Do we have an NDfi on File with Tnilio?
`records.
`If
`no, we‘d like to get one executed ASAP if possible.
`
`I don't see one in my
`
`Thanks,
`Stacy
`
`---v~0riginal Message -----
`Fron: Evan Cooke [nailto:—]
`Sent: Sunday, February 28, 2810 4:16 PM
`To: Stacy Stubblefield
`cc:—
`Subject: Re: Tuilio account Activity
`
`Thanks for the update Stacy. Let us know if there is anything we can
`do to help.
`
`My nobile number is— if you have any questions day or
`night today as you are developing.
`
`Cheers,
`-Evan
`
`On Feb 28, zuio, at 4:12 PM, Stacy Stubblefield wrote:
`
`Hi Evan,
`
`Yes, we just added $1?59 to the account. Our main SHS provider is
`completely down, and we're quickly integrating Tuilio in to cover
`during the
`outage. You can expect to see najor traffic over the next few days.
`
`I configured autorecharge on our account. Let me know if you need
`anything
`from us.
`
`
`
`Thanks,
`Stacy Stubblefield
`
`TeleSign Corp.
`9454 Hilshire Blvd., Suite 525
`Beverly Hills, CA 95212
`http:!!uww.Te1e5ign.c0l
`
`[page break removed]
`
`—————Original Hessage—————
`From: Evan Cooke [mailto:—]
`Sent: Sunday, February 23, 2810 3:59 PM
`To:
`Subject: Tuilio Account Activity
`
`Hi Stacy,
`
`He saw a few transactions on your Tuilio account and wanted to
`confir-
`the activity and see if there was anything we could do to help if you
`are expecting a large campaign.
`
`Cheers,
`~Evan
`
`
`
`EX1018, pp. 1-2.
`EX1018, pp. 1—2.
`
`2
`2
`
`
`
`
`
`Case IPR2017-01977
`Patent 8,755,376
`
`
`1.
`EX1018 is offered for the non-hearsay purpose of actual
`intent, rebutting an intent-to-copy allegation.
`
`Patent Owner’s Response makes the reckless and bogus allegation that:
`
`“Petitioner’s co-founder Stacy Stubblefield signed an NDA with Patent Owner in
`
`2010 to gain access to its technology [.]” POR (Paper 26) 58. Patent Owner hid the
`
`context of the NDA’s execution from the Board and now does not want the Board
`
`to see that context. In making its allegation, Patent Owner characterized the intent
`
`of Ms. Stubblefield. Petitioner offers EX1018 for the non-hearsay purpose of
`
`helping to show her actual intent: to obtain an NDA to protect the information
`
`Petitioner TeleSign would send to Patent Owner if Petitioner were to be Patent
`
`Owner’s customer.
`
`EX1018 provides context in which the NDA was requested and executed.
`
`Namely, Ms. Stubblefield did not, in fact, sign the NDA for the purpose of gaining
`
`access to Patent Owner’s technology as Patent Owner contends. Rather, EX1018
`
`shows that Ms. Stubblefield understood TeleSign’s main SMS provider to be
`
`“completely down,” and that TeleSign was attempting to “quickly integrate” Twilio
`
`to “cover the outage,” leading to requesting an NDA “ASAP.” EX1018 at 1. This
`
`context shows that Ms. Stubblefield’s intent of entering the NDA had nothing to do
`
`with attempting to gain access to Patent Owner’s confidential information. Rather,
`
`her intent was to ensure that whatever information Petitioner TeleSign was to
`
`
`
`3
`
`
`
`Case IPR2017-01977
`Patent 8,755,376
`
`provide to Patent Owner would be protected via the NDA, which is further
`
`confirmed by the last two (and unreciprocated) bullets of the NDA identifying
`
`confidential information:
`
`EX2041 at 1.
`
`
`
`The NDA was executed on the very same day as the emails (February 28,
`
`2010):
`
`EX2041 at 1.
`
`
`
`EX1018 chronicles written email correspondence between the parties on the
`
`exact same day, long before any lawsuit between them existed. Patent Owner does
`
`not dispute that EX1018 is an email chain between the parties. Paper 38 (Mot. to
`
`Exclude), p. 2. And Mr. Evan Cooke is actually a co-founder and named inventor
`
`of the ’376 patent (see EX1001, p. 1). Patent Owner does not dispute the accuracy
`
`of the email chain or that it is a fair and accurate representation of what it purports
`
`to be. Patent owner did not and does not object to EX1018’s authenticity or
`
`relevance. And certainly the comments made on behalf of Patent Owner by Mr.
`
`
`
`4
`
`
`
`Case IPR2017-01977
`Patent 8,755,376
`
`Cooke are party admissions, and not hearsay at all under Federal Rule of Evidence,
`
`which prevents excluding the whole of EX1018.
`
`The portions of EX1018 made my Ms. Stubblefield are being offered for the
`
`non-hearsay purpose of showing her intent and contradicting Patent Owner’s
`
`outlandish assertion that Ms. Stubblefield entered into the NDA to try to gain access
`
`to Patent Owner’s technology. Irrespective of the truth of the underlying facts giving
`
`rise to Ms. Stubblefield’s motive, EX1018 is admissible to show that her motivation
`
`to obtain the NDA because TeleSign would be sending confidential customer
`
`information to Patent Owner. This is analogous to a loan officer’s non-hearsay
`
`statement that a bank would not approve a loan until foreclosure issues are resolved,
`
`which was admissible to show the bank’s intent. Catalan v. GMAC Mortg. Corp.,
`
`629 F.3d 676, 694 (7th Cir. 2011) (“The loan officer’s statement to Morris was not
`
`hearsay. It was not an assertion of a factual matter but a statement describing the
`
`bank’s collective intentions: we won’t approve a loan until you get the foreclosure
`
`issue resolved.”) (emphasis added).
`
`2.
`Even if hearsay, EX1018 is admissible under FRE 803(3) to
`show motive and intent.
`
`Even if Ms. Stubblefield’s comments were considered hearsay, they are
`
`admissible under Fed. R. Evid. 803(3) to show intent or motive. “Out-of-court
`
`statements by a customer or employee may be admissible under Rule 803(3) to show
`
`
`
`5
`
`
`
`Case IPR2017-01977
`Patent 8,755,376
`
`intent or motive.” Packgen v. Berry Plastics Corp., 847 F.3d 80, 90 (1st Cir. 2017).
`
`TeleSign was a Twilio customer. Patent Owner’s statement proves this: “We saw
`
`a few transactions on your Twilio account and wanted to confirm the activity . . . .”
`
`EX1018 at 2 (statement by Mr. Cooke). TeleSign’s intent or motive to enter the
`
`NDA was to protect the information TeleSign would be sending Twilio (not the other
`
`way around), which, as mentioned, is further confirmed by the last two bullets of the
`
`NDA identifying confidential information:
`
`EX2041 at 1.
`
`
`
`Hearsay evidence is allowed in this context under the mental-state exception,
`
`such as when a customer’s motive related to business transactions is relevant. J.F.
`
`Feeser, Inc. v. Serv-A-Portion, Inc., 909 F.2d 1524, 1535 (3d Cir. 1990) (“Although
`
`the district court disallowed a considerable part of this testimony as hearsay, it
`
`acknowledged that some of the excluded depositions would be admissible under
`
`Fed.R.Evid. 803(3) if the customer’s motive for not purchasing from Feeser was
`
`relevant to this action.”) (emphasis added). Here, the same exception should apply
`
`given that the email exchange and NDA execution occurred on the same day.
`
`
`
`
`
`
`
`6
`
`
`
`Case IPR2017-01977
`Patent 8,755,376
`
`
`Even if hearsay, EX1018 is admissible under FED. R. EVID.
`
`3.
`807.
`
`The main reason to avoid considering hearsay is that out of court statements
`
`are unreliable. But here, the contents of EX1018 are reliable given a unique set of
`
`facts: the exchange is in writing, it is between the parties, it occurs on the same day
`
`the NDA was executed, and no party disputes its authenticity. Thus, alternatively,
`
`EX1018 is admissible under the residual hearsay exception of Fed. R. Evid. 807.
`
`Trial courts are (and this Board is) accorded wide discretion in applying the residual
`
`hearsay exception. Apple v. Virnetx, IPR2016-00332, Paper No. 21 at 81 (citing Doe
`
`v. United States, 976 F.2d 1071, 1076–77 (7th Cir. 1992), cert. denied 510 U.S. 812
`
`(1993); United States v. North, 910 F.2d 843, 909 (D.C. Cir. 1990), cert. denied 500
`
`U.S. 941 (1991)).
`
`First, Ms. Stubblefield’s statements have circumstantial guarantees of
`
`trustworthiness given that they sit among statements made by Patent Owner itself
`
`and correlate with and provide context to Mr. Cooke’s statements in a trustworthy
`
`statement/response fashion. Moreover, they occur on the exact same day as the
`
`executed NDA. Second, EX1018 is offered as evidence of a material fact: why
`
`Petitioner sought the NDA and namely, not for the purpose of gaining access to
`
`Patent Owner’s confidential information. Third, EX1018 is more probative on intent
`
`than any other evidence that the proponent can obtain through reasonable efforts.
`
`
`
`7
`
`
`
`Case IPR2017-01977
`Patent 8,755,376
`
`EX1018 is even more probative than a declaration or deposition, which would have
`
`implicated a person’s memory of events more than eight years ago. Written,
`
`contemporary correspondence is more probative. The main point of such a
`
`declaration would have been for authenticity, which could not be, and is not in
`
`question. Finally, admitting EX1018 is in the interests of justice because otherwise
`
`Patent Owner’s unsubstantiated allegation of Ms. Stubblefield’s supposed ulterior
`
`motive would stand unrebutted even though no one is disputing the accuracy of
`
`EX1018. The Board should be allowed to weigh the evidence of EX1018 against
`
`the mere argument of Patent Owner’s counsel.
`
`4.
`
`EX1018 is admissible for still other reasons.
`
`Contrary to Patent Owner’s assertion, each sentence of Ms. Stubblefield’s
`
`email to Mr. Cooke—“Do we have an NDA on file with Twilio? I don’t see one in
`
`my records. If no, we’d like to get one executed ASAP if possible.”—is either non-
`
`hearsay or falls within one of the hearsay exceptions.
`
`The first sentence of the email—“Do we have an NDA on file?”(EX1018 at
`
`1)—is a question. “An inquiry is not an ‘assertion,’ and accordingly is not and
`
`cannot be a hearsay statement.” U.S. Bank Nat. Ass’n v. PHL Variable Life Ins. Co.,
`
`112 F. Supp. 3d 122, 146 (S.D.N.Y. 2015); see also United States v. Love, 706 F.3d
`
`832, 840 (7th Cir. 2013) (finding that “questions are not ‘statements’ and therefore
`
`are not hearsay.”); United States v. Coplan, 703 F.3d 46, 84 (2d Cir. 2012)
`
`
`
`8
`
`
`
`Case IPR2017-01977
`Patent 8,755,376
`
`(highlighting that “the questions posed by the IRS agent were not hearsay, because
`
`as a matter of law, questions are not ‘assertions’ within the meaning of Rule 801.”);
`
`United States v. Lewis, 902 F.2d 1176, 1179 (5th Cir. 1990) (“The questions asked
`
`by the unknown caller, like most questions and inquiries, are not hearsay because
`
`they do not, and were not intended to, assert anything.”)
`
`The second sentence of the email—“I don’t see one in my records.”(EX1018
`
`at 1)—falls within the present-sense-impression exception to the hearsay rule.
`
`Federal Rule of Evidence 803(1) defines a “present sense impression” as “[a]
`
`statement describing or explaining an event or condition, made while or immediately
`
`after the declarant perceived it.” FED. R. EVID. 803. This second sentence of Ms.
`
`Stubblefield’s email is describing what she had just perceived in examining her
`
`records, namely that those records were devoid of evidence that Petitioner and Patent
`
`Owner had entered into a non-disclosure agreement as of February 28, 2010.
`
`The last sentence of the email—“If no, we’d like to get one executed ASAP
`
`if possible.”(EX1018 at 1)—is a command or request. Commands and requests are
`
`not hearsay because they are not assertions of fact. Baines v. Walgreen Co., 863
`
`F.3d 656, 662 (7th Cir. 2017) (quoting United States v. White, 639 F.3d 331, 337
`
`(7th Cir. 2011)) (“A command is not hearsay because it is not an assertion of fact.”);
`
`Jurado v. Davis, No. 08CV1400 JLS (JMA), 2018 WL 4405418, at *76 (S.D. Cal.
`
`Sept. 17, 2018) (“Because a request, by itself, does not assert the truth of any fact, it
`
`
`
`9
`
`
`
`Case IPR2017-01977
`Patent 8,755,376
`
`cannot be offered to prove the truth of the matter stated.”); United States v. Garrity,
`
`No. 3:15-CV-243(MPS), 2018 WL 2676891, at *2 (D. Conn. June 4, 2018) (noting
`
`that “other documents consist of statements that are directions or requests and thus
`
`are not hearsay.” (emphasis added)); United States v. Ramos-Guerrero, No. 13-CR-
`
`464, 2016 WL 3067801, at *5 (N.D. Ill. May 31, 2016) (holding that “[a]n order . .
`
`. is not capable of being true or false, and thus it is not offered for the truth of any
`
`matter asserted.”).
`
`C. EX1019.
`
`1.
`
`Patent Owner’s reason for excluding EX1019 is not a proper
`basis for an exclusion motion
`
`Patent Owner moves to exclude the supplemental expert declaration of
`
`Petitioner’s expert because according to Patent Owner the opinions set forth in this
`
`declaration could have been raised in the Petition. PO Mot. to Excl. at 3. This is an
`
`argument that Petitioner’s supplemental declaration exceeds the scope of reply
`
`testimony. As the Board has highlighted, “[a] motion to exclude is not a proper
`
`vehicle for a party to raise the issue of testimony in a rebuttal declaration exceeding
`
`the permissible scope of reply testimony.” Google Inc. v. Visual Real Estate, Inc.,
`
`IPR2014-01341, 2016 WL 702987, at *20 (Feb. 19, 2016); Activision Blizzard, Inc.
`
`v. Acceleration Bay, LLC, IPR2015-01953, 2017 WL 1418497, at *30 (Mar. 23,
`
`2017) (same). The proper mechanism would be a motion to strike, which Patent
`
`Owner has already filed and which is an extreme request rarely granted. Paper No.
`
`
`
`10
`
`
`
`Case IPR2017-01977
`Patent 8,755,376
`
`35. Moreover, as Petitioner highlights in depth in its opposition to Patent Owner’s
`
`motion to strike (Paper No. 40 at 5), EX1019 properly rebuts Patent Owner’s
`
`proposed construction for “REST API,” which Patent Owner advances for the first
`
`time in its Patent Owner Response.
`
`2.
`
`A reply brief is not evidence and as such is not a proper basis
`for a motion to exclude
`
`Patent Owner asks the Board to exclude that portion of Petitioner’s reply brief
`
`relying on EX2004 – the claim construction hearing transcript in the underlying
`
`litigation between the parties – as incomplete under Federal Rule of Evidence 106
`
`because it does not like the testimony Petitioner highlights. PO Mot. to Excl. at 3.
`
`But a reply brief is not evidence under 37 C.F.R. § 42.63. Indeed, 37 C.F.R. § 42.63
`
`defines evidence as “affidavits, transcripts of depositions, documents, and things,”
`
`filed in the form of an exhibit. As the Board has made clear, “[a] motion to exclude
`
`evidence is not the proper vehicle . . . to ask for a paper such as a reply to be stricken
`
`from the record.” Luye Pharma Group Ltd. v. Alkermes Pharma Ireland Ltd.,
`
`IPR2016-01096, 2017 WL 6210939, at *15 (Nov. 28, 2017) (dismissing Patent
`
`Owner’s motion to exclude as improper). Petitioner’s Reply Brief is not evidence
`
`and as such is not a proper basis for a motion to exclude.
`
`In essence, Patent Owner requests that the Board consider additional portions
`
`of the claim-construction hearing transcript under Federal Rule of Evidence 106 or
`
`
`
`11
`
`
`
`Case IPR2017-01977
`Patent 8,755,376
`
`else Petitioner’s reply should be excluded.1 This is simply not a proper basis to
`
`exclude under Federal Rule of Evidence 106 because EX2014 contains the entire
`
`hearing transcript. See, e.g., Generico, LLC v. Dr. Falk Pharma GmbH, IPR2016-
`
`00297, 2017 WL 2211672, at *24 (May 19, 2017) (“Patent Owner's request that the
`
`Board consider additional portions of Dr. Safdi’s testimony under F ED. R. EVID. 106
`
`is not properly the subject of a motion to exclude evidence. The entire deposition
`
`transcript is already in the record as Exhibit 1056.”). The Board should be allowed
`
`to properly consider this content when rendering its final written decision, not
`
`exclude it.
`
`D. EX1020
`
`Petitioner’s first sentence of its motion purports to move to exclude EX1020.
`
`But its motion does not address EX1020 in substance or provide any basis to exclude
`
`it. Petitioner regards its inclusion as typo. EX1020 is a sworn declaration of Patent
`
`Owner’s own claim construction expert from the underlying litigation. Petitioner
`
`cannot guess the supposed bases to exclude this sworn testimony, and thus cannot
`
`
`1 “If a party introduces all or part of a writing or recorded statement, an adverse party
`
`may require the introduction, at that time, of any other part — or any other writing
`
`or recorded statement — that in fairness ought to be considered at the same time.”
`
`FED. R. EVID. 106.
`
`
`
`12
`
`
`
`Case IPR2017-01977
`Patent 8,755,376
`
`rebut silence, which cannot be cured in Reply. Even so, EX1020 is admissible to
`
`show prior inconsistencies in Patent Owner’s statements, such as 1) taking a narrow
`
`view on what an API is or could be used for (Paper No. 26 at 15) compared to a
`
`prior, inconsistent statement indicating a broad understanding and 2) showing that
`
`Patent Owner was aware of its own claim construction’s expert’s opinion regarding
`
`what “REST API” meant when it filed its preliminary response.
`
`Respectfully submitted,
`
`
`/s/ Jesse J. Camacho
`Jesse J. Camacho (Reg. No. 51,258)
`Attorney for Petitioner
`
`
`Dated: October 26, 2018
`
`
`
`
`SHOOK, HARDY & BACON, LLP
`2555 Grand Boulevard
`Kansas City, MO 64108
`Tel: (816) 474-6550
`Fax: (816) 421-5547
`
`
`
`
`
`
`
`
`
`
`
`13
`
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`Case IPR2017-01977
`Patent 8,755,376
`
`
`CERTIFICATE OF SERVICE
`
`
`
`
`I hereby certifying that on October 26, 2018 a copy of the foregoing
`
`PETITIONER’S OPPOSITION TO PATENT OWNER’S MOTION TO
`
`EXCLUDE EVIDENCE 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 26, 2018
`
`/s/ Dana E. Hardy
`Dana E. Hardy
`Paralegal for Petitioner
`
`
`
`
`
`
`
`14
`
`
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