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 REPLY TO PETITIONER’S OPPOSITION TO
`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 REPLY TO PETITIONER’S OPPOSITION TO
`MOTION TO EXCLUDE
`
`
`
`Case IPR2017-01977
`Patent No. 8,755,376
`
`I. REPLY ARGUMENTS
`A.
`Exhibits 1017 and 1018 are inadmissible hearsay
`Exhibits 1017 and 1018 are both emails from Petitioner’s co-founder Stacy
`
`Stubblefield and are inadmissible hearsay. Petitioner argues that Exhibit 1018 is
`
`not hearsay because it “is offered for the non-hearsay purpose of actual intent.”
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`Paper 42 at 3. Petitioner’s argument, however, fails to properly apply the rules of
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`hearsay evidence. At best, Petitioner’s Reply relies on the statements contained in
`
`Exhibit 1018 as facts—relying on the truth of the matter contained in the
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`statements. Troublingly, Petitioner omits from its opposition to the motion to
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`exclude the annotations to Exhibit 1018 from its Reply that confirm that it is only
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`relying on Exhibit 1018 for the truth of those annotated statements. Paper 30 at
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`24-25. Even now, Petitioner argues that Exhibit 1018 shows the alleged truth of
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`the statements that Petitioner’s “main SMS provider is completely down” and that
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`Petitioner was “quickly integrating Twilio in [sic] to cover during the outage,” and
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`separately that Petitioner sought to execute an NDA “ASAP.” Paper 42 at 3-4.
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`Thus, Petitioner’s arguments improperly rely the statements from Exhibit 1018 for
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`their truth.
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`Petitioner’s reliance on Catalan v. GMAC Mortg. Corp., 629 F.3d 676, 694
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`(7th Cir. 2011), is misplaced. Petitioner argues that this is an analogous case
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`because a “non-hearsay statement that a bank would not approve a loan until
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`Case IPR2017-01977
`Patent No. 8,755,376
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`foreclosure issues are resolved … was admissible to show the bank’s intent.”
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`Paper 42 at 5. However, in that case, “[a witness] testified that a [bank] loan
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`officer told her that the … loan applications would not be approved until their
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`foreclosure was removed.” Catalan, 629 F.3d at 694. Those statements expressly
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`conveyed the bank’s intent to deny the loan until the foreclosure was removed,
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`rather than only reciting statements for their truth, such as statements indicating
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`whether the bank denied or approved the loan application. In contrast, none of Ms.
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`Stubblefield’s statements found in Exhibit 1018 convey what her intent was.
`
`Petitioner further argues that “other reasons” support finding that certain
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`statements in Exhibit 1018 are not hearsay (see Paper 42 at 8-9). The “other
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`reasons” also fail. For “[d]o we have an NDA?,” Petitioner does not rely on the
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`statement in its Reply, rendering the “other reasons” irrelevant to the exclusion of
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`the Exhibit. Further, the unrelied-upon statement is also irrelevant to the case due
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`to the lack of any citation to it and should be excluded under FRE 401-402 and 37
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`C.F.R. § 42.104(b)(5). For “[i]f no, we’d like to get [an NDA] executed ASAP, if
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`possible,” Petitioner contends the statement is a command or request. The quote is
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`not a command or request—it is not telling or asking anyone to do anything.
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`Petitioner does not identify any cases finding similar statements to be commands
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`or requests. Rather, it is a statement that does not fall under any exclusion or
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`Case IPR2017-01977
`Patent No. 8,755,376
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`exception to FRE 801.
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`For Exhibit 1017, neither Petitioner’s Reply nor its opposition to the motion
`
`to exclude explain what, if anything, Petitioner relies on the Exhibit for such that it
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`constitutes a non-hearsay “admission” under FRE 801(d)(2). Petitioner does not
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`offer the statements in the email in its Reply as evidence of anything—let alone as
`
`evidence against Patent Owner.
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`No hearsay exception exists for Exhibit 1018
`B.
`Petitioner argues that even if Exhibit 1018 is hearsay, it is admissible under
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`the exceptions of FRE 803(3) and/or FRE 807. Paper 42 at 5-8. Regarding FRE
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`803(3), Petitioner argues that the statements are admissible “to show intent or
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`motive.” Id. However, FRE 803(3) specifically excludes “a statement of memory
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`or belief to prove the fact remembered.” FRE 803(3). As discussed above,
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`Petitioner relies on Ms. Stubblefield’s statements that are not directed to her state
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`of mind regarding any intent to enter into the NDA to gain access to Patent
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`Owner’s confidential information. Rather, the statements and how Petitioner relies
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`on them are directed to her assertion of certain facts, such as her assertion that the
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`“main SMS provider is down.” Exhibit 1018 at 1. The other portion of Exhibit
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`1018 cited by Petitioner in its opposition on page 6, reflecting a statement by
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`Patent Owner’s employee, is not relied on at all in its Reply and is therefore
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`irrelevant to this case and does not save the statements on which Petitioner does
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`Case IPR2017-01977
`Patent No. 8,755,376
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`rely. Moreover, there is nothing in Patent Owner employee’s statement that
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`reflects Ms. Stubblefield’s motives. The statement relates to Petitioner’s use of
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`Patent Owner’s products. FRE 803(3) provides no valid exception for admitting
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`Exhibit 1018 into evidence.
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`Further, Petitioner provides no suitable reason for applying the residual
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`exception of FRE 807 to Exhibit 1018. Specifically, Petitioner asserts: (1) the
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`“statements have circumstantial guarantees of trustworthiness;” (2) the exhibit “is
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`offered as evidence of a material fact;” and (3) the exhibit “is more probative on
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`intent than any other evidence that the proponent can obtain through reasonable
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`efforts.” Paper 42 at 7. However, as Patent Owner discussed in its Motion to
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`Exclude, Ms. Stubblefield is a co-founder of Petitioner and is currently employed
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`by Petitioner. She is an available declarant who could have provided direct
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`testimony, yet Petitioner chose to rely on hearsay so it could offer up its own
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`interpretation of her statements while avoiding cross-examination. There is no
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`corroborating support for the relied-upon statements. And to the extent any of
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`Petitioner’s assertions of Ms. Stubblefield’s motives in 2010 have merit, they
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`could have offered direct testimony of Ms. Stubblefield in this proceeding, making
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`her available to Patent Owner for cross-examination. As such, the Exhibit is not
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`more probative than any other evidence easily available to Petitioner and does not
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`Case IPR2017-01977
`Patent No. 8,755,376
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`best serve the purposes of these rules and the interests of justice under FRE 807.
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`Petitioner claims that Ms. Stubblefield’s statement that she does not “see [an
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`NDA] in my records” a present-sense impression, but Petitioner offers no evidence
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`that Ms. Stubblefield actually wrote the statement at the time of or immediately
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`after the described event such that FRE 803(1) would apply. Paper 42 at 9.
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`Exhibit 1019 is irrelevant, prejudicial, and untimely
`C.
`As explained in Patent Owner’s Motion to Exclude, because Exhibit 1019 is
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`untimely and outside the scope of proper reply, Patent Owner filed a motion to
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`strike Exhibit 1019 and the related portions of Petitioner’s Reply. See Paper 35 at
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`4-5. For the same reasons, the untimely, opinions in Ex. 1019 render the Exhibit
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`irrelevant under FRE 401-402 and unduly prejudicial under FRE 403.
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`Exhibit 2004 as cited in Petitioner’s Reply Brief is incomplete
`D.
`Exhibit 2004 as relied upon in Petitioner’s Reply is incomplete under FRE
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`106. See Paper 38 at 3. Without the benefit of the full claim construction hearing
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`transcript relating to the term “REST API” (Exhibit 2004 at 16-42), the statements
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`from Exhibit 2004 cited in Petitioner’s Reply at page 8 (Exhibit 2004 at 35:19-
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`36:1) should be excluded.
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`Case IPR2017-01977
`Patent No. 8,755,376
`
`Date: November 2, 2018
`
`Respectfully submitted,
`BAKER BOTTS L.L.P.
`
`/Wayne O. Stacy/
`Wayne Stacy
`Lead Counsel
`
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`Case IPR2017-01977
`Patent No. 8,755,376
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`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. §§ 42.6(e), I hereby certify that on November 2,
`
`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: November 2, 2018
`
`Respectfully submitted,
`BAKER BOTTS L.L.P.
`
`/Wayne O. Stacy/
`Wayne Stacy
`Lead Counsel
`
`1
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