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
`
`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 REPLY IN SUPPORT OF ITS
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`MOTION TO EXCLUDE EVIDENCE
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`
`
`
`
`
`
`1
`
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`Patent 8,755,376
`
`
`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 REPLY IN SUPPORT OF ITS
`
`MOTION TO EXCLUDE EVIDENCE
`
`
`
`
`
`
`
`1
`
`
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`Case IPR2017-01977
`Patent 8,755,376
`
`I.
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`INTRODUCTION
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`Contrary to Patent Owner’s assertion, Petitioner does not seek to exclude a
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`portion of Dr. Negus’s opinion because he relies on hearsay from Patent Owner’s
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`co-founder that its products practice the challenged claims. Rather, Petitioner
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`seeks to exclude the portion of Dr. Negus’s opinion in question because all it does
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`is convey these hearsay statements. Hearsay does not become admissible merely
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`because an expert relays the hearsay through an expert report. As set forth below,
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`Patent Owner is unable to identify anything other than conclusions in Dr. Negus’s
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`expert declaration to otherwise support the assertion that Patent Owner’s products
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`purportedly practice the challenged claims (as opposed to an actual analysis
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`comparing the products to the claims, which Dr. Negus failed to do). Dr. Negus’s
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`opinion is not based on sufficient facts or data, nor is it the product of reliable
`
`principles or methods—and as such, the Board should exclude paragraphs 144-149
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`of his expert declaration, EX2010, under Federal Rule of Evidence 702.
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`II. ARGUMENT
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`Critically, Patent Owner devotes just one sentence of its brief to show that
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`Dr. Negus does not just parrot back interested witness Mr. Wolthuis’s conclusion
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`that Patent Owner’s product practices the challenged claims. Specifically, Patent
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`Owner states in conclusory fashion that in paragraph 147 of his declaration Dr.
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`Negus “independently confirmed” Mr. Wolthuis’s hearsay statements that Patent
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`2
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`Case IPR2017-01977
`Patent 8,755,376
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`Owner’s product practices the challenged patent. PO Resp. at 2. But Patent
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`Owner is unable to provide any explanation. Nor could it because paragraph 147
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`does not include any analysis whatsoever. Rather, it makes the bare assertion that
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`Dr. Negus “was able to independently confirm key elements of this description of
`
`Mr. Wolthuis . . . .” EX2010 at 62, ¶ 147. This stands in stark contrast to the only
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`case Patent Owner advances in support of its position that Dr. Negus conducted an
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`analysis. In Xactware Solutions, Inc. v. Eagle View Techs., Inc., patent owner
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`provided “extensive evidence of nexus” including an expert declaration “that
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`includes a claim chart detailing where each limitation of the challenged claim is
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`found in its Twister and Render House products.” IPR2016-00592, Paper 50 at 27
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`(P.T.A.B. Aug. 25, 2017). Here, unlike in Xactware Solutions Inc., Dr. Negus
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`provides no analysis of whether Patent Owner’s product practices the challenged
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`patents and instead regurgitates the conclusions of Patent Owner’s co-founder Mr.
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`Wolthuis. Thus, Dr. Negus’ opinion should be excluded under Federal Rule of
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`Evidence 702 because it is not based on sufficient facts or data or the product of
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`reliable principles or methods.1
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`1 Patent Owner devotes its brief to the unremarkable proposition that an expert is
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`allowed to rely on facts and data in the form of hearsay testimony. PO Resp. at 1-
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`3. But that is not the issue. The issue is what Dr. Negus did with this hearsay.
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`3
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`Case IPR2017-01977
`Patent 8,755,376
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`Patent Owner asserts that Dr. Negus’s wholesale lack of analysis in
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`concluding that Patent Owner’s product practices the challenged patent goes to the
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`weight Dr. Negus’s conclusion should be given, not its admissibility, citing Fox
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`Factory, Inc. v. SRAM, LLC, IPR2017-00118, Paper 59 (PTAB Apr. 2, 2018) and
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`Flir Sys., Inc. v. Leak Surveys, Inc. and Flir Sys., Inc. v. Leak Surveys, Inc., IPR
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`2014-00411, Paper 113 (PTAB Sept. 3, 2015) in support. But neither of these
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`cases held an expert opinion admissible that merely parrots back the out-of-court
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`statements of an interested witness that a product meets the limitations of a patent.
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`In both Fox Factory, Inc. and Flir Sys., Inc., the expert had conducted an actual
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`analysis. IPR2017-00118, Paper 59 at 51 (PTAB Apr. 2, 2018); IPR 2014-00411,
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`Paper 113 at 14 (PTAB Sept. 3, 2015).
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`Lastly, Patent Owner absurdly asserts that “Petitioner does not challenge the
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`accuracy of Dr. Negus’s analysis and opinions, nor does it contest the fact that
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`Here, he did not perform an actual analysis of whether Patent Owner’s products
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`meet each and every limitation of the challenged patent. And as such, his opinion
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`should be excluded because it serves to merely pass along hearsay. Ericsson Inc.
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`v. Intellectual Ventures I LLC, IPR2014-01149, 2015 Pat. App. LEXIS 12573, *23
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`(Paper 68) (PTAB Dec. 9, 2015) (“an expert must do more than merely serve as a
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`conduit for hearsay”).
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`4
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`Case IPR2017-01977
`Patent 8,755,376
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`Patent Owner’s products practice the claims.” PO Resp. at 4. As detailed in
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`Petitioner’s reply in support of its petition, Patent Owner was unable to secure
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`statements from anyone, including both Mr. Wolthuis or Dr. Negus, that its
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`products practice each and every limitation of the challenged claims. Paper 29 at
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`16-18. So, of course, Petitioner contests that Patent Owner’s product practices the
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`challenged claims and the accuracy of Dr. Negus’s opinion concluding as much.
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`But it is black letter law that “the accuracy” of Dr. Negus’s opinion is not a basis
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`for a motion to exclude under Federal Rule of Evidence 702 and that it why
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`Petitioner did not advance this argument for purposes of the current motion. See,
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`e.g., Lapsley v. Xtek, Inc., 689 F.3d 802, 805 (7th Cir. 2012) (“A Daubert inquiry is
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`not designed to have the district judge take the place of the jury to decide ultimate
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`issues of credibility and accuracy. If the proposed expert testimony meets the
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`Daubert threshold of relevance and reliability, the accuracy of the actual evidence
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`is to be tested before the jury with the familiar tools of vigorous cross-examination,
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`presentation of contrary evidence, and careful instruction on the burden of proof.”).
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`III. CONCLUSION
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`For the reasons discussed above and in Petitioner’s motion to exclude, the
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`Board should exclude paragraphs 144-149 of Dr. Negus’s expert declaration
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`EX2010.
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`5
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`Case IPR2017-01977
`Patent 8,755,376
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`Dated: November 2, 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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`Respectfully submitted,
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`
`
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`/s/ Chrissie Guastello
`Chrissie Guastello (Reg. No. 58,716)
`Attorney for Petitioner
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`6
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`Case IPR2017-01977
`Patent 8,755,376
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`CERTIFICATE OF SERVICE
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`I hereby certifying that on November 2, 2018, a copy of the foregoing
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`PETITIONER’S REPLY IN SUPPORT OF ITS MOTION TO EXCLUDE
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`EVIDENCE 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: November 2, 2018
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`/s/ Dana E. Hardy
`Dana E. Hardy
`Paralegal for Petitioner
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`7
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