Declaration of Michael Shamos
`Petition for Inter Partes Review of
`U.S. Patent No. 8,462,920
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`Twilio Inc.
`Petitioner
`
`v.
`
`Telesign Corporation
`Patent Owner
`
`Patent No. 8,462,920
`Filing Date: October 5, 2006
`
`TITLE: REGISTRATION, VERIFICATION AND NOTIFICATION SYSTEM
`
`DECLARATION OF MICHAEL SHAMOS, PH.D.
`
`Inter Partes Review No. 2016-00450
`
`
`
`
`
`
`
`TWILIO INC. Ex. 1002 Page 1
`
`

`
`TABLE OF CONTENTS
`
`PAGE
`
`I. 
`
`II. 
`
`INTRODUCTION AND QUALIFICATIONS .............................................. 1 
`A. 
`Education .............................................................................................. 1 
`B. 
`Career ................................................................................................... 1 
`C.  Materials Considered ............................................................................ 3 
`LEGAL PRINCIPLES USED IN THE ANALYSIS ..................................... 4 
`A. 
`Person Having Ordinary Skill in the Art .............................................. 4 
`B. 
`Prior Art ................................................................................................ 8 
`C. 
`Identification of Combinations of Prior Art ....................................... 10 
`D. 
`Broadest Reasonable Interpretations .................................................. 11 
`III.  THE ’920 PATENT ...................................................................................... 14 
`A.  Overview of the ’920 Patent ............................................................... 14 
`B. 
`Priority of the ’920 Patent .................................................................. 15 
`IV.  STATE OF THE ART OF THE RELEVANT TECHNOLOGY AT
`THE TIME OF THE ALLEGED INVENTION .......................................... 17 
`B. 
`Out-of-Band Two Factor Verification Messages ............................... 17 
`C. 
`Notification Events ............................................................................. 21 
`V.  MOTIVATION TO COMBINE ................................................................... 21 
`VI.  ALL PETITIONED CLAIMS ARE UNPATENTABLE ............................ 23 
`A. 
`Independent Claim 1: Ground 1 ......................................................... 23 
`(a)  Claim 1 preamble - A verification and notification
`process, comprising of: ......................................................... 23 
`(b)  Element 1[a] – receiving information responsive to at
`least part of a registration form that is presented to
`the registrant on a web-site, the received information
`including at least one registrant electronic contact ............ 29 
`(c)  Element 1[b] – verifying a received registrant
`electronic contact, wherein verifying the received
`registrant electronic contact includes: ................................. 31 
`(d)  Element 1[b][i] – establishing a first telephonic
`connection with the registrant using the received
`registrant electronic contact .................................................. 32 
`
`-ii-
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`TWILIO INC. Ex. 1002 Page 2
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`

`
`TABLE OF CONTENTS
`CONTINUED
`
`PAGE
`
`(f) 
`
`(e)  Element 1[b][ii] – communicating a first
`communicated verification code to the registrant
`through the first telephonic connection; and ...................... 34 
`Element 1[b][iii] – receiving a first submitted
`verification code after it is entered by the registrant
`via the web-site ....................................................................... 36 
`(g)  Element 1[b][iv] – and verifying the received
`registrant electronic contact if the first submitted
`verification code is the same as the first
`communicated verification code ........................................... 38 
`(h)  Element 1[c] – establishing a notification event
`associated with the registrant ............................................... 40 
`Element 1[d] – identifying an occurrence of the
`established notification event ................................................ 51 
`Element 1[e] – after identifying the occurrence of the
`established notification event, re-verifying the
`registrant electronic contact, wherein re-verifying
`includes: .................................................................................. 53 
`(k)  Element 1[e][i] – establishing a second telephonic
`connection with the registrant using the verified
`registrant electronic contact; ................................................ 54 
`Element 1[e][ii] – communicating a second
`communicated verification code to the registrant
`through the second telephonic connection; ......................... 61 
`(m)  Element 1[e][iii] – receiving a second submitted
`verification code that is entered by the registrant via
`the web-site; and..................................................................... 63 
`(n)  Element 1[e][iv] – re-verifying the registrant
`electronic contact if the second submitted verification
`code is the same as the second communicated
`verification code. .................................................................... 66 
`Independent Claim 1: Ground 2 (Bennett + Thoursie) ...................... 68 
`
`(i) 
`
`(j) 
`
`(l) 
`
`B. 
`
`
`
`
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`-iii-
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`TWILIO INC. Ex. 1002 Page 3
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`

`
`TABLE OF CONTENTS
`CONTINUED
`
`PAGE
`
`(a)  Element 1[e][i] – establishing a second telephonic
`connection with the registrant using the verified
`registrant electronic contact; ................................................ 69 
`(b)  Element 1[e][ii] – communicating a second
`communicated verification code to the registrant
`through the second telephonic connection; ......................... 72 
`(c)  Element 1[e][iii] – receiving a second submitted
`verification code that is entered by the registrant via
`the web-site; and..................................................................... 73 
`(d)  Element 1[e][iv] – re-verifying the registrant
`electronic contact if the second submitted verification
`code is the same as the second communicated
`verification code. .................................................................... 74 
`Claim 2 – Grounds 1 and 2 ................................................................. 76 
`(a)  The process of claim 1, wherein the at least one
`registrant electronic contact comprises at least one
`registrant telephone number. ................................................ 76 
`Claim 3 – Grounds 1 and 2 ................................................................. 76 
`(a)  The process of claim 2, wherein telephonic
`connections are established through a registrant
`telephone number. .................................................................. 76 
`Claim 4 – Grounds 1-4 ....................................................................... 78 
`(a)  The process of claim 2 further comprising: notifying
`the registrant of the occurrence of the established
`notification event by establishing a telephonic
`connection with the registrant via a registrant
`electronic contact.................................................................... 78 
`(i)  Grounds 1 & 2 (Bennett): ................................. 78 
`(ii)  Grounds 3 & 4 (Rolfe): ..................................... 81 
`Claim 5 – Grounds 1-4 ....................................................................... 84 
`
`C. 
`
`D. 
`
`E. 
`
`F. 
`
`
`
`
`
`
`-iv-
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`TWILIO INC. Ex. 1002 Page 4
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`

`
`TABLE OF CONTENTS
`CONTINUED
`
`PAGE
`
`(a)  The process of claim 4 wherein notifying the
`registrant comprises establishing a telephonic
`connection with the registrant via a registrant
`telephone number upon the occurrence of the
`established notification event. ............................................... 84 
`(ii)  Grounds 1 & 2 (Bennett): ................................. 84 
`(iii)  Grounds 3 & 4 (Rolfe): ..................................... 85 
`Claim 6 – Grounds 1 and 2 ................................................................. 86 
`(a)  The process of claim 2, wherein establishing a first
`telephonic connection with the registrant comprises
`sending the registrant an electronic message using the
`registrant telephone number. ................................................ 86 
`Claim 7 – Grounds 1 and 2 ................................................................. 87 
`(a)  The process of claim 6, wherein the electronic
`message includes the first communicated verification
`code or provides means to obtain the first
`communicated verification code. .......................................... 87 
`Claim 8 – Grounds 1 and 2 ................................................................. 88 
`(a)  The process of claim 6, wherein the electronic
`message comprises a text message. ....................................... 88 
`Claim 9 – Grounds 1 and 2 ................................................................. 89 
`(a)  The process of claim 8, wherein the text message is a
`short message service (SMS) message sent to a
`registrant’s telephone or SMS-enabled device. ................... 89 
`Claim 10 – Grounds 1 and 2 ............................................................... 90 
`(a)  The process of claim 6, wherein the electronic
`message comprises a voice message. ..................................... 90 
`Claim 13 – Grounds 1-2, 5-6 ............................................................. 90 
`
`G. 
`
`H. 
`
`I. 
`
`J. 
`
`K. 
`
`L. 
`
`
`
`
`
`
`-v-
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`TWILIO INC. Ex. 1002 Page 5
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`

`
`TABLE OF CONTENTS
`CONTINUED
`
`PAGE
`
`N. 
`
`O. 
`
`P. 
`
`(a)  The process of claim 1, wherein the website informs
`the registrant that an electronic message is being sent
`to the registrant via a registrant provided telephone
`number. ................................................................................... 90 
`(i)  Grounds 1 and 2 (Bennett): .............................. 90 
`(ii)  Grounds 5 and 6 (Woodhill): ........................... 93 
`M.  Claim 17 – Grounds 1 and 2 ............................................................... 97 
`(a)  The process of claim 1, further comprising comparing
`information provided by the registrant in the
`registration form to a database containing personal
`identifying information. ......................................................... 97 
`Claim 18 – Grounds 1 and 2 ............................................................... 99 
`(a)  The process of claim 17, wherein the personal
`identifying information includes at least one of: a
`name, a telephone number, an address, an email
`address, or a social security number. ................................... 99 
`Claim 19 – Grounds 1 and 2 ............................................................. 100 
`(a)  The process of claim 1, wherein the established
`notification event pertains to fraud associated with an
`account of the registrant. ..................................................... 100 
`Claim 20 – Grounds 1& 2 ................................................................ 102 
`(a)  The process of claim 1, wherein the established
`notification event is a request to access an account
`associated with the registrant. ............................................ 102 
`Claim 21 – Grounds 1 and 2 ............................................................. 103 
`(a)  The process of claim 1, wherein the established
`notification event is a transaction. ...................................... 103 
`Claim 22 – Grounds 1 and 2 ............................................................. 104 
`(a)  The process of claim 1, wherein the established
`notification event is a request to alter an account
`associated with the registrant. ............................................ 104 
`
`Q. 
`
`R. 
`
`
`
`
`
`
`-vi-
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`TWILIO INC. Ex. 1002 Page 6
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`

`
`TABLE OF CONTENTS
`CONTINUED
`
`PAGE
`
`VII.  CONCLUSIONS ........................................................................................ 106 
`VIII.  CONCLUDING STATEMENT ................................................................. 106 
`
`
`
`
`
`
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`
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`-vii-
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`TWILIO INC. Ex. 1002 Page 7
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`

`
`Declaration of Michael Shamos
`Petition for Inter Partes Review of
`U.S. Patent No. 8,462,920
`
`
`I, Michael Shamos, declare as follows:
`
`I.
`
`INTRODUCTION AND QUALIFICATIONS
`1.
`
`I have been engaged by Petitioner Twilio Inc. (“Twilio”) to opine on
`
`certain matters regarding U.S. Patent No. 8,462,920, hereinafter referred to as the
`
`’920 patent. Specifically, this declaration addresses the validity of claims 1-10,
`
`13, and 17-22 (the “Petitioned Claims”) of the ’920 patent in light of the prior art.
`
`I receive $600 per hour for my services. No part of my compensation is
`
`dependent on my opinions or on the outcome of this proceeding. I have no
`
`financial interest, beneficial or otherwise, in any of the parties to this review.
`
`A. Education
`2.
`I have an A.B. degree from Princeton University in Physics, an M.A.
`
`degree from Vassar College in Physics, an M.S. degree from American
`
`University in Technology of Management, an M.S. degree from Yale University
`
`in Computer Science, an M. Phil from Yale University in Computer Science, a
`
`Ph.D. from Yale University in Computer Science, and a J.D. degree from
`
`Duquesne University. My C.V. is attached as Ex. 1020.
`
`B. Career
`3.
`From 1979-1987, I was the founder and president of two computer
`
`software development companies in Pittsburgh, Pennsylvania: Unilogic, Ltd. and
`
`1
`
`
`
`TWILIO INC. Ex. 1002 Page 8
`
`

`
`Declaration of Michael Shamos
`Petition for Inter Partes Review of
`U.S. Patent No. 8,462,920
`
`
`Lexeme Corporation.
`
`4.
`
`I hold the title of Distinguished Career Professor in the School of
`
`Computer Science at Carnegie Mellon University in Pittsburgh, Pennsylvania. I
`
`was a Founder and Co-Director of the Institute for eCommerce at Carnegie
`
`Mellon, and I am now Director of the Master of Science in Information
`
`Technology degree program in eBusiness Technology.
`
`5.
`
`I currently teach graduate courses at Carnegie Mellon in Electronic
`
`Commerce, including Ubiquitous Computing, Electronic Payment Systems, and
`
`Law of Computer Technology. Since 2001, I have been a Visiting Professor at
`
`the University of Hong Kong, where I also teach an annual course in Electronic
`
`Payment Systems.
`
`6.
`
`I am an attorney admitted to practice in Pennsylvania and have been
`
`admitted to the Bar of the U.S. Patent and Trademark Office (“USPTO” or
`
`“Patent Office”) since 1981. I have been asked to render opinions in this
`
`declaration as a technical expert. I have not been asked to offer any opinions
`
`about the law.
`
`7.
`
`I am a named co-inventor on the following five issued patents
`
`relating to electronic commerce: U.S. Patent Nos. 7,330,839, 7,421,278,
`
`7,747,465, 8,195,197, and 8,280,773.
`
`2
`
`
`
`TWILIO INC. Ex. 1002 Page 9
`
`

`
`Declaration of Michael Shamos
`Petition for Inter Partes Review of
`U.S. Patent No. 8,462,920
`
`
`8.
`
`I have been engaged as a technical expert in over 200 computer
`
`cases and have previously testified in a number of cases concerning computer
`
`systems, including patent, copyright, and trade secret cases. My C.V. contains a
`
`list of cases in which I have testified in at least the past ten years. My C.V. also
`
`lists the relevant publications I have authored during the past ten years.
`
`C. Materials Considered
`9.
`The analysis that I provide in this Declaration is based on my
`
`experience, as well as the documents I have considered, including U.S. Patent
`
`No. 8,462,920 (the ’920 patent) [Ex. 1001], which states on its face that it issued
`
`from an application filed on October 5, 2006. I have also reviewed the
`
`prosecution history of the ’920 patent and the materials listed below:
`
`LIST OF EXHIBITS
`
`
`
`Document
`
`U.S. Patent No. 8,462,920 to Graves (“’920 patent”)
`U.K. Patent Application No. 011673.1 to Chang
`U.S. Patent Application No. 2004/0219904 to De Petris
`U.S. Patent No. 8,781,975 to Bennett
`U.S. Patent Application No. 2003/0221125 to Rolfe
`U.S. Patent No. 7,577,847 to Nguyen
`U.S. Patent No. 8,302,175 to Thoursie
`U.S. Patent Application No. 2004/0203595 to Singhal
`(“Singhal”)
`
`3
`
`
`Exhibit Number
`1001
`1003
`1004
`1005
`1006
`1007
`1008
`1009
`
`
`
`TWILIO INC. Ex. 1002 Page 10
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`

`
`Declaration of Michael Shamos
`Petition for Inter Partes Review of
`U.S. Patent No. 8,462,920
`
`
`
`Exhibit Number
`1010
`1011
`1012
`
`1013
`
`1014
`1015
`1016
`1017
`
`1018
`
`1019
`
`1020
`1021
`
`Document
`
`U.S. Patent No. 6,934,858 to Woodhill
`U.S. Patent Application No. 2002/0032874 to Hagen
`U.S. Patent Application No. 2007/0042755 to
`Singhal (“Singhal II”)
`Excerpted File History for U.S. Patent No.
`8,462,920
`U.S. Patent Application No. 11/034,421
`U.S. Patent Application No. 2001/0032192 to Putta
`Login webpage from Computerhope.com
`J. Kotanchik “Kerberos and Two-Factor
`Authentication” (March 1994)
`United States Patent Application Publication No.
`2001/007983 to Lee
`United States Patent Application Publication No.
`2006/0020816 to Campbell
`Michael Ian Shamos C.V.
`United States Provisional Patent Application No.
`60,572,776
`
`
`II. LEGAL PRINCIPLES USED IN THE ANALYSIS
`10. Attorneys for the Petitioner have explained certain legal principles to
`
`me that I have relied upon in forming my opinions set forth in this report. I have
`
`also relied on my personal knowledge gained through experience and exposure to
`
`the field of patent law.
`
`A.
`11.
`
`Person Having Ordinary Skill in the Art
`
`I understand that my assessment of claims of the ’920 patent must be
`
`undertaken from the perspective of what would have been known or understood
`4
`
`
`
`TWILIO INC. Ex. 1002 Page 11
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`

`
`Declaration of Michael Shamos
`Petition for Inter Partes Review of
`U.S. Patent No. 8,462,920
`
`
`by a person having ordinary skill in the art, reading the ’920 patent on its relevant
`
`filing date and in light of the specification and file history of the ’920 patent. I
`
`will refer to such a person as a “POSITA.”
`
`12. For the relevant priority date for the ’920 patent, I have used in this
`
`declaration the filing date of the patent: Oct. 5, 2006.
`
`13. Counsel has advised me that, to determine the appropriate level of
`
`one of ordinary skill in the art, the following four factors may be considered:
`
`(a) the types of problems encountered by those working in the field and prior art
`
`solutions thereto; (b) the sophistication of the technology in question, and the
`
`rapidity with which innovations occur in the field; (c) the educational level of
`
`active workers in the field; and (d) the educational level of the inventor.
`
`14.
`
`I am well acquainted with the level of ordinary skill required to
`
`implement the subject matter of the ’920 patent. I have direct experience with and
`
`am capable of rendering an informed opinion on what the level of ordinary skill
`
`in the art was for the relevant field as of October 2006.
`
`15. The Patent describes the field of invention as follows:
`
`to online or website
`invention generally relates
`The present
`registration. More particularly, the present invention relates to a
`process for verifying an online registration by a telephone connection
`separate from the online connection between the website and potential
`5
`
`
`
`TWILIO INC. Ex. 1002 Page 12
`
`

`
`Declaration of Michael Shamos
`Petition for Inter Partes Review of
`U.S. Patent No. 8,462,920
`
`
`registrant. This invention is also related to a process for determining
`characteristics of a telephone number, which can be further used for
`verification purposes.
`
`(Ex. 1001 at 1:7-13.)
`
`16. Claim 1 is a method claim. It recites:
`
`11. A verification and notification process, comprising:
`
`receiving information responsive to at least part of a registration form
`that is presented to the registrant on a web-site, the received
`information including at least one registrant electronic contact;
`
`verifying the received registrant electronic contact, wherein verifying
`the received registrant electronic contact includes:
`
`establishing a first telephonic connection with the registrant using the
`received registrant electronic contact;
`
`communicating a first communicated verification code to the
`registrant through the first telephonic connection; and
`
`receiving a first submitted verification code after it is entered by the
`registrant via the web-site and
`
`verifying the received registrant electronic contact if the first
`submitted verification code is the same as the first communicated
`verification code;
`
`6
`
`
`
`TWILIO INC. Ex. 1002 Page 13
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`

`
`Declaration of Michael Shamos
`Petition for Inter Partes Review of
`U.S. Patent No. 8,462,920
`
`
`establishing a notification event associated with the registrant;
`
`identifying an occurrence of the established notification event; and
`
`after identifying the occurrence of the established notification event,
`re-verifying the registrant electronic contact, wherein re-verifying
`includes:
`
`establishing a second telephonic connection with the registrant using
`the verified registrant electronic contact;
`
`communicating a second communicated verification code to the
`registrant through the second telephonic connection; and
`
`receiving a second submitted verification code that is entered by the
`registrant via the web-site; and
`
`re-verifying the received registrant electronic contact if the second
`submitted verification code is the same as the second communicated
`verification code.
`
`(Ex. 1001, cl. 1.)
`
`17. These steps amount to nothing more than:
`
`receiving a telephone number over the Internet;
`
`connecting to a telephone associated with the telephone number to
`communicate a verification code;
`
`receiving a verification code over an online form;
`
`7
`
`
`
`TWILIO INC. Ex. 1002 Page 14
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`

`
`Declaration of Michael Shamos
`Petition for Inter Partes Review of
`U.S. Patent No. 8,462,920
`
`
`comparing the received code with the communicated code for a
`match;
`
`upon identifying an event, repeating the process.
`
`18. None of these steps requires any particular training or skill, as each
`
`can be performed manually by a human being using pen and paper (and a
`
`telephone).
`
`19. The “Background of the Invention” section of the specification sets
`
`forth that the context of the invention is verifying users of Internet websites.
`
`Therefore, in order to make and use the invention in that context without undue
`
`experimentation, one would need a basic
`
`familiarity with
`
`Internet
`
`communications.
`
`20.
`
`It is therefore my opinion that: one of ordinary skill in the art would
`
`have at least an undergraduate degree in computer science, or equivalent
`
`experience and, in addition, would be familiar with Internet communications and
`
`accessing databases.
`
`B.
`21.
`
`Prior Art
`
`I understand that the law provides categories of information that
`
`constitute prior art that may be used to anticipate or render obvious patent claims.
`
`To be prior art to a particular patent claim under 35 U.S.C. Section 102(b), I
`
`8
`
`
`
`TWILIO INC. Ex. 1002 Page 15
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`

`
`Declaration of Michael Shamos
`Petition for Inter Partes Review of
`U.S. Patent No. 8,462,920
`
`
`understand that a reference must have been in public use or on sale in this
`
`country, or patented or described in a printed publication more than one year
`
`prior to the date of application for the Petitioned Claims. To be prior art to a
`
`particular patent claim under 35 U.S.C. Section 102(a), I understand that a
`
`reference must have been known or used in this country, or patented or described
`
`in a printed publication before the priority date of the Petitioned Claims. To be
`
`prior art to a particular patent claim under 35 U.S.C. Section 102(b), I understand
`
`that a reference must have been in public use or on sale in this country, or
`
`patented or described in a printed publication more than one year prior to the date
`
`of application for the Petitioned Claims. To be prior art under 35 U.S.C. Section
`
`102(e), I further understand that a patent application must have been published or
`
`a patent application subsequently granted must have been filed before the priority
`
`date. I also understand that the POSITA is presumed to have knowledge of all
`
`relevant prior art. Below is a table identifying the main prior art references that
`
`will be discussed in detail in this declaration.
`
`9
`
`
`
`TWILIO INC. Ex. 1002 Page 16
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`

`
`Declaration of Michael Shamos
`Petition for Inter Partes Review of
`U.S. Patent No. 8,462,920
`
`
`Table 1
`
`Reference U.S. Patent or
`Publication No.
`Ex. 1005
`8,781,975
`
`“Bennett”
`Ex. 1008
`“Thoursie”
`
`8,302,175
`
`Ex. 1006
`“Rolfe”
`
`Ex. 1010
`“Woodhill”
`
`
`C.
`22.
`
`Identification of Combinations of Prior Art
`I understand that the Petitioner is requesting inter partes review of
`
`claims 1-10, 13, and17-22 of the ’920 patent under the grounds set forth in Table
`
`2, below. I will sometimes refer to these combinations by Ground number in the
`
`remainder of my declaration below.
`
`Table 2
`
`Basis for Challenge
`Obvious by Bennett
`10
`
`Ground
`1
`
`’920 patent Claims
`1-10, 13, 17-22
`
`
`
`Title
`System and Method of
`Fraud Reduction
`
`Method and System for
`Electronic
`Reauthentication of a
`Communication Party
`
`2003/0221125 Use of Public Switched
`Telephone Network for
`Authentication and
`Authorization in On-line
`Transactions
`System and Method of
`Using the Public Switched
`Telephone Network in
`Providing Authentication
`or Authorization for Online
`Transactions
`
`6,934,858
`
`Date
`Filed
`May 23, 2005
`
`Filed
`Apr. 20, 2005
`
`Filed
`May 24, 2002
`
`Filed
`Dec. 13, 2000
`
`TWILIO INC. Ex. 1002 Page 17
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`

`
`Declaration of Michael Shamos
`Petition for Inter Partes Review of
`U.S. Patent No. 8,462,920
`
`Ground
`2
`3
`4
`
`’920 patent Claims
`1-10, 13, 17-22
`4, 5
`4, 5
`
`Basis for Challenge
`Obvious by Bennett in view of Thoursie
`Obvious by Bennett in view Rolfe
`Obvious by Bennett in view of Thoursie and
`Rolfe
`Obvious by Bennett in view of Woodhill
`Obvious by Bennett in view of Thoursie and
`Woodhill
`D. Broadest Reasonable Interpretations
`23.
`I understand that, in an inter partes review, the claim terms are to be
`
`5
`6
`
`13
`13
`
`given their broadest reasonable interpretation (BRI) in light of the specification.
`
`See 37 C.F.R. § 42.100(b).
`
`24.
`
`In performing my analysis and rendering my opinions, I have
`
`interpreted claim terms for which the Petitioner has not proposed a BRI by giving
`
`them the ordinary meaning they would have to a POSITA, reading the ʼ920 Patent
`
`with its priority filing date (October 5, 2006) in mind, and in light of its
`
`specification and prosecution history.
`
`25.
`
`I understand that the Petitioner has made a determination about the
`
`BRI of one claim term in the ’920 patent. I have identified this BRI in the table
`
`Broadest Reasonable Interpretation (BRI)
`“an event that results in the registrant being
`contacted either for re-verification or for
`notification that the event occurred”
`
`11
`
`below.
`
`Term
`“notification event”
`
`
`
`TWILIO INC. Ex. 1002 Page 18
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`

`
`Declaration of Michael Shamos
`Petition for Inter Partes Review of
`U.S. Patent No. 8,462,920
`
`
`
`
`26. My analysis in this declaration assumes that the term above is defined
`
`using the indicated BRI. From my reading of the ʼ920 patent, I believe that this
`
`BRI is consistent with how one of skill in the art at the time the ʼ920 patent was
`
`filed would interpret the claim term.
`
`27. With respect to the term “notification event,” I note that the ’920
`
`patent specification and claims help define what the term “notification event”
`
`includes. The specification provides that notification events can be implemented in
`
`a wide variety of scenarios such as ATM transactions, credit card transactions, or
`
`as parental controls. (Ex. 1001 at 10:55-11:56, cls. 19-22.) For example, a
`
`notification event may occur when a user requests to access or alter her account.
`
`(Ex. 1001 at cls. 19-22.) Or, a notification event may occur “every time a
`
`withdrawal or [sic, “of”] more than one thousand dollars is requested from his
`
`checking account, or is charged to his credit card.” (Ex. 1001 at 1:39-45; 10:60-
`
`63.) Notification events may comprise a news event, or even status of credit
`
`reports. (Ex. 1001 at 11:11-20.)
`
`28.
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`“If a previously established notification event occurs, then the system
`
`will notify and/or verify the user.” (Id. at 9:3-4; see also id. at cl. 1[d], cl. 4.) For
`
`example, the registrant may be required to re-verify before permitting access or
`
`12
`
`
`
`TWILIO INC. Ex. 1002 Page 19
`
`

`
`Declaration of Michael Shamos
`Petition for Inter Partes Review of
`U.S. Patent No. 8,462,920
`
`alteration of the registrant’s account or receiving notification of the occurrence of
`
`the pre-established event. (Id. at 3:10-14.) The specification explains, “if the user
`
`logs into his or her account (906), attempts to make a transaction (908), or attempts
`
`to modify account information (910), the user may be notified or even required to
`
`become telephone verified (912).” (Ex. 1001 at 8:59-62.) The specification’s use of
`
`the word “or” indicates that the occurrence of the particular “notification event” is
`
`not necessarily communicated to the registrant. (See, e.g., id. at cl. 4 (adding the
`
`limitation that the registrant is notified of the occurrence of the notification event).)
`
`The occurrence of a notification event may result in notifying the user or requiring
`
`the user to become telephone verified, or both.
`
`29. This interpretation is consistent with the statements made by Patent
`
`Owner during prosecution. During prosecution, the Patent Owner argued, “an
`
`established notification event may include receiving a request to access an account
`
`associated with the registrant from a device that is not associated with the
`
`account.” (Ex. 1013 at 81.) Thus, based on this statement and the specification’s
`
`examples, the BRI of “notification event” is “an event that results in the registrant
`
`being contacted either for re-verification or for notification that the event
`
`13
`
`occurred.”
`
`
`
`TWILIO INC. Ex. 1002 Page 20
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`

`
`Declaration of Michael Shamos
`Petition for Inter Partes Review of
`U.S. Patent No. 8,462,920
`
`III. THE ’920 PATENT
`A. Overview of the ’920 Patent
`30. The ’920 patent is directed at a telephone-based two-factor
`
`authentication process. (Ex. 1001 at Abstract, FIG. 8, FIG. 9, FIG. 10, 1:6-14,
`
`7:53-8:28, 8:52-9:2.)
`
`31. Originally, Patent Owner directed its proposed claims toward a
`
`single two-factor authentication process. (Ex. 1013 at 28.) However, the Patent
`
`Office rejected those claims. (Ex. 1013 at 43-44.) Eventually, the Patent Owner
`
`amended the claims to require that the two-factor authentication process be
`
`repeated for the same user. (Ex. 1013 at 66-67.)
`
`32. An alleged point of novelty of the amended claims, according to the
`
`Patent Owner, was that the authentication process was repeated using the
`
`registrant’s registered contact based on the occurrence of an established
`
`notification event. (Ex. 1013 at 66-67, 81-82.) According to the ’920 patent, a
`
`notification event could be as simple as a request to access a user’s account or to
`
`modify account information. (Ex. 1001 at cls. 20-22, 8:59-62, FIG. 9 blocks 906,
`
`14
`
`908, 910.)
`
`
`
`TWILIO INC. Ex. 1002 Page 21
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`

`
`Declaration of Michael Shamos
`Petition for Inter Partes Review of
`U.S. Patent No. 8,462,920
`
`
`B.
`Priority of the ’920 Patent
`33. As indicated on its face, the ’920 patent issued from U.S.
`
`Application No. 11/538,989, which was filed October 5, 2006, as a continuation-
`
`in-part of U.S. Application No. 11/034,421, which was filed January 11, 2005.
`
`(See Ex. 1001.)
`
`34. The
`
`’920 patent
`
`relates
`
`to a
`
`telephone-based
`
`two-factor
`
`authentication process that repeats authentication at the occurrence of an
`
`established notification event. (See Ex. 1001.)
`
`35.
`
`I understand that, because the ’989 application is a continuation-in-
`
`part of the ’421 application, the ’989 application may include material that does
`
`not appear in the ’421 application.
`
`36.
`
`I understand that the priority date for a particular claim is based in
`
`part on when, in a chain of related patents, the written description that supports
`
`that claim first appeared. In this case, I have reviewed the ’989 and ’421
`
`applications to determine which patent specifications disclose supporting
`
`material for the Petitioned Claims. I have determined that the ’421 application
`
`does not support the Petitioned claims.
`
`37. Specifically, claim 1 is the only independent Petitioned claim, from
`
`which all other Petitioned claims depend. In part, claim 1 recites a “notification
`
`15
`
`
`
`TWILIO INC. Ex. 1002 Page 22
`
`

`
`Declaration of Michael Shamos