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`May 19, 2016
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` UNITED STATES PATENT AND TRADEMARK OFFICE
`
` UNITED STATES PATENT TRIAL AND APPEAL BOARD
`
`---------------------------------
` :
`TWILIO, INC., :
` :
` Petitioner, :
` :
` v. : IPR2016-00450
` :
`TELESIGN CORPORATION, : and
` :
` Patent Owner. : IPR2016-00451
` :
`---------------------------------
`
` The telephonic conference in the
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`above-entitled matter convened at 1:31 p.m. on
`
`Thursday, May 19, 2016, and the proceedings
`
`being taken down by stenotype and transcribed by
`
`Catherine B. Crump, a Notary Public in and for the
`
`District of Columbia.
`
`BEFORE:
`
` HON. KIMBERLY McGRAW
`
` HON. SALLY MEDLEY
`
` HON. JUSTIN ARBES
`
` Patent Trial and Appeal Board Judges
`
`1-800-FOR-DEPO
`
`www.aldersonreporting.com
`
`Alderson Court Reporting
`
`Twilio's Exhibit No. 1022
`IPR2016-00450
`
`001
`
`
`
`Conference Call
`
`May 19, 2016
`
`Page 2
`
`APPEARANCES: (Telephonically)
`
`On behalf of the Petitioner:
`
` BRITTON DAVIS, ESQ.
`
` WAYNE STACY, ESQ.
`
` Cooley, LLP
`
` 380 Interlocken Crescent, Suite 900
`
` Broomfield, Colorado 80021
`
` (720) 566-4000
`
` bdavis@cooley.com
`
` wstacy@cooley.com
`
`On behalf of the Patent Owner:
`
` JESSE CAMACHO, ESQ.
`
` ELENA K. McFARLAND, ESQ.
`
` Shook, Hardy & Bacon, LLP
`
` 2555 Grand Boulevard
`
` Kansas City, Missouri 64108
`
` (816) 474-6550
`
` jcamacho@shb.com
`
` emcfarland@shb.com
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`1-800-FOR-DEPO
`
`www.aldersonreporting.com
`
`Alderson Court Reporting
`
`Twilio's Exhibit No. 1022
`IPR2016-00450
`
`002
`
`
`
`Conference Call
`
`May 19, 2016
`
`Page 3
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` P R O C E E D I N G S
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` JUDGE McGRAW: This is Judge McGraw on the
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`line. With me is Judge Medley and Judge Arbes for
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`the conference call for IPR2016-00450 and
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`IPR2016-465, Twilio Corporation v. TeleSign
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`Corporation.
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` I would like to begin with a roll call. Who
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`is on the line on behalf of petitioner?
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` MR. DAVIS: For petitioner, you have Wayne
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`Stacy, lead counsel, and Britton Davis. I'll be
`
`appearing as backup counsel for Twilio.
`
` JUDGE McGRAW: Who is speaking? Mr. Davis?
`
` MR. DAVIS: That's correct.
`
` JUDGE McGRAW: And on behalf of patent owner?
`
` MR. CAMACHO: Yes, Your Honor. This is Jesse
`
`Camacho and Elena McFarland.
`
` JUDGE McGRAW: So as I understand it, there
`
`are two issues: First, Petitioner is seeking
`
`permission to file a reply to address whether the
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`patent owner has met its burden to show patents at
`
`issues or titles that claim priority to their parent.
`
` This is the petitioner's issue. Petitioner,
`
`1-800-FOR-DEPO
`
`www.aldersonreporting.com
`
`Alderson Court Reporting
`
`Twilio's Exhibit No. 1022
`IPR2016-00450
`
`003
`
`
`
`Conference Call
`
`May 19, 2016
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`Page 4
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`do you want to quickly address your request?
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` MR. DAVIS: Yes. Thank you, Your Honor.
`
` So this is Britton Davis, and really what we
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`would like is the board's guidance on how to deal
`
`with the priority date issue that was raised in the
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`patent owner's preliminary response.
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` JUDGE McGRAW: Mr. Davis, I'm sorry to
`
`interrupt you. I forgot to ask is there a court
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`reporter on the line?
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` MR. DAVIS: Yes, there is, on behalf of
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`Petitioner.
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` JUDGE McGRAW: Then I'd ask that you provide
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`a copy of the transcript of this proceeding when
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`possible.
`
` MR. DAVIS: We would be happy to do so.
`
` JUDGE McGRAW: And I'm sorry to interrupt.
`
`Continue.
`
` MR. DAVIS: No problem.
`
` So what Petitioner would like is the board's
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`guidance on how to address the priority date issue
`
`that was raised in the patent owner's preliminary
`
`response and regarding the petitioned claims, ability
`
`1-800-FOR-DEPO
`
`www.aldersonreporting.com
`
`Alderson Court Reporting
`
`Twilio's Exhibit No. 1022
`IPR2016-00450
`
`004
`
`
`
`Conference Call
`
`May 19, 2016
`
`Page 5
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`to claim priority back to the parent application.
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` We don't think that this issue needs to be
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`addressed at institution and it's properly decided in
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`the final written decision, but if the board is
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`inclined to deal with the issue at institution, we
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`would like to be able to file a short reply
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`addressing the legal requirements, the standard, and
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`the burden that Patent Owner must meet to show it's
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`entitled to the earlier priority date.
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` JUDGE McGRAW: Patent Owner, would you like
`
`to comment?
`
` MR. CAMACHO: Sure, Your Honor. This is
`
`Jesse Camacho, and we did understand the petitioner's
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`request to be a request for a reply. So to help
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`confirm that we were looking at this correctly, we
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`looked and we identified -- I think there's about 108
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`cases that address a request for a petitioner to
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`reply to a preliminary response.
`
` Fifty-one of those were granted, really only
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`about 30 because many of the cases were related. All
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`of those deal with threshold issues, things like
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`proper service, whether there's Section 315(b) time
`
`1-800-FOR-DEPO
`
`www.aldersonreporting.com
`
`Alderson Court Reporting
`
`Twilio's Exhibit No. 1022
`IPR2016-00450
`
`005
`
`
`
`Conference Call
`
`May 19, 2016
`
`Page 6
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`bar, that sort of thing.
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` There were 18 instances that were really just
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`one instance that the court requested additional
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`briefing regarding a threshold issue of service of
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`the complaint.
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` The last bucket is where the majority is.
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`There were 39 instances where the request was denied.
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`That's where we would say Twilio's request falls in.
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`Those requests, there are similar requests before the
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`board, things like addressing alleged misstatements,
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`addressing case law mischaracterization, addressing
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`evidentiary issues, and things like that.
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` A couple of relevant IPRs that might help
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`guide the board, one is IPR2015-1035. Again,
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`IPR2015-1035, that one dealt with a request to
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`address the legal standard of printed publications.
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`There, the board replied that was just a request for
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`a reply and it's not warranted.
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` The second one is kind of analogous. It's
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`IPR2014-1432. There, the question was the petitioner
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`wanted to reply to some comments that the patent
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`owner made regarding whether a reference should enjoy
`
`1-800-FOR-DEPO
`
`www.aldersonreporting.com
`
`Alderson Court Reporting
`
`Twilio's Exhibit No. 1022
`IPR2016-00450
`
`006
`
`
`
`Conference Call
`
`May 19, 2016
`
`Page 7
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`the earliest effective 102(e) date. Again, the board
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`said that that submission would amount to a reply,
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`which is not allowed.
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` So the common themes that we see and six
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`reasons why we think the board should deny this
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`request is, first, replies to a preliminary response,
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`they're not allowed on substantive issues, and the
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`petitioner, Twilio, hasn't provided a sufficient
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`reason to deviate from normal practice.
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` The second reason would be that 35 U.S.C.
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`Section 324(a) requires an institution be granted
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`based on the information presented in the petition,
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`not in the petition plus a reply.
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` The third is that the issue to be addressed
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`here is not a threshold issue. It's nothing like a
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`real party in interest or whether there's some time
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`bar.
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` The fourth is that Petitioner is essentially
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`asking for additional basis to further develop its
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`argument.
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` The fifth and sixth are kind of related.
`
` JUDGE McGRAW: I'm going to interrupt you
`
`1-800-FOR-DEPO
`
`www.aldersonreporting.com
`
`Alderson Court Reporting
`
`Twilio's Exhibit No. 1022
`IPR2016-00450
`
`007
`
`
`
`Conference Call
`
`May 19, 2016
`
`Page 8
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`here. We agree. I do treat Petitioner's request as
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`a request for authorization to file a reply and that
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`request is denied. Filing a reply here is not
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`necessary. We're aware of --
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` MR. CAMACHO: Your Honor, this --
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` JUDGE McGRAW: Excuse me? Yes?
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` MR. CAMACHO: I apologize for interrupting.
`
` JUDGE McGRAW: You can continue. Identify
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`yourself first.
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` MR. CAMACHO: This is Jesse Camacho again for
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`the patent owner. We had a second issue that we
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`wanted to address, but, again, I didn't know if you
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`had completed your sentence.
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` JUDGE McGRAW: I was saying that the request
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`for authorization to file a reply is denied.
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` MR. CAMACHO: Your Honor, this is Jesse
`
`Camacho again for the patent owner.
`
` The issue that we would like to address is
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`the E-mail itself that was sent. We think the E-mail
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`that was sent was an improper ex parte communication.
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`This E-mail should not have been sent in view of Rule
`
`42.5(b). That rule does not allow or prohibits
`
`1-800-FOR-DEPO
`
`www.aldersonreporting.com
`
`Alderson Court Reporting
`
`Twilio's Exhibit No. 1022
`IPR2016-00450
`
`008
`
`
`
`Conference Call
`
`May 19, 2016
`
`Page 9
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`E-mails from being sent or any communication with the
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`board unless both parties have had an opportunity to
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`be involved in the communication.
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` Here, we were not allowed to see the E-mail
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`that was sent, and the issue in the E-mail is
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`substantive in nature. It comments on our reply. It
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`characterizes what we said. It comments on lack on
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`evidence.
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` The problem is it could be viewed as -- you
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`know, when we looked into this and we found there
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`were 39 cases that seemed on point, our concern was
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`that there might be an attempt to do an end run
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`around this procedure and actually get argument or we
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`weren't sure we -- there's one IPR that seems to be
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`on point that if it's helpful to the board, it's
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`IPR2012-0035. Again, IPR2012-0035 is Nissan v.
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`Collins.
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` What happened in that case was someone from
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`the petitioner contacted the board. They didn't copy
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`opposing counsel. I know counsel for Twilio did.
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` They did ask for a call. The thing is,
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`though, they commented substantively. The E-mail was
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`1-800-FOR-DEPO
`
`www.aldersonreporting.com
`
`Alderson Court Reporting
`
`Twilio's Exhibit No. 1022
`IPR2016-00450
`
`009
`
`
`
`Conference Call
`
`May 19, 2016
`
`Page 10
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`substantive and the board said even if opposing
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`counsel were copied, the E-mail still would have been
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`improper because it contained argument against an
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`analysis of the preliminary response, and the board
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`described the E-mail as appearing to be an improper
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`attempt to file a reply, which was not allowed.
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` So it's on point in that regard, and we know
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`some cases allow a reply to an E-mail. We're not
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`looking for that. We don't want to burden the board
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`with any additional paper. We would just like this
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`issue addressed and then, really, for all intents and
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`purposes, the E-mail to not really have any bearing
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`before the board.
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` MR. DAVIS: Your Honor, if I may respond.
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`This is Britton Davis with Cooley for Petitioner.
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` JUDGE McGRAW: Yes.
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` MR. DAVIS: So we disagree with Mr. Camacho's
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`characterizations. I provided an E-mail laying out
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`the basis for our request to Mr. Camacho in advance
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`of requesting the call with the board and sought his
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`availability for this call.
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` After he provided that, then I confirmed in
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`1-800-FOR-DEPO
`
`www.aldersonreporting.com
`
`Alderson Court Reporting
`
`Twilio's Exhibit No. 1022
`IPR2016-00450
`
`010
`
`
`
`Conference Call
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`May 19, 2016
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`Page 11
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`an E-mail that I would be sending the board the
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`communication and sent the communication, which is
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`very close to the E-mail that I provided to Mr.
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`Camacho ahead of time.
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` So we think that his characterizations of
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`conduct are improper or inaccurate and we also think
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`that the E-mail is a fair characterization setting
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`out only the bases that we were requesting the reply
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`on, didn't go into addressing the merits of subject
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`matter.
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` JUDGE McGRAW: Okay. As it seems both
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`parties are aware, communications to the board cannot
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`be ex parte. Both parties have to be copied on the
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`E-mail and they should not contain any substantive
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`arguments in the E-mail. To the extent any such
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`arguments are included in the E-mail, they will not
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`play a role in any decision to institute or not
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`institute.
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` There was one more issue that the petitioner
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`did raise in the E-mail, which is seeking guidance.
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`It seems like you're requesting, and perhaps you can
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`clarify if you're asking if you should file a motion
`
`1-800-FOR-DEPO
`
`www.aldersonreporting.com
`
`Alderson Court Reporting
`
`Twilio's Exhibit No. 1022
`IPR2016-00450
`
`011
`
`
`
`Conference Call
`
`May 19, 2016
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`Page 12
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`to submit supplemental information or you're asking
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`should you wait until the reply.
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` I guess I'll let you address what it is
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`exactly that you were asking the court to do, the
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`board to do.
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` MR. STACY: Your Honor, this is lead counsel,
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`Wayne Stacy. I think you've answered our question.
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`The primary purpose of setting the call up and asking
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`all of this is there's enough opinions out there
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`where the board has criticized petitioners and patent
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`owners for waiting too long to raise important
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`issues, and we just wanted to make sure that we
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`raised it here because we couldn't find any law on
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`point.
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` So I think your initial decision on the reply
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`answers everything we need, and proposed institution,
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`not meaning to be presumptive, but the normal reply
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`brief will be where this would be addressed.
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` JUDGE McGRAW: Well, I think asking whether
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`or not you should address an issue through
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`supplemental information or through a reply brief,
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`it's really addressed after institution. So I think
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`1-800-FOR-DEPO
`
`www.aldersonreporting.com
`
`Alderson Court Reporting
`
`Twilio's Exhibit No. 1022
`IPR2016-00450
`
`012
`
`
`
`Conference Call
`
`May 19, 2016
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`Page 13
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`you should wait until the case is instituted or not
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`instituted, and if the case is instituted, you can
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`revisit this issue again.
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` MR. STACY: All right. Thank you.
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` JUDGE McGRAW: Are there any further issues
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`on behalf of Petitioner?
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` MR. DAVIS: If I could impose upon you for
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`just one moment, we sent the E-mail to the board and
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`there's always the intention on giving information to
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`allow the board to be meaningfully prepared and then
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`not putting substantive arguments in. I know the
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`black letter law.
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` In your opinion, did the E-mail we sent skew
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`too far one way or the other? This is just for
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`future reference. I want to make sure we're on the
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`right side going forward, if you're willing to
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`provide that input.
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` MR. CAMACHO: We could offer a comment if it
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`would help the board.
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` JUDGE McGRAW: Sure.
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` MR. CAMACHO: Your Honor, in that same case,
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`that Nissan case, the IPR -- this is Jesse Camacho --
`
`1-800-FOR-DEPO
`
`www.aldersonreporting.com
`
`Alderson Court Reporting
`
`Twilio's Exhibit No. 1022
`IPR2016-00450
`
`013
`
`
`
`Conference Call
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`May 19, 2016
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`Page 14
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`IPR2012-0035, Page 28, Footnote 2 provides an example
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`of an appropriate request for a conference, and it
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`says it would have said something along the lines of
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`Nissan requests a conference call to raise an issue
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`of incorrect facts.
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` So to the extent that's helpful as providing
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`a sample type of E-mail, that would be one.
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` JUDGE McGRAW: Well, I think that E-mails to
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`the board should have enough information in them so
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`that we know what issue is going to be raised, but,
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`again, it should not include any arguments or
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`substantive presentation of argument or facts.
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` So it is a fine line, but we'll figure it out
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`as we go along; but for now, I'm not going to do
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`anything about this E-mail. So I'm not -- to the
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`extent there are any arguments in that E-mail, they
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`will not play a role in the decision to institute.
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` MR. DAVIS: Thank you for the guidance.
`
` JUDGE McGRAW: You're welcome.
`
` Are there any other issues?
`
` MR. CAMACHO: Nothing from Patent Owner.
`
` MR. DAVIS: None from Petitioner.
`
`1-800-FOR-DEPO
`
`www.aldersonreporting.com
`
`Alderson Court Reporting
`
`Twilio's Exhibit No. 1022
`IPR2016-00450
`
`014
`
`
`
`Conference Call
`
`May 19, 2016
`
`Page 15
`
` JUDGE McGRAW: An order will follow shortly
`
`summarizing and discussing what was decided in this
`
`call, and this call is concluded.
`
` Thank you.
`
` [Whereupon, at 1:46 p.m., the conference call
`
`concluded.]
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`1-800-FOR-DEPO
`
`www.aldersonreporting.com
`
`Alderson Court Reporting
`
`Twilio's Exhibit No. 1022
`IPR2016-00450
`
`015
`
`
`
`CERTTFICATE OF NOTARY PUBLIC
`
`I, CATHERINE B. CRUMP, the officer before
`
`I^¡as taken, do hereby
`
`whom the f oregoing deposition
`the witness whose testimony appears in
`that
`testify
`the foregoing deposition $/as duly sÌ^torn by me; that
`the testimony of said witness l¡tas taken by me
`reduced to
`
`stenographically and thereafter
`
`that said deposition
`typewriting under my direction;
`is a true record of the testimony given by said
`related
`I am neither counsel for,
`that
`witness;
`nor employed by any of the parties
`to the action
`l^tas taken; and further,
`which this deposition
`am not a rel-ative or employee of any attorney or
`counsel employed by the parties hereto nor
`in the outcome
`fj.nancially or otherwise interested
`
`to,
`
`in
`
`that
`
`I
`
`of
`
`the action.
`
`CATHERINE B
`Notary PubI
`District of
`: October
`
`. CRUMP
`
`ic in and for the
`
`Columbia
`
`3 1, 20L7
`
`My Commíssion Expires
`
`Twilio's Exhibit No. 1022
`IPR2016-00450
`
`016