`571-272-7822
`
`
`Paper 14
`Entered: June 3, 2016
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`TWILIO INC.,
`Petitioner,
`
`v.
`
`TELESIGN CORPORATION,
`Patent Owner.
`____________
`
`IPR2016-00450 (US 8,462,920 B2)
`IPR2016-00451 (US 8,867,038 B2)1
`
`____________
`
`
`Before SALLY C. MEDLEY, JUSTIN T. ARBES, and
`KIMBERLY McGRAW, Administrative Patent Judges.
`
`McGRAW, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`
`
`1 This Order addresses issues common to both cases. Therefore, we exercise
`our discretion to issue one Order to be filed in each case. The parties are not
`authorized to use this style heading for any papers.
`
`
`
`IPR2016-00450 (US 8,462,920 B2)
`IPR2016-00451 (US 8,867,038 B2)
`
`In email correspondence to the Board dated May 16, 2016, counsel for
`
`Petitioner (1) requested permission to file a reply brief to Patent Owner’s
`Preliminary Response to address whether the patents at issue are entitled to
`claim priority to an application with an earlier filing date and (2) asked when
`and how Petitioner should submit evidence that one of the asserted prior art
`references allegedly is entitled to prior art status as of the filing date of its
`provisional application. A conference call was held on May 19, 2016 to
`address these issues. Counsel for Patent Owner, Jesse Camacho and Elena
`McFarland, counsel for Petitioner, Wayne Stacy and Britton Davis, and
`Judges Arbes, McGraw, and Medley participated in the call. A transcript of
`the conference call has been filed. IPR2016-00450, Ex. 1022; IPR2016-
`00451, Ex. 1024.
`Regarding the first issue, Petitioner stated that it believes that the issue
`of whether the challenged claims are entitled to claim priority back to the
`parent application is “properly decided in the final written decision, but if
`the [B]oard is inclined to deal with the issue at institution, we would like to
`be able to file a short reply addressing the legal requirements, the standard,
`and the burden that Patent Owner must meet to show it’s entitled to the
`earlier priority date.” IPR2016-00450, Ex. 1022 5:2–9. Counsel for Patent
`Owner opposed Petitioner’s request.
`Generally, a petitioner is not authorized to file a reply to a patent
`owner preliminary response. Based on the record before us, we determine
`that Petitioner has not demonstrated sufficiently that we should deviate from
`the normal procedure for these proceedings. We determine that we are
`capable of applying the indicated facts to the indicated statutes, rules, and
`case law and are not persuaded that the Board would benefit from additional
`
`2
`
`
`
`IPR2016-00450 (US 8,462,920 B2)
`IPR2016-00451 (US 8,867,038 B2)
`
`briefing or supplementation. Upon consideration of the positions of the
`parties, Petitioner is not authorized at this time to file a reply to the
`Preliminary Response in the instant proceedings.
`Regarding the second issue, Petitioner specifically asks if the Board
`would like Petitioner to submit evidence allegedly showing one of the
`asserted prior art references is entitled to prior art status as of the filing date
`of its provisional application either (1) prior to the Board’s decisions on
`institution or (2) in reply to Patent Owner’s Response. To the extent
`Petitioner is asking for permission to submit such evidence prior to the
`Board’s decisions on institution, Petitioner’s request is denied. Petitioner
`may revisit this issue if the cases are instituted.
`
`
`For the foregoing reasons, it is
`ORDERED that Petitioner’s request to file a reply to the Preliminary
`Response in the instant proceedings is denied; and
`FURTHER ORDERED that Petitioner’s request to file evidence, prior
`to the Board’s decisions on institution, alleged to show that an asserted prior
`art reference is entitled to the filing date of its provisional application is
`denied.
`
`
`
`
`
`3
`
`
`
`4
`
`IPR2016-00450 (US 8,462,920 B2)
`IPR2016-00451 (US 8,867,038 B2)
`
`FOR PETITIONER:
`Wayne Stacy
`Mikaela Stone
`Britton Davis
`wstacy@cooley.com
`mstone@cooley.com
`bdavis@cooley.com
`zTwilioIPR@cooley.com
`
`FOR PATENT OWNER:
`Tawni Wilhelm
`Jesse Camacho
`Elena McFarland
`telesignipr@shb.com
`JCAMACHO@shb.com
`EMCFARLAND@shb.com
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