Case IPR2016-00450
`Patent No. 8,462,920
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`Twilio Inc.
`Petitioner
`
`v.
`
`TeleSign Corporation
`Patent Owner
`
`Case No. IPR2016-00450
`Patent: 8,462,920
`
`
`
`
`
`
`
`PETITIONER’S REQUEST FOR REHEARING
`UNDER 37 C.F.R. § 42.71(c)
`
`
`
`
`
`
`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
`
`Case No. IPR2016-00450
`Patent: 8,462,920
`
`
`
`
`
`
`
`PETITIONER’S REQUEST FOR REHEARING
`UNDER 37 C.F.R. § 42.71(c)
`
`
`
`
`
`
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`Case IPR2016-00450
`Patent No. 8,462,920
`INTRODUCTION AND STATEMENT OF RELIEF REQUESTED
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`I.
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`The Board denied institution because “Petitioner has not provided evidence
`
`or argument that Bennett teaches a notification event that would result in the
`
`registrant being notified that the event occurred.” (Paper 17 at 14.) This conclusion
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`was the Board’s only reason for denying institution. The Board, however,
`
`overlooked arguments and evidence in the Petition that directly contradict the
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`Board’s finding.
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`• The Petition stated: “[a] POSITA would have found it obvious and
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`simple
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`to
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`include, as part of
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`the SMS or voice message
`
`communicating the verification code, that a notification event has
`
`occurred, so that customers were not constantly calling to inquire
`
`why a re-verification was required.” (Paper 1 at 44-45 (emphasis
`
`added).)
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`• The Petition explained that, when Rolfe’s system detects a transaction
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`of a certain value, it “calls the [credit card] owner and informs the
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`owner of the notification event.” (Paper 1 at 46.) The Petition explains
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`that it would have been obvious to use Bennett’s verification message
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`to transmit both the verification code and Rolfe’s notification so that
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`the user would know why they were being contacted. (Paper 1 at 45-
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`1
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`47.)
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`Case IPR2016-00450
`Patent No. 8,462,920
`• The Petition explained that, as part of the reverification process,
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`Bennett teaches notifying the registrant of the occurrence of a
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`notification event in the form of “transmit[ing] the completion code”
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`to registrant upon the occurrence of the notification event. (Paper 1 at
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`32-33.) Bennett discloses transmitting a completion or verification
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`code to the registrant every time Bennett’s system determines a
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`notification event requiring re-verification has occurred. (Paper 1 at
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`11-12, 22-23, 32-33.) By transmitting this code in response to the
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`occurrence of an event, Bennett is notifying the registrant that an
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`event has occurred.
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`These disclosures from the Petition directly contradict the Board’s sole reason for
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`denying institution. Failing to consider these Petition disclosures in the decision
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`denying institution is an error of fact and law warranting rehearing. As a result,
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`Petitioner requests that the Board rehear its decision denying institution of inter
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`partes review and consider Petitioner’s evidence related to the notification event.
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`II.
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`FACTUAL BACKGROUND AND PROCEDURAL POSTURE
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`On January 11, 2016, Petitioner filed a petition challenging claims 1-10, 13,
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`and 17-22 of the ‘920 patent on four grounds using Bennett as a base reference.
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`(Paper 1 at 3-4.) Claim 1 recites a notification event that results in a registrant
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`being contacted with a verification code for re-verification. (Ex. 1001, cl. 1[c]-
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`2
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`Case IPR2016-00450
`Patent No. 8,462,920
`[e][iv]; Paper 1 at 22-27, 32-34.) Claim 4, which depends from claims 1 and 2,
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`adds a limitation requiring that the “notification event” of claim 1 result in
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`“notifying the registrant of the occurrence of the established notification event.”
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`(Ex. 1001, cl. 4; Paper 1 at 44-47.) Petitioner presented evidence and argument in
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`relation to claim 1 that Bennett taught the claimed notification event in the form of
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`a transaction that caused Bennet to transmit a completion code to the registrant.
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`(Paper 1 at 32-33.) The completion code corresponds to notifying the user after the
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`occurrence of a notification event. For claim 4, Petitioner presented argument and
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`evidence that (1) Bennett or (2) Bennett plus Rolfe disclosed and rendered obvious
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`notifying the user of the occurrence of the notification event. (Paper 1 at 44-46.)
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`On July 8, 2016, the Board denied institution of inter partes review of ’920
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`patent claims 1-10, 13, and 17-22. The Board construed “notification event” as “an
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`event that results in the registrant being notified that the event occurred.” (Paper 17
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`at 7-11.) Based on this construction, the Board determined that Petitioner did not
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`present evidence or argument that Bennett disclosed a notification event that would
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`result in the registrant being notified that the event occurred. (Paper 17 at 14.) This
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`was the Board’s only stated rationale for denying institution of the Petition. (Id.)
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`The Board did not address (1) the Bennett completion code sent to the registrant as
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`a result of the notification event or (2) Petitioner’s evidence in claim 4 that the
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`notification event results in notifying the registrant of the occurrence of the event.
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`3
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`Case IPR2016-00450
`Patent No. 8,462,920
`The fact that the Board did not address these Petition arguments is an error of fact
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`and law warranting rehearing.
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`III. LEGAL STANDARDS
`A request for rehearing “must specifically identify all matters the party
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`believes the Board misapprehended or overlooked, and the place where each
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`matter was previously addressed in a motion, an opposition, or reply.” 37 C.F.R.
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`§ 42.71(d). Clearly erroneous fact findings and erroneous conclusions of law are
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`abuses of discretion that warrant reconsideration. Stevens v. Tamai, 366 F.3d 1325,
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`1330 (Fed. Cir. 2004).
`
`A.
`
`Finding a Dependent Claim Unpatentable Requires Finding the
`Broader Claims Also Unpatentable
`
`Dependent claims contain all the limitations of the claims from which they
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`depend. Soverain Software LLC v. Victoria’s Secret Direct Brand Mgmt., LLC, 778
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`F.3d 1311, 1315 (Fed. Cir. 2015). As a result, where a dependent claim is found
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`obvious, the broader independent claims must also be obvious. Id.; also Callaway
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`Golf Co. v. Acushnet Co., 576 F.3d 1331, 1344 (Fed. Cir. 2009) (“A broader
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`independent claim cannot be nonobvious where a dependent claim stemming from
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`that independent claim is invalid for obviousness.”) (citation omitted). And the
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`PTAB has recognized that, when a Petitioner presents arguments regarding a
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`dependent claim, those arguments may be applied to the claims from which that
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`4
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`Case IPR2016-00450
`Patent No. 8,462,920
`dependent claim depends. Garmin Int’l Inc. v. Cuozzo Speed Techs. LLC,
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`IPR2012-00001, Paper 15 at 22 (PTAB Jan. 9, 2013).
`
`B.
`
`The APA Requires that the Board Articulate the Rationale for Its
`Decisions
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`“[T]he Board must articulate its reasoning for making its decision,” as well
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`as “develop and explain the basis for its findings.” Cutsforth, Inc. v. MotivePower,
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`Inc., Case No. 2015-1316, 2016 WL 279984, at *3 (Fed. Cir. Jan. 22, 2016)
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`(reversing the Board’s Final Written Decision where it did not provide enough
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`explanation to support its finding of obviousness); In re Sang-Su Lee, 277 F.3d
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`1338, 1342-45 (Fed. Cir. 2002) (reversing denial of a patent application and
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`remanding so that the Board could provide “reasoned decisionmaking”); see also
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`Administrative Procedure Act, Pub. L. No. 404, § 8(b) (1946). “Broad, conclusory
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`statements are not enough to satisfy the Board’s obligation to provide reasoned
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`explanation for its decision.” Cutsforth, 2016 WL 279984, at *3 (citing In re Sang-
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`Sue Lee, 277 F.3d at 1343-45).
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`IV. BASIS FOR RELIEF REQUESTED
`A. The Board’s Only Stated Reason for Denying Institution
`Overlooks Two Arguments in the Petition
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`Rehearing is warranted because the Board overlooked two arguments in the
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`Petition that show the Board’s only rationale for denying institution was based on
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`an incorrect finding of fact. 37 C.F.R. § 42.71(d); Stevens, 366 F.3d at 1330. The
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`5
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`Case IPR2016-00450
`Patent No. 8,462,920
`Board denied institution because it found that “Petitioner has not provided
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`evidence or argument that Bennett teaches a notification event that would result in
`
`the registrant being notified that the event occurred.” (Paper 17 at 14.) The Board
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`concluded this finding was dispositive because Petitioner relied on Bennet to teach
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`the “notification event” of claim 1. (Id. at 12.) Both conclusions overlook
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`arguments in the Petition that (1) Bennett and (2) Bennett in view of Rolfe teach
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`and render obvious notifying the registrant of the occurrence of the notification
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`event. (Paper 1 at 44-47, 32-33.) Petitioner addresses each of the arguments that
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`the Board overlooked in turn below.
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`1.
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`The Board Overlooked Petitioner’s Argument that (1)
`Bennett and (2) Bennet in View of Rolfe Render Obvious
`Notifying the Registrant of the Occurrence of the
`Notification Event
`
`Petitioner expressly argued that (1) Bennett and (2) Bennett in view of Rolfe
`
`render obvious notifying the user of the occurrence of the notification event. (Paper
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`1 at 44-46.) Claim 4 depends from claims 1 and 2 and expressly adds the
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`requirement that the registrant be notified of the occurrence of the notification
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`event that was recited in claim 1. (Supra § II at 2-3; Ex. 1001, cls. 1[c]-[d], 4.)
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`Claim 4 uses the term “notification event” in nearly the same way that the Board
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`construed the term for claim 1. Thus, the Petition’s arguments for claim 4 are
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`highly relevant to the “notification event.” Both the Federal Circuit and this Board
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`have recognized that the dependent claim, and the claims from which it depends,
`6
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`Case IPR2016-00450
`Patent No. 8,462,920
`should be independently analyzed in this situation. Soverain, 778 F.3d at 1315;
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`Garmin, IPR2012-00001, Paper 15 at 22; Petroleum Geo-Services Inc. v.
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`WesternGeco LLC, IPR2014-00689, 101 at 18 (Dec. 15, 2015); Ford Motor Co. v.
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`Paice LLC, IPR2015-00801, Paper 12 at 32 (PTAB Oct. 26, 2015).
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`In support of Grounds 1 and 2, Petitioner provided evidence and argument
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`that Bennett “renders obvious notifying the registrant of the occurrence of the
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`established notification event.” (Paper 1 at 44.) Petitioner explained that, because
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`Bennett already disclosed contacting the registrant upon the occurrence of a
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`notification event in order to provide a completion code for re-verification,
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`“[a] POSITA would have found it obvious and simple to include, as part of the
`
`SMS or voice message communicating the verification code, that a notification
`
`event has occurred, so that customers were not constantly calling to inquire why a
`
`re-verification was required.” (Id. at 44-45 (emphasis added).) The Petition went
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`on to explain that notifying users of particular events was well known at the time
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`of the invention of the ‘920 patent. (Id.)
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`In support of Grounds 3 and 4, Petitioner also provided evidence and
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`argument showing that Bennett in view of Rolfe renders obvious notifying the user
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`of the occurrence of the notification event. (Paper 1 at 45-47.) Specifically, Rolfe
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`discloses a system that verifies certain credit card transactions depending upon the
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`value of the transaction. (Paper 1 at 46.) When Rolfe’s system detects a transaction
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`7
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`Case IPR2016-00450
`Patent No. 8,462,920
`of a certain value, it “calls the [credit card] owner and informs the owner of the
`
`notification event.” (Paper 1 at 46.) As explained in the Petition, it would have
`
`been obvious to use Bennett’s verification message to transmit both the verification
`
`code and Rolfe’s notification so that the user would know why they were being
`
`contacted. (Paper 1 at 45-47.)
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`As a result, Petitioner provided argument and evidence showing that Bennett
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`and Bennett in view of Rolfe render obvious notifying the user of the occurrence of
`
`the notification event in accordance with the Board’s construction. (See Paper 17 at
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`12-14.) Therefore, Petitioner requests the Board rehear and institute inter partes
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`review at least against dependent claim 4.
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`In addition, because claim 4 depends from claims 1 and 2, Petitioner’s
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`arguments for claim 4 apply equally to claims 1 and 2. Soverain, 778 F.3d at 1315.
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`As the Board has recognized and the Federal Circuit has confirmed, dependent
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`claims include all the limitations of the claims from which they depend. Id.;
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`Petroleum Geo-Services, IPR2014-00689, 101 at 18; Ford Motor Co., IPR2015-
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`00801, Paper 12 at 32. As a result, the invalidity determination of dependent claim
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`4 necessarily extends to claims 1 and 2 from which it depends. Soverain, 778 F.3d
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`at 1315 (citing Callaway Golf, 576 F.3d at 1344). For the same reason, because
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`claim 5 depends from claim 4, Petitioner’s arguments regarding claim 4 also apply
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`8
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`to claim 5. Id.
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`Case IPR2016-00450
`Patent No. 8,462,920
`The Board overlooked the Petition’s arguments relating to the notification
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`limitations of claim 4 when it denied institution by concluding that because claim 4
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`depends from claim 1, the decision to institute inter partes review rose and fell
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`with claim 1. (Paper 17 at 14.) As a result, the Board’s decision denying institution
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`of inter partes review of claim 4 does not address the Petition’s arguments
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`regarding claim 4’s notification requirement, which is the same limitation and
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`argument the Board found lacking in the Petition for claim 1. (Paper 17 at 14.) The
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`absence of explanation regarding claim 4 in the Board’s institution denial does not
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`comply with the APA’s requirement that the Board “articulate its reasoning for
`
`making its decision,” as well as “develop and explain the basis for its findings.”
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`Cutsforth, 2016 WL 279984, at *3; In re Sang-Su Lee, 277 F.3d at 1342-45; see
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`also APA, Pub. L. No. 404, § 8(b). The Board’s denial of inter partes review of
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`claim 4, without addressing the Petition’s arguments regarding notifying the
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`registrant of the occurrence of the notification event, also supports rehearing. See
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`Stevens, 366 F.3d at 1330.
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`Based on the foregoing, Petitioner requests that the Board rehear its denial of
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`institution of inter partes review of claims 1, 2, 4, and 5 in light of Petitioner’s
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`arguments that Bennett and Bennett in view of Rolfe teach and render obvious
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`notifying the registrant of the occurrence of the notification event.
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`9
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`2.
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`Case IPR2016-00450
`Patent No. 8,462,920
`The Board Overlooked Petitioner’s Argument that Bennett
`Notifies the Registrant of the Occurrence of the Notification
`Event by Sending the Registrant a Verification Code as Part
`of the Re-verification Process
`
`The Board’s institution denial also warrants rehearing because the Board
`
`overlooked Petitioner’s evidence and argument that Bennett disclosed notifying the
`
`registrant of the occurrence of the notification event as part of the re-verification
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`process. (Paper 1 at 23-26, 32-33.) In its denial of institution, the Board construed
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`“notification event” as “an event that results in the registrant being notified that the
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`event occurred.” (Decision at 7-11.) However, when the Board applied this
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`construction to the arguments in the Petition, the Board overlooked that Bennett’s
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`re-verification includes notifying the registrant of the occurrence of the notification
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`event in the form of communicating a verification code to the registrant for use in
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`two-factor authentication. (Paper 1 at 32-33, 22-23, 19-20; Ex. 1005, Fig. 3 (200).)
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`As explained in the Petition and by Dr. Shamos, Bennett discloses a two-
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`factor authentication system that is used to both initially authenticate a registrant
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`and to re-verify the registrant upon the occurrence of a notification event. (Paper 1
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`at 11-12, 22-36.) As the Petition explains, Bennett’s two-factor authentication
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`process contains four steps.
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`1. Detection: Bennett discloses detecting the occurrence of an event that
`
`warrants re-verification. (Paper 1 at 11, 22-23 (the purpose of Bennett’s
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`10
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`Case IPR2016-00450
`Patent No. 8,462,920
`decision module is to determine whether two factor authentication is
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`required).
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`2. Communicate: When Bennett determines re-verification is required, it
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`communicates a verification code to the registrant for use in completing the
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`required two-factor authentication. (Paper 1 at 32-33, 19-20 (two factor
`
`authentication includes communicating a verification code to the registrant),
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`11-12, 22-23; Ex. 1005, Fig. 3 (200).)
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`3. Receive: Bennett receives the verification code from the registrant through a
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`web interface. (Paper 1 at 34-35, 21-22, 11-12, 22-23; Ex. 1005, Fig. 3.)
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`4. Compare: Bennett re-verifies the registrant by comparing the verification
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`code sent to the registrant with the code received through the web interface.
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`(Paper 1 at 35-37, 11-12, 22-23; Ex. 1005, Fig. 3.)
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`Step
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`two of Bennett’s
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`re-verification process—communicating
`
`the
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`verification code to the registrant—meets the Board’s construction of notification
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`event because the communication of the verification code is one form of notifying
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`the registrant of the occurrence of the event. (Paper 1 at 32-33, 44.)
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`The petitioned claims, under the Board’s construction, do not require a
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`particular form of notification. For example, the Board’s construction does not
`
`require that the notification be in the form of a sentence. Any type of notification
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`works under the Board’s construction. And Bennett sends a verification code as its
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`11
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`Case IPR2016-00450
`Patent No. 8,462,920
`form of notification. (Paper 1 at 32-33, 11.) As a result, Petitioner’s argument that
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`Bennett discloses re-verifying registrants upon
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`the occurrence of certain
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`transactions includes notifying the user of the occurrence of the notification event
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`in accordance with the Board’s claim construction. (Id.) Petitioner expressly
`
`described this position in its Petition. (Id.)
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`Based on the foregoing, Petitioner requests the Board rehear its decision
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`denying
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`institution of
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`the Petition
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`in
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`light of Bennett’s disclosure of
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`communicating a verification code to the user upon the occurrence of certain
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`transactions as part of the reverification process.
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`V. CONCLUSION
`For the foregoing reasons, Petitioner requests that:
`
`(1) The Board rehear its institution denial of claims 1, 2, 4, and 5 in light
`
`of the Petition’s arguments that Bennett and Bennett in view of Rolfe teach and
`
`render obvious notifying the user of the occurrence of the notification event; and
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`(2) The Board rehear its denial of institution of all claims in light of the
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`Petition’s argument that Bennett teaches notifying the user of the occurrence of the
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`notification event in the form of communicating a verification code to the user
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`upon the occurrence of certain transactions as part of the reverification process.
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`Case IPR2016-00450
`Patent No. 8,462,920
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`Respectfully submitted,
`
` / Wayne Stacy /
`Wayne Stacy
`Reg. No. 45,125
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`July 29, 2016
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`Case IPR2016-00450
`Patent No. 8,462,920
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`CERTIFICATE OF SERVICE
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`I hereby certify pursuant to 37 C.F.R. §§ 42.6(e) and 42.105(a) that the
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`foregoing PETITONER’S REQUEST FOR REHEARING UNDER 37 C.F.R.
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`§ 42.71(c) and CERTIFICATE OF SERVICE was served electronically via email
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`on the following:
`
`Elena McFarland
`(EMCFARLAND@shb.com)
`Tawni Wilhelm
`(TWILHELM@shb.com, TeleSignIPR@shb.com)
`Jesse Camacho
`(JCAMACHO@shb.com)
`Counsel for Patent Owner, TeleSign Inc.
`Shook, Hardy & Bacon LLP
`2555 Grand Blvd.
`Kansas City, MO 64108
`
`Amy Foust
`(AFOUST@shb.com)
`Counsel for Patent Owner, TeleSign Inc.
`Shook, Hardy & Bacon LLP
`201 S. Biscayne Blvd., Suite 3200
`Miami, FL 33131
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`
`
`
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`
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`Respectfully submitted,
`
` / Wayne Stacy /
`Wayne Stacy
`Reg. No. 45,125
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`134206088 v4
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`July 29, 2016
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