UNITED STATES PATENT AND TRADEMARK OFFICE
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`_________________________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_________________________________________
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`Twilio Inc.
`Petitioner
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`v.
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`TeleSign Corporation
`Patent Owner
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`Patent No. 8,462,920
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`Patent Filing Date: October 5, 2006
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`
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`Title: REGISTRATION, VERIFICATION AND NOTIFICATION SYSTEM
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`__________________________________________________
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`Inter Partes Review No.: IPR2016-00450
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`_________________________________________________
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`PATENT OWNER’S OPPOSITION TO PETITIONER’S REQUEST FOR
`REHEARING
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`7804780
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`I.
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`II.
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`Table of Contents
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`INTRODUCTION ........................................................................................... 1
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`STANDARD OF REVIEW ............................................................................. 1
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`III. ARGUMENT ................................................................................................... 2
`A.
`Petitioner does not point to any erroneous conclusion of law or
`any actual clearly erroneous factual findings. ....................................... 2
`Petitioner’s purportedly overlooked evidence does not
`contradict the Board’s findings. ............................................................ 3
`The Board did not overlook Petitioner’s arguments. ............................ 4
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`B.
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`C.
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`1.
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`2.
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`3.
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`The Board correctly stated that a deficiency as to claim 1
`applies to the dependent claims. ................................................. 4
`The allegedly overlooked arguments regarding claims 4
`and 5 do not cure the deficiencies as to claim 1 and are
`not relevant. ................................................................................. 6
`The Institution Decision expressly addressed all of
`Petitioner’s grounds. ................................................................... 8
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`D. Additionally, the Rehearing Request should be denied because
`it relies on unclear implications and attempts to revise the
`Petition. .................................................................................................. 9
`1.
`The Board
`is not obligated
`to consider alleged
`implications of the cited art that were not raised in the
`Petition. ....................................................................................... 9
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`2.
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`The Request for Rehearing improperly revises arguments
`from the Petition........................................................................ 11
`The Board did not overlook the “completion code” argument. .......... 11
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`E.
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`IV. CONCLUSION ............................................................................................. 12
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`I.
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`INTRODUCTION
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`In its denial decision (Paper 17, “Dec.”), the Board determined: “Petitioner
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`has not shown sufficiently that Bennett teaches all of the limitations of independent
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`claim 1.” Dec. 14. Petitioner’s Rehearing Request (Paper No. 19, “Req. Reh’g”)
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`should be denied because:
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`• Petitioner does not point to any erroneous conclusion of law nor to
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`any true factual finding that is clearly erroneous;
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`• Petitioner does not point to anything that “directly contradict[s]” (Req.
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`Reh’g 1) the Board’s actual deficiency finding;
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`• the Board did not overlook the Petition’s actual arguments; and
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`• those arguments are not relevant to claim 1 and would not have cured
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`the deficiencies the Board correctly found to be dispositive.
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`II.
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`STANDARD OF REVIEW
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`Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a
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`panel will review the decision for an abuse of discretion.” An abuse of discretion
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`occurs when a “decision was based on an erroneous conclusion of law or clearly
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`erroneous factual findings, or . . . a clear error of judgment.” PPG Indus., Inc. v.
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`Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (emphasis
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`added) (citations omitted). The party requesting rehearing bears the burden of
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`showing the decision should be modified. 37 C.F.R. § 42.71(d). The request must
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`identify, specifically, all matters the party believes the Board misapprehended or
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`overlooked. 37 C.F.R. § 42.71(d).
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`III. ARGUMENT
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`Based on a claim construction that Petitioner does not challenge in its
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`Request for Rehearing, the Board found that “Petitioner has not shown sufficiently
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`that Bennett teaches all of the limitations of independent claim 1.” Dec. 14.
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`Because the Petitioner did not carry its burden as to an independent claim, it cannot
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`have carried its burden as to a dependent claim unless, perhaps, it independently
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`and sufficiently analyzed anew all of the collective limitations from the
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`corresponding base claims. Petitioner did not do that. Instead, the Petition’s
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`analysis of dependent claims builds on insufficient argument and evidence from
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`claim 1. Thus, the Board’s finding as to claim 1 was dispositive. And as a matter
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`of law, the Board could not have overlooked any argument or evidence that was
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`directed to the additional limitations of the dependent claims.
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`A.
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`Petitioner does not point to any erroneous conclusion of law or
`any actual clearly erroneous factual findings.
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`The Rehearing Request does not allege any proper basis for rehearing. It
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`disagrees with the Board’s conclusions, but cites no erroneous conclusion of law.
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`An erroneous factual finding justifying rehearing would need to be a true factual
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`error (and relevant), something akin to the Board mistaking an energy amount by
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`three orders of magnitude. Boston Scientific Corp. v. UAB Research Found.,
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`IPR2015-00918, Paper 14 at 4-5 (March 7, 2016) (granting rehearing after
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`correcting an erroneous energy identification of 0.025 Joules to the correct value of
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`0.000025 Joules). Another example of a true factual issue is whether a party
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`supplied a translation of a PCT application, as in the Stevens case cited at Req.
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`Reh’g 5. (Though even in Stevens, the Federal Circuit affirmed the Board and
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`rejected three arguments in favor of deferring to the Board.) Unlike in those cases,
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`however, Petitioner does not point to an actual erroneous factual finding—let alone
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`one “clearly erroneous.” What Petitioner describes as an incorrect finding of fact
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`is actually its disagreement with the Board. Req. Reh’g 4, 5. Petitioner’s rationale
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`is that the Board in fact overlooked that Petitioner made certain arguments. If that
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`rationale were adopted, then parties could simply recast their disagreements with
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`the Board’s analysis as incorrect factual findings. Missing from the Rehearing
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`Request is the Board’s actual determination: that “Petitioner has not shown
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`sufficiently that Bennett teaches all of the limitations of independent claim 1.”
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`Dec. 14 (emphasis added). That determination was within the Board’s discretion.
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`Petitioner has not shown how that discretion was abused. It cites to no erroneous
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`conclusions of law nor any clearly erroneous “factual” findings.
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`B.
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`Petitioner’s purportedly overlooked evidence does not contradict
`the Board’s findings.
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`The Rehearing Request includes three bullet points that allegedly contradict
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`the Board’s findings. Req. Reh’g 1-2. They do not because they all relate to the
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`act of notifying a registrant (claim 4) as opposed to the nature of a “notification
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`event” (claim 1) as properly construed.
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`C. The Board did not overlook Petitioner’s arguments.
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`1.
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`The Board correctly stated that a deficiency as to claim 1
`applies to the dependent claims.
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`Petitioner’s rehearing-request arguments fail because the purportedly
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`overlooked arguments in the Petition are directed only to the additional limitations
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`in dependent claims 4 and 5, not to the missing “notification event” limitation of
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`claim 1. Petitioner relies heavily on the maxim that if a dependent claim is found
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`invalid by prior art, the claims from which it depends are also invalid. Req. Reh’g
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`8, 6-7 (citing other Board decisions and Soverain, 778 F.3d at 1315). That is true,
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`but does not apply here and does not mean that the Board overlooked the
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`questioned arguments.
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`It does not apply because for each dependent claim, Petitioner relied on its
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`insufficient analysis of independent claim 1 and did not collectively re-analyze the
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`totality of limitations from claims 1, 2, and 4 (and 5). For example, in addressing
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`claim 4 the Petition asserts that “As explained above, Bennett (Ground 1) or
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`Bennett in view of Thoursie (Ground 2) discloses re-verifying the registrant’s
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`electronic contact over a telephonic connection….” Pet. 44 (emphasis added).
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`With respect to Ground 2, the Petition again relies upon Bennett and its insufficient
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`claim-1 analysis, citing back to Section X.A.8 of the Petition. Pet. 44, 22. The
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`proposed combination with Rolfe similarly relies on Bennett as having purportedly
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`taught the “notification event” limitations. Pet. 46.
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`The Board did not overlook arguments given an equally true, converse
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`maxim: if a claim limitation is found missing in the prior art, then that claim as
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`well as any dependent claim is not unpatentable in view of that art. In re Fine, 837
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`F.2d 1071, 1076 (Fed. Cir. 1988) (“Dependent claims are nonobvious under
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`section 103 if the independent claims from which they depend are nonobvious.”);
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`see also Ortho-McNeil Pharm., Inc. v. Mylan Labs., Inc., 520 F.3d 1358, 1365
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`(Fed. Cir. 2008) (“[D]ependent claims are nonobvious if the independent claims
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`from which they depend are nonobvious.”) (quoting In re Fritch, 972 F.2d 1260,
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`1266 (Fed. Cir. 1992)).
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`As to claim 1, the Board explained that both of Petitioner’s “asserted
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`grounds of unpatentability rely upon Bennett as teaching the ‘notification event’ of
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`independent claim 1” and that “a dispositive issue is whether Petitioner has shown
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`sufficiently that Bennett teaches this limitation.” Dec. 12. The Board is correct on
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`both counts. “[N]otification event” appears in claim elements [1c], [1d], and [1e].
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`For those elements, the only prior-art reference the Petition relies on is Bennett.
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`Pet. 22-31.1 The Board’s Decision expressly cites to those pages, and more. Dec.
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`1 For Ground 2, the Petition relies on Thoursie, but only for elements 1[e][i]-
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`[iv], which do not recite “notification event.”
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`12 (citing Petition 22-42). The Board considered the arguments in those pages and
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`disagreed with them. Dec. 12-14.
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`Consistent with black-letter law, the Board articulated its rationale that claim
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`4, which depends from claim 1, was also not likely to be found unpatentable.
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`Thus, the Board correctly found that Petitioner did not sufficiently show that
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`Bennett teaches all of the limitations of independent claim 1. Dec. 14. And, as
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`mentioned, if a limitation of a base claim is missing from the art, it is also missing
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`from any corresponding dependent claims. This supports the basis for the
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`Decision’s comment that “we are not persuaded that Petitioner has established a
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`reasonable likelihood that Petitioner would prevail in its challenges to claim 1 or to
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`claims 2–10, 13, and 17–22, which depend from claim 1.” Dec. 14. The Board
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`need not provide redundant explanations of its rationale. The Board sufficiently
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`stated that the reasons “explained above” explain why and how Petitioner did not
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`provide evidence or argument that Bennett teaches a notification event. Dec. 14.
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`2.
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`The allegedly overlooked arguments regarding claims 4 and
`5 do not cure the deficiencies as to claim 1 and are not
`relevant.
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`The Petition’s failure to show that Bennett teaches all of the limitations of
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`claim 1 is not cured by a piecemeal showing that a single limitation in dependent
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`claim 4 (or claim 5) is purportedly found in the prior art. A broken chain is not
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`considered whole just because links after a broken or missing link are shown to be
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`intact.2 Here in view of insufficient evidence and argument, the Board found that
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`the “notification event” limitation of claim 1 was a missing link. The Rehearing
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`Request does not challenge this deficiency. It does not assert that the Petition
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`actually does show that the cited prior art teaches claim 1’s “notification event”
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`limitation, as properly construed.
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`Instead, the Rehearing Request focuses on claim 4, asserting that the Board
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`should overturn its decision because Petitioner showed that the prior art
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`purportedly renders obvious the specific claim-4 limitation of “notifying the user of
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`the occurrence of the notification event in accordance with the Board’s
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`construction.” Req. Reh’g 8 (emphasis added). That misses the point—even if
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`true, it does not alter the Board’s finding that Petitioner did not show sufficiently
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`that Bennett teaches all of the limitations of independent claim 1.
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`A proper obviousness analysis requires analyzing a claim as a whole. 35
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`U.S.C. § 103(a) (pre-AIA). But Petitioner argued obviousness of limitations
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`rather than claims as a whole. Pet. 45 (“If the Board finds that Bennett, alone, does
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`not render obvious claim 4, Bennett in view of Rolfe renders this limitation
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`obvious in support . . . ”) (emphasis added). This analysis affects Petitioner’s
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`rational for seeking rehearing. For example, Petitioner asserts that:
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`2 Patent Owner does not concede that any of Petitioner’s arguments or
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`evidence is substantial or legally sufficient.
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`Claim 4 uses the term “notification event” in nearly the
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`same way that the Board construed the term for claim 1.
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`Thus, the Petition’s arguments for claim 4 are highly
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`relevant to the “notification event.”
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`Req. Reh’g 6. First, the term “the established notification event” finds antecedent
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`basis in claim 1. Thus, it is not being used any differently from claim 1, and the
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`Board’s deficiency basis applies with equal force to claim 4. Second, the Petition
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`is only arguing “this limitation”—that of notifying the user of the occurrence of the
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`notification event. The Petition’s arguments regarding claim 4 (or 4 and 5) do not
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`include argument that claim elements 1[c], 1[d], and 1[e] (which recite
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`“notification event”) are met. Petitioner cites to pages 44-47 of the Petition. Req.
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`Reh’g 6-9. But the Board did not find any argument that “notification event” itself
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`was sufficiently shown to be taught in those pages. Dec. 12-14. Thus, Petitioner’s
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`arguments regarding claims 4 and 5 are not relevant because those arguments focus
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`on purportedly showing that the additional limitation(s)3 of the respective
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`dependent claims are taught, not on showing that “the notification event” (from
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`claim 1) is taught in the first place.
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`3.
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`The Institution Decision expressly addressed all of
`Petitioner’s grounds.
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`3 E.g., notifying the registrant.
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`As to Petitioner’s “Remaining Grounds” (Dec. 14), the Board expressly
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`states that “[f]or the reasons explained above regarding claim 1, we are not
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`persuaded that Petitioner has established a reasonable likelihood of prevailing with
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`respect to these grounds as well,” which indicates that the Board did consider those
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`grounds and argument. Dec. 14. First, the Board included a separate section (“D”)
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`to specially address Petitioner’s “Remaining Grounds.” Second, the Decision
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`specifically identifies the respectively challenged claims (4, 5, and 13) subject to
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`the remaining grounds. Thus, the Board did not overlook Petitioner’s arguments.
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`D. Additionally, the Rehearing Request should be denied because it
`relies on unclear implications and attempts to revise the Petition.
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`1.
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`The Board is not obligated to consider alleged implications
`of the cited art that were not raised in the Petition.
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`The Rehearing Request improperly attempts to argue for the first time that
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`the Petitioner’s claim-4 arguments are “highly relevant” to claim 1. Req. Reh’g 6.
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`First, they are not because they address a different, additional limitation (that of
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`actually notifying the registrant in claim 4 as opposed to the properly construed
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`“notification event” itself if claim 1).
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`Second, the Petition does not provide clear notice that its arguments as to
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`claim 4 were applicable to claim 1 and the Board need not evaluate the similarities
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`in arguments presented for different claims. See e.g., TRW Automotive US LLC v.
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`Magna Elecs. Inc., IPR 2014-00296, Decision on Request for Rehearing, Paper 17
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`at 5-6 (“Petitioner does not direct us to any statement in its Petition, which
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`provides clear notice to either Patent Owner or the Panel, that the arguments
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`Petitioner presented for the ‘Plurality of Exposure Periods Limitation’ in
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`dependent claim 53 also apply to claim 1 from which claim 53 depends. Neither
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`Patent Owner nor the Board has an obligation to evaluate the similarities and
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`differences in arguments presented for different claims, for the purpose of
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`determining whether the limitations are sufficiently similar, or insufficiently
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`different, such that Petitioner’s arguments directed to one should be deemed
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`automatically as also directed to another.”) (emphasis added).
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`The Board could not have overlooked any arguments regarding claim 4 that
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`are supposedly independently relevant to claim 1 because the Petition does not
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`specifically say that, nor does it address meeting the “notification event” limitation
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`of claim 1 when arguing the purported obviousness of the “notifying” limitation of
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`claim 4. Berk-Tek LLC v. Belden Techs. Inc., IPR2013-00057, Paper 21 at 2 (May
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`14, 2013) (“the Board could not have misapprehended or overlooked a matter not
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`specifically addressed by the petitioner, and it is not an abuse of discretion not to
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`have considered specific arguments and presentation submitted by the petitioner
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`for the first time in its request for rehearing.”). Indeed considering arguments not
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`in the Petition would be improper, and the Petition does not argue that any
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`reference except for Bennett teaches the “notification event” itself. In re Magnum
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`Oil Tools Int’l, Ltd., 2016 U.S. App. LEXIS 13461, *30 (Fed. Cir. July 25, 2016)
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`(“[W]e find no support for the PTO’s position that the Board is free to adopt
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`arguments on behalf of petitioners that could have been, but were not, raised by the
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`petitioner during an IPR.”).
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`2.
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`The Request for Rehearing improperly revises arguments
`from the Petition.
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`Petitioner is improperly trying to revise arguments from its Petition. For
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`example, on page 1, the Rehearing Request states that “The Petition explains that it
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`would have been obvious to use Bennett’s verification message to transmit both
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`the verification code . . . .” (emphasis added). But that is not what the Petition
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`actually says. Instead, it says: “it would have been obvious to a POSITA to
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`modify Bennett’s verification process to notify the user of the notification event
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`as taught by Rolfe.” Pet. 46 (emphasis added). The difference is seemingly subtle,
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`but the Petition’s wording is far less favorable to Petitioner, amounting to a tacit
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`admission that Bennett’s verification process would need to be modified because it
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`does not actually notify the user.
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`E.
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`The Board did not overlook the “completion code” argument.
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`Petitioner wrongly asserts that Board did not address Petitioner’s argument
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`regarding Bennett’s “completion code.” Req. Reh’g 3 (see also, p. 2). The
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`Decision confirms that the Board was aware of the completion-code feature in
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`Bennett, expressly stating:
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`The system establishes a telephone connection (the
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`second channel) with the phone number and sends a code
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`to the user; the user then enters the code into the website
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`(the first channel) to complete the transaction. Id. at
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`2:53–3:16, 15:8–50.
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`Dec. 12-13 (emphasis added). The term “code” above refers to Bennett’s
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`“completion code.” For example, Bennett refers to the “completion code” nine
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`times in its specification at 15:8–50, a portion of Bennett expressly cited by the
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`Board. The Board considered Petitioner’s arguments and disagreed with them,
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`which is not a basis for rehearing.
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`IV. CONCLUSION
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`The Institution Decision addresses the Petitioner’s arguments as they were
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`presented in the Petition, which relies only on Bennett to show that the
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`“notification event” limitation of claim 1 was taught. Although the Board’s
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`Decision shows that the Board did not overlook any relevant arguments, even if it
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`had, that is proper where—as here—Petitioner did not state that arguments as to
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`claims 4 and 5 were independently relevant to claim 1. TRW Automotive US LLC
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`v. Magna Elecs. Inc., IPR2014-00294, Paper 21 at 8 (Aug. 27, 2014) (“A rehearing
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`request is not a supplemental petition. ‘The Board may exclude or give no weight
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`to the evidence where a party has failed to state its relevance or to identify specific
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`portions of the evidence that support the challenge.’” (citation omitted).
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`October 6, 2016
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`Respectfully Submitted,
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`/Jesse J. Camacho/
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`Jesse J. Camacho (Reg. No. 51,258)
`Counsel for Patent Owner
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`CERTIFICATE OF SERVICE
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`The undersigned herby certifies that on October 6, 2016, a copy of the
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`foregoing was served by electronic mail (or is being served by electronic mail
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`simultaneously with its filing with the Board on even date) on the persons listed
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`below at their corresponding addresses, which includes all counsel of record:
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`Wayne Stacy (wstacy@cooley.com and wayne.stacy@bakerbotts.com);
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`Eliot Williams (eliot.williams@bakerbotts.com);
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`Sarah Guske (sarah.guske@bakerbotts.com);
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`Carrie Richey (crichey@cooley.com and zTwilioIPR@cooley.com);
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`Mikaela Stone (mstone@cooley.com); Britton Davis (bdavis@cooley.com).
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`Petitioner has authorized service by email.
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`Amy M. Foust
`/Amy M. Foust/
`Reg. No. 57,782
`Counsel for Patent Owner TeleSign
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`SHOOK, HARDY & BACON L.L.P.
`2555 Grand Blvd.
`Kansas City, MO 64108
`(816) 474-6550
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