Paper 29
`Trials@uspto.gov
`571-272-7822 Entered: November 15, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TWILIO INC.,
`Petitioner,
`
`v.
`
`TELESIGN CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2016-00450
`Patent 8,462,920 B2
`____________
`
`
`
`
`
`
`Before SALLY C. MEDLEY, JUSTIN T. ARBES, and
`KIMBERLY McGRAW, Administrative Patent Judges.
`
`
`
`McGRAW, Administrative Patent Judge.
`
`DECISION
`Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822 Entered: November 15, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TWILIO INC.,
`Petitioner,
`
`v.
`
`TELESIGN CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2016-00450
`Patent 8,462,920 B2
`____________
`
`
`
`
`
`
`Before SALLY C. MEDLEY, JUSTIN T. ARBES, and
`KIMBERLY McGRAW, Administrative Patent Judges.
`
`
`
`McGRAW, Administrative Patent Judge.
`
`DECISION
`Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
`
`
`
`
`
`IPR2016-00450
`Patent 8,462,920 B2
`
`
`I. SUMMARY
`Petitioner filed a Request for Rehearing (Paper 19, “Req. Reh’g”) of
`the Board’s decision (Paper 17, “Dec. on Inst.”), which declined to institute
`inter partes review of claims 1–10, 13, and 17–22 of U.S. Patent No.
`8,462,920 B2 (Ex. 1001, “the ’920 patent”). In its Request, Petitioner seeks
`reconsideration of the denial of institution of (1) independent claim 1 and
`dependent claims 2, 4, and 5 in light of Petitioner’s arguments regarding the
`unpatentability of dependent claim 4 (Req. Reh’g 6–9), and (2) all
`challenged claims in light of Petitioner’s argument that Bennett (Ex. 1005)
`allegedly teaches notifying the user of the occurrence of a notification event
`during the reverification process (Req. Reh’g 10–12). Pursuant to our
`authorization (Paper 20), Patent Owner filed an Opposition (Paper 25)
`opposing Petitioner’s Request for Rehearing and Petitioner filed a Reply
`(Paper 28).
`For the reasons stated below, Petitioner’s Request for Rehearing is
`denied.
`
`II. STANDARD FOR RECONSIDERATION
`When rehearing a decision on petition, the Board will review the
`decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of
`discretion may be determined if a decision is based on an erroneous
`interpretation of law, if a factual finding is not supported by substantial
`evidence, or if the decision represents an unreasonable judgment in weighing
`relevant factors. Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281
`(Fed. Cir. 2005). The party requesting rehearing has the burden of showing
`that the decision should be modified and “[t]he request must specifically
`identify all matters the party believes the Board misapprehended or
`
`2
`
`
`
`IPR2016-00450
`Patent 8,462,920 B2
`
`overlooked.” 37 C.F.R. § 42.71(d).
`III. DISCUSSION
`The ’920 patent states the invention generally relates to on-line
`website registration and a process for notifying registrants of predetermined
`events using information obtained during the registration process. Ex. 1001,
`1:6–13. Claim 1 of the ’920 patent recites three limitations regarding a
`“notification event,” namely: (1) “establishing a notification event associated
`with the registrant;” (2) “identifying an occurrence of the established
`notification event;” and (3) “after identifying the occurrence of the
`established notification event, re-verifying the registrant electronic contact
`wherein re-verifying includes” certain steps.
`In the Petition, Petitioner argued that the broadest reasonable
`interpretation of “notification event” is “an event that results in the registrant
`being contacted either for re-verification or for notification that event
`occurred.” Paper 1, 9 (“Pet.”). Petitioner repeatedly argued that a
`notification event does not require notifying the registrant that the
`notification event occurred and that it is sufficient if the registrant is
`reverified. See id. at 9, 10 (stating “a ‘notification event’ does not
`necessarily result in notifying the registrant of the occurrence” and that a
`notification event “may result in either re-verification or notification) (italics
`added, underlining in original), 22 (stating a notification event is an event
`that results in the registrant being contacted either for re-verification or for
`notification that event occurred), 30 (stating “[a]s explained above, . . .
`notification events are identified for the purpose of re-verifying the user”).
`Petitioner asserted Bennett discloses the “notification event”
`limitations of claim 1 because Bennett discloses events, including decision
`
`3
`
`
`
`IPR2016-00450
`Patent 8,462,920 B2
`
`rules, that can result in the re-verification of the user. See, e.g., id. at 22
`(“Bennett teaches that all attempts to access an account by the registrant are
`subjected to reverification”), 24 (“Bennett expressly teaches establishing
`rules to determine whether to require subsequent two-factor authentication
`based on the user logging in from a different device than she had used in the
`past”), 25 (stating “any rule in Bennett’s decision engine corresponds to the
`claimed notification event” because the engine decides “whether a return
`user must be re-verified through two-factor authentication”). Petitioner also
`argued that if Bennett does not expressly disclose configuring the rules in
`Bennett’s decision making module to correspond to the claimed notification
`event associated with a registrant, it would have been obvious to modify
`Bennett to do so “because the purpose of Bennett’s decision engine is to
`determine whether to require a subsequent two-factor authentication for a
`particular user during a particular transaction.” Id. at 26.
`Patent Owner argued, inter alia, the Petitioner’s construction reads
`“notification” out of “notification event” and that a notification event is “an
`event that results in the registrant being notified that the event occurred.”
`Paper 7, 5, 11, 15.
`We agreed with Patent Owner’s proposed claim construction and
`construed a “notification event” as an event that results in the registrant
`being notified that the event occurred. Dec. on Inst. 7–11. We determined
`that Petitioner failed to show sufficiently that Bennett teaches a “notification
`event” as required by claim 1. Id. at 12–14. We noted that Petitioner did not
`argue that Bennett teaches notifying the user that the notification event
`occurred, but rather, in accordance with its proposed interpretation of
`“notification event” as allowing for re-verification or notification that the
`
`4
`
`
`
`IPR2016-00450
`Patent 8,462,920 B2
`
`event occurred, that the notification event in Bennett is an event that results
`in the subsequent two-factor authentication (reverification) of the user. Id. at
`12–13. Consequently, we determined the information presented in the
`Petition did not demonstrate a reasonable likelihood that Petitioner would
`prevail in its challenge to claim 1 or the claims that depend therefrom. Id. at
`14.
`
`Petitioner argues in its Request for Rehearing that our Decision
`“overlooked two arguments in the Petition that show the Board’s only
`rationale for denying institution was based on an incorrect finding of fact.”
`Req. Reh’g 5. First, Petitioner asserts that the Board overlooked Petitioner’s
`arguments, made only in connection with claim 4, that (1) Bennett and (2)
`Bennett in view of Rolfe (Ex. 1006) render obvious notifying the registrant
`of the occurrence of the notification event. Id. at 6–9. Next, Petitioner
`asserts the Board overlooked arguments that Bennett discloses notifying the
`registrant of the occurrence of the notification event as part of the re-
`verification process. Id. at 10–12.
`We address these arguments in turn.
`Request for Rehearing of Denial of Institution of Inter Partes Review
`of Claims 1, 2, 4, and 5 in Light of Arguments Regarding
`Unpatentability of Claim 4
`
`Petitioner asserts the Board overlooked arguments and evidence
`(1) that Bennett in view of Rolfe render obvious notifying the user of the
`occurrence of the notification event and (2) that it would have been obvious
`to modify Bennett to notify the registrant of the occurrence of the
`established notification event. Req. Reh’g 6–9 (citing Pet. 44–46).
`Petitioner requests the Board rehear its denial of institution of inter partes
`
`1.
`
`5
`
`
`
`IPR2016-00450
`Patent 8,462,920 B2
`
`review of claims 1, 2, 4, and 5. Id.
`Contrary to Petitioner’s assertion, we did not overlook arguments or
`evidence supporting Petitioner’s position. Rather, Petitioner only made
`these arguments in connection with dependent claim 41 and did not state that
`these arguments were applicable to Petitioner’s asserted ground of
`unpatentability of independent claim 1. Pet. 44–46.
`As noted in the Decision, the Petition only asserted two grounds of
`unpatentability as to claim 1, namely that the claim is unpatentable either
`over Bennett alone or over Bennett and Thoursie (Ex. 1008). See Dec. on
`Inst. 5; Pet. 3–4. Significantly, the Petition did not assert the Rolfe reference
`as a basis for its challenge to independent claim 1. See, e.g., Pet. 3–4 (only
`asserting Rolfe in Grounds 3 and 4 relating to claims 4 and 5, not claim 1).
`Similarly, the Petition did not assert in connection with claim 1 that it would
`have been obvious to modify the re-verification process of Bennett to
`include, along with the verification code, a message that a notification event
`occurred, as now asserted in the Petition for Rehearing. Req. Reh’g 7. We
`will not consider a ground not asserted in the Petition and first raised in the
`Request for Rehearing.
`Petitioner next asserts that the Board incorrectly denied institution as
`to claim 1 because claim 4 depends from claims 1 and 2, and Petitioner’s
`arguments for claim 4 apply equally to claims 1 and 2. Req. Reh’g 8. We
`disagree.
`
`
`1 Claim 4 depends from claim 2, which depends from claim 1, and further
`requires “notifying the registrant of the occurrence of the established
`notification event by establishing a telephonic connection with the registrant
`via a registrant electronic contact.”
`
`6
`
`
`
`IPR2016-00450
`Patent 8,462,920 B2
`
`
`A petition must identify, “in writing and with particularity, each claim
`challenged, the grounds on which the challenge to each claim is based, and
`the evidence that supports the grounds for the challenge to each claim.” 35
`U.S.C. § 312(a)(3) (emphasis added). Our regulations explain the petition
`must provide “a statement of the precise relief requested for each claim
`challenged” and that the statement must identify the claim, “the specific
`statutory grounds [] on which the challenge to the claim is based and the
`patents or printed publications relied upon for each ground,” “[h]ow the
`construed claim is unpatentable,” and “where each element of the claim is
`found in the prior art patents or printed publications relied upon.” 37 C.F.R.
`§ 42.104; see also Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756,
`48,757 (Aug. 14, 2012) (stating the proceeding “begin[s] with the filing of a
`petition that identifies all of the claims challenged and the grounds and
`supporting evidence on a claim-by-claim basis” (emphasis added)).
`Petitioner provided no indication in the Petition that the arguments as
`to claim 4 should be applied to claim 1. Rather, the arguments set forth in
`the Petition regarding dependent claim 4 only relate to the additional
`limitation found in claim 4. See, e.g., Pet. 45 (stating if “Bennett, alone,
`does not render obvious claim 4, Bennett in view of Rolfe renders this
`limitation obvious”) (emphasis added)); see also id. 44–45 (only discussing
`the notification event of claim 4).
`Neither Patent Owner nor the Board has an obligation to evaluate the
`similarities and differences in claim limitations of different claims to
`determine whether the limitations are sufficiently similar, or insufficiently
`different, such that Petitioner’s arguments as to one should be deemed
`automatically as also directed to another. See Medtronic, Inc. v. Lifeport
`
`7
`
`
`
`IPR2016-00450
`Patent 8,462,920 B2
`
`Sciences LLC, Case IPR2014-00284 (PTAB July 22, 2014) (Paper 15)
`(determining the Board did not abuse its discretion when arguments made in
`the Petition with respect to claim 3 were not considered with regard to
`claims 4 and 5).
`Petitioner, in its Request for Rehearing, also asserts the Board
`improperly denied inter partes review of dependent claim 4 without
`articulating its reasoning or explaining the basis for its finding, as the
`Decision did not address the Petition’s arguments regarding claim 4’s
`notification requirement. Req. Reh’g 9.
`This argument is not persuasive. The Decision stated that Petitioner
`did not establish a reasonable likelihood of prevailing with respect to the
`dependent claims because the Petition did not establish a reasonable
`likelihood of prevailing with respect to the sole independent claim. See Dec.
`on Inst. 14; see also Ortho-McNeil Pharm., Inc. v. Mylan Labs., Inc., 520
`F.3d 1358, 1365 (Fed. Cir. 2008) (“[D]ependent claims are nonobvious if the
`independent claims from which they depend are nonobvious.”). Even if the
`Board were to determine that Bennett, or Bennett and Rolfe, would have
`rendered obvious the specific limitations set forth in dependent claim 4, the
`Petition’s arguments regarding independent claim 1 were insufficient to
`demonstrate a reasonable likelihood of prevailing as to claim 1; therefore,
`Petitioner also had not established a reasonable likelihood of prevailing as to
`claims depending from claim 1. Petitioner has not demonstrated that we
`abused our discretion in denying inter partes review of claims 1, 2, and 4 of
`the ’920 patent.
`2.
`Request for Rehearing of Denial of Institution of Inter Partes Review
`of Claims 1–10, 13, and 17–22 in Light of Arguments that a
`
`8
`
`
`
`IPR2016-00450
`Patent 8,462,920 B2
`
`
`Completion Code Provides Notification of Occurrence of Notification
`Event
`
`
`
`Petitioner also asserts that the Board overlooked Petitioner’s evidence
`and argument that Bennett discloses notifying the registrant of the
`occurrence of a “notification event” as part of the two-factor authentication
`“re-verification process.” Req. Reh’g 10 (citing Pet. 19–20, 22–26, 32–33).
`Specifically, Petitioner asserts the Board overlooked that Bennett’s re-
`verification process includes notifying the registrant of the occurrence of the
`notification event in the form of communicating a verification code to the
`registrant for use in two-factor authentication. Id.
`This argument is not persuasive, as the Petition did not assert in
`connection with claim 1 that communicating the verification code to the
`registrant results in the registrant being notified that the event occurred.
`The Petition stated that the broadest reasonable interpretation of a
`“notification event” is an event that either (1) results in the registrant being
`contacted for re-verification or (2) results in the registrant being contacted
`for notification that the event occurred. Pet. 9–10; see also id. at 10 (“a
`‘notification event’ does not necessarily result in notifying the registrant of
`the occurrence; it may result in either re-verification or notification”).
`Petitioner’s declarant testified that the ’920 patent’s Specification “indicates
`that the occurrence of the particular ‘notification event’ is not necessarily
`communicated to the registrant.” Ex. 1002 ¶ 28. In accordance with its
`proposed “either/or” interpretation of “notification event,” the Petition
`argued that Bennett teaches a notification event because Bennett satisfied the
`first prong of its proposed construction, as Bennett requires the user to be
`contacted during the two-factor authentication “reverification” process. Pet.
`
`9
`
`
`
`IPR2016-00450
`Patent 8,462,920 B2
`
`22–27; Dec. on Inst. 14.
`We disagreed with Petitioner’s construction and determined that a
`notification event is an event that results in the registrant being notified that
`the event occurred, not an event that results in the registrant being contacted
`for re-verification. Dec. on Inst. 7–11, 14.
`We recognized that Bennett’s two-factor authentication “reverification
`process” involved transmission of a verification code to the user. Id. at 12–
`13. However, we determined that Petitioner did not establish Bennett
`teaches notifying the user of the occurrence of a notification event. Id. at 14.
`Therefore, we did not overlook or misapprehend Petitioner’s
`arguments relating to Bennett, but considered these arguments in our
`analysis and found them insufficient. Petitioner’s contention in this Request
`for Rehearing is merely a disagreement with the Board’s Decision. Mere
`disagreement with the Board’s decision is not a sufficient basis on which to
`request rehearing. Petitioner has shown no abuse of discretion in the
`Decision denying institution of inter partes review of claims 1–10, 13, and
`17–22 of the ’920 patent.
`
`IV. CONCLUSION
`For the foregoing reasons, Petitioner has not demonstrated that we
`abused our discretion in denying inter partes review of claims 1–10, 13, and
`17–22 of the ’920 patent, and Petitioner’s Request for Rehearing is denied.
`
`10
`
`
`
`11
`
`IPR2016-00450
`Patent 8,462,920 B2
`
`PETITIONER:
`
`Wayne Stacy
`wstacy@cooley.com
`
`Mikaela Stone
`ztwilioipr@cooley.com
`
`Britton Davis
`bdavis@cooley.com
`
`
`
`PATENT OWNER:
`
`Tawni Wilhelm
`telesignipr@shb.com
`
`Elena S.K. McFarland
`emcfarland@shb.com
`
`Jesse Camacho
`jcamacho@shb.com
`
`Amy Foust
`afoust@shb.com
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