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`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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`__________________________________________________
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`Inter Partes Review No. IPR2016-01688
`Patent No. 9,300,792
`_________________________________________________
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`PATENT OWNER’S MOTION TO EXCLUDE UNDER 37 C.F.R. § 42.64(c)
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`8407754
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`Patent Owner moves the Board to exclude the testimony of Dr. Seth
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`Nielson relied upon in Petitioner’s Reply at page 10, which cites to EX 1035
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`at 18:15-9:5. That testimony was improperly elicited at deposition because
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`it is beyond the scope of Dr. Nielson’s declaration. The line of question
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`begins in EX 1035 at 17:5-7, where counsel seeks a claim-construction
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`position from Dr. Nielson regarding the term “actions” and continues
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`therefrom.
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`Counsel for TeleSign timely objected during the deposition to the line
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`of questioning. EX. 1035 at 17:8-9 (above); see also, e.g., 27:6-13 (below).
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`8407754
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`ii
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`Out of an abundance of caution, TeleSign also filed an objection with
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`the Board. Paper 19.
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`Dr. Nielson’s declaration (EX 2008) does not offer an opinion on the
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`claim construction of the term “actions” (or variations thereof). Thus,
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`testimony related to such is outside the scope of Dr. Nielson’s Declaration.
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`37 CFR 24.53(d)(5)(ii) (“For cross-examination testimony, the scope of the
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`examination is limited to the scope of the direct testimony.”). Patent Owner
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`requests that the Board exclude EX 1035 at 18:15-9-5 as cited in Petitioner’s
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`Reply (and commensurately avoid considering any corresponding argument
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`related to it).
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`The lines of questioning drew numerous scope objections. Petitioner
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`has not yet expressly relied on all of the lines of questioning to which Patent
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`Owner’s counsel objected during Dr. Nielson’s Declaration. But if Twilio
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`later refers to any such evidence, and the Board finds that it is outside the
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`scope of Dr. Nielson’s declaration, Patent Owner moves the Board to
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`exclude such testimony and disregard the points it is intended to support.
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`8407754
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`iii
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`Dated: September 26, 2017
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`Respectfully submitted,
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`By: /ELENA K. MCFARLAND/
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`Elena K. McFarland
`Reg. No. 59,320
`SHOOK, HARDY & BACON L.L.P.
`2555 Grand Blvd.
`Kansas City, MO 64108
`(816) 474-6550
`Counsel for Patent Owner
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`8407754
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that on September 26, 2017, 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 on even date) on the persons listed below at their
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`corresponding addresses, which includes all counsel of record.
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`Wayne Stacy
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`Jay Schiller
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`wayne.stacy@bakerbotts.com
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`jay.schiller@bakerbotts.com
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`Sarah J. Guske
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`sarah.guske@bakerbotts.com
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`Dated: September 26, 2017
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`Respectfully submitted,
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`By: /ELENA K. MCFARLAND/
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`Elena K. McFarland
`Reg. No. 59,320
`SHOOK, HARDY & BACON L.L.P.
`2555 Grand Blvd.
`Kansas City, MO 64108
`(816) 474-6550
`Counsel for Patent Owner
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`8407754
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`v
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