Case IPR2016-01688
`Patent No. 9,300,792
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`Twilio Inc.
`Petitioner
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`v.
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`TeleSign Corporation
`Patent Owner
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`Case No. IPR2016-01688
`Patent: 9,300,792
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`PETITIONER’S OPPOSITION TO PATENT OWNER’S
`MOTION TO EXCLUDE
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`Patent No. 9,300,792
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`
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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. IPR2016-01688
`Patent: 9,300,792
`
`
`
`PETITIONER’S OPPOSITION TO PATENT OWNER’S
`MOTION TO EXCLUDE
`
`
`
`
`
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`Case IPR2016-01688
`Patent No. 9,300,792
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`First, Patent Owner seeks to exclude a portion of Patent Owner’s expert
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`deposition testimony because “it is beyond the scope of Dr. Nielson’s declaration”
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`(Paper 20 at ii). The testimony in question, however, is read directly from Dr.
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`Nielson’s declaration by Patent Owner’s own expert.
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`In Patent Owner’s Motion to Exclude, Patent Owner inserted other portions
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`of Dr. Nielson’s testimony instead of the testimony Patent Owner now moves to
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`exclude. Below is the actual testimony that Patent Owner moves to exclude on
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`page 10 of Petitioner’s Reply. Notice that Dr. Nielson references section 9.2 of his
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`declaration and then reads directly from it.
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`A
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`So let me give an example here. So in
`my declaration in Paragraph 9.2, it's about --
`it's the last sentence of the paragraph on that
`page that says: That action, such as a large
`withdrawal, would not be allowed to take place
`without an acknowledgment by the user.
`So that's an example of an action,
`withdrawal or a, for example, financial
`operation.
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`Q
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`Okay. So that is an example of an
`action. What is the definition of “action”
`then?
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`A. Well, I was looking at it with what I
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`would probably describe as just conventional,
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`you know, how one of skill in the art would
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`understand “action,” which would be an operation
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`transaction.
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`EX1035 at 18:15-9:5 (emphasis added).
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`Case IPR2016-01688
`Patent No. 9,300,792
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`During Dr. Nielson’s deposition, Dr. Nielson was asked about “actions” and
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`in response to the question Dr. Nielson read verbatim from his expert report.
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`Compare Nielson Decl. (EX2008) at 9.2 with Nielson Depo (EX1035) at 18:15-20.
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`Patent Owner now seeks to exclude testimony that was read directly from Dr.
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`Nielson’s expert declaration. The testimony relied on by Petitioner on page 10 of
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`its Reply is not beyond the scope of Dr. Nielson’s declaration—it is Dr. Nielson’s
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`declaration.
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`Second, the term “action” and its meaning is not outside the scope of Dr.
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`Nielson’s Declaration. The term “action” and “notification event” are closely
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`related according to Dr. Nielson’s declaration. For example, Dr. Nielson’s
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`Declaration includes a section 9 titled “Rebuttals to Certain Characterizations by
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`Dr. Shamos.” See EX2008 at 22-24. Within this section Dr. Nielson makes the
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`following statements (emphasis added) about “actions” and “notification events”:
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` “Dr. Shamos continually describes an event being acknowledged by a user,
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`instead of an action associated with an established notification event.”
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`(EX2008 at 9.1)
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` “The ‘792 claims, however, require that the acknowledgement by the user be
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`required for an action. That action (such as a large withdrawal) . . .”
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`(EX2008 at 9.2)
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`Case IPR2016-01688
`Patent No. 9,300,792
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` “But the claim does not require that the user acknowledge the notification,
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`it requires that the user acknowledge an action associated with the
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`established notification event.” (EX2008 at 9.3)
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` “But the supposed events explained in the Petition are not said to be
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`associated with an action that must be acknowledged.” (EX2008 at 9.4)
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`Dr. Nielson’s addresses the term “action” in his declaration and therefore the
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`testimony relied on by Petitioner on page 10 of its Reply is not beyond the scope of
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`Dr. Nielson’s Declaration.
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`Third, Patent Owner’s testimony regarding the term “actions” should not be
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`excluded given the link Patent Owner (and it’s expert) has injected into this IPR
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`between the terms “notification event” and “actions.” For example, when
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`questioned during Dr. Nielson’s deposition about “notification events,” Dr.
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`Nielson linked the term to “actions:”
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`Q And give me an example of the
`notification event.
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`A Well, it's kind of like if you've got
`a file with the contents of the file and the
`header of the file, you might call them the same
`thing; right? So you might have the action
`which is the actual transferring of the money.
`And there may be a notification event that is
`called transferring money.
`But the key point is that it's a
`notification event that is associated with that
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`Case IPR2016-01688
`Patent No. 9,300,792
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`action. So that when -- so that it says, as it
`says in the next claim element: Upon receiving
`an indication of an occurrence of an established
`notification event -- in other words, we've now
`detected this transfer in progress --
`transmitting a message addressed to the verified
`telephone number indicating the occurrence of
`the notification event.
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`Petitioner’s Reply (Paper 18) at 11-12; EX1035 at 21:23-22:16 (emphasis added).
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`Patent Owner has manufactured an additional dispute between “notification
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`events” and “actions” and therefore any deposition testimony regarding the term
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`“action” is directly relevant to this IPR and Dr. Nielson’s declaration.
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`For at least the above reasons, the Board should deny Patent Owner’s
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`request to exclude the testimony of Dr. Nielson on page 10 of Petitioner’s Reply.
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`Respectfully submitted,
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`By: /Wayne Stacy/
`Wayne Stacy
`USPTO Reg. No. 45,125
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`Dated: October 10, 2017
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`BAKER BOTTS L.L.P.
`ATTN: Wayne Stacy
`101 California Street, Suite 3600
`San Francisco, CA 94111
`Tel: 415-291-6206
`Fax: 415-291-6308
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`Case IPR2016-01688
`Patent No. 9,300,792
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.53, the undersigned certifies that on October 10,
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`2017, a complete and entire electronic copy of Petitioner’s Opposition to Patent
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`Owner’s Motion to Exclude were provided via the Patent Trial and Appeal Board
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`End to End (PTAB E2E) System as well as delivering a copy electronically via
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`email on the following:
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`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
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`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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`Dated October 10, 2017
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`LEAD COUNSEL FOR PETITIONERS
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`By: /Wayne Stacy/
`Wayne Stacy
`USPTO Reg. No. 45,125
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`6
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