UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_________________________________________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________________________________
`
`
`
`Twilio Inc.
`Petitioner
`
`v.
`
`TeleSign Corporation
`Patent Owner
`
`Patent No. 9,300,792
`(filed April 3, 2015, issued March 29, 2016)
`
`Title: REGISTRATION, VERIFICATION AND NOTIFICATION
`SYSTEM
`
`__________________________________________________
`
`Inter Partes Review No. IPR2016-01688
`
`_________________________________________________
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`
`
`
`
`
`
`

`
`Table of Contents
`
`1.
`
`Introduction. .................................................................................................... 1
`
`2. Miscellaneous. ................................................................................................ 3
`
`2(A). Claims 3, 5, 7, 12, 14, and 16 are disclaimed. ...................................... 3
`
`2(B). Matters Involving Related Patents. ....................................................... 4
`
`3.
`
`The ’792 Patent. .............................................................................................. 4
`
`3(A). Background and context. ....................................................................... 5
`
`3(B). Problems Addressed. ............................................................................. 5
`
`3(C). Solutions. ............................................................................................... 7
`
`4.
`
`Legal Authority. .............................................................................................. 9
`
`4(A). Standard for Granting Inter Partes Review. ......................................... 9
`
`4(B). The Burden of Proof is on the Petitioner. ........................................... 10
`
`4(C). The Petition may not incorporate argument by reference to
`other documents, including an expert declaration. ............................. 10
`
`4(D). Standard for Claim Construction in Inter Partes Review. .................. 11
`
`4(E). Standard for Obviousness. ................................................................... 13
`
`4(F). Failure to Articulate a Motivation to Combine Prior Art
`References is Reversible Error. ........................................................... 14
`
`5.
`
`Claim Construction. ...................................................................................... 15
`
`5(A). “notification event” ............................................................................. 15
`
`5(B). “verifying the telephone number” ....................................................... 16
`
`5(C). Because the intrinsic record is reasonably clear, recourse to
`extrinsic evidence to construe the claim terms is inappropriate. ........ 17
`
`for
`the proper BRI
`regarding
`reservations
`5(D). Petitioner’s
`“notification event” show that Petitioner is relying on a claim
`construction previously considered and rejected by the Board in
`
`
`
`
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`Page ii
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`

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`the context of related patents. .............................................................. 20
`
`6.
`
`7.
`
`The Petition should be denied because the same or substantially the same
`prior art or arguments previously were presented to the Office. .................. 27
`
`Twilio has not met its burden to show that the Remaining Claims are
`unpatentable under 35 U.S.C. § 103 as obvious over Bennett in view of
`Campbell. ...................................................................................................... 33
`
`7(A). Notification events in the ’792 Patent Claims..................................... 33
`
`7(B). Overview of Bennett. .......................................................................... 34
`
`7(C). Bennett does not teach the notification-event limitations. .................. 36
`
`7(D). It would not have been obvious to modify Bennett to notify a
`user of a notification event where the alleged notification is
`based on a variety of factors including multiple events and
`characteristics of a transaction, the user, the institution, and
`other users’ activity. ............................................................................ 39
`
`7(E). Vague cross-references do not constitute argument or evidence. ....... 41
`
`7(F). Campbell does not cure the defects of Bennett. .................................. 42
`
`The Petition fails to make out a prima facie case of
`7(F)(1).
`obviousness with the proposed combination of Campbell
`and Bennett, at least because the proposed combination
`relies upon an alleged teaching in Bennett that is not
`there. 42
`
`to combine
`There was no apparent reason
`7(F)(2).
`Campbell with Bennett. ............................................................ 44
`
`The proposed combination of Campbell with
`7(F)(3).
`Bennett would not result in a “notification event” as
`claimed. ..................................................................................... 45
`
`The proposed combination of Campbell and
`7(F)(4).
`Bennett is contrary to the stated goals of Bennett. ................... 48
`
`The Petition fails to show that the proposed
`7(F)(5).
`combination of Bennett and Campbell reaches the other
`claim limitations involving a notification event. ...................... 49
`
`7(G). Geddes does not cure the defects of Bennett. ..................................... 54
`
`
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`Page iii
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`7(G)(1).
`
`Ground 2 is redundant with Ground 1. ........................... 55
`
`The Petition fails to make out a prima facie case of
`7(G)(2).
`obviousness with the proposed combination of Geddes
`and Bennett, at least because the proposed combination
`relies upon an alleged teaching in Bennett that is not
`there. 56
`
`There was no apparent reason to combine Geddes
`7(G)(3).
`with Bennett. ............................................................................. 57
`
`the
`confounds
`combination
`The proposed
`7(G)(4).
`Petition’s outline of how Bennett allegedly meets the
`claims. ....................................................................................... 59
`
`The proposed combination of Geddes with Bennett
`7(G)(5).
`would not result in a notification event. ................................... 61
`
`The proposed combination of Geddes and Bennett
`7(G)(6).
`is contrary to the stated goals of Bennett. ................................. 63
`
`7(H). The Remaining Claims, which depend from claim 1 or claim
`10, are also not unpatentable over the proposed combinations of
`Bennett with Campbell or Geddes. ..................................................... 64
`
`8.
`
`Conclusion. ................................................................................................... 64
`
`
`
`
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`Page iv
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`
`Exhibit
`
`Number
`
`2001
`
`2002
`
`2003
`
`Patent Owner’s List of Exhibits:
`
`Document
`
`BBC News Article, “Tinder accounts spammed by bots
`masquerading as singles”,
`http://www.bbc.com/news/26850761, last accessed Nov.
`29, 2016.
`
`Technology Review Article, “Fake Persuaders”,
`https://www.technologyreview.com/s/535901/fake-
`persuaders/, last accessed Nov. 29, 2016.
`
`Certified copy of the file wrapper and contents of the
`application (14/678,815) leading to U.S. Patent No.
`9,300,792.
`
`
`
`Page v
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`
`
`1.
`
`Introduction.
`
`This is Twilio’s fifth bite at this apple (sixth including a co-pending CBM
`
`review request1). This sort of repetitive filing using the same prior art and with
`
`substantially similar arguments is what 35 U.S.C. § 325(d) is meant to prevent.2
`
`The Board has previously denied institution of Inter Partes Review based on the
`
`same primary reference (Bennett) regarding two parent patents that share the same
`
`specification as the ’792 patent.3 Twilio filed rehearing requests in both
`
`proceedings; both were denied.4 Twilio now attempts—again—to argue that
`
`Bennett teaches, or would have been obviously modified to have arrived at, the
`
`claims of a child patent, largely by repackaging a proposed claim construction that
`
`
`1 CBM2016-00099.
`
`2 Section 6. Although § 325(d) appears in Chapter 32 of Title 35, the express
`
`statutory language applies to Chapter 31, which addresses Inter Partes
`
`Review.
`
`3 Twilio Inc. v. TeleSign Corporation, IPR2016-00450, Decision—Denial of
`
`Institution of Inter Partes Review, Paper No. 17, at pages 2, 5-6 (July 8,
`
`2016); Twilio Inc. v. TeleSign Corporation, IPR2016-00451, Decision—
`
`Denial of Institution of Inter Partes Review, Paper No. 17, at pages 2, 5
`
`(July 8, 2016); Pet. 2, 4, 16. Each document identifies Bennett, U.S. Patent
`
`No. 8,781,975, as the primary reference for all obviousness challenges.
`
`4 See IPR2016-00450 at Paper 29 (PTAB Nov. 15, 2016); IPR2016-00451 at Paper
`
`28 (PTAB Nov. 15, 2016).
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`Page 1
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`
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`was previously rejected by the Board four times. Not only does Twilio forthrightly
`
`state that it may “disagree with the Board’s construction,”5 it goes so far as to
`
`double down on its previously rejected claim construction, and brazenly includes it
`
`again by stating that the BRI of “notification event” is either its rejected definition
`
`“or” the Board’s.6
`
`Despite arguing that this doesn’t matter, it does.7 Twilio’s actual analysis
`
`and conclusions show that it continues to apply a wrong claim construction: either
`
`its rejected one or one that swings just as far in the other direction—whereas
`
`Twilio had read formerly “notification” out of “notification event” in the rejected
`
`petitions, it now reads “event” out of “notification event.” The Petition relies on
`
`purported teachings of one being notified, but does not show that the purported
`
`messages are transmitted “upon receiving an indication of an occurrence of an
`
`established notification event.”8
`
`Even with the benefit of the Board’s prior decisions as roadmaps, the
`
`Petition does not establish a reasonable likelihood that any of the challenged
`
`claims is unpatentable. The Petition rehashes arguments that have been presented,
`
`
`5 Pet. 23.
`
`6 Pet. 12.
`
`7 Pet. 23 (“Regardless of which construction is applied . . . .”).
`
`8 Ex. 1001 at 12:64-65, 14:11-12.
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`Page 2
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`
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`considered, and rejected. Petitioner uses the exact same primary reference
`
`(Bennett) to attempt to re-argue that it teaches the same term (“notification event”).
`
`The Petition could be denied on the basis that substantially the same art and
`
`arguments were previously presented to the Office.9 The Petition should also be
`
`denied for the reasons set forth below including for the same reasons Petitioner’s
`
`former arguments were previously rejected. In particular, the Petition’s reliance on
`
`an erroneous claim construction10 means the Petition does not show a reasonable
`
`likelihood that the claims, when properly construed, are obvious over the asserted
`
`art.11
`
`2. Miscellaneous.
`
`2(A). Claims 3, 5, 7, 12, 14, and 16 are disclaimed.
`
`Patent Owner disclaimed claims 3, 5, 7, 12, 14, and 16 under 35 U.S.C. §
`
`253.12 Petitioner challenges only claims 1-6, 8, 10-15, and 17. Thus, as used
`
`herein, the term “Remaining Claims” refers to claims 1-2, 4, 6, 8, 10-11, 13, 15,
`
`and 17. The other claims were either not challenged or have been disclaimed.
`
`
`9 Section 6.
`
`10 Sections 5, 7.
`
`11 Section 7.
`
`12 Ex. 2003 at 380.
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`Page 3
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`
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`2(B). Matters Involving Related Patents.
`
`The Petition summarizes related matters.13 Petitioner sought inter partes
`
`review of two patents that share a common specification with the ’792 patent in
`
`IPR2016-00450 and IPR2016-00451. The Board denied both requests, which
`
`included the same primary reference that Petitioner relies on in this case.14
`
`Petitioner requested rehearing in both IPRs, and both rehearing requests were
`
`denied.15 Petitioner has also requested CBM review of the ’792 patent, and uses
`
`substantively the same primary reference.16
`
`3.
`
`The ’792 Patent.
`
`The ’792 patent is entitled “Registration, verification and notification
`
`system.”
`
`
`13 Pet. 2.
`
`14 IPR2016-00450, Paper No. 17, at pages 2, 5-6 (July 8, 2016); IPR2016-00451,
`
`Paper No. 17, at pages 2, 5 (July 8, 2016).
`
`15 See IPR2016-00450 at Paper 29 (PTAB Nov. 15, 2016); IPR2016-00451 at
`
`Paper 28 (PTAB Nov. 15, 2016).
`
`16 Twilio Inc. v. Telesign Corp., CBM2016-00099, Pet. 10, 22-23 (citing US Patent
`
`Publication No. 2005/0273442 to Bennett, which is a prior publication of the
`
`Bennett Patent cited in this IPR petition; see Ex. 1003 at “Prior Publication
`
`Data”); compare Pet. 4, 16.
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`Page 4
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`3(A). Background and context.
`
`The ’792 patent describes fraud in the form of fake online registrations. It
`
`includes dishonest fraudsters trying to register for and obtain an online user
`
`account with a website using false information for their advantage. This sort of
`
`fraud “can compromise the intended purpose of the registration, create a breach of
`
`security and constitute fraud on the web-site owners.”17 It includes attempting to
`
`obtain access to an existing account or other information that the fraudster is not
`
`authorized to access. Today, fake online registrations are a major problem. Some
`
`larger companies are besieged with attempts to create millions of fake accounts per
`
`day, which is a drain on technological resources such as server processing,
`
`database administration, and searching speed. Social media website Facebook, for
`
`example, may have over 14 million accounts that are “fakes created for spam” or
`
`other undesired purposes.18
`
`3(B). Problems Addressed.
`
`The ’792 patent addresses a multifaceted problem:
`
`1. in an online environment, potential registrants often register using
`
`false information;19
`
`
`17 Ex. 1001 at 1:58-60.
`
`18 Ex. 2001 at 5.
`
`19 Ex. 1001 at 1:56-58.
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`Page 5
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`2. permitting fraudulent online registrations can create a breach of
`
`security;20
`
`3. security measures need to be rapidly and reliably deployed while still
`
`providing “an additional layer of security”21; and
`
`4. legitimate users do not learn about unauthorized activity or attempted
`
`activity soon enough to address it.22
`
`These problems are rooted in computer technology. Brick-and-mortar stores
`
`allow for face-to-face interactions. Online presences do not. Thus, determining
`
`whether remotely provided digital information over the Internet is accurate was
`
`(and is) a problem—a significant technological problem. As mentioned, a key
`
`aspect of fraud explained in the specification relates to identifying potentially
`
`fraudulent website registrations.23
`
`The problem stems from the rise of the Internet and the anonymity of
`
`
`20 Ex. 1001 at 1:58-60.
`
`21 Ex. 1001 at 8:45-47; 2:17-25.
`
`22 Ex. 1001 at 1:61-2:8.
`
`23 The title of the patent includes “Registration.” The specification (including
`
`claims and references to prior applications) refer to some form of
`
`“registration,” “registrant,” “register” or the like 326 times (a word search of
`
`“regist” yields 326 hits). Both independent claims recite “completing a
`
`registration of the user based on” recited information. Ex. 1001 at claims 1
`
`and 10.
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`Page 6
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`communicating via remote network connections. Parties exchange data online
`
`without being physically present. Information is received electronically. Users
`
`desire to create online registrations. But users can provide false registration
`
`information.24 And allowing fraudulent (or fake) registrations could “compromise
`
`the intended purpose of the registration” and lead to security breaches.25 But then
`
`again, attempting to separate legitimate requests from fraudulent attempts could
`
`take so long that it is not practical. For legitimate users, the problem of notifying
`
`them of unauthorized activity or attempted activity (such as altering account
`
`information)26 in time for it to be addressed existed.
`
`As reflected in more modern literature and consistent with the specification
`
`of the ’792 patent: “Fake accounts operated by low-paid humans or automated
`
`software have become good business, too. They are used to inflate follower counts,
`
`to push spam or malware, and even to skew political discourse. The tactic appears
`
`to be pervasive and growing in sophistication.”27
`
`3(C). Solutions.
`
`The
`
`inventors addressed
`
`the
`
`technological problems above with
`
`
`24 Ex. 1001 at 1:56-58.
`
`25 Ex. 1001 at 1:58-60.
`
`26 Ex. 1001 at 3:2-3.
`
`27 Ex. 2002 at 1.
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`Page 7
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`technological solutions. The ’792 patent contemplates a computing system that
`
`employs software to implement or perform a “verification and notification
`
`method.” Ex. 1001 at claims 1 and 10. The solution, as a whole, reduces
`
`fraudulent online registrations in a rapid manner using a combination of hardware
`
`and software to provide a verification and notification method implemented by a
`
`computing system that helps verify the accuracy of registration information—
`
`completing a registration based on a verified telephone number. Ex. 1001 at
`
`Abstract, 2:29-41, 5:3-7, 12:41-13:2, 13:23-14:17.
`
`Information is received from a user via a computing interface (such as an
`
`online web registration form) presented to the user attempting to access a service.
`
`Id. at 2:42-43, 4:51-55, 5:28-29, 5:57-60, 6:27-29, 7:9-13, 7:47-51, 8:8-12, 9:7-9,
`
`12:43-46, 13:27-30. The received information can include a telephone number
`
`associated with the user. Id. at 4:55-58, 5:28-29, 6:27-29, 7:9-13, 9:9-13, 12:45-
`
`46, 13:29-30. The telephone number is verified; for example, using a verification
`
`code sent in real time28 to the user, such as via SMS. Id. at Abstract, 7:15-18, 9:25-
`
`28, 9:33-35. A verification code submitted by the user is received via the
`
`computing interface. Id. at 4:63-65; 12:52-53, 13:36-37. The telephone number is
`
`deemed verified if the submitted verification code is the same as the communicated
`
`
`28 See Section 5(B).
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`Page 8
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`
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`verification code. Id. at 7:1-7, 12:54-53, 14:1-3.
`
`Registration of the user is completed based on the received information and
`
`verified telephone number, which enables the user to access the service the user
`
`was attempting to access. Id. at Abstract, 9:37-43, 12:57-60, 14:4-7. A record of
`
`notification events is maintained. Id. at Abstract, 2:66-3:3, 12:61-63, 14:8-10. The
`
`notification events are associated with actions to be acknowledged by the user. Id.
`
`at Abstract, 10:66-11:10, 12:61-63, 14:8-10. When an indication is received that a
`
`notification event has occurred, a message indicating the occurrence of the
`
`notification event is transmitted. Id. at Abstract, 3:4-10, 10:2-4; 12:64-67, 14:11-
`
`14. An acknowledgement of an action associated with the notification event is
`
`received from the user. Id. at Abstract, 13:1-2, 14:14-15.
`
`4.
`
`Legal Authority.
`
`4(A). Standard for Granting Inter Partes Review.
`
`Under 35 U.S.C. § 314(a), Congress limited the Board’s authority to
`
`institute inter partes review only to those circumstances where “the information
`
`presented in the petition … and any response … shows that there is a reasonable
`
`likelihood that petitioner would prevail with respect to at least one of the claims
`
`challenged in the petition.”29 The petitioner has the burden of showing that this
`
`
`29 See also 37 C.F.R. § 42.108(c).
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`Page 9
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`
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`statutory threshold has been met.30 A petition may be rejected if “the same or
`
`substantially the same prior art or arguments previously were presented to the
`
`Office.”31
`
`4(B). The Burden of Proof is on the Petitioner.
`
`The Federal Circuit recently clarified that the Board is limited to reviewing
`
`arguments made by a petitioner in its IPR Petition. The Board is not allowed to
`
`“raise, address, and decide unpatentability theories never presented by the
`
`petitioner” nor address or advance arguments that “could have been included in a
`
`properly-drafted petition.”32 All argument must come from the Petition.33 Further,
`
`“the burden to rebut a rejection of obviousness does not arise until a prima facie
`
`case has been established.”34
`
`4(C). The Petition may not incorporate argument by reference to other
`documents, including an expert declaration.
`
`The Board may not consider arguments improperly incorporated by
`
`30 See, e.g., Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,756 (Aug.
`
`14, 2012) (“The Board … may institute a trial where the petitioner
`
`establishes that the standards for instituting the requested trial are met …”).
`
`31 35 U.S.C. § 325(d).
`
`32 In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1365, 1377-81 (Fed. Cir. July 25,
`
`2016).
`
`33 See id.
`
`34 In re Rijckaert, 9 F.3d 1531, 1534 (Fed. Cir. 1993).
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`Page 10
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`
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`reference, which would violate 37 C.F.R. § 42.6 and word-limit restrictions. A
`
`party’s attempt to only provide cursory statements in a Petition while trying to
`
`make a case by incorporation of an expert declaration is improper.35
`
`4(D). Standard for Claim Construction in Inter Partes Review.
`
`During inter partes review, claims in an unexpired patent are given their
`
`broadest reasonable interpretation (“BRI”).36 The BRI is informed by the
`
`specification.37
`
`That is not to say, however, that the Board may construe claims
`
`during IPR so broadly that its constructions are unreasonable under
`
`general claim construction principles. As [the Federal Circuit has]
`
`explained in other contexts, the protocol of giving claims their
`
`broadest reasonable interpretation … does not include giving claims a
`
`legally incorrect interpretation. … Rather, claims should always be
`
`
`35 See, e.g., Final Written Decision, Paper 32, in IPR2013-00016, p. 21 (citing
`
`Globespanvirata, Inc. v. Tex. Instruments, Inc., 2005 WL 3077915, *1 (D.
`
`N.J. Nov. 15, 2005)) (“Defendants provided cursory statements in its motion
`
`and sought to make its case through incorporation of an expert declaration
`
`and a claim chart. Incorporation by reference of argument not in motion was
`
`held to be a violation of local rules governing page limitations and was not
`
`permitted by the court.”).
`
`36 37 C.F.R. § 42.100(b). See also, Cuozzo Speed Techs., LLC v. Lee, 136 S.Ct.
`
`2131, 2144-46 (2016).
`
`37 37 C.F.R. § 42.100(b).
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`Page 11
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`
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`read in light of the specification and teachings in the underlying
`
`patent. … Even under the broadest reasonable interpretation, the
`
`Board’s construction cannot be divorced from the specification and
`
`the record evidence, and must be consistent with the one that those
`
`skilled in the art would reach. A construction that is unreasonably
`
`broad and which does not reasonably reflect the plain language and
`
`disclosure will not pass muster.38
`
`To the greatest degree possible, the claims are interpreted with reference to
`
`intrinsic evidence.39 Extrinsic evidence may not be used to reach a claim
`
`construction inconsistent with the intrinsic record.40
`
`While a declaration may be submitted in support of a petition for inter partes
`
`review, that testimony must “disclose the underlying facts or data” on which it is
`
`based.41 Otherwise, it “is entitled to little or no weight.”42 A distinction must also
`
`
`38 Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015)
`
`(internal quotations and citations omitted).
`
`39 Phillips v. AWH Corp., 415 F.3d 1303, 1317-18 (Fed. Cir. 2005).
`
`40 Id. at 1318; Vitrionics Corp., 90 F.3d at 1583-84; PPC Broadband, Inc. v.
`
`Corning Optical Communs. RF, LLC, 815 F.3d 747, 752 (Fed. Cir. 2016)
`
`(“The fact that ‘around’ has multiple dictionary meanings does not mean that
`
`all of these meanings are reasonable interpretations in light of this
`
`specification.”).
`
`41 37 C.F.R. § 42.65(a).
`
`42 Id.; see 37 C.F.R. § 42.100(a).
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`Page 12
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`
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`be drawn between testimony on the technology and testimony on the proper
`
`construction of a claim term.43 Testimony regarding claim construction, “whether
`
`it be of an attorney, a technical expert, or the inventor … may only be relied upon
`
`if the patent documents, taken as a whole, are insufficient to enable the court to
`
`construe disputed claim terms. Such instances will rarely, if ever, occur.”44
`
`4(E). Standard for Obviousness.
`
`The determination of whether a patent claim is obvious is an objective
`
`analysis.45 “Under § 103, the scope and content of the prior art are to be
`
`determined; differences between the prior art and the claims at issue are to be
`
`ascertained; and the level of ordinary skill in the pertinent art resolved. Against
`
`this background, the obviousness or nonobviousness of the subject matter is
`
`determined.”46
`
`Even if the individual elements of a claim were known, the obviousness
`
`inquiry requires a determination of “whether there was an apparent reason to
`
`combine the known elements in the fashion claimed.”47 This analysis is important,
`
`
`43 Vitrionics Corp., 90 F.3d at 1585.
`
`44 Id.
`
`45 KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 406 (2007).
`
`46 Id. (citing Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17-18 (1966)).
`
`47 Id. at 418.
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`Page 13
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`“because inventions in most, if not all, instances rely upon building blocks long
`
`since uncovered, and claimed discoveries almost of necessity will be combinations
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`of what, in some sense, is already known.”48 “Rejections on obviousness grounds
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`cannot be sustained by mere conclusory statements; instead, there must be some
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`articulated reasoning with some rational underpinning to support the legal
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`conclusion of obviousness.”49
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`In determining the scope and content of the prior art, the “mere fact that a
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`certain thing may result from a given set of circumstances is not sufficient [to
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`establish inherency.]”50 Further, “[t]hat which may be inherent is not necessarily
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`known. Obviousness cannot be predicated on what is unknown.”51
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`4(F). Failure to Articulate a Motivation to Combine Prior Art
`References is Reversible Error.
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`The Board must make a finding regarding motivation to combine prior art
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`references when it is disputed.52 The Board “must articulate a reason why a
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`48 Id. at 418-19.
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`49 Id. at 418.
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`50 In re Rijckaert, 9 F.3d at 1534 (quoting In re Oelrich, 666 F.2d 578, 581-82
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`(CCPA 1981)).
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`51 Id. (citing In re Spormann, 363 F.2d 444, 448 (CCPA 1966)).
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`52 In re: Nuvasive, Inc., 2016 U.S. App. LEXIS 21748, *10 (Fed. Cir. Dec. 7,
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`2016).
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`Page 14
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`PHOSITA would combine the prior art references.”53 The reasoning must include
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`an “adequate evidentiary basis” and “a satisfactory explanation . . . including a
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`rational connection between the facts found and the choice made.”54 Failure to
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`articulate logical and rational reasons for a decision is reversible error.55
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`5.
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`Claim Construction.
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`5(A). “notification event”
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`IPR2016-00451 involved a parent patent (U.S. 8,687,038) that shares a
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`common specification with the ’792 patent. There, the Board determined that the
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`BRI of “notification event” was “an event that results in the user being notified that
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`the event occurred.”56 For brevity, that complete analysis is not recounted here and
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`Patent Owner refers the Board to its prior decisions in that regard. In brief, the
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`53 Id..
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`54 In re: Nuvasive, Inc., 2016 U.S. App. LEXIS 21748, *9 (citing In re Lee, 277
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`F.2d 1338, 1344 (Fed. Cir. 2002); Motor Vehicle Mfrs. Ass’n v. State Farm
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`Mut. Auto. Ins. Co., 463 U.S. 29, 43 (1983); Synopsys, Inc. v. Mentor
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`Graphics Corp., 814 F.3d 1309, 1322 (Fed. Cir. 2016)) (internal quotations
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`omitted).
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`55 See generally, In re: Nuvasive, Inc., 2016 U.S. App. LEXIS 21748.
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`56 Twilio Inc. v. TeleSign Corp., IPR2016-00451 at 7 (PTAB July 8, 2016) (Paper
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`17). Also, the Board reached a similar result in IPR2016-00450, which
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`involved another parent patent (U.S. 8,462,920). (The main difference is
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`that the ‘920 patent refers to a “registrant” instead of “user.”)
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`Page 15
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`specification teaches, for example, that “[u]pon the occurrence of a previously
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`established notification event, the registrant is notified ….”57
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`For purposes of this IPR, Patent Owner does not dispute the Board’s finding
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`in IPR2016-00451, its construction for “notification event,” or the application of
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`that construction to the claims of the ’792 patent. Thus, Patent Owner applies that
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`construction herein.
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`5(B). “verifying the telephone number”
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`The BRI of “verifying the telephone number” should be “verifying, in real-
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`time, the telephone number.” “Even under the broadest reasonable interpretation,
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`the Board’s construction cannot be divorced from the specification and the record
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`evidence.”58 “Above all, the broadest reasonable interpretation must be reasonable
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`in light of the claims and specification.”59 In PPC Broadband, the Board failed “to
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`account for how the claims themselves and the specification inform the ordinarily
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`skilled artisan as to precisely which ordinary definition the patentee was using.”60
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`The specification expressly states that the “method of telephone verification,
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`in real-time, provides an additional layer of security.” Ex. 1001 at 8:45-46. Given
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`57 Ex. 1001 at 3:4-6; see also Ex. 1001 at Abstract, 2:19-23, 2:29-33, 10:66-11:2.
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`58 Microsoft Corp., 789 F.3d at 1298 (internal quotations and citations omitted).
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`59 PPC Broadband, 815 F.3d at 755 (emphasis in original).
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`60 PPC Broadband, 815 F.3d at 752.
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`Page 16
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`the specification, an ordinary skilled artisan would appreciate that substantially
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`immediately upon receiving the user’s telephone number, the process of sending a
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`verification code begins such that it is to be received by the user who is trying to
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`register. This would allow the registration process to continue as the user is
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`attempting to register.
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`5(C). Because the intrinsic record is reasonably clear, recourse to
`extrinsic evidence to construe the claim terms is inappropriate.
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`The Petition presents its proposed claim construction with six citations to the
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`specification of the ’792 patent, three citations to the testimony of Dr. Shamos, two
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`citations to other patents (including one reference to Bennett, an alleged prior art
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`reference) and one citation to the prosecution history for a different patent
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`application (i.e., not the application for the ’792 patent).61 Of the 12 citations used
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`to support Petitioner’s proposed claim construction, half of them are citations to
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`extrinsic evidence. Relying on extrinsic evidence to construe the claims is
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`improper where the intrinsic record is reasonably clear.62 Further, these citations to
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`extrinsic evidence are 1) not uniformly on-point, 2) do not add technical
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`understanding or context to the citations to the ’792 patent specification, and 3)
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`impermissibly engage in the legal process of claim construction, rather than
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`61 Pet. 24-25.
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`62 Section 4(D).
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`providing technical information.63
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`For example, the Petition cites the declaration of Dr. Shamos as support for
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`the proposition that “a notification event may occur when a user requests to access
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`or alter her account.”64 The cited portions of Dr. Shamos’s declaration, paragraphs
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`37 and 40-41, do not address whether a notification event may occur when a user
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`requests to access or alter her account. Paragraph 37 purports to show that the use
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`of an “either … or” phrase in the specification supports Petitioner’s position that
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`“this message used to ‘notify’ the user may include either a verification code or
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`notification of the occurrence of the event”.65 The cited statement does not address
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`the proposition for which it is cited, and, further, engages in the legal process of
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`claim construction without any reference to technical information, technical
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`rationale, or technical understanding.
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`Paragraphs 40-41 of Dr. Shamos’s declaration are similarly unhelpful,
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`addressing the prosecution history and claim construction of a single claim in a
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`related patent, U.S. 8,462,920.66 Paragraph 41, in part