Before The Patent Trial And Appeal Board
`__________________________________________________
`TWILIO INC.
`Petitioner
`v.
`TELESIGN CORPORATION
`Patent Owner
`__________________________________________________
`Case IPR2016-01688
`Patent No. 9,300,792
`Hearing: October 25, 2017
`_________________________________________________
`TeleSign’s Demonstrative Exhibits for Oral Argument
`
`1
`
`
`__________________________________________________
`TWILIO INC.
`Petitioner
`v.
`TELESIGN CORPORATION
`Patent Owner
`__________________________________________________
`Case IPR2016-01688
`Patent No. 9,300,792
`Hearing: October 25, 2017
`_________________________________________________
`TeleSign’s Demonstrative Exhibits for Oral Argument
`
`1
`
`
`
`Claim 1: four aspects regarding the “notification event” limitations.
`
`Claim 1 (‘792 pat. at 12:41-13:2); see also Prelim. Resp. 9; Resp. 3.
`
`2
`
`
`
`The ‘792 Patent claims four notification-event aspects.
`Bank/Co.
`Requester
`
`notification event
`
`associated action
`
`message
`acknowledgement
`
`1234
`
`request to withdraw
`
`allowing withdraw
`
`message
`
`“upon the occurrence of an
`established notification event”
`“[being] associated with actions that
`require acknowledgement by the user”
`“transmitting a message”
`“receiving . . . an acknowledgement”
`“ . . . of an action associated with . . .”
`
`3
`
`acknowledgement
`allow withdraw
`The acknowledgment
`authorizes the action. Resp. 19
`Resp. 3, 6-7, 19 and throughout, e.g., pp. 19-20 (citing, 792 Pat. At, e.g., 1:65-67, 11:16-18, 2:6-8).
`
`
`
`The Petition ignores at least two limitations.
`Bank/Co.
`Requester
`
`“upon the occurrence of an
`established notification event”
`“[being] associated with actionsthat
`requireacknowledgement by the user”
`“transmitting a message”
`“receiving . . . an acknowledgement”
`“ . . . of an actionassociated with . . .”
`
`4
`
`notification event
`
`associated action
`requiring ack.
`message
`acknowledgement
`
`suspension of account
`[MISSING]
`“account suspended,
`call for more info”
`[MISSING]
`
`1234
`
`Pet. 44-47, 50; see also Resp. 1, 17-21.
`
`Petition: no mention of any acknowledgement
`required to permit an associated action in Campbell.
`
`
`
`The Petition fails to show that the last
`element of claim 1 is met. (Resp., §9).
`
`5
`
`
`
`Argument Summary
`1. The Board has found on multiple occasions that Bennett does not
`disclose“the ‘notification event’ limitations of the claims.” Dec. 17.
`
`2. The last element of claim 1—element 1[f]—is a notification-event
`limitation.
`3. The Petition relies on “Bennett alone” to teach this notification-event
`limitation 1[f].
`4. But Bennett does not. Dec. 17. Thus, the Petition
`fails to make out a prima facie case of obviousness.
`Resp. § 9 (Resp. 30-33).
`
`Dec. 17.
`
`Claim element 1[f].
`
`Pet. 26
`6
`
`
`
`The “receiving” element is a separate notification-event limitation that must be shown.
`
`separate claim elements
`
`Claim 1.
`
`POPR 33
`
`•
`•
`•
`
`Petitioner argues in Reply (p. 20) that it had purportedly “explained its position
`regarding actions and notification events.”
`1) Not relevant. The petition does rely on Campbell for “receiving. . . .”
`2) Not accurate. The Petition does notclearly state that.See Pet. 58-59. The claim
`elements are separate and must be individually and specificallyaddressed.
`
`Resp. 18-25 (specifically p. 18); see also Prelim. Resp. 18, 33-34, 50.
`
`7
`
`
`
`Recognizing the petition’s deficiency is not form over substance.
`• FIVE TIMES: the Board has found that Bennett does
`not disclose “the ‘notification event’ limitations of
`the claims.” Two parents, two rehearing denials. Dec. 17.
`• Regardless, the Petitioner’s lead argument, once
`again, is “Bennett alone.”
`
`• The Board expressly rejectedthose arguments, even as to inherency.
`
`Resp. 1, 15-17; see also Prelim. Resp. 1-2.
`
`Dec. 17.
`
`Dec. 26.
`
`Pet. 26.
`
`8
`
`
`
`Recognizing the petition’s deficiency is not form over substance.
`• Petitioner specifically addressed the notification-event element 1[f] in a subsection.
`
`Pet. 58.
`• Petitioner makes no mention of combining Campbell, provides no factual support
`for how Campbell would meet this limitation, no legal rationale, and no notice to
`Patent Owner—nothing besides an analysis of Bennett alone.
`• Petitioner was wrong about Bennett, was on notice from the Board, and the Petition
`fails to make out a prima-facie case of obviousness.
`
`Resp. 30-31; see also Prelim. Resp. 29, 50.
`
`Resp. 30.
`9
`
`
`
`Recognizing the petition’s deficiency is not form over substance.
`• Unlike with elements 1[d] and 1[e], the Petition the does not
`rely on Campbell for the last limitation, 1[f], (a notification–
`event limitation).
`
`Resp. 30.
`Pet. 26.
`• And petitioner could not: Campbell does not teach the “actions
`that requireacknowledgement”/ “receiving… acknowledgment”
`limitations. See, Resp., e.g., pp. 21-25.
`
`Resp. 1, 15-17, 21-25, 30-33.
`
`Resp. 20
`10
`
`
`
`Petitioner could not show the “receiving” step is met by Campbell.
`
`Claim element 1[f].
`Campbell does not request, wait for, or
`receive any user acknowledgment
`before taking curative measures.
`Instead, it suspends a user’s account
`automaticallywithout user intervention.
`
`Campbell ¶ [0041]
`
`Resp. 30-31, 36 (citing to Ex. 1004 at ¶ 0041); see also Prelim. Resp. 31; Resp. 20.
`
`Resp. 20
`
`11
`
`
`
`Petitioner cannot show “receiving” by showing “maintaining.”
`
`separate claim elements
`
`Claim 1.
`Recall: receiving the acknowledgment is what allows the associated action (e.g., disbursement
`of funds) to occur.
`Resp. 19.
`Petitioner cannot properly show that the “receiving” element is met just because the
`“maintaining” element is supposedly met.
`Bennett cannot teach receiving an acknowledgment of an action associated with “the”
`established notification event when it does not teach “the established notification event” in the
`first place. Pet. 17.
`Resp. 15.
`Resp. 15-19, 30-31.
`
`12
`
`
`
`The Petition expressly states that it relies on “Bennett alone” for all elements except [d]-[e].
`
`Pet. 26.
`
`Not 1[f]/10[f].
`
`Resp. 1, 30-31; see also Prelim. Resp. 50.
`
`Pet. 58.
`13
`
`
`
`The Petition's analysis of element 1[f] relies on “Bennett alone.”
`
`Nomention of Campbell.
`Pet. 58-59.
`
`That is consistent with the Petition's earlier
`statement that it is otherwise relying on
`“Bennett alone.”
`
`Resp. 1, 30-31; see also Prelim. Resp. 50.
`
`[Pet. 26].
`
`14
`
`
`
`The Reply attempts to newly rely on a Bennett + Campbell combination for element 1[f].
`
`Reply 21.
`Not only is attempting to teach a “concept” an incorrect Section 103 analysis (which requires
`showing a teaching or suggestion of every claim limitation), claim element 1[f] recites an
`entirely separate limitation—that of “receiving” what is recited, not merely “the concept of
`actions associated with notification events.”
`
`Claim element 1[f].
`Petitioner is asserting a new combination to teach a recited element. Permitting Petitioner to
`newly assert a combination would be improper and set a troubling precedent.
`Resp. 30-31.
`
`15
`
`
`
`Pointing out that the Petition fails to show an element is not a “procedural ‘gotcha.’”
`
`Reply 21.
`“[] The petition must specify where eachelement of the claim is found in the
`prior art patents or printed publications relied upon.” 37 C.F.R. §42.104(b)(4).
`What the Petition is clear about is that it relies on Bennett alone to teach 1[f].
`
`Resp. 30-31.
`
`Pet. 26.
`
`16
`
`
`
`Sandisk Corp. v. Netlist.
`• Petition: raised Tsern and Juange, but relied only on Tsern to show a certain
`limitation: “at least two physically separate components” mounted on a circuit
`board.
`• Reply: newly argued it would have been obvious to modify Juange to include
`separate components.
`• Board: “Upon review of the Petition, however, we agree with Patent
`Owner…that Petitioner relied exclusively on Tsern for a disclosure or
`suggestion of this limitation.”
`Here: Petitioner relied exclusively on Bennett to teach
`the last element of claim 1, which is a notification-event
`limitation, which the Board has found is not disclosed in
`Bennett. Dec. 17.
`Sandisk Corp. v. Netlist, Inc., 2015 Pat. App. LEXIS 12558, *78-80 (Pat. App. 2015) (IPR2014-00970 Paper 32). Resp. 31.
`
`17
`
`
`
`Oracle Corp. v. Crossroads.
`• Petition: raised Harai and Bergsten, but relied only on Harai for “access
`controls”.
`• Reply: newly relied on Harai and Bergstenfor “access controls.”
`• Board: The petition did not present “the combination that Petitioner now
`argues, in which the access controls are obtained from Bergsten rather than
`Hirai, in sufficient detail.”
`
`Here: Petitioner Twilio relied exclusively on Bennett to
`teach the last element of claim 1, but the Reply newly,
`and thus improperly, asserts that Bennett + Campbell
`satisfy the last claim element.
`Oracle Corp. v. Crossroads Sys., Inc., 2016 Pat. App. LEXIS 983, *49-50 (Pat. App. 2016) (IPR2014-01207 Paper 78). Resp. 32.
`
`18
`
`
`
`Macronix v. Spansion.
`• Petition: raised Goda and Toshiba, but relied only on Goda for “elliptical
`shape.”
`• Reply: newly relied on Toshiba for “elliptical shape.”
`• Board: “The Petition does not make clear that Toshiba was relied upon to
`teach the elliptical shape contact.”
`
`Here: Petitioner relied exclusively on Bennett to teach
`the last element of claim 1, but the Reply asserts newly,
`and thus improperly, asserts that Bennett + Campbell
`satisfy the last claim element. The Petition did not
`make clear that it was relying on Bennett + Campbell for
`the last element.
`Macronix Int’l Co., Ltd. V. Spansion LLC, 2014 Pat. App. LEXIS 3597, *7 (Pat. App. 2014) (IPR2014-00106 Paper 15). Resp. 32.
`
`19
`
`
`
`Arguments outside of the
`petition cannot be made on behalf of the Petitioner.
`(Resp. §1.5, 9B-C.)
`
`20
`
`
`
`The facts of In re Magnum.
`
`Cockrell
`
`Kristiansen
`
`Lerh
`
`OR
`
`Alpha
`
`Board instituted only on Lerh combination.
`
`In re Magnum Oil Tools Int'l, Ltd., 829 F.3d 1364 (Fed. Cir. July 25, 2016). Resp. § 1.5 (p. 2), 9(B)-(C) (pp. 31-33).
`
`21
`
`
`
`The facts of In re Magnum.
`• Alpha and Lehr supposedly taught certain features
`• The petitioner did not articulate a motivation to combine the specific teachings of Lehr,
`Cockrell, and Kristansen.
`• The petitioner “merely attempted to incorporate its arguments based on Alpha to its
`obviousness analysis based on Lehr.” Id. at 1379.
`• “In its petition, McClinton merely argued in conclusory fashion that ‘[t]he same
`analysis’ for Alpha also applied to Lehr, without further explanation.” Id.
`• “Finally, we address the PTO's assertion that the Board did not err in making an
`obviousness argument on behalf of McClintonbased on the primary reference Lehr
`because this argument ‘could have been included in a properly-drafted petition.’” Id.
`• “It is the petitionerthat bears the burden of proof in IPRs, however.” Id.
`
`In re Magnum Oil Tools Int'l, Ltd., 829 F.3d 1364 (Fed. Cir. July 25, 2016). Resp. § 1.5 (p. 2), 9(B)-(C) (pp. 31-33).
`
`22
`
`
`
`The facts of In re Magnum.
`• “we find no supportfor the PTO's position that the Board is free to adopt arguments on
`behalf of petitioners that could have been, but were not, raised by the petitioner during an
`IPR. Instead, the Board must base its decision on arguments that were advanced by a party,
`and to which the opposing party was given a chance to respond. Id.
`• Also, “An agency may not change theories in midstream without giving respondents
`reasonable notice of the change and the opportunity to present argument under the new
`theory.” Id.
`• Here, "[i]t was [petitioner's]burden to demonstrate both 'that a skilled artisan would have
`been motivated to combine the teachings of the prior art references . . . .”
`• “[W]hile the PTO has broad authority to establish procedures for revisiting earlier-granted
`patents in IPRs, that authority is not so broad that it allows the PTO to raise, address, and
`decide unpatentability theories never presentedby the petitionerand not supported by
`record evidence.”
`Thus, the Board may not shift to the Patent Owner the burden of showing
`nonobviousness when Twilio has not set forth a prima face case of obviousness.
`In re Magnum Oil Tools Int'l, Ltd., 829 F.3d 1364 (Fed. Cir. July 25, 2016). Resp. § 1.5 (p. 2), 9(B)-(C) (pp. 31-33).
`23
`
`
`
`The Petition fails to make out a prima facie case of
`obviousness because it does not show that the
`“action” limitations are taught
`in the prior art. (Resp. §7).
`
`24
`
`
`
`The Petition does not identify the recited “actions.”
`• Pages 44-47 of the Petition include a heading that Campbell purportedly
`taches “notification events associated with actions requiring acknowledgement
`by the user.”
`
`Pet. 44.
`• But nowhere in that section does the Petition identify any such “actions” that
`require such “acknowledgment.”
`Resp. 17.
`• For the first time in Reply, Petitioner tries to assert that what it previously said
`was a notification event (account suspension) is “also” an “action.” Reply, 18 (see
`also, next slide).
`Resp. § 1.5 (p. 2), 7 (pp. 17-25), 9(B)-(C) (pp. 31-33).
`
`25
`
`
`
`New position (in Reply): “notification events” are now, “also,” “actions.”
`For the first time in Reply, Petitioner tries to assert that what it previously said
`was a notification event (account suspension) is “also” an “action.”
`Reply, 18.
`
`Reply 18; Resp. 21.
`
`And new argument.
`
`26
`
`
`
`Petitioner does not clearly identify “notification events.”
`
`Pet. 45.
`
`Account suspension.
`
`Pet. 57.
`
`27
`
`Pet. 45, 57.
`
`
`
`Petitioner does not clearly identify “notification events.”
`
`Pet. 45.
`
`Pet. 50.
`
`“Criteria.”
`
`28
`
`Pet. 45, 50.
`
`
`
`The “notification event” changes in Petitioner’s Reply.
`Petition: account
`suspension
`
`Pet. 57; see also, p. 45 (“the Server then transmits a message to the user
`notifying her that her account has been suspended (i.e. the occurrence of the
`event).”).
`
`vs.
`Reply: multiple failed
`access attempts
`
`Reply, 4; see also, p. 7 (“the system may determine that an established
`notification event has occurred (e.g., ten invalid access attempts by a user).”
`
`29
`
`
`
`The “notification event” is further obscured in Petitioner’s Reply.
`
`Reply, 17.
`
`Reply, 12.
`New position “notification event” can
`supposedly be:
`the message sent to the user.
`But sending a message is a separate
`limitation, and the assertion is new
`argument.
`
`30
`
`See also Resp. 17.
`
`
`
`Petitioner does not consistently identify notification events.
`
`Account suspension? Pet. 45, 57; Dec. 18.
`“Criteria?” Pet. 45, 50.
`Attempted logins?Reply, 4, 12, 7.
`The message sent to user? Reply 12, 17.
`
`Pet. 45, 57; Dec. 18.
`Resp. 18-22.
`
`31
`
`
`
`Petitioner confuses acknowledging eventsversus associated actions.
`The claims recite actionsthat require acknowledgement.
`
`Claim 1
`But petitioner wrongly tries to show that events are acknowledged:
`
`Pet. 44.
`
`32
`
`Recall: the
`acknowledgmentis
`supposed to authorize the
`action, not the notification
`event. Resp. 19
`
`Resp. at §7, including p. 19. Pet. 44.
`
`
`
`Petitioner confuses acknowledging eventsversus associated actions.
`The claims require actionsto be acknowledged (not notification events).
`
`But petitioner wrongly argues events need to be acknowledged:
`
`Resp. at §7 (including p. 19). Pet. 50.
`
`Pet. 50.
`
`33
`
`
`
`Petitioner confuses acknowledging eventsversus associated actions.
`The claims require actionsto be acknowledged.
`
`Same misunderstanding, even in the Reply:
`
`Resp. at §7 (including p. 19). Pet. 50.
`
`Reply, 18.
`34
`
`
`
`Petitioner confuses acknowledging eventsversus associated actions.
`The claims require actionsto be acknowledged.
`
`The Reply even equates
`the supposed
`“notification event” with
`the recited associated
`“action”—and which is a
`new argument.
`
`Resp. at §7. Pet. 50.
`
`Reply, 18.
`35
`
`
`
`The Reply misapprehends Patent Owner’s Argument.
`Wrong. Patent Owner’s
`argument is a lack of
`prima faciecase because
`the Petition does not
`show that the “action”
`aspects of the
`notification-event
`limitations are met.
`
`Reply, 2.
`
`Resp, § 7.
`
`36
`
`Resp, 17-25.
`
`
`
`What the Petition identified as “notification events,” the Reply says are “actions.”
`Petition
`Reply
`
`Pet. 60.
`transferring funds = “notification event”
`
`New Position
`
`Reply 10-11
`transferring funds = “action”
`
`Pet. 60, Reply 10-11.
`
`Resp, § 7.
`
`37
`
`
`
`Petitioner's hedging = obscuring or misunderstanding.
`
`Reply 10-11
`Petitioner newly asserts that the “request” itself could
`be an “action,” further abrogating its notice
`requirements. Which is which?
`
`Reply 10-11.
`
`38
`
`
`
`Response to the Reply’s argument.
`The Reply further shows that Petitioner misunderstood the
`claimed invention even as to Bennett.
`
`Pet. 39, cited to in Reply at 11.
`
`That is wrong.
`The claims recite “actions that require acknowledgment” not acknowledging whatever triggered
`the notification event. The triggering event is in the past, with no need to be acknowledged.
`The action is forthcoming, which is why the last element recites receiving acknowledgment of
`the action.
`Resp. 29.
`39
`
`Resp. at §7.
`
`
`
`Summary
`The Petition never identifies in Campbell any recited “notification
`events associated with actions that require acknowledgement by
`the user” because it fails to identify any such “actions.”
`
`Claim 1.
`Closest: account suspension. But the Petition fails to identify any
`“actions” associated with account suspension that “require
`acknowledgement” in order to occur. (Resp. §7, e.g., p. 21).
`
`40
`
`Resp. at §7.
`
`
`
`Lack of motivation to combine. (Resp. §10.)
`
`41
`
`
`
`Petitioner argues including Campbell's information would be obvious.
`
`[Pet. 47.]
`
`[Pet. 45.]
`
`[Reply 18.]
`But actually, including such contact information would expose the sender to phishing scams.
`Resp. at §10 (including § 10(A)).
`42
`
`
`
`
`
`Supplemental Slides
`
`Supplemental Slides
`
`43
`
`ue)
`
`
`
`The Board understood the Petition to assert that account suspension was a notification event.
`
`Dec. 18.
`
`Resp. 20.
`
`44
`
`
`
`
`
`The End
`
`The End
`
`
`
`45
`
`
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