Takeaway: While the terms of an unexpired patent are given their broadest reasonable interpretation, any proposed interpretation must still be reasonable.

In its Decision, the Board declined to institute inter partes review of any challenged claims (1-10, 13, and 17-22) of the ’920 Patent.  The ’920 Patent relates generally to a process for verifying the identity of an online registrant.

The Board began with claim construction, noting that the terms of an unexpired patent are given their broadest reasonable construction in light of the specification of the patent in which they appear. The Board reviewed the construction of the term “notification event.”  Petitioner argued that “notification event” should be “an event that results in the registrant being contacted either for re-verification or for notification that the event occurred.”  Patent Owner argued that this interpretation read “notification” out of the term, and proposed the construction “an event that results in the registrant being notified that the event occurred.”  The Board agreed with Patent Owner, noting that the construction must be reasonable and under Petitioner’s construction, the word “notification” would be superfluous.  Regarding Petitioner’s expert’s testimony on the subject, the Board found that the expert cited to portions of the specification discussing events, not notification events.

The Board then reviewed the priority date for the ’920 Patent, the application for which was filed as a continuation-in-part application. Because the Board denied institution otherwise, it did not reach the issue of whether the claims of the ’920 Patent are entitled to the earlier priority date.

Finally, the Board reviewed the grounds – obviousness of the challenged claims over Bennett, or over Bennett and Thoursie. The Board found that Petitioner had not argued that Bennett teaches a “notification event,” or “notifying the user that the notification event occurred.”  Instead, Petitioner used its construction of “notification event” in showing obviousness.  Because the Board adopted Patent Owner’s construction, the Board found that Petitioner had not met its burden of establishing a reasonable likelihood that Petitioner would prevail in its challenges to the challenged claims.

Twilio Inc. v. TeleSign Corporation, IPR2016-00450
Paper 17: Decision on Denial of Institution of Inter Partes Review
Dated: July 8, 2016
Patent 8,462,920
Before: Sally C. Medley, Justin T. Arbes, and Kimberly McGraw
Written by: McGraw
Related Proceedings: IPR2016-00360; IPR2016-00451; TeleSign Corp. v. Twilio Inc., No. 2:15-cv-03240 (C.D. Cal.)