PTAB

IPR2016-00360

Twilio Inc v. TeleSign Corp

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Petition
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1. Case Identification

2. Patent Overview

  • Title: Process for Determining Characteristics of a Telephone Number
  • Brief Description: The ’034 patent discloses an online user registration method that verifies a user's identity by determining characteristics (e.g., phone type, carrier, geographic location) associated with a provided telephone number. The system uses this information, along with a verification message sent to the phone, to grant or deny registration.

3. Grounds for Unpatentability

Ground 1: Obviousness over a Single Reference - Claims 1-4, 6, 7, 9, and 11-14 are obvious over Nguyen.

  • Prior Art Relied Upon: Nguyen (Patent 7,577,847).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Nguyen, which discloses a registration and verification process for an online casino, taught every element of the challenged claims. Nguyen’s system received a phone number during registration and determined its characteristics to verify a user's location was in a jurisdiction where gambling was legal. Petitioner asserted Nguyen disclosed determining the phone type (landline vs. cell) and geographic location (via carrier database, GPS, or E911 methods). It was argued that determining the phone carrier was inherent in Nguyen’s process of requesting location data from that carrier. The final step of registering the user was based on these determined characteristics and the user's successful entry of a randomly-generated confirmation number.
    • Key Aspects: This ground asserted that Nguyen alone rendered the claims obvious, positing that any claim limitations not explicitly disclosed were inherent or would have been obvious modifications. Specifically, Petitioner argued that because Nguyen’s system required a user to enter a randomly generated code, it was obvious that the system must first communicate that code to the user.

Ground 2: Obviousness over Combined References - Claims 1-4, 6, 7, 9, and 11-14 are obvious over Nguyen in view of De Petris and Singhal.

  • Prior Art Relied Upon: Nguyen (Patent 7,577,847), De Petris (Application # 2004/0219904), and Singhal (Application # 2004/0203595).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground strengthened the arguments from Ground 1 by combining Nguyen with references that explicitly taught key limitations. De Petris was cited to explicitly teach determining a phone carrier by referencing a database that matches number prefixes to specific carriers, supplementing Nguyen’s alleged inherent disclosure. Singhal was cited to explicitly teach communicating a randomly-generated pass code (a verification message) to a user's phone via SMS or voice message for authentication. This combination was argued to address any perceived gaps in Nguyen’s disclosure regarding how the phone carrier is identified and how the verification code is communicated to the user.
    • Motivation to Combine: Petitioner contended a person of ordinary skill in the art (POSITA) would combine these analogous references to improve the security and functionality of Nguyen's verification system. All three references addressed the same problem of remote user authentication. A POSITA would combine De Petris to implement a known, reliable method (prefix lookup) for the necessary step of identifying a phone carrier. Likewise, a POSITA would integrate Singhal’s well-known method of code delivery via SMS or voice to efficiently and securely provide the confirmation number required by Nguyen’s process.
    • Expectation of Success: A POSITA would have a high expectation of success because the combination involved applying known, predictable techniques to solve a common problem. Combining De Petris's carrier lookup and Singhal's code delivery with Nguyen's registration framework were straightforward implementations of existing technologies that would yield the predictable result of a more robust and explicit verification system.

  • Additional Grounds: Petitioner asserted an intermediate ground (Ground 2) that claims 1-4, 6, 7, 9, and 11-14 are obvious over Nguyen in view of De Petris alone. This ground focused specifically on strengthening the argument for the "determining the phone carrier" limitation.

4. Key Claim Construction Positions

  • Petitioner argued that its invalidity contentions succeed regardless of the construction of the term "registering a user" from claim 1.
  • In related litigation, Patent Owner had asserted that "registering" should be broadly construed to include "entering" or "storing information about a user." Petitioner contended that the prior art, particularly Nguyen, disclosed both this broader meaning (storing player data in a database) and the narrower meaning of granting or denying access to a system, rendering the claims obvious under either interpretation.

5. Relief Requested

  • Petitioner requested institution of inter partes review (IPR) and cancellation of claims 1-4, 6, 7, 9, and 11-14 of the ’034 patent as unpatentable based on the grounds presented.