PTAB

IPR2017-01976

TELESIGN CORPORATION v. Twilio Inc.

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1. Case Identification

2. Patent Overview

  • Title: Method and system for processing a telephony session
  • Brief Description: The ’465 patent describes a method for creating telephony-based applications without requiring expertise in complex telephony network interfacing. The system uses a call router that receives telephony communications, sends an application layer protocol request (e.g., HTTP) with call state information to an application server's URI, and receives back a document of telephony instructions to execute.

3. Grounds for Unpatentability

Ground 1: Obviousness over Maes and Ransom - Claims 1-6, 9, and 13 are obvious over Maes in view of Ransom.

  • Prior Art Relied Upon: Maes (Patent 6,801,604) and Ransom (Application # 2003/0204756).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Maes teaches most elements of the challenged claims. Maes discloses a system for building distributed conversational applications using web services, where an application server instructs a telephony gateway to perform actions like playing audio, collecting DTMF digits, or making calls in response to an incoming call. The gateway and application communicate over an IP network. However, Petitioner contended Maes only implicitly suggests that the application has a URI. Ransom, which teaches web services for controlling disparate networks (e.g., power grids), was cited to explicitly disclose that communications between devices over the internet are addressed to a specific URI.
    • Motivation to Combine: A POSITA would have been motivated to combine the teachings of Maes and Ransom because both relate to the general field of web services enabling communication between disparate networks. A POSITA implementing Maes's web service-based telephony system would naturally and obviously use the well-known practice, taught by Ransom, of addressing requests to the application's specific URI to ensure proper message delivery over the internet. This would be a predictable implementation detail.
    • Expectation of Success: A POSITA would have had a high expectation of success, as combining a standard internet addressing scheme (URI-based requests from Ransom) with a web services telephony system (Maes) is a straightforward application of known principles to achieve predictable results.

Ground 2: Obviousness over ETSI Standards - Claims 1, 4-5, and 9 are obvious over ETSI ES 202 391-4 in view of ETSI ES 202 391-11.

  • Prior Art Relied Upon: ETSI ES 202 391-4 ("ETSI 391-4") and ETSI ES 202 391-11 ("ETSI 391-11"), which are parts of the Open Service Access (OSA) Parlay X Web Services standard.

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner asserted that the ETSI standards, which aim to simplify telephony functions for application developers, teach the claimed invention. ETSI 391-4 discloses a request-response model where an application can be triggered by an incoming SMS message. The system sends a SOAP message (an application layer protocol) to an application, which can then respond with a command to initiate a call. ETSI 391-11, part of the same standard, describes the Audio Call Web Service API, which allows an application to instruct the web service to perform actions like playing a text message to a user during a phone call ("PlayTextMessage"). Together, these standards were argued to teach a system where a telephony event triggers a request to an application, which returns instructions for telephony actions that are then executed sequentially.
    • Motivation to Combine: A POSITA would combine these references because they are two parts of the same Parlay X standard, designed to work together to provide a comprehensive suite of web services for telephony. ETSI 391-4 itself encourages the combination of various web service APIs. Combining the SMS-triggered call functionality of ETSI 391-4 with the audio-playing functionality of ETSI 391-11 would be a natural and intended use of the standard to build a more feature-rich application.
    • Expectation of Success: A POSITA would have expected success in combining different parts of the Parlay X standard, as they were explicitly designed for interoperability to allow developers to easily create telephony applications.

  • Additional Grounds: Petitioner asserted additional obviousness challenges that built upon the core ETSI combination. These grounds argued that claims 2, 3, 6, and 13 were obvious by further combining the base ETSI references with ETSI ES 202 391-3 (for handling incoming call notifications), Hong (an IEEE article on Parlay X architecture showing PSTN/SS7 integration), and ETSI ES 202 391-2 (for application-initiated calls) to supply the specific limitations of those dependent claims.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued that the Board should not exercise its discretion to deny review under §325(d). Although the primary reference in Ground 1, Maes, was submitted in an Information Disclosure Statement (IDS) during the prosecution of the ’465 patent, it was never used by the Examiner in a substantive rejection nor discussed on the record. Petitioner contended that when a reference was merely listed in an IDS without evidence of substantive consideration, denial under §325(d) is inappropriate.

5. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1-6, 9, and 13 of Patent 8,837,465 as unpatentable.