`By:
`
`Joseph E. Palys
`Paul Hastings LLP
`875 15th Street NW
`Washington, DC 20005
`Telephone: (202) 551-1996
`Facsimile: (202) 551-0496
`E-mail: josephpalys@paulhastings.com
`
`
`
`Paper No. ___
`Filed: May 23, 2016
`
`Naveen Modi
`Paul Hastings LLP
`875 15th Street NW
`Washington, DC 20005
`Telephone: (202) 551-1990
`Facsimile: (202) 551-0490
`E-mail: naveenmodi@paulhastings.com
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`
`
`
`APPLE INC.,
`Petitioner
`
`v.
`
`VIRNETX INC.
`Patent Owner
`
`
`
`
`
`
`
`Case IPR2015-00810
`Patent No. 8,868,705
`
`
`
`
`
`
`
`
`
`
`PATENT OWNER’S REPLY IN SUPPORT OF MOTION TO EXCLUDE
`
`
`
`Case No. IPR2015-00810
`Patent No. 8,868,705
`
`Table of Contents
`
`Exhibits 1060 and 1063-1065 Should Be Excluded ........................................ 1
`
`Exhibits 1003, 1004, 1009-1011, 1013-1035, 1037-1041, 1043-1048,
`and 1068 and Portions of Exhibit 1005 Should Be Excluded ......................... 4
`
`
`
`
`
`I.
`
`II.
`
`
`
`
`
`
`
`
`
`Case No. IPR2015-00810
`Patent No. 8,868,705
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Pozen Inc. v. Par Pharm., Inc.,
`
`696 F.3d 1511 (Fed. Cir. 2012) ............................................................................ 2
`
`Conoco Inc. v. DOE,
`
`99 F.3d 387 (Fed. Cir. 1996) ................................................................................ 4
`
`Doe v. United States,
`
`976 F. 2d 1071 (7th Cir. 1992) ........................................................................ 1, 2
`
`Actifio, Inc., v. Delphix Corp.,
`
`IPR2015-00108, Paper No. 56 (Apr. 29, 2016) .................................................... 4
`
`Statutes
`
`37 C.F.R. § 42.22 ...................................................................................................... 1
`
`Rules
`
`Federal Rule of Evidence 807 ............................................................................... 1-4
`
`
`
`
`
`
`
`On May 16, 2016, Petitioner Apple Inc. (“Apple”) filed an Opposition
`
`Case IPR2015-00810
`Patent No. 8,868,705
`
`
`(Paper No. 38) to Patent Owner’s Motion to Exclude (Paper No. 36). Apple,
`
`however, provides insufficient reasons for admitting the exhibits at issue, i.e.,
`
`Exhibits 1003, 1004, 1009-1011, 1013-1035, 1037-1041, 1043-1048, 1060, 1063-
`
`1065, and 1068, and portions of Exhibit 1005. As such, Patent Owner’s Motion to
`
`Exclude should be granted.
`
`I.
`
`Exhibits 1060 and 1063-1065 Should Be Excluded
`
`Apple asserts that VirnetX should have identified “specific statements in
`
`[these] exhibits alleged to be hearsay.” Paper No. 38 at 1. Apple misses that
`
`VirnetX asserted these exhibits were hearsay in their entirety. Paper 36 at 2, Paper
`
`18 at 1. Moreover, there is no requirement to identify “specific statements,” see 37
`
`C.F.R. 42.22, and Apple does not deny that exhibits 1060 and 1063-1065 constitute
`
`hearsay.
`
`Apple further argues that these exhibits should be admitted under the
`
`residual exception of Fed. R. Evid 807. Apple states that courts have “wide
`
`discretion” in applying the residual exception to the hearsay rule. See Paper 38 at 2
`
`(citing Doe v. United States, 976 F.2d 1071, 1076-77 (7th Cir. 1992)). This is
`
`wrong. Apple’s reliance on Doe, which involves out of court statements made by a
`
`child abuse victim against his abuser, is misplaced. As provided by Doe:
`
`1
`
`
`
`Case IPR2015-00810
`Patent No. 8,868,705
`
`
`Congress intended that the residual exceptions be used
`sparingly; although trial judges are given considerable
`discretion in evaluating hearsay offered thereunder, that
`discretion is “tempered by the requirement that the
`exception be reserved for exceptional cases.”
`
`Id. at 1074 (emphasis added). Indeed, the Federal Circuit recently excluded a
`
`sworn declaration assumed to be trustworthy. Pozen Inc. v. Par Pharm., Inc., 696
`
`F.3d 1151, 1161 n.6 (Fed. Cir. 2012) (even if the declaration at issue was
`
`trustworthy, “this is not an exceptional case and thus does not warrant the residual
`
`hearsay exception”).
`
`Ignoring the mandate that the residual hearsay exception is to be “used
`
`sparingly” for truly “exceptional cases,” Apple attempts to establish that statements
`
`in these exhibits meet the five requirements of Rule 807. But they do not meet all
`
`of those requirements. Apple first argues that Ms. Ginoza’s statements in Exhibits
`
`1060 and 1063 are corroborated by and corroborates Exhibits 1064 and 1065. See
`
`Paper 38 at 3, 4. That is incorrect. Ms. Ginoza’s statements and the statements in
`
`Exhibits 1064 and 1065 have no circumstantial guarantees of trustworthiness.
`
`There is no evidence corroborating Ms. Ginoza’s statements. She has no personal
`
`knowledge to support the assertions that RFC 2401 became publicly available in
`
`November 1998 and RFC 2543 became publicly available in March 1999. She was
`
`not involved with the RFC editor’s publication process until June of 1999. (Ex.
`
`2
`
`
`
`1063 at 14 (page 50, lines 17-25).) She not only failed to produce the RFC Editor
`
`Case IPR2015-00810
`Patent No. 8,868,705
`
`
`records that formed the basis of her statements, but she also could not even explain
`
`what existed in those records that were the basis of her statements with respect to
`
`RFC 2401. See Ex. 1060 at ¶ 107; Ex. 1063 at 11 (p. 40, ll. 2-5). Therefore, her
`
`blanket assertion that “RFC 2401 has been publicly available through the RFC
`
`editor’s web site or through other means since its publication in November 1998”
`
`(Ex. 1060 at ¶ 107) has no “circumstantial guarantee[] of trustworthiness.”
`
`Further, there is no evidence having “circumstantial guarantees of trustworthiness”
`
`for the statements in Exhibits 1064 and 1065 (Ex. 1064 at 9; Ex. 1065 at 3) relating
`
`to the availability of RFCs from the IETF website that Apple relies on for their
`
`truth. 1 (Reply, Paper No. 29 at 19-21.)
`
`In addition to lacking indicia of trustworthiness required by Rule 807, Ms.
`
`Ginoza’s statements and Exhibits 1064 and 1065 are not more probative than other
`
`evidence reasonably available to Petitioner, as required by FRE 807. As just one
`
`example, Petitioner could have contacted the authors of RFCs 2401 and 2543 to
`
`
`1 Apple asserts that Exhibits 1064 and 1065 are being submitted for another
`
`purpose as well and should be admitted. See Paper No. 38 at 3 n.1. Patent Owner
`
`disagrees as these exhibits are being submitted for their truth. See Reply, Paper
`
`No. 29 at 19-21.
`
`3
`
`
`
`Case IPR2015-00810
`Patent No. 8,868,705
`
`obtain declarations regarding their personal knowledge of the publication of RFCs
`
`2401 and 2453. Petitioner’s failure to submit such in court testimony not only
`
`shows that the evidence currently of record is not “more probative on the point for
`
`which it is offered than any other evidence that the proponent can obtain through
`
`reasonable efforts” but also shows that admitting this evidence is not “in the
`
`interests of justice,” as required by FRE 807. Indeed, this is simply not one of
`
`those “exceptional” cases where admitting hearsay evidence under the residual
`
`exception is warranted. Conoco Inc. v. DOE, 99 F.3d 387, 392 (Fed. Cir. 1996).
`
`For at least the above reasons, the Board should exclude Exhibits 1060 and
`
`1063-1065 because they constitute inadmissible hearsay and no exception applies.
`
`II.
`
`Exhibits 1003, 1004, 1009-1011, 1013-1035, 1037-1041, 1043-1048, and
`1068 and Portions of Exhibit 1005 Should Be Excluded
`
`Apple asserts that Dr. Tamassia considered Exhibits 1003, 1004, 1009-1011,
`
`1013-1035, 1037-1041, and 1043-1048, and therefore they are admissible. See
`
`Paper 38 at 7, 8. However, these uncited Exhibits were not cited by Dr. Tamassia
`
`(in Ex. 1005) as forming the basis for his positions that are relevant to this
`
`proceeding. See Actifio, Inc., v. Delphix Corp., IPR2015-00108, Paper No. 56 at
`
`57 (Apr. 29, 2016) (excluding exhibits that were not relied upon). Thus, these
`
`exhibits should be excluded and the unrelated portions of Dr. Tamassia’s
`
`declaration to this proceeding should likewise be excluded.
`
`4
`
`
`
`As for Exhibit 1068, Apple does not deny that it does not rely on it in any of
`
`Case IPR2015-00810
`Patent No. 8,868,705
`
`
`its papers. It should, therefore, be excluded as irrelevant.
`
`
`
`Dated: May 23, 2016
`
`Respectfully submitted,
`
`By:/Joseph E. Palys/
`Joseph E. Palys
`Reg. No. 46,508
`
`Counsel for VirnetX Inc.
`
`
`
`5
`
`
`
`
`
`Case No. IPR2015-00810
`Patent No. 8,868,705
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on this 23rd day of May 2016, a copy of the foregoing
`
`Patent Owner’s Reply in Support of Motion to Exclude was served electronically,
`
`pursuant to agreement, upon the following:
`
`Counsel for Apple Inc.:
`
`
`
`iprnotices@sidley.com
`Sidley Austin LLP
`1501 K Street NW
`Washington, DC 20005
`
`
`
`
`Respectfully submitted,
`
`By: /Joseph E. Palys/
`Joseph E. Palys
`Reg. No. 46,508
`Counsel for VirnetX Inc.
`
`Dated: May 23, 2016