`Filed: May 2, 2016
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`Filed on behalf of: VirnetX Inc.
`By:
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`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
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`
`
`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
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.,
`Petitioner
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`v.
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`VIRNETX INC.
`Patent Owner
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`Case IPR2015-00811
`Patent No. 8,868,705
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`PATENT OWNER’S MOTION TO EXCLUDE
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`Case No. IPR2015-00811
`Patent No. 8,868,705
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`Table of Contents
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`Precise Relief Requested ................................................................................. 1
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`Legal Standard ................................................................................................. 1
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`I.
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`II.
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`III. Exhibits 1003, 1004, 1007, 1015-1017, 1024-1035, 1037-1041, 1043-
`1048, 1057-1060, 1063-1065, and 1067-1069, and Portions of Exhibit
`1005 Should be Excluded from the Record ..................................................... 1
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`A.
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`B.
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`C.
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`Exhibits 1022, 1023, 1043, and 1057-1059 Constitute
`Inadmissible Hearsay ............................................................................ 2
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`Exhibits 1060 and 1063-1065 Constitute Inadmissible Hearsay .......... 3
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`Exhibits 1003, 1004, 1007, 1015-1017, 1024-1035, 1037-1041,
`1044-1048, and 1067-1069 Lack Relevance ......................................... 5
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`D.
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`Portions of Exhibit 1005 Lack Relevance ............................................. 5
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`IV. Conclusion ....................................................................................................... 6
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`i
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`Case No. IPR2015-00811
`Patent No. 8,868,705
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`TABLE OF AUTHORITIES
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` Page(s)
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`Rules
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`Federal Rule of Evidence 401 .................................................................................... 5
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`Federal Rule of Evidence 402 ................................................................................ 1, 5
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`Federal Rule of Evidence 403 .................................................................................... 5
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`Federal Rule of Evidence 801 .................................................................................... 1
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`Federal Rule of Evidence 802 ............................................................................ 1, 2, 3
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`37 C.F.R. 42.62(a) ...................................................................................................... 1
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`Other
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`Office Patent Trial Practice Guide,
` 77 Fed. Reg. 48758 .............................................................................................. 1
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`ii
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`I.
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`Precise Relief Requested
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`Case IPR2015-00811
`Patent No. 8,868,705
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`Pursuant to 37 C.F.R. § 42.64, Patent Owner VirnetX Inc. (“Patent Owner”)
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`moves to exclude certain exhibits submitted by Apple Inc. (“Petitioner”). This
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`motion is timely filed in accordance with the Board’s Scheduling Order (Paper No.
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`9). In particular, Petitioner requests that Exhibits 1003, 1004, 1007, 1015-1017,
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`1024-1035, 1037-1041, 1043-1048, 1057-1060, 1063-1065, and 1067-1069, and
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`portions of Exhibit 1005 be excluded from the record.
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`II. Legal Standard
`The Federal Rules of Evidence apply to inter partes review proceedings. 37
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`C.F.R. § 42.62(a), Office Patent Trial Practice Guide, 77 Fed. Reg. 48758. Under
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`Federal Rule of Evidence 402, “irrelevant evidence is not admissible.” Fed. R.
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`Evid. 402. Also, unless an exception applies, an out of court statement offered for
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`the truth of the matter asserted is inadmissible. Fed. R. Evid. 801, 802.
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`III. Exhibits 1003, 1004, 1007, 1015-1017, 1024-1035, 1037-1041, 1043-1048,
`1057-1060, 1063-1065, and 1067-1069, and Portions of Exhibit 1005
`Should be Excluded from the Record
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`The Board should exclude exhibits 1003, 1004, 1007, 1015-1017, 1024-
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`1035, 1037-1041, 1044-1048, 1057-1060, 1063-1065, and 1067-1069 because one
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`or more of these exhibits includes evidence that is inadmissible hearsay or the
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`evidence in these exhibits is irrelevant to the instant proceeding. The Board should
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`also exclude portions of Exhibit 1005 because they are irrelevant to the instant
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`1
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`Patent No. 8,868,705
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`proceeding. Patent Owner timely objected to these exhibits stating the precise
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`grounds under which these exhibits are inadmissible. (Paper Nos. 11, 18, 31.)
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`A. Exhibits 1022, 1023, 1043, and 1057-1059 Constitute Inadmissible
`Hearsay
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`Exhibits 1022, 1023, 1043, and 1057-1059 should be excluded as
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`inadmissible hearsay. See Fed. R. Evid. 801-802. Patent Owner previously
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`objected to these exhibits on this ground. (Paper No. 11 at 1; Paper No. 18 at 1.)
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`Petitioner has failed to rebut Patent Owner’s objections. As such, these exhibits
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`should be excluded.
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`Specifically, absent an applicable exception, the rule against hearsay
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`operates to prohibit out-of-court statements from being offered to prove the truth of
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`the matter asserted. Fed. R. Evid. 801-802. Here, Petitioner submitted out-of-
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`court declarations, i.e., declarations that were not made for purposes of the present
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`proceeding, in an attempt to establish that Aventail (Ex. 1009), RFC 2401 (Ex.
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`1008), and RFC 2543 (Ex. 1013) qualify as printed publications. For instance,
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`Petitioner contends that “Aventail is a printed publication that was distributed to
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`the public without restriction no later than January 31, 1999.” (Pet. at 15.) In
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`attempting to prove the truth of this statement, Petitioner relies on testimony in
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`out-of-court declarations by three individuals—Christopher Hopen (Ex. 1023),
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`Michael Fratto (Ex. 1043), and James Chester (Ex. 1022). (Pet. at 15-16.) After
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`Patent No. 8,868,705
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`institution, Petitioner submitted additional out-of-court testimony, i.e., testimony
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`not proffered in the present proceeding, relating to the Hopen declaration (Ex.
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`1023). (See Paper No. 17 at 5-8, citing Exs. 1057 (deposition transcript of Chris
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`Hopen), 1058 (declaration of Mr. Hopen from Control No. 95/011,682), and 1059
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`(jury trial transcript including excerpts from Mr. Hopen’s deposition).) In its reply
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`to the Patent Owner response, Petitioner further relied on the above exhibits to
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`support its assertion regarding Aventail. (Reply, Paper No. 29 at 21-22, citing Ex.
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`1023 at 1-4, 7, 10, 94, 293, 295, 424; Ex. 1022 at 2-3; Ex. 1043 at 2-3; Ex. 1057 at
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`79:25-80:9, 83:10-84:16, 91:20-92:2, 100:2-104:7; Ex. 1059 at 20-32.) Because
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`Petitioner relies on the alleged truth of the above out-of-court statements to attempt
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`to prove that Aventail qualifies as a printed publication as of January 1999, these
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`out-of-court statements constitute hearsay and are inadmissible. Furthermore, in
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`none of the papers that it has submitted so far in this proceeding has Petitioner
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`explained that these out-of-court statements are admissible under a hearsay
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`exception.
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`For at least the above reasons, the Board should exclude exhibits 1022,
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`1023, 1043, and 1057-1059 because they constitute inadmissible hearsay.
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`B. Exhibits 1060 and 1063-1065 Constitute Inadmissible Hearsay
`Exhibits 1060 and 1063-1065 should be excluded as inadmissible hearsay.
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`See Fed. R. Evid. 801-802. Patent Owner previously objected to these exhibits on
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`Patent No. 8,868,705
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`this ground. (Paper No. 18 at 2.) Petitioner has failed to rebut Patent Owner’s
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`objections. As such, these exhibits should be excluded.
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`In its Petition, Petitioner made the naked assertion that RFC 2401 “was
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`published in November 1998” and that RFC 2543 “was published in March 1999.”
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`(Pet. at 24, 26.) In particular, after trial was instituted, Petitioner submitted
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`additional evidence (Exs. 1060-1065) as supplemental information in support of its
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`contentions that RFCs 2401 and 2543 were publicly accessible by their alleged
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`publication dates (November 1998 and March 1999, respectively). (Paper No. 17
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`at 9-11.) Exhibit 1060 is a declaration from Sandy Ginoza, a representative of the
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`IETF, submitted in litigation before the International Trade Commission (337-TA-
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`858) and Exhibit 1063 is a “transcript of Ms. Ginoza’s February 8, 2013 deposition
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`that was taken as part of the ITC action.” (Id. at 9-10.) Exhibit 1064 is allegedly
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`“an article from InfoWorld magazine (dated August 16, 1999)” and Exhibit 1065 is
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`allegedly “an article from NetworkWorld magazine (dated March 15, 1999).” (Id.
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`at 11.) In its reply to the Patent Owner response, Petitioner further relied on the
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`above exhibits to support its assertion regarding the publication dates of RFCs
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`2401 and 2543. (Reply, Paper No. 29 at 23-25.) Each of exhibits 1060 and 1063-
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`1065 include out-of-court statements, i.e., statements that were not made for
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`purposes of the present proceeding, and because Petitioner relies on the alleged
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`truth of these out-of-court statements, these out-of-court statements constitute
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`Patent No. 8,868,705
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`hearsay and are inadmissible. Furthermore, in none of the papers that it has
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`submitted so far in this proceeding has Petitioner explained that these out-of-court
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`statements are admissible under a hearsay exception.
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`For at least the above reasons, the Board should exclude exhibits 1060 and
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`1063-1065 because they constitute inadmissible hearsay and no exception applies.
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`C. Exhibits 1003, 1004, 1007, 1015-1017, 1024-1035, 1037-1041, 1044-
`1048, and 1067-1069 Lack Relevance
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`Exhibits 1003, 1004, 1007, 1015-1017, 1024-1035, 1037-1041, 1044-1048,
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`and 1067-1069 should be excluded because they lack relevance. Fed. R. Evid.
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`401-403. Patent Owner previously objected to these exhibits on this ground.
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`(Paper No. 11 at 2; Paper No. 31 at 1.) Petitioner has failed to rebut Patent
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`Owner’s objections. As such, these exhibits should be excluded.
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`Specifically, each of these exhibits is inadmissible because Petitioner has not
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`established that they are relevant. Fed. R. Evid. 401-403. For instance, Petitioner
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`does not even cite to these exhibits in either the Petition or the Petitioner Reply.
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`(Paper No. 1; Paper No. 29.) Accordingly, each of these exhibits should be
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`excluded from the record.
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`D. Portions of Exhibit 1005 Lack Relevance
`Portions of Exhibit 1005 should be excluded because they lack relevance.
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`Fed. R. Evid. 401-403. Patent Owner previously objected to these portions on this
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`ground. (Paper No. 11 at 1.) Petitioner has failed to rebut Patent Owner’s
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`5
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`objections. As such, these portions should be excluded.
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`Case IPR2015-00811
`Patent No. 8,868,705
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`Specifically, when Petitioner filed the Exhibit 1005, which is the declaration
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`of its alleged expert, Dr. Roberto Tamassia, Petitioner made the strategic choice of
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`filing a single declaration for not one but four proceedings (IPR2015-00810, 811,
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`812, 813) that covered two patents (U.S. 8,868,705 and 8,850,009). (See generally
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`Ex. 1005.) Accordingly, vast portions of Exhibit 1005 are simply irrelevant to the
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`instant proceeding. For instance, the current proceeding is based on Aventail as the
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`primary reference but Dr. Tamassia’s declaration includes several pages focusing
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`on Beser, which is irrelevant to the current proceeding. (See, e.g., Ex. 1005 at ¶¶
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`274-345, 383-403, 415-17, 423.) Such irrelevant sections of Dr. Tamassia’s
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`declaration should be excluded under FRE 401-403.
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`IV. Conclusion
`For the reasons set forth above, the Board should exclude exhibits 1003,
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`1004, 1007, 1015-1017, 1024-1035, 1037-1041, 1043-1048, 1057-1060, 1063-
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`1065, and 1067-1069, and portions of Exhibit 1005 from the record.
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`Dated: May 2, 2016
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`Respectfully submitted,
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`By: /Joseph E. Palys/
`Joseph E. Palys
`Reg. No. 46,508
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`Counsel for VirnetX, Inc.
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`6
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`CERTIFICATE OF SERVICE
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`Case IPR2015-00811
`Patent No. 8,868,705
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`I hereby certify that on this 2nd day of May 2016, a copy of the foregoing
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`Patent Owner’s Motion to Exclude was served electronically, pursuant to
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`agreement, upon the following:
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`iprnotices@sidley.com
`Sidley Austin LLP
`1501 K Street NW
`Washington, DC 20005
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`Respectfully submitted,
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`By: /Joseph E. Palys/
`Joseph E. Palys.
`Reg. No. 46,508
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`Counsel for VirnetX, Inc.
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`Counsel for Apple Inc.:
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`Dated: May 2, 2016