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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`––––––––––––––––––
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`––––––––––––––––––
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`APPLE INC.,
`Petitioner,
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`v.
`VIRNETX INC.,
`Patent Owner.
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`––––––––––––––––––
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`Case No. IPR2015-00811
`U.S. Patent No. 8,868,705
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`––––––––––––––––––
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`PETITIONER’S OPPOSITION TO
`PATENT OWNER’S MOTION TO EXCLUDE
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`IPR2015-00811
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`Petitioner’s Opp. to Mot. to Exclude
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`Table of Contents
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`I.
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`II.
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`Introduction ...................................................................................................... 1
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`Argument ......................................................................................................... 1
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`A.
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`B.
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`C.
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`D.
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`Patent Owner’s Motion is Facially Deficient ........................................ 1
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`Exhibits 1022, 1023, 1043, and 1057-1059 Are Admissible ................ 2
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`Exhibits 1060 and 1063-1065 Are Admissible ..................................... 8
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`Exhibits 1003, 1004, 1007, 1015-1017, 1024-1035, 1037-1041, 1044-
`1048, and 1067-1069 Are Admissible ................................................ 13
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`E.
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`Exhibit 1005 Is Admissible in Its Entirety .......................................... 15
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`III. Conclusion ..................................................................................................... 15
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`IPR2015-00811
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`Cases
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`Petitioner’s Opp. to Mot. to Exclude
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`TABLE OF AUTHORITIES
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` Page(s)
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`Apple Inc. v. Smartflash LLC,
`CBM2014-00180, Paper 50 (Sep. 25, 2015) ...................................................... 13
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`Davis v. Alaska,
`415 U.S. 308 (1974) .............................................................................................. 3
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`Doe v. United States,
`976 F.2d 1071 (7th Cir. 1992), cert. denied 510 U.S. 812 (1993) ....................... 2
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`In re Epstein,
`32 F.3d 1559 (Fed. Cir. 1994) .............................................................................. 7
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`Ericsson Inc. v. Intellectual Ventures I LLC,
`IPR2014-00527, Paper 41 (May 18, 2015) ......................................................... 12
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`Google Inc. v. Intellectual Ventures II LLC,
`IPR2014-01034, Paper 41 (Dec. 7, 2015)........................................................... 15
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`The Mangrove Partners Master Fund, Ltd., v. VirnetX Inc.,
`IPR2015-01047, Paper 52 (Apr. 15, 2016) ........................................................... 3
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`Poole v. Textron, Inc.,
`192 F.R.D. 494 (D. Md. 2000) ........................................................................... 11
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`Samsung Electronics America, Inc. v. Smarthflash LLC,
`CBM2014-00193, Paper 45 (Mar. 30, 2016) ...................................................... 15
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`Ultratec, Inc. v. Sorenson Commc'ns, Inc.,
`No. 13-CV-346, 2014 WL 4829173 (W.D. Wis. Sept. 29, 2014) ...................... 11
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`United States v. North,
`910 F.2d 843 (D.C. Cir. 1990) cert. denied 500 U.S. 941 (1991) ........................ 2
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`VirnetX, Inc. v. Apple Inc.,
`10-cv-00417 (E.D. Tex.) ....................................................................................... 5
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`VirnetX, Inc. v. Microsoft Corp.,
`07-cv-00080 (E.D. Tx.) ......................................................................................... 6
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`Other Authorities
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`37 C.F.R. § 42.20(c) ................................................................................................... 1
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`37 C.F.R. § 42.22(a)(2) .............................................................................................. 1
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`37 C.F.R. § 42.51(b)(2) .......................................................................................... 3, 8
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`37 C.F.R. § 42.53(f)(5) ............................................................................................ 14
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`37 C.F.R. § 42.65 ..................................................................................................... 13
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`Fed. R. Evid. 801(c)(2) .............................................................................................. 9
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`Fed. R. Evid. 807 ..............................................................................................passim
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`FRE 401 and 402 ...................................................................................................... 13
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`iii
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`IPR2015-00811
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`I.
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`Introduction
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`Petitioner’s Opp. to Mot. to Exclude
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`The evidence of record establishes that Exhibits 1003-1005, 1007, 1015-
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`1017, 1024-1035, 1037-1041, 1043-1048, 1057-1060, 1063-1065, and 1067-1069
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`are admissible. Patent Owner has failed to show otherwise, and thus, its motion
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`must be denied. See Paper 36 (“Mot.”).
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`II. Argument
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`A.
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`Patent Owner’s Motion is Facially Deficient
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`With respect to the exhibits Patent Owner seeks to exclude based on hearsay
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`(Exs. 1022, 1023, 1043, 1057-1060, 1063-65), Patent Owner’s motion is facially
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`deficient – it does not identify any specific statements in those exhibits alleged to
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`be hearsay. Mot. at 2-5; see 37 C.F.R. § 42.22(a)(2). Instead, Patent Owner
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`alleges that the exhibits “include out-of-court statements” without identifying
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`them. Mot. at 2-5 (emphasis added). It is not Petitioner’s burden to identify
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`purported hearsay – Patent Owner, as the moving party, “has the burden of proof to
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`establish that it is entitled to the requested relief.” 37 C.F.R. § 42.20(c).
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`Patent Owner’s failure to identify the putative hearsay also is prejudicial.
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`For example, if Patent Owner in its reply attempts to cure these deficiencies,
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`Petitioner will have no opportunity to respond. Patent Owner’s motion to exclude
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`these exhibits should therefore be denied.
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`B.
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`Exhibits 1022, 1023, 1043, and 1057-1059 Are Admissible
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`Patent Owner moves to exclude Exhibits 1022, 1023, 1043, and 1057-1059
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`as inadmissible hearsay. Mot. at 2-3. That motion should be denied, as these
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`exhibits qualify for the residual exception to hearsay. Fed. R. Evid. 807.
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`Under Federal Rule of Evidence 807, a “statement is not excluded by the
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`rule against hearsay” if: “(1) the statement has equivalent circumstantial guarantees
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`of trustworthiness; (2) it is offered as evidence of a material fact; (3) it is more
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`probative on the point for which it is offered than any other evidence that the
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`proponent can obtain through reasonable efforts; and (4) admitting it will best
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`serve the purposes of these rules and the interests of justice.” Fed. R. Evid. 807(a).
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`The proponent of the testimony must also give (5) “an adverse party reasonable
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`notice of the intent to offer the statement and its particulars.” Fed. R. Evid. 807(b).
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`Courts are accorded wide discretion in applying this exception. Doe v. United
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`States, 976 F.2d 1071, 1076–77 (7th Cir. 1992), cert. denied 510 U.S. 812 (1993);
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`United States v. North, 910 F.2d 843, 909 (D.C. Cir. 1990) cert. denied 500 U.S.
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`941 (1991).
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`Exhibits 1022, 1023, 1043, and 1057-1059 include the sworn testimony of
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`three individuals retained by Petitioner – Chris Hopen, Michael Fratto, and James
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`Chester. Petitioner relies on this testimony to prove the Aventail documents were
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`publicly available prior to February 2000. Pet. at 15-16; Paper 17 at 5-8. As
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`explained below, to the extent these exhibits contain statements that are hearsay,
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`they satisfy the residual exception to hearsay, and are admissible.
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`First, Exhibits 1022, 1023, 1043, and 1057-1059 have equivalent
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`circumstantial guarantees of trustworthiness. See Fed. R. Evid. 807(a)(1). The
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`testimony relied upon in Exhibits 1022, 1023, and 1043 testifies to the same
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`material fact: the public availability of the Aventail documents prior to February of
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`2000. Ex. 1022 at ¶¶ 9-22; Ex. 1023 at ¶¶ 7-25; Ex. 1043 at ¶¶ 6-21.
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`The corroborating effect of three independent sworn declarations by three
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`different witnesses with personal knowledge of Aventail’s public dissemination is
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`substantial, and their testimony credible. The testimony also concerns facts
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`personally known to each witness based on their personal knowledge, which again
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`is corroborated by other exhibits. For example, Mr. Hopen was the lead developer
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`of Aventail and a former employee, while Mr. Fratto and Mr. Chester spoke from
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`their relevant personal experiences.
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`Notably, Patent Owner made no efforts in this proceeding to cross-examine
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`any of these declarants pursuant to 37 C.F.R. § 42.51(b)(2), despite its awareness
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`that each had been retained by Petitioner. See Davis v. Alaska, 415 U.S. 308, 316
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`(1974) (“Cross-examination is the principal means by which the believability of a
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`witness and the truth of his testimony are tested.”); cf. The Mangrove Partners
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`Master Fund, Ltd., v. VirnetX Inc., IPR2015-01047, Paper 52 at 2 (Apr. 15, 2016).
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`Substantial circumstantial guarantees of trustworthiness were also submitted
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`by Messrs. Hopen and Fratto in the form of corroborating exhibits attached to their
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`declarations, including announcements, press releases, and articles dated prior to
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`February 2000. For example, Mr. Hopen’s declaration attached a several different
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`types of evidence corroborating his testimony of the public availability of the
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`Aventail documents. See, e.g., Ex. 1023 at 7 (announcement dated May 2, 1997),
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`10 (article dated June 23, 1997), 94 (announcement dated Oct. 12, 1998), 293
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`(announcement dated May 26, 1999), 295 (press release dated Aug. 9, 1999), 424
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`(article dated June 28, 1999 by Mr. Fratto). Mr. Fratto’s declaration provides
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`further corroborating evidence in the form of numerous dated articles about the
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`Aventail system, several of which he authored. See, e.g., Ex. 1043 at 134 (article
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`dated May 2, 1997), 137 (article dated June 23, 1997), 141 (article dated Oct. 1,
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`1997 by Mr. Fratto), 144 (article dated June 15, 1998 by Mr. Fratto), 270 (article
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`dated Aug. 9, 1998), 274 (article dated Oct. 19, 1998), 401 (article dated Aug. 9,
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`1999). Patent Owner neither objected to nor provided any basis for excluding the
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`numerous exhibits attached to each of the declarations, each of which
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`independently corroborates the Declarants’ testimony and also independently
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`corroborates the public availability of the Aventail documents.
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`Exhibits 1057-1059 contain certain litigation testimony of Mr. Hopen and
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`further corroborate the relied upon testimony of Exhibits 1022, 1023, and 1043.
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`These exhibits show that Patent Owner was given multiple opportunities to cross-
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`examine Mr. Hopen regarding his testimony that the Aventail documents were
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`publicly available prior to February of 2000, and in each case generated no
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`testimony casting doubt on the statements in his declaration. Mr. Hopen’s
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`litigation testimony provides further guarantees of the trustworthiness of his
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`affidavit and the affidavits of Messrs. Chester and Fratto.
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`Exhibit 1057 is a rough transcript of Chris Hopen’s April 11, 2012
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`deposition in the VirnetX, Inc. v. Apple Inc., 10-cv-00417 (E.D. Tex.) litigation,1
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`and Exhibit 1058 is an exhibit from that deposition. See, e.g., Ex. 1057 at pp. 4-6,
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`191; Ex. 1058 at i (marked as deposition exhibit “P4”). At his deposition, Mr.
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`Hopen testified that the Aventail documents were publicly available prior to
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`February of 2000. Ex. 1057 at 79: 25-80:9, 83:10-84:16, 91:20-92:2, 100:2-104:7.
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`Patent Owner examined Mr. Hopen about his testimony, see, e.g., Ex. 1057 at
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`148:1-209:8, as well as a declaration that Mr. Hopen provided to Apple as part of
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`an inter partes reexamination involving U.S. Patent No. 6,502,135 (Control No.
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`95/001,682). In that declaration, Mr. Hopen testified (as he does here) that the
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`1 The final transcript of Mr. Hopen’s deposition is subject to a protective order.
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`Exhibit 1057 is the redacted rough draft submitted by Patent Owner on May 3,
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`2012, in an IDS in U.S. Appl. No. 13/339,257 (now U.S. Patent No. 8,504,697).
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`Aventail documents were published and publicly distributed before February 2000.
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`Ex. 1058 at ¶¶ 13-16; accord Ex. 1023 at ¶¶ 13-16. When questioned by Patent
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`Owner, Mr. Hopen confirmed that he agreed with the substance of the declaration
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`he submitted in the ’135 reexam. Ex. 1057 at 191:10-16 (marking Exhibit P4),
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`211:10-14; Ex. 1058 (Exhibit P4 from Mr. Hopen’s deposition); compare Ex. 1058
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`at ¶¶ 13-16 with Ex. 1023 at ¶¶ 13-16. During cross-examination, Patent Owner
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`elicited no contradictory testimony from Mr. Hopen.
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`Likewise, Exhibit 1059 is a transcript of a portion of the trial in VirnetX, Inc.
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`v. Microsoft Corp., 07-cv-00080 (E.D. Tx.), that took place in March 2010. Ex.
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`1059 at 1:1-9. During the trial, video-taped deposition testimony from Mr. Hopen
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`was played in which he testified that the Aventail documents were publicly
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`distributed and available prior to February 2000. Ex. 1059 at 20-32; see, e.g., id. at
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`23:6-11, 24:16-27:17. Patent Owner was given the opportunity to play rebuttal
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`portions of Mr. Hopen’s deposition for the jury, but apparently chose not to do so.
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`See id. at 12:1-23.
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`When viewed together, Exhibits 1022, 1023, 1043, and 1057-1059
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`collectively provide substantial circumstantial guarantees of the trustworthiness of
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`the testimony of Messrs. Hopen, Chester, and Fratto as to the public availability of
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`the Aventail documents before February 2000. Even when attacking the factual
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`veracity of their testimony, Patent Owner took issue only with the number of
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`copies of the Aventail documents that were made publicly available – it did not
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`dispute that some copies of those documents were disseminated as described by the
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`witnesses without restriction. Resp. at 47-50. Patent Owner therefore provides no
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`evidence or argument to undercut the substantial circumstantial guarantees of
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`trustworthiness provided by Petitioner.
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`Second, the exhibits are offered “as evidence of a material fact” (Fed. R.
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`Evid. 807(a)(2)): the public availability of the Aventail documents prior to
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`February of 2000. Pet. at 15-16; Paper 17 at 5-8.
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`Third, the exhibits are “more probative on the point for which it is offered
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`than any other evidence that the proponent can obtain through reasonable efforts.”
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`Fed. R. Evid. 807(a)(3). As described above, the exhibits include the testimony of
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`three different witnesses with personal knowledge of Aventail’s public
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`dissemination prior to February 2000, including Aventail’s lead developer.
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`Fourth, admitting these exhibits “will best serve the purposes of these rules
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`and the interests of justice.” See Fed. R. Evid. 807(a)(4). Hearsay rules exist
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`because “the many possible sources of inaccuracy and untrustworthiness which
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`may lie underneath the bare untested assertion of a witness can best be brought to
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`light and exposed, if they exist, by the test of cross-examination.” In re Epstein, 32
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`F.3d 1559, 1565 (Fed. Cir. 1994) (quoting 5 John H. Wigmore, Evidence in Trials
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`at Common Law § 1420, at 251 (James H. Chadbourn rev. 1974)). The testimony
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`relied upon in Exhibits 1057-1059 was subject to cross-examination by Patent
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`Owner on an identical issue, and the testimony relied upon in Exhibits 1022, 1023,
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`and 1043 was subject to cross-examination available to Patent Owner under 37
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`C.F.R. § 42.51(b)(2). That Patent Owner voluntarily chose to not cross-examine
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`the witnesses in this proceeding cannot render these exhibits inadmissible.
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`Lastly, Petitioner gave Patent Owner “reasonable notice of the intent to offer
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`the statement and its particulars” (Fed. R. Evid. 807(b)), as evidenced by the
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`discussion and reliance on the exhibits in both the Petition and Motion to Submit
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`Supplemental Information. See Pet. at 15-16; Paper 17 at 5-8. Therefore, Exhibits
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`1022, 1023, 1043, and 1057-1059 are admissible under the residual exception to
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`the rule against hearsay.
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`C. Exhibits 1060 and 1063-1065 Are Admissible
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`Exhibits 1060 and 1063-1065 similarly qualify for the residual exception to
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`the rule against hearsay. Fed. R. Evid. 807. Exhibits 1060 and 1063 include the
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`testimony of Ms. Sandy Ginoza, Exhibit 1064 is an InfoWorld magazine article
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`from 1999, and Exhibit 1065 is a NetworkWorld magazine article from 1999.
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`Each of these exhibits is relied upon to show that each of RFC 2401 and RFC 2543
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`were publicly available for distribution via the Internet prior to February 2000.
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`Reply at 23-25; Paper 17 at 9-11.2 As explained below, to the extent these exhibits
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`contain statements that are hearsay, they satisfy the residual exception to hearsay,
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`and are admissible.
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`First, Exhibits 1060 and 1063-1065 have equivalent circumstantial
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`guarantees of trustworthiness. See Fed. R. Evid. 807(a)(1). Exhibits 1060 and
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`1063 contain the prior sworn testimony of Ms. Ginoza and IETF and reflect Patent
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`Owner’s cross-examination of Ms. Ginoza on the substance of her testimony.
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`Exhibit 1060 is a declaration from Sandy Ginoza, acting as a designated
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`representative of the IETF, created in response to a subpoena served as part of an
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`investigation initiated by Patent Owner before the International Trade Commission
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`(337-TA-858). Ex. 1060 at ¶¶ 1-5; Ex. 1063 at 6:23-7:4, 10:5-14. In her
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`declaration, Ms. Ginoza testified that RFC 2401 and RFC 2543 were published on
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`the RFC Editor’s website and were publicly available before February 2000. Ex.
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`1060 at ¶¶ 105-107, 168-170. Exhibit 1063 is the transcript of Ms. Ginoza’s
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`February 8, 2013 deposition that was taken as part of the ITC action, where she
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`2 Exhibits 1064-1065 are also relied upon to show that an interested ordinary
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`artisan, exercising reasonable diligence, would have known how to locate RFC
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`2401 and RFC 2543. See Reply at 23-24; Paper 17 at 11. They are not hearsay
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`when offered for that purpose. See Fed. R. Evid. 801(c)(2).
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`testified RFC 2401 and RFC 2543 were publicly available prior to February 2000.
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`Ex. 1063 at 39:14-24, 45:5-46:17; see id. at 10:5-11:22 (confirming her knowledge
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`of IETF publishing practices as they relate to RFCs). Patent Owner cross-
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`examined Ms. Ginoza about her testimony and declaration, but developed no
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`contrary testimony. See id. at 50:7-69:1.
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`This testimony is corroborated by and corroborates the disclosure in
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`Exhibits 1064 and 1065, which are excerpts from industry publications that state it
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`was known that RFCs, and RFC 2401 specifically, were publicly available through
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`the Internet, such as through the IETF’s website. See, e.g., Ex. 1064 at 9
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`(discussing RFCs 2401 to 2408 and stating “All of these documents are available
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`on the IETF website: www.ietf.org/rfc.html”); Ex. 1065 at 3 (discussing IP security
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`protocols and stating “See the IETF documents RFC 2401 ‘Security Architecture
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`for the Internet Protocol’ at www.ietf.org/rfc/rfc2401.txt”).
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`Substantial circumstantial guarantees of trustworthiness are also provided by
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`the evidence submitted with Petitioner’s original filings, such as the testimony of
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`Dr. Tamassia and RFC 2026. Dr. Tamassia explained that RFCs are the official
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`publication channel for Internet standards, with the publication process described
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`in RFC 2026 (Ex. 1036), Ex. 1005 at ¶¶148-55, which explains that anyone can
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`obtain RFCs from a number of Internet hosts, Ex. 1036 at 5-6, and that each RFC
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`“is made available for review via world-wide on-line directories,” id. at 4; see Ex.
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`1005 at ¶149. Dr. Tamassia testified from his personal knowledge that RFCs list
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`their publication date in the top corner of the first page (Ex. 1005 at ¶ 152), which
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`in the case of RFC 2401 and RFC 2543 perfectly matches Ms. Ginoza’s testimony.
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`Compare Ex. 1063 at 40:20-24 (RFC 2401), 46:11-17 (RFC 2543) with Ex. 1008
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`at 1 and Ex. 1013 at 1. Further circumstantial guarantees of trustworthiness come
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`from Dr. Monrose’s refusal to testify on this topic. See Ex. 1066 at 112:25-114:6,
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`118:10-121:11; see generally Ex. 2016.
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`Second, Exhibits 1060 and 1063-1065 are offered as evidence of a material
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`fact (Fed. R. Evid. 807(a)(2)): the public availability of RFC 2401 and RFC 2543
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`prior to February 2000. Paper 17 at 9-11.
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`Third, Exhibits 1060 and 1063-1065 are more probative on the point for
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`which it is offered than any other evidence that the proponent can obtain through
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`reasonable efforts. See Fed. R. Evid. 807(a)(3). The testimony is probative
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`because Ms. Ginoza testified “on behalf of the Internet Engineering Task Force” as
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`a designated corporate representative, (Ex. 1063 at 10:5-22; Ex. 1060 at 1 (entitled
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`“Declaration of the RFC Publisher for the [IETF]”)), and, as such, was testifying to
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`“the knowledge of the corporation,” Poole v. Textron, Inc., 192 F.R.D. 494, 504
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`(D. Md. 2000). And, corporate witnesses like Ms. Ginoza commonly testify about
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`publication date of a prior art document. See, e.g., Ultratec, Inc. v. Sorenson
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`Commc'ns, Inc., No. 13-CV-346, 2014 WL 4829173, at *6 (W.D. Wis. Sept. 29,
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`2014). Ms. Ginoza’s testimony was developed during concurrent litigation
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`between the parties, where Patent Owner had an incentive to develop any contrary
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`testimony from Ms. Ginoza on the publication issue. The IETF has also already
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`authenticated and corroborated the publication of RFC 2401 and RFC 2543 in the
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`context of the parties’ disputes, and it is not reasonable to force the IETF, who is
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`not a party to these disputes, to do so again.
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`Fourth, it would be in the interests of justice to admit Exhibits 1060 and
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`1063-1065. See Fed. R. Evid. 807(a)(4). RFC documents, such as those at issue
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`here, are perhaps one of the most well-known sources of technical information in
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`the art at issue in this proceeding. See, e.g., Control No. 95/001,7893, Action
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`Closing Prosecution (Sept. 9, 2012) (“Regarding the RFC(s), these publications are
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`among the most authoritative publications for Internet systems and protocols.”).
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`Excluding Ms Ginoza’s testimony about these documents—particularly where
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`Patent Owner has already cross-examined her on that testimony—would not
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`comport with “an administrative proceeding designed and intended to afford
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`expedited and efficient relief.” See Ericsson Inc. v. Intellectual Ventures I LLC,
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`IPR2014-00527, Paper 41 at 56 (May 18, 2015). Likewise, Exhibits 1064 and
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`1065 are journal articles from publications that were well-known to those of skill,
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`3 Control No. 95/001,789 involves a family member of the patent at issue here.
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`and their exclusion would remove a reliable source of evidence from the record.
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`See Resp. at 58-60 (making no argument as to Exs. 1064-1065).
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`Lastly, Petitioner gave Patent Owner “reasonable notice of the intent to offer
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`the statement and its particulars” (Fed. R. Evid. 807(b)), as evidenced by the
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`discussion and reliance on the exhibits in the Motion to Submit Supplemental
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`Information. See Paper 17 at 9-11. Therefore, Exhibits 1060 and 1063-1065 are
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`admissible under the residual exception to the rule against hearsay.
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`D. Exhibits 1003, 1004, 1007, 1015-1017, 1024-1035, 1037-1041, 1044-
`1048, and 1067-1069 Are Admissible
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`Patent Owner moves to exclude Exhibits 1003, 1004, 1007, 1015-1017,
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`1024-1035, 1037-1041, 1044-1048, and 1067-1069 as lacking relevance because
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`they are not cited in the Petition or Petitioner’s Reply. Mot. at 5. This is an
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`erroneous basis for lacking relevance, as evidence relied upon in forming an
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`expert’s opinion is relevant under FRE 401 and 402. See Apple Inc. v. Smartflash
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`LLC, CBM2014-00180, Paper 50 at 19-20 (Sep. 25, 2015) (“Because [Petitioner’s
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`expert] attests that he reviewed these exhibits in reaching the opinions he
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`expressed in this case, Patent Owner has not shown that they are irrelevant under
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`FRE 401 and 402.”). The admissibility of this type of evidence is particularly
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`important because “[e]xpert testimony that does not disclose the underlying facts
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`or data on which the opinion is based is entitled to little or no weight.” 37 C.F.R. §
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`42.65.
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`IPR2015-00811
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`Petitioner’s Opp. to Mot. to Exclude
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`Dr. Tamassia, in forming his opinions, considered and relied on the
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`materials listed in Appendix A to his report, which lists all but one of the
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`purportedly irrelevant exhibits. Ex. 1005 at ¶ 9, Appendix A. Indeed, most of
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`these relied upon exhibits are discussed explicitly in his report. See, e.g., Ex. 1005
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`at ¶ 50 (Ex. 1003), ¶ 57 (Ex. 1004), ¶ 274 (Ex. 1007), ¶ 162 (Ex. 1018), ¶ 370 (Ex.
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`1024), ¶ 377 (Ex. 1025), ¶ 162 (Ex. 1030), ¶ 216 (Ex. 1031), ¶ 125 (Exs. 1032-
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`1035), ¶ 160 (Ex. 1037), ¶ 290 (Ex. 1038), ¶ 292 (Ex. 1039), ¶ 313 (Ex. 1040), ¶
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`57 (Ex. 1041), ¶ 56 (Ex. 1044), ¶ 137 (Ex. 1045), ¶ 139 (Ex. 1046), ¶ 139 (Ex.
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`1047), ¶ 297 (Ex. 1048). Other exhibits were specifically discussed in Dr.
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`Tamassia’s deposition. See, e.g., Ex. 2015 at 62:20-63:21 (discussing Ex. 1043).
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`The remaining exhibits that were not discussed explicitly in his report were
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`nevertheless relied on by Dr. Tamassia in informing his understanding of the issues
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`in this proceeding, Ex. 1005 at ¶ 9, Appendix A, and are thus relevant, see
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`Smartflash, CBM2014-00180, Paper 50 at 19-20.
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`The only purportedly irrelevant exhibits not relied upon in Dr. Tamassia’s
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`declaration are his signature of his deposition transcript, Ex. 1068, which was
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`submitted pursuant to 37 C.F.R. § 42.53(f)(5), and Exhibits 1067 and 1069. The
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`continued presence of these latter exhibits causes no conceivable prejudice to
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`Patent Owner or the Board. Patent Owner’s challenge should therefore be
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`dismissed.
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`Petitioner’s Opp. to Mot. to Exclude
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`E.
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`Exhibit 1005 Is Admissible in Its Entirety
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`Patent Owner moves to exclude “vast portions” of Dr. Tamassia’s
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`declaration (Exhibit 1005) because they supposedly lacks relevance. Mot. at 5-6.
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`Patent Owner's supposed justification is that certain testimony concerns grounds
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`addressed in related proceedings. Id. Excluding such testimony, to the extent it is
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`not relied upon in this proceeding, serves no purpose. The presence of other
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`grounds in Dr. Tamassia’s declaration is analogous to testimony and evidence
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`related to non-instituted grounds, and the Board regularly rejects attempts to
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`exclude such evidence. See, e.g., Google Inc. v. Intellectual Ventures II LLC,
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`IPR2014-01034, Paper 41 at 9 (Dec. 7, 2015) (evidence); Samsung Electronics
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`America, Inc. v. Smarthflash LLC, CBM2014-00193, Paper 45 at 24 (Mar. 30,
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`2016) (testimony).
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`It also is not confusing, as Patent Owner contends — the Board is more than
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`capable of considering only the portions of Dr. Tamassia’s declaration relevant to
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`this proceeding. Patent Owner’s request to exclude paragraphs of Dr. Tamassia’s
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`declaration would create unnecessary work and cause undue confusion, and should
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`be denied.
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`III. Conclusion
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`For the foregoing reasons, the Board should deny Patent Owner’s Motion.
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`Dated: May 16, 2016
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`Respectfully Submitted,
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`Petitioner’s Opp. to Mot. to Exclude
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`/ Jeffrey P. Kushan /
`Jeffrey P. Kushan
`Registration No. 43,401
`Sidley Austin LLP
`1501 K Street NW
`Washington, DC 20005
`jkushan@sidley.com
`(202) 736-8914
`Attorney for Petitioner Apple
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`Petitioner’s Opp. to Mot. to Exclude
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), I hereby certify that on this 16th day of
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`2016, I caused to be served a true and correct copy of the foregoing by e-mail on
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`the following counsel:
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`Joseph E. Palys
`E-mail: josephpalys@paulhastings.com
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`Naveen Modi
`E-mail: naveenmodi@paulhastings.com
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`Jason E. Stach
`E-mail: Jason.stach@finnegan.com
`
`
`
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`Dated: May 16, 2016
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`Respectfully Submitted,
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`
`
`/ Jeffrey P. Kushan /
`Jeffrey P. Kushan
`Registration No. 43,401
`Sidley Austin LLP
`1501 K Street NW
`Washington, DC 20005
`jkushan@sidley.com
`(202) 736-8914
`Attorney for Petitioner Apple