Filed on behalf of: VirnetX Inc.
`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 IPR2015-00811
`Patent No. 8,868,705
`
`
`
`
`
`
`
`
`
`
`PATENT OWNER’S REPLY IN SUPPORT OF MOTION TO EXCLUDE
`
`
`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 IPR2015-00811
`Patent No. 8,868,705
`
`
`
`
`
`
`
`
`
`
`PATENT OWNER’S REPLY IN SUPPORT OF MOTION TO EXCLUDE
`
`
`
`Case No. IPR2015-00811
`Patent No. 8,868,705
`
`Table of Contents
`
`Exhibits 1022, 1023, 1043, 1057-1060, and 1063-1065 Should be
`Excluded .......................................................................................................... 1
`
`A.
`
`B.
`
`Exhibits 1022, 1023, 1043, and 1057-1059 Should Be Excluded ........ 2
`
`Exhibits 1060 and 1063-1065 Should Be Excluded ............................. 4
`
`Exhibits 1003, 1004, 1007, 1015-1017, 1024-1035, 1037-1041, 1044-
`1048, 1067-1069 and Portions of Exhibit 1005 Should Be Excluded ............ 5
`
`
`
`
`
`I.
`
`II.
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case No. IPR2015-00811
`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) ................................................................................ 3
`
`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) .................................................... 5
`
`Statutes
`
`37 C.F.R. § 42.22(a)(2) ............................................................................................. 1
`
`37 C.F.R. § 42.51(b)(1)(ii) ....................................................................................... 4
`
`Rules
`
`Federal Rule of Evidence 807 ........................................................................... 1, 2, 4
`
`
`
`
`
`
`
`
`
`
`
`On May 16, 2016, Petitioner Apple Inc. (“Apple”) filed an Opposition
`
`Case IPR2015-00811
`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, 1007, 1015-1017, 1024-1035, 1037-1041, 1043-1048, 1057-
`
`1060, 1063-1065, and 1067-1069, and portions of Exhibit 1005. As such, Patent
`
`Owner’s Motion to Exclude should be granted.
`
`I.
`
`Exhibits 1022, 1023, 1043, 1057-1060, 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 2-5,
`
`Paper 18 at 1,2, Paper 11 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
`
`1022, 1023, 1043, 1057-1060, 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 IPR2015-00811
`Patent No. 8,868,705
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`
`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”).
`
`A. Exhibits 1022, 1023, 1043, and 1057-1059 Should Be Excluded
`Ignoring the mandate that the residual hearsay exception is to be “used
`
`sparingly” for truly “exceptional cases,” Apple attempts to establish that these
`
`exhibits meet the five requirements of Rule 807. But they do not meet all of those
`
`requirements. Apple first argues that the statements have circumstantial guarantees
`
`of trustworthiness because they corroborate one another. That is incorrect. The
`
`declarations were prepared long after the events they purport to memorialize and
`
`are unsubstantiated.
`
`Mr. Hopen baldly “estimate[s]” that “thousands of” copies of Aventail were
`
`distributed in the first six months of 1999. (Ex. 1023 at ¶ 16.) The time lapse of
`
`over ten years between Aventail’s alleged distribution and Mr. Hopen’s statement
`
`2
`
`
`
`Case IPR2015-00811
`Patent No. 8,868,705
`
`cuts against the trustworthiness of his statements. See, e.g., Conoco Inc. v. DOE,
`
`99 F.3d 387, 392-394 (Fed. Cir. 1996). His vague recollection about the timing of
`
`Aventail’s distribution at some point during the first six months of 1999 has no
`
`“circumstantial guarantees of trustworthiness.” He failed to provide a single piece
`
`of evidence (e.g., an e-mail showing the distribution of Aventail to a customer)
`
`supporting his assertion. (Ex. 1057 at 189:1-191:6.)
`
`In addition, Mr. Hopen’s statements (Exs. 1023, 1057-1059) about
`
`“thousands of” copies of Aventail being distributed at some point during the first
`
`six months of 1999 is not corroborated as asserted by Apple. (See Paper No. 38 at
`
`3-7.) The documents attached to Mr. Hopen’s declaration (Exhibits A, B, D, H,
`
`and J) say nothing about the dissemination activities in the time frame before the
`
`Patent’s priority date and some of them do not even refer to the correct version of
`
`Aventail at issue, i.e., Aventail Connect v3.01 and AEC v3.0. (Ex. 1023 at 10, 94,
`
`293, 295, 424.)
`
`Mr. Chester’s declaration (Ex. 1022) describing AEC products allegedly
`
`deployed within IBM during July 1998 (Ex. 1022 at ¶ 19), contradicts Mr. Hopen’s
`
`assertion that Aventail was not distributed until the first six months of 1999. (Ex.
`
`1023 at ¶ 16.) Mr. Fratto states that he received a single copy of Aventail. (Ex.
`
`1043 at ¶ 14.) The receipt of a single copy of Aventail does not corroborate Mr.
`
`Hopen’s statements regarding “thousands of” copies being distributed. (Ex. 1043
`
`3
`
`
`
`at ¶¶ 8-14.)
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`Case IPR2015-00811
`Patent No. 8,868,705
`
`
`Mr. Fratto has repeatedly demonstrated bias against Patent Owner’s patents.
`
`(Paper No. 25 at 51, citing Exs. 2018-2031.) Both he and his co-declarants, Mr.
`
`Hopen and Mr. Chester, were retained by Apple and thus are predisposed toward
`
`supporting Apple’s position about the alleged publication date of Aventail.
`
`Apple also argues that “Patent Owner made no efforts in this proceeding to
`
`cross-examine any of these declarants.” Paper 38 at 3. This is irrelevant. Since
`
`these declarations were not prepared for purposes of this inter partes review, cross-
`
`examination of the declarants was not provided as routine discovery under 37
`
`C.F.R. § 42.51(b)(1)(ii).
`
`Therefore, Exhibits 1022, 1023, 1043, and 1057-1059 excluded as
`
`inadmissible hearsay because this is simply not one of those rare cases for which
`
`Rule 807 is reserved.
`
`Exhibits 1060 and 1063-1065 Should Be Excluded
`
`B.
`Apple also urges application of the residual exception to Exhibits 1060 and
`
`1063-1065 to support the proposition that RFC 2401 and 2543 were publicly
`
`available prior to the relevant date. Ms. Ginoza produced no evidence that could
`
`corroborate her statements in Exhibits 1060 and 1063. (Ex. 1060 at ¶ 107; Ex.
`
`1063 at 11 (p. 40, ll. 2-5).) She has no personal knowledge about the public
`
`availability of the RFCs. (Ex. 1063 at 14 (page 50, lines 17-25).) As to the
`
`4
`
`
`
`availability of probative evidence, Apple could have also contacted the authors of
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`Case IPR2015-00811
`Patent No. 8,868,705
`
`
`RFCs to obtain declarations regarding their personal knowledge of the publication
`
`dates, but failed to do so. For at least these, the Board should exclude Exhibits
`
`1060 and 1063-1065.1
`
`II. Exhibits 1003, 1004, 1007, 1015-1017, 1024-1035, 1037-1041, 1044-1048,
`1067-1069 and Portions of Exhibit 1005 Should Be Excluded
`
`Apple asserts that Dr. Tamassia considered Exhibits 1003, 1004, 1007,
`
`1015-1017, 1024-1035, 1037-1041, and 1044-1048, and therefore, they are
`
`admissible. See Paper 38 at 13, 14. However, these exhibits were not cited by Dr.
`
`Tamassia 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.
`
`As for Exhibit 1067 to 1069, Apple does not deny that it does not rely on
`
`them in any of its papers. They should, therefore, be excluded as irrelevant.
`
`
`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 9 n.2. Patent Owner
`
`disagrees as these exhibits are being submitted for their truth. See Reply, Paper
`
`No. 29 at 24.
`
`5
`
`
`
`Dated: May 23, 2016
`
`Case IPR2015-00811
`Patent No. 8,868,705
`
`
`
`
`Respectfully submitted,
`
`By: /Joseph E. Palys/
`Joseph E. Palys
`Reg. No. 46,508
`
`Counsel for VirnetX, Inc.
`
`6
`
`
`
`
`
`Case No. IPR2015-00811
`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
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