`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 IPR2015-00812
`Patent No. 8,850,009
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`PATENT OWNER’S MOTION TO EXCLUDE
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`Case No. IPR2015-00812
`Patent No. 8,850,009
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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 1001, 1002, 1009-1035, 1037-1041, 1043-1048, 1060, 1063-
`1065, 1068, and 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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`Exhibits 1060 and 1063-1065 Constitute Inadmissible Hearsay .......... 2
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`Exhibits 1001, 1002, 1009-1035, 1037-1041, 1043-1048, 1068,
`and 1069 Lack Relevance ..................................................................... 3
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`C.
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`Portions of Exhibit 1005 Lack Relevance ............................................. 4
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`IV. Conclusion ....................................................................................................... 4
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`i
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`Case No. IPR2015-00812
`Patent No. 8,850,009
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`TABLE OF AUTHORITIES
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` Page(s)
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`Federal Regulations
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`Federal Rule of Evidence 401 ................................................................................ 3, 4
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`Federal Rule of Evidence 402 ............................................................................ 1, 3, 4
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`Federal Rule of Evidence 403 ................................................................................ 3, 4
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`Federal Rule of Evidence 801 ................................................................................ 1, 2
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`Federal Rule of Evidence 802 ................................................................................ 1, 2
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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 IPR2015-00812
`Patent No. 8,850,009
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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 1001, 1002, 1009-1035, 1037-
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`1041, 1043-1048, 1060, 1063-1065, 1068, and 1069, and portions of Exhibit 1005
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`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 1001, 1002, 1009-1035, 1037-1041, 1043-1048, 1060, 1063-1065,
`1068, and 1069, and Portions of Exhibit 1005 Should be Excluded from
`the Record
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`The Board should exclude exhibits 1001, 1002, 1009-1035, 1037-1041,
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`1043-1048, 1060, 1063-1065, 1068, and 1069 because one or more of these
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`exhibits includes evidence that is inadmissible hearsay or the evidence in these
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`exhibits is irrelevant to the instant proceeding. The Board should also exclude
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`portions of Exhibit 1005 because they are irrelevant to the instant proceeding.
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`1
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`Case IPR2015-00812
`Patent No. 8,850,009
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`Patent Owner timely objected to these exhibits stating the precise grounds under
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`which these exhibits are inadmissible. (Paper Nos. 11, 18, 30.)
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`A. 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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`this ground. (Paper No. 18 at 1.) 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.” (Pet. at 26.) After trial was instituted, Petitioner
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`submitted additional evidence (Exs. 1060-1065) as supplemental information in
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`support of its contention that RFC 2401 qualified as a printed publication as of
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`November 1998. (Paper No. 17 at 5-7.) Exhibit 1060 is a declaration from Sandy
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`Ginoza, a representative of the IETF, submitted in litigation before the
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`International Trade Commission (337-TA-858) and Exhibit 1063 is a “transcript of
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`Ms. Ginoza’s February 8, 2013 deposition that was taken as part of the ITC
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`action.” (Id. at 5-6.) Exhibit 1064 is allegedly “an article from InfoWorld
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`magazine (dated August 16, 1999)” and Exhibit 1065 is allegedly “an article from
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`NetworkWorld magazine (dated March 15, 1999).” (Id. at 6-7.) In its reply to the
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`Patent Owner response, Petitioner further relied on the above exhibits to support its
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`assertion regarding the publication date of RFC 2401. (Reply, Paper No. 28 at 19-
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`2
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`Case IPR2015-00812
`Patent No. 8,850,009
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`22.) Each of exhibits 1060 and 1063-1065 include out-of-court statements, i.e.,
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`statements that were not made for purposes of the present proceeding, and because
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`Petitioner relies on the alleged truth of these out-of-court statements, they
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`constitute hearsay and are inadmissible. Furthermore, in none of the papers that it
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`has submitted so far in this proceeding has Petitioner explained that these out-of-
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`court 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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`B. Exhibits 1001, 1002, 1009-1035, 1037-1041, 1043-1048, 1068, and 1069
`Lack Relevance
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`Exhibits 1001, 1002, 1009-1035, 1037-1041, 1043-1048, 1068, and 1069
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`should be excluded because they lack relevance. Fed. R. Evid. 401-403. Patent
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`Owner previously objected to these exhibits on this ground. (Paper No. 11 at 2;
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`Paper No. 30 at 1.) Petitioner has failed to rebut Patent Owner’s objections. As
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`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. 28.) Accordingly, each of these exhibits should be
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`excluded from the record.
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`3
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`C. Portions of Exhibit 1005 Lack Relevance
`Portions of Exhibit 1005 should be excluded because they lack relevance.
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`Case IPR2015-00812
`Patent No. 8,850,009
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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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`objections. As such, these portions should be excluded.
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`Specifically, when Petitioner filed Exhibit 1005, which is the declaration of
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`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 Beser as the
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`primary reference but Dr. Tamassia’s declaration includes several pages focusing
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`on Aventail, which is irrelevant to the current proceeding. (See, e.g., Ex. 1005 at
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`¶¶ 160-273, 365-382, 409-13, 421-22, 424-25.) Such irrelevant sections of
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`Dr. Tamassia’s 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 1001,
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`1002, 1009-1035, 1037-1041, 1043-1048, 1060, 1063-1065, 1068, and 1069 and
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`portions of Exhibit 1005 from the record.
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`4
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`Case IPR2015-00812
`Patent No. 8,850,009
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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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`Dated: May 2, 2016
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`5
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`CERTIFICATE OF SERVICE
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`Case IPR2015-00812
`Patent No. 8,850,009
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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