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Paper No. ____
`Filed: May 2, 2016
`
`
`
`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
`
`
`
`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
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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
`
`v.
`
`VIRNETX INC.
`Patent Owner
`
`
`
`
`
`
`
`Case IPR2015-00812
`Patent No. 8,850,009
`
`
`
`
`
`
`
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`
`
`PATENT OWNER’S MOTION TO EXCLUDE
`
`

`
`Case No. IPR2015-00812
`Patent No. 8,850,009
`
`
`Table of Contents
`
`Precise Relief Requested ................................................................................. 1
`
`Legal Standard ................................................................................................. 1
`
`
`I.
`
`II.
`
`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
`
`A.
`
`B.
`
`Exhibits 1060 and 1063-1065 Constitute Inadmissible Hearsay .......... 2
`
`Exhibits 1001, 1002, 1009-1035, 1037-1041, 1043-1048, 1068,
`and 1069 Lack Relevance ..................................................................... 3
`
`C.
`
`Portions of Exhibit 1005 Lack Relevance ............................................. 4
`
`IV. Conclusion ....................................................................................................... 4
`
`
`
`
`
`i
`
`

`
`Case No. IPR2015-00812
`Patent No. 8,850,009
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`
`
`Federal Regulations
`
`Federal Rule of Evidence 401 ................................................................................ 3, 4
`
`Federal Rule of Evidence 402 ............................................................................ 1, 3, 4
`
`Federal Rule of Evidence 403 ................................................................................ 3, 4
`
`Federal Rule of Evidence 801 ................................................................................ 1, 2
`
`Federal Rule of Evidence 802 ................................................................................ 1, 2
`
`37 C.F.R. 42.62(a) ...................................................................................................... 1
`
`Other
`
`Office Patent Trial Practice Guide,
`77 Fed. Reg. 48758 ............................................................................................... 1
`
`
`
`
`
`ii
`
`

`
`I.
`
`Precise Relief Requested
`
`Case IPR2015-00812
`Patent No. 8,850,009
`
`
`Pursuant to 37 C.F.R. § 42.64, Patent Owner VirnetX, Inc. (“Patent Owner”)
`
`moves to exclude certain exhibits submitted by Apple Inc. (“Petitioner”). This
`
`motion is timely filed in accordance with the Board’s Scheduling Order (Paper No.
`
`9). In particular, Petitioner requests that Exhibits 1001, 1002, 1009-1035, 1037-
`
`1041, 1043-1048, 1060, 1063-1065, 1068, and 1069, and portions of Exhibit 1005
`
`be excluded from the record.
`
`II. Legal Standard
`The Federal Rules of Evidence apply to inter partes review proceedings. 37
`
`C.F.R. § 42.62(a), Office Patent Trial Practice Guide, 77 Fed. Reg. 48758. Under
`
`Federal Rule of Evidence 402, “irrelevant evidence is not admissible.” Fed. R.
`
`Evid. 402. Also, unless an exception applies, an out of court statement offered for
`
`the truth of the matter asserted is inadmissible. Fed. R. Evid. 801, 802.
`
`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
`
`The Board should exclude exhibits 1001, 1002, 1009-1035, 1037-1041,
`
`1043-1048, 1060, 1063-1065, 1068, and 1069 because one or more of these
`
`exhibits includes evidence that is inadmissible hearsay or the evidence in these
`
`exhibits is irrelevant to the instant proceeding. The Board should also exclude
`
`portions of Exhibit 1005 because they are irrelevant to the instant proceeding.
`
`1
`
`

`
`Case IPR2015-00812
`Patent No. 8,850,009
`
`Patent Owner timely objected to these exhibits stating the precise grounds under
`
`which these exhibits are inadmissible. (Paper Nos. 11, 18, 30.)
`
`A. Exhibits 1060 and 1063-1065 Constitute Inadmissible Hearsay
`Exhibits 1060 and 1063-1065 should be excluded as inadmissible hearsay.
`
`See Fed. R. Evid. 801-802. Patent Owner previously objected to these exhibits on
`
`this ground. (Paper No. 18 at 1.) Petitioner has failed to rebut Patent Owner’s
`
`objections. As such, these exhibits should be excluded.
`
`In its Petition, Petitioner made the naked assertion that RFC 2401 “was
`
`published in November 1998.” (Pet. at 26.) After trial was instituted, Petitioner
`
`submitted additional evidence (Exs. 1060-1065) as supplemental information in
`
`support of its contention that RFC 2401 qualified as a printed publication as of
`
`November 1998. (Paper No. 17 at 5-7.) Exhibit 1060 is a declaration from Sandy
`
`Ginoza, a representative of the IETF, submitted in litigation before the
`
`International Trade Commission (337-TA-858) and Exhibit 1063 is a “transcript of
`
`Ms. Ginoza’s February 8, 2013 deposition that was taken as part of the ITC
`
`action.” (Id. at 5-6.) Exhibit 1064 is allegedly “an article from InfoWorld
`
`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
`
`assertion regarding the publication date of RFC 2401. (Reply, Paper No. 28 at 19-
`
`2
`
`

`
`Case IPR2015-00812
`Patent No. 8,850,009
`
`22.) Each of exhibits 1060 and 1063-1065 include out-of-court statements, i.e.,
`
`statements that were not made for purposes of the present proceeding, and because
`
`Petitioner relies on the alleged truth of these out-of-court statements, they
`
`constitute hearsay and are inadmissible. Furthermore, in none of the papers that it
`
`has submitted so far in this proceeding has Petitioner explained that these out-of-
`
`court statements are admissible under a hearsay exception.
`
`For at least the above reasons, the Board should exclude exhibits 1060 and
`
`1063-1065 because they constitute inadmissible hearsay and no exception applies.
`
`B. Exhibits 1001, 1002, 1009-1035, 1037-1041, 1043-1048, 1068, and 1069
`Lack Relevance
`
`Exhibits 1001, 1002, 1009-1035, 1037-1041, 1043-1048, 1068, and 1069
`
`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;
`
`Paper No. 30 at 1.) Petitioner has failed to rebut Patent 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
`
`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
`
`excluded from the record.
`
`3
`
`

`
`C. Portions of Exhibit 1005 Lack Relevance
`Portions of Exhibit 1005 should be excluded because they lack relevance.
`
`Case IPR2015-00812
`Patent No. 8,850,009
`
`
`Fed. R. Evid. 401-403. Patent Owner previously objected to these portions on this
`
`ground. (Paper No. 11 at 1.) Petitioner has failed to rebut Patent Owner’s
`
`objections. As such, these portions should be excluded.
`
`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
`
`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.
`
`
`
`4
`
`

`
`Case IPR2015-00812
`Patent No. 8,850,009
`
`
`Respectfully submitted,
`
`By: /Joseph E. Palys/
`Joseph E. Palys
`Reg. No. 46,508
`
`Counsel for VirnetX, Inc.
`
`
`
`
`
`Dated: May 2, 2016
`
`5
`
`

`
`CERTIFICATE OF SERVICE
`
`Case IPR2015-00812
`Patent No. 8,850,009
`
`
`I hereby certify that on this 2nd day of May 2016, a copy of the foregoing
`
`Patent Owner’s Motion to Exclude was served electronically, pursuant to
`
`agreement, upon the following:
`
`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.
`
`
`Counsel for Apple Inc.:
`
`
`Dated: May 2, 2016

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