Paper No. 37
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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,
`
`v.
`VIRNETX INC.,
`Patent Owner.
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`––––––––––––––––––
`
`Case No. IPR2015-00812
`U.S. Patent No. 8,850,009
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`––––––––––––––––––
`
`PETITIONER’S OPPOSITION TO
`PATENT OWNER’S MOTION TO EXCLUDE
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`––––––––––––––––––
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`––––––––––––––––––
`
`APPLE INC.,
`Petitioner,
`
`v.
`VIRNETX INC.,
`Patent Owner.
`
`––––––––––––––––––
`
`Case No. IPR2015-00812
`U.S. Patent No. 8,850,009
`
`––––––––––––––––––
`
`PETITIONER’S OPPOSITION TO
`PATENT OWNER’S MOTION TO EXCLUDE
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`IPR2015-00812
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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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`Patent Owner’s Motion is Facially Deficient ........................................ 1
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`Exhibits 1060 and 1063-1065 Are Admissible ..................................... 2
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`Exhibits 1001, 1002, 1009-1035, 1037-1041, 1043-1048, 1068, and
`1069 Are Admissible ............................................................................. 7
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`D.
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`Exhibit 1005 Is Admissible in Its Entirety ............................................ 9
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`III. Conclusion ....................................................................................................... 9
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`IPR2015-00812
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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) ........................................................ 7
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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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`Ericsson Inc. v. Intellectual Ventures I LLC,
`IPR2014-00527, Paper 41 (May 18, 2015) ........................................................... 6
`
`Google Inc. v. Intellectual Ventures II LLC,
`IPR2014-01034, Paper 41 (Dec. 7, 2015)............................................................. 9
`
`Poole v. Textron, Inc.,
`192 F.R.D. 494 (D. Md. 2000) ............................................................................. 5
`
`Samsung Electronics America, Inc. v. Smarthflash LLC,
`CBM2014-00193, Paper 45 (Mar. 30, 2016) ........................................................ 9
`
`Ultratec, Inc. v. Sorenson Commc'ns, Inc.,
`No. 13-CV-346, 2014 WL 4829173 (W.D. Wis. Sept. 29, 2014) ........................ 5
`
`United States v. North,
`910 F.2d 843 (D.C. Cir. 1990) cert. denied 500 U.S. 941 (1991) ........................ 2
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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. § 42.53(f)(5) .............................................................................................. 8
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`37 C.F.R. § 42.65 ....................................................................................................... 8
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`Fed. R. Evid. 801(c)(2) .............................................................................................. 3
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`ii
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`IPR2015-00812
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`Petitioner’s Opp. to Mot. to Exclude
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`Fed. R. Evid. 807 ..............................................................................................passim
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`FRE 401 and 402 ........................................................................................................ 7
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`iii
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`IPR2015-00812
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`I.
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`Introduction
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`
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`Petitioner’s Opp. to Mot. to Exclude
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`The evidence of record establishes that Exhibits 1001, 1002, 1005, 1009-
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`1035, 1037-1041, 1043-1048, 1060, 1063-1065, 1068, and 1069 are admissible.
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`Patent Owner has failed to show otherwise, and thus, its motion must be denied.
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`See Paper 35 (“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. 1060 and 1063-1065), Patent Owner’s motion is facially deficient – it does
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`not identify any specific statements in those exhibits alleged to be hearsay. Mot. at
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`2-3; see 37 C.F.R. § 42.22(a)(2). Instead, Patent Owner alleges that the exhibits
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`“include out-of-court statements” without identifying them. Mot. at 2-3 (emphasis
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`added). It is not Petitioner’s burden to identify purported hearsay – Patent Owner,
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`as the moving party, “has the burden of proof to establish that it is entitled to the
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`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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`1
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`IPR2015-00812
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`Petitioner’s Opp. to Mot. to Exclude
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`B.
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`Exhibits 1060 and 1063-1065 Are Admissible
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`Patent Owner moves to exclude Exhibits 1060 and 1063-1065 as
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`inadmissible hearsay. Mot. at 3-4. That motion should be denied, as these exhibits
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`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 1060 and 1063 include the testimony of Ms. Sandy Ginoza, Exhibit
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`1064 is an InfoWorld magazine article from 1999, and Exhibit 1065 is a
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`NetworkWorld magazine article from 1999. Each of these exhibits is relied upon
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`to show that each of RFC 2401 and RFC 2543 were publicly available for
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`2
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`IPR2015-00812
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`Petitioner’s Opp. to Mot. to Exclude
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`distribution via the Internet prior to February 2000. Reply at 23-25; Paper 17 at 9-
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`11.1 As explained below, to the extent these exhibits contain statements that are
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`hearsay, they satisfy the residual exception to hearsay, 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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`
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`1 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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`3
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`IPR2015-00812
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`Petitioner’s Opp. to Mot. to Exclude
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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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`4
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`IPR2015-00812
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`Petitioner’s Opp. to Mot. to Exclude
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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
`
`which it is offered than any other evidence that the proponent can obtain through
`
`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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`5
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`IPR2015-00812
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`Petitioner’s Opp. to Mot. to Exclude
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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
`
`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
`
`here, are perhaps one of the most well-known sources of technical information in
`
`the art at issue in this proceeding. See, e.g., Control No. 95/001,7892, Action
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`Closing Prosecution (Sept. 9, 2012) (“Regarding the RFC(s), these publications are
`
`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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`
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`2 Control No. 95/001,789 involves a family member of the patent at issue here.
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`6
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`IPR2015-00812
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`Petitioner’s Opp. to Mot. to Exclude
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`and their exclusion would remove a reliable source of evidence from the record.
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`See Resp. at 48-50 (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 4-7. 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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`C. Exhibits 1001, 1002, 1009-1035, 1037-1041, 1043-1048, 1068, and
`1069 Are Admissible
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`Patent Owner moves to exclude Exhibits 1001, 1002, 1009-1035, 1037-
`
`1041, 1043-1048, 1068, and 1069 as lacking relevance because they are not cited
`
`in the Petition or Petitioner’s Reply. Mot. at 3.3 This is an erroneous basis for
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`lacking relevance, as evidence relied upon in forming an expert’s opinion is
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`relevant under FRE 401 and 402. See Apple Inc. v. Smartflash LLC, CBM2014-
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`00180, Paper 50 at 19-20 (Sep. 25, 2015) (“Because [Petitioner’s expert] attests
`
`that he reviewed these exhibits in reaching the opinions he expressed in this case,
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`Patent Owner has not shown that they are irrelevant under FRE 401 and 402.”).
`
`The admissibility of this type of evidence is particularly important because
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`“[e]xpert testimony that does not disclose the underlying facts or data on which the
`
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`3 Patent Owner is incorrect, as the Petition cites Exhibits 1009 and 1013. Pet. at 2.
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`7
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`IPR2015-00812
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`Petitioner’s Opp. to Mot. to Exclude
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`opinion is based is entitled to little or no weight.” 37 C.F.R. § 42.65.
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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. 1001), ¶ 56 (Ex. 1002), ¶ 161 (Ex. 1009), ¶ 144 (Ex. 1010), ¶ 173 (Ex.
`
`1011), ¶ 404 (Ex. 1012), ¶ 418 (Ex. 1013), ¶ 162 (Ex. 1018), ¶ 186 (Ex. 1019), ¶
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`369 (Ex. 1020), ¶ 369 (Ex. 1021), ¶ 370 (Ex. 1024), ¶ 377 (Ex. 1025), ¶ 162 (Ex.
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`1030), ¶ 216 (Ex. 1031), ¶ 125 (Exs. 1032-1035), ¶ 160 (Ex. 1037), ¶ 290 (Ex.
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`1038), ¶ 292 (Ex. 1039), ¶ 313 (Ex. 1040), ¶ 57 (Ex. 1041), ¶ 56 (Ex. 1044), ¶ 137
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`(Ex. 1045), ¶ 139 (Ex. 1046), ¶ 139 (Ex. 1047), ¶ 297 (Ex. 1048). Other exhibits
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`were specifically discussed in Dr. Tamassia’s deposition. See, e.g., Ex. 2015 at
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`62:20-63:21 (discussing Ex. 1043). The remaining exhibits that were not discussed
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`explicitly in his report were nevertheless relied on by Dr. Tamassia in informing
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`his understanding of the issues in this proceeding, Ex. 1005 at ¶ 9, Appendix A,
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`and are thus relevant, see 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 Exhibit 1069. The continued
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`presence of this latter exhibit causes no conceivable prejudice to Patent Owner or
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`8
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`IPR2015-00812
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`Petitioner’s Opp. to Mot. to Exclude
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`the Board. Patent Owner’s challenge should therefore be dismissed.
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`D. 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 4.
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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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`9
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`IPR2015-00812
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`Petitioner’s Opp. to Mot. to Exclude
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`Dated: May 16, 2016
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`Respectfully Submitted,
`
`/ 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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`10
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`IPR2015-00812
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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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`
`
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`Dated: May 16, 2016
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`Respectfully Submitted,
`
`
`
`/ 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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