`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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`
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`Paper No. ____
`Filed: May 23, 2016
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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 IPR2015-00870
`Patent No. 8,560,705
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`PATENT OWNER’S MOTION TO EXCLUDE
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`Case IPR2015-00870
`Patent No. 8,560,705
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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 1001-1004, 1006, 1009-1011, 1013-1041, 1043-1049, 1051-
`1054, 1060, 1063-1065, and 1071 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 1001-1004, 1006, 1009-1011, 1013-1041, 1043-1049,
`1051-1054, and 1071 Lack Relevance .................................................. 5
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`C.
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`Portions of Exhibit 1005 Lack Relevance ............................................. 6
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`IV. Conclusion ....................................................................................................... 7
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`i
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`TABLE OF AUTHORITIES
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`Case IPR2015-00870
`Patent No. 8,560,705
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`Page(s)
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`Cases
`Conoco Inc. v. Dep’t of Energy,
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`99 F.3d 387 (Fed. Cir. 1996) ............................................................................ 3, 5
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`Actifio, Inc., v. Delphix Corp.,
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`IPR2015-00108, Paper No. 56 (Apr. 29, 2016) .................................................... 5
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`Federal Regulations
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`Federal Rule of Evidence 401 ................................................................................ 5-7
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`Federal Rule of Evidence 402 ............................................................................ 1, 5-7
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`Federal Rule of Evidence 403 ................................................................................ 5-7
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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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`Federal Rule of Evidence 807 ................................................................................ 3-5
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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 IPR2015-00870
`Patent No. 8,560,705
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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, Patent Owner requests that Exhibits 1001-1004, 1006, 1009-
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`1011, 1013-1041, 1043-1049, 1051-1054, 1060, 1063-1065, and 1071 and portions
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`of Exhibit 1005 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 1001-1004, 1006, 1009-1011, 1013-1041, 1043-1049, 1051-1054,
`1060, 1063-1065, and 1071 and Portions of Exhibit 1005 Should be
`Excluded from the Record
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`The Board should exclude Exhibits 1001-1004, 1006, 1009-1011, 1013-
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`1041, 1043-1049, 1051-1054, 1060, 1063-1065, and 1071 because one or more of
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`these exhibits includes evidence that is inadmissible hearsay or the evidence in
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`these exhibits is irrelevant to the instant proceeding. The Board should also
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`exclude portions of Exhibit 1005 because they are irrelevant to the instant
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`1
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`Case IPR2015-00870
`Patent No. 8,560,705
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`proceeding. Patent Owner timely objected to these exhibits stating the precise
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`grounds under which these exhibits are inadmissible. (Paper Nos. 12, 15, 28.)
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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. 12 at 1; Paper No. 15 at 1.) Petitioner has failed to rebut
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`Patent Owner’s 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.” (Paper No. 1 at 24.) After trial was instituted,
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`Petitioner submitted additional evidence (Exs. 1060-1065) as supplemental
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`information in support of its contention that RFC 2401 qualified as a printed
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`publication as of November 1998. (Paper No. 14 at 4-8.) Exhibit 1060 is a
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`declaration from Sandy Ginoza, a representative of the IETF, submitted in
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`litigation before the International Trade Commission (337-TA-858) and Exhibit
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`1063 is a “transcript of Ms. Ginoza’s February 8, 2013 deposition that was taken as
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`part of the ITC action.” (Id. at 5-6.) Exhibit 1064 is allegedly “an article from
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`InfoWorld magazine (dated August 16, 1999)” and Exhibit 1065 is allegedly “an
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`article from NetworkWorld magazine (dated March 15, 1999).” (Id. at 6-7.) In its
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`reply to the Patent Owner response, Petitioner further relied on the above exhibits
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`to support its assertion regarding the publication date of RFC 2401. (Reply, Paper
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`2
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`Patent No. 8,560,705
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`No. 26 at 19-22.) Each of Exhibits 1060 and 1063-1065 include out-of-court
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`statements, i.e., statements that were not made for purposes of the present
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`proceeding, and because Petitioner relies on the alleged truth of these out-of-court
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`statements they constitute hearsay and are inadmissible unless an exception
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`applies.
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`Petitioner has yet to assert that these out-of-court statements are admissible
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`under any hearsay exception. In a related proceeding, Petitioenr has argued that
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`these exhibits are admissible under the residual exception set forth in Rule 807. To
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`fall under this exception, the statement must: 1) have equivalent circumstantial
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`guarantees of trustworthiness; 2) be offered as evidence of a material fact; 3) be
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`more 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) be in the interests of
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`justice to admit. Fed. R. Evid. 807. The residual exception to the hearsay rule is to
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`be reserved for “exceptional cases,” and is not “a broad license on trial judges to
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`admit hearsay statements that do not fall within one of the other exceptions.”
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`Conoco Inc. v. Dep’t of Energy, 99 F.3d 387, 392 (Fed. Cir. 1996), as amended on
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`reh’g in part (Jan. 2, 1997) (internal quotations omitted). Here, Petitioner cannot
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`show that all of the conditions for admissibility under FRE 807 are met.
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`For example, Ms. Ginoza’s statements in Exhibits 1060 and 1063, and the
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`statements in Exhibits 1064 and 1065 have no circumstantial guarantees of
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`3
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`Case IPR2015-00870
`Patent No. 8,560,705
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`trustworthiness. There is no evidence corroborating Ms. Ginoza’s statements. She
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`has no personal knowledge to support the assertions that RFC 2401 became
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`publicly available in November 1998 and RFC 2543 became publicly available in
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`March 1999. She was not involved with the RFC editor’s publication process until
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`June of 1999. (Ex. 1063 at 14 (page 50, lines 17-25).) Worse she not only failed
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`to produce the RFC Editor records that formed the basis of her opinions, but she
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`also could not even explain what existed in those records formed the basis of her
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`statements with respect to RFC 2401. See Ex. 1060 at ¶ 107; Ex. 1063 at 11 (p. 40,
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`ll. 2-5). Therefore, her blanket assertion that “RFC 2401 has been publicly
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`available through the RFC editor’s web site or through other means since its
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`publication in November 1998” (Ex. 1060 at ¶ 107) has no “circumstantial
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`guarantee[] of
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`trustworthiness.”
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` Further,
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`there
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`is no evidence having
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`“circumstantial guarantees of trustworthiness” for the statements in Exhibits 1064
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`and 1065 (Ex. 1064 at 9; Ex. 1065 at 3) relating to the availability of RFCs from
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`the IETF website that Petitioner relies on for their truth. Reply, Paper No. 29 at 23-
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`24.
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`In addition to lacking indicia of trustworthiness required by Rule 807, Ms.
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`Ginoza’s statements and Exhibits 1064 and 1065 are not more probative than other
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`evidence reasonably available to Petitioner, as required by FRE 807. As just one
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`example, Petitioner could have contacted the authors of RFCs 2401 and 2543 to
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`4
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`Case IPR2015-00870
`Patent No. 8,560,705
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`obtain declarations regarding their personal knowledge of the publication of RFCs
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`2401 and 2453. Petitioner’s failure to submit such in court testimony not only
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`shows that the evidence currently of record is not “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” but also shows that admitting this evidence is not “in the
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`interests of justice,” as required by FRE 807. Indeed, this is simply not one of
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`those “exceptional” cases where admitting hearsay evidence under the residual
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`exception is warranted. Conoco Inc., 99 F.3d at 392.
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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 1001-1004, 1006, 1009-1011, 1013-1041, 1043-1049, 1051-
`1054, and 1071 Lack Relevance
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`Exhibits 1001-1004, 1006, 1009-1011, 1013-1041, 1043-1049, 1051-1054,
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`and 1071 should be excluded because they lack relevance. Fed. R. Evid. 401-403;
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`see also Actifio, Inc., v. Delphix Corp., IPR2015-00108, Paper No. 56 at 57 (Apr.
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`29, 2016) (excluding exhibits that were not relied upon). Patent Owner previously
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`objected to these exhibits on this ground. (Paper No. 12 at 1, 2; Paper No. 15 at 1;
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`Paper No. 28 at 1.)
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`Each of these exhibits is inadmissible because Petitioner has not established
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`that they are relevant. Fed. R. Evid. 401-403. For instance, Petitioner does not
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`5
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`Case IPR2015-00870
`Patent No. 8,560,705
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`even cite to these exhibits in either the Petition or the Petitioner’s Reply. (Paper
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`No. 1; Paper No. 26.) Accordingly, each of these exhibits should be excluded from
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`the record.
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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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`Fed. R. Evid. 401-403. Patent Owner previously objected to these portions on this
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`ground. (Paper No. 12 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 six proceedings (IPR2015-00866, 867,
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`868, 869, 870, 871) that covered three patents (U.S. Patent Nos. 8,458,341,
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`8,516,131, and 8,560,705). (See generally Ex. 1005.) Accordingly, vast portions
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`of Exhibit 1005 are simply irrelevant to the instant proceeding. For instance, the
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`current proceeding is based on Beser as the primary reference but Dr. Tamassia’s
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`declaration includes several pages focusing on Aventail (see, e.g., Ex. 1005 at ¶¶
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`61-63, 180-311, 403-420, 447-451, 459-460, 462-463) and RFC 2543 (see, e.g.,
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`Ex. 1005 at ¶¶ 196, 197, 456-460, 462), which are irrelevant to the current
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`proceeding. Such irrelevant sections of Dr. Tamassia’s declaration should be
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`excluded under FRE 401-403.
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`6
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`IV. Conclusion
`For the reasons set forth above, the Board should exclude Exhibits 1001-
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`Case IPR2015-00870
`Patent No. 8,560,705
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`1004, 1006, 1009-1011, 1013-1041, 1043-1049, 1051-1054, 1060, 1063-1065, and
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`1071 and portions of Exhibit 1005 from the record.
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`Dated: May 23, 2016
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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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`7
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`CERTIFICATE OF SERVICE
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`Case IPR2015-00870
`Patent No. 8,560,705
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`I hereby certify that on this 23rd 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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`Counsel for Apple Inc.:
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`Dated: May 23, 2016
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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.