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`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,
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`v.
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`VIRNETX INC.,
`Patent Owner.
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`––––––––––––––––––
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`Case No. IPR2015-00871
`U.S. Patent No. 8,560,705
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`––––––––––––––––––
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`PETITIONER’S OPPOSITION TO
`PATENT OWNER’S MOTION TO EXCLUDE
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`IPR2015-00871
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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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`D.
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`Patent Owner’s Motion is Facially Deficient ........................................ 1
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`Exhibits 1022, 1023, 1043, and 1057-1059 Are Admissible ................ 1
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`Exhibits 1060 and 1063-1065 Are Admissible ..................................... 8
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`Exhibits 1003, 1004, 1007, 1015-1017, 1024-1035, 1037-1041, 1044-
`1048, and 1067-1069 Are Admissible ................................................ 13
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`E.
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`Exhibit 1005 Is Admissible in Its Entirety .......................................... 15
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`III. Conclusion ..................................................................................................... 15
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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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`Cases
`Apple Inc. v. Smartflash LLC,
`CBM2014-00180, Paper 50 (Sep. 25, 2015) ................................................ 13, 14
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`Conoco Inc. v. Dep’t of Energy,
`99 F.3d 387 (Fed. Cir. 1996), as amended on reh’g in part (Jan. 2,
`1997) ..................................................................................................................... 7
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`Davis v. Alaska,
`415 U.S. 308 (1974) .............................................................................................. 3
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`Doe v. United States,
`976 F.2d 1071 (7th Cir. 1992), cert. denied 510 U.S. 812 (1993) ....................... 1
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`In re Epstein,
`32 F.3d 1559 (Fed. Cir. 1994) .............................................................................. 7
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`Ericsson Inc. v. Intellectual Ventures I LLC,
`IPR2014-00527, Paper 41 (May 18, 2015) ......................................................... 12
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`Google Inc. v. Intellectual Ventures II LLC,
`IPR2014-01034, Paper 41 (Dec. 7, 2015)........................................................... 15
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`IBM Corp. v. Intellectual Ventures II LLC,
`IPR2015-00089, Paper 44 (Apr. 25, 2016) ..................................................... 6, 13
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`The Mangrove Partners Master Fund, Ltd., v. VirnetX Inc.,
`IPR2015-01047, Paper 52 (Apr. 15, 2016) ........................................................... 3
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`PGMedia, Inc. v. Network Solutions, Inc.,
`51 F. Supp. 2d 389 (S.D.N.Y. 1999) .................................................................. 12
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`Poole v. Textron, Inc.,
`192 F.R.D. 494 (D. Md. 2000) ........................................................................... 11
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`Samsung Electronics America, Inc. v. Smarthflash LLC,
`CBM2014-00193, Paper 45 (Mar. 30, 2016) ...................................................... 15
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`ii
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`Ultratec, Inc. v. Sorenson Commc'ns, Inc.,
`No. 13-CV-346, 2014 WL 4829173 (W.D. Wis. Sept. 29, 2014) ...................... 11
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`United States v. North,
`910 F.2d 843 (D.C. Cir. 1990) cert. denied 500 U.S. 941 (1991) ........................ 1
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`VirnetX, Inc. v. Apple Inc.,
`10-cv-00417 (E.D. Tex.) ....................................................................................... 4
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`VirnetX, Inc. v. Microsoft Corp.,
`07-cv-00080 (E.D. Tx.) ......................................................................................... 5
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`Other Authorities
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`37 C.F.R. § 42.1(b)(2). Second .................................................................................. 8
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`37 C.F.R. § 42.51(b)(2) .......................................................................................... 3, 7
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`37 C.F.R. § 42.53(f)(5) ............................................................................................ 14
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`37 C.F.R. § 42.65 ..................................................................................................... 14
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`Fed. R. Evid. 801(c)(2) .............................................................................................. 8
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`Fed. R. Evid. 807 ..............................................................................................passim
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`FRE 401 and 402 ...................................................................................................... 13
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`iii
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`IPR2015-00871
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`I.
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`Introduction
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`Petitioner’s Opp. to Mot. to Exclude
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`The evidence of record establishes that Exhibits 1001-1007, 1017, 1019,
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`1022-1041, 1044-1049, 1051-1054, 1057-1060, 1063-1065,1067, 1069, and 1071
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`are admissible. Patent Owner has failed to show otherwise, and thus, its motion
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`must be denied. See Paper 30 (“Mot.”).
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`II. Argument
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`A. Exhibits 1022, 1023, 1043, and 1057-1059 Are Admissible
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`Patent Owner moves to exclude Exhibits 1022, 1023, 1043, and 1057-1059
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`as inadmissible hearsay. Mot. at 2-6. That motion should be denied, as these
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`exhibits 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 testimony’s proponent must also give (5) “reasonable notice of the intent to
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`offer the statement and its particulars.” Fed. R. Evid. 807(b). Courts are accorded
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`wide discretion in applying this exception. Doe v. United States, 976 F.2d 1071,
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`1076–77 (7th Cir. 1992), cert. denied 510 U.S. 812 (1993); United States v. North,
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`1
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`IPR2015-00871
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`Petitioner’s Opp. to Mot. to Exclude
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`910 F.2d 843, 909 (D.C. Cir. 1990) cert. denied 500 U.S. 941 (1991).
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`Exhibits 1022, 1023, 1043, and 1057-1059 include the sworn testimony of
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`three individuals retained by Petitioner – Chris Hopen, Michael Fratto, and James
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`Chester. Petitioner relies on this testimony to prove the Aventail documents were
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`publicly available prior to February 2000. Pet. at 18; Paper 14 at 5-9. As
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`explained below, to the extent these exhibits contain statements that are hearsay,
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`they satisfy the residual exception to hearsay, and are admissible.
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`First, Exhibits 1022, 1023, 1043, and 1057-1059 have equivalent
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`circumstantial guarantees of trustworthiness. See Fed. R. Evid. 807(a)(1). The
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`testimony relied upon in Exhibits 1022, 1023, and 1043 testifies to the same
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`material fact: the public availability of the Aventail documents prior to February of
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`2000. Ex. 1022 at ¶¶ 9-22; Ex. 1023 at ¶¶ 7-25; Ex. 1043 at ¶¶ 6-21.
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`The corroborating effect of three independent sworn declarations by three
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`different witnesses with personal knowledge of Aventail’s public dissemination is
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`substantial, and their testimony credible. The testimony also concerns facts
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`personally known to each witness based on their personal knowledge, which again
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`is corroborated by other exhibits. For example, Mr. Hopen was the lead developer
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`of Aventail and a former employee, while Mr. Fratto and Mr. Chester spoke from
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`their relevant personal experiences.
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`Notably, Patent Owner made no efforts in this proceeding to cross-examine
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`IPR2015-00871
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`Petitioner’s Opp. to Mot. to Exclude
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`any of these declarants pursuant to 37 C.F.R. § 42.51(b)(2), despite its awareness
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`that each had been retained by Petitioner. See Davis v. Alaska, 415 U.S. 308, 316
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`(1974) (“Cross-examination is the principal means by which the believability of a
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`witness and the truth of his testimony are tested.”); cf. The Mangrove Partners
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`Master Fund, Ltd., v. VirnetX Inc., IPR2015-01047, Paper 52 at 2 (Apr. 15, 2016).
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`Substantial circumstantial guarantees of trustworthiness were also submitted
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`by Messrs. Hopen and Fratto in the form of corroborating exhibits attached to their
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`declarations, including announcements, press releases, and articles dated prior to
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`February 2000. For example, Mr. Hopen’s declaration attached a several different
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`types of evidence corroborating his testimony of the public availability of the
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`Aventail documents. See, e.g., Ex. 1023 at 7 (announcement dated May 2, 1997),
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`10 (article dated June 23, 1997), 94 (announcement dated Oct. 12, 1998), 293
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`(announcement dated May 26, 1999), 295 (press release dated Aug. 9, 1999), 424
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`(article dated June 28, 1999 by Mr. Fratto). Mr. Fratto’s declaration provides
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`further corroborating evidence in the form of numerous dated articles about the
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`Aventail system, several of which he authored. See, e.g., Ex. 1043 at 134 (article
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`dated May 2, 1997), 137 (article dated June 23, 1997), 141 (article dated Oct. 1,
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`1997 by Mr. Fratto), 144 (article dated June 15, 1998 by Mr. Fratto), 270 (article
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`dated Aug. 9, 1998), 274 (article dated Oct. 19, 1998), 401 (article dated Aug. 9,
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`1999). Patent Owner neither objected to nor provided any basis for excluding the
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`numerous exhibits attached to each of the declarations, each of which
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`independently corroborates the Declarants’ testimony and also independently
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`corroborates the public availability of the Aventail documents.
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`Exhibits 1057-1059 contain certain litigation testimony of Mr. Hopen and
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`further corroborate the relied upon testimony of Exhibits 1022, 1023, and 1043.
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`These exhibits show that Patent Owner was given multiple opportunities to cross-
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`examine Mr. Hopen regarding his testimony that the Aventail documents were
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`publicly available prior to February of 2000, and in each case generated no
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`testimony casting doubt on the statements in his declaration. Mr. Hopen’s
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`litigation testimony provides further guarantees of the trustworthiness of his
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`affidavit and the affidavits of Messrs. Chester and Fratto.
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`Exhibit 1057 is a rough transcript of Chris Hopen’s April 11, 2012
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`deposition in the VirnetX, Inc. v. Apple Inc., 10-cv-00417 (E.D. Tex.) litigation,1
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`and Exhibit 1058 is an exhibit from that deposition. See, e.g., Ex. 1057 at pp. 4-6,
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`191; Ex. 1058 at i (marked as deposition exhibit “P4”). At his deposition, Mr.
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`Hopen testified that the Aventail documents were publicly available prior to
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`1 The final transcript of Mr. Hopen’s deposition is subject to a protective order.
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`Exhibit 1057 is the redacted rough draft submitted by Patent Owner on May 3,
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`2012, in an IDS in U.S. Appl. No. 13/339,257 (now U.S. Patent No. 8,504,697).
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`Petitioner’s Opp. to Mot. to Exclude
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`February of 2000. Ex. 1057 at 79: 25-80:9, 83:10-84:16, 91:20-92:2, 100:2-104:7.
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`Patent Owner examined Mr. Hopen about his testimony, see, e.g., Ex. 1057 at
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`148:1-209:8, as well as a declaration that Mr. Hopen provided to Apple as part of
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`an inter partes reexamination involving U.S. Patent No. 6,502,135 (Control No.
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`95/001,682). In that declaration, Mr. Hopen testified (as he does here) that the
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`Aventail documents were published and publicly distributed before February 2000.
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`Ex. 1058 at ¶¶ 13-16; accord Ex. 1023 at ¶¶ 13-16. When questioned by Patent
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`Owner, Mr. Hopen confirmed that he agreed with the substance of the declaration
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`he submitted in the ’135 reexam. Ex. 1057 at 191:10-16 (marking Exhibit P4),
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`211:10-14; Ex. 1058 (Exhibit P4 from Mr. Hopen’s deposition); compare Ex. 1058
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`at ¶¶ 13-16 with Ex. 1023 at ¶¶ 13-16. During cross-examination, Patent Owner
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`elicited no contradictory testimony from Mr. Hopen.
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`Likewise, Exhibit 1059 is a transcript of a portion of the trial in VirnetX, Inc.
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`v. Microsoft Corp., 07-cv-00080 (E.D. Tx.), that took place in March 2010. Ex.
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`1059 at 1:1-9. During the trial, video-taped deposition testimony from Mr. Hopen
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`was played in which he testified that the Aventail documents were publicly
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`distributed and available prior to February 2000. Ex. 1059 at 20-32; see, e.g., id. at
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`23:6-11, 24:16-27:17. Patent Owner was given the opportunity to play rebuttal
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`portions of Mr. Hopen’s deposition for the jury, but apparently chose not to do so.
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`See id. at 12:1-23.
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`5
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`IPR2015-00871
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`Petitioner’s Opp. to Mot. to Exclude
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`When viewed together, Exhibits 1022, 1023, 1043, and 1057-1059
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`collectively provide substantial circumstantial guarantees of the trustworthiness of
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`the testimony of Messrs. Hopen, Chester, and Fratto as to the public availability of
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`the Aventail documents before February 2000. See IBM Corp. v. Intellectual
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`Ventures II LLC, IPR2015-00089, Paper 44 at 55-56 (Apr. 25, 2016). Even when
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`attacking the factual veracity of their testimony, Patent Owner took issue only with
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`the number of copies of the Aventail documents that were made publicly available
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`– it did not dispute that some copies of those documents were disseminated as
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`described by the witnesses without restriction. Resp. at 47-52. Patent Owner
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`therefore provides no evidence or argument to undercut the substantial
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`circumstantial guarantees of trustworthiness provided by Petitioner.
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`Second, the exhibits are offered “as evidence of a material fact” (Fed. R.
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`Evid. 807(a)(2)): the public availability of the Aventail documents prior to
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`February of 2000. Pet. at 18; Paper 14 at 5-9.
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`Third, the exhibits are “more probative on the point for which it is offered
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`than any other evidence that the proponent can obtain through reasonable efforts.”
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`Fed. R. Evid. 807(a)(3). As described above, the exhibits include the testimony of
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`three different witnesses with personal knowledge of Aventail’s public
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`dissemination prior to February 2000, including Aventail’s lead developer.
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`Fourth, admitting these exhibits “will best serve the purposes of these rules
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`and the interests of justice.” See Fed. R. Evid. 807(a)(4). Hearsay rules exist
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`because “the many possible sources of inaccuracy and untrustworthiness which
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`may lie underneath the bare untested assertion of a witness can best be brought to
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`light and exposed, if they exist, by the test of cross-examination.” In re Epstein, 32
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`F.3d 1559, 1565 (Fed. Cir. 1994) (quoting 5 John H. Wigmore, Evidence in Trials
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`at Common Law § 1420, at 251 (James H. Chadbourn rev. 1974)). The testimony
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`relied upon in Exhibits 1057-1059 was subject to cross-examination by Patent
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`Owner on an identical issue, and the testimony relied upon in Exhibits 1022, 1023,
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`and 1043 was subject to cross-examination available to Patent Owner under 37
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`C.F.R. § 42.51(b)(2). That Patent Owner voluntarily chose to not cross-examine
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`the witnesses in this proceeding cannot render these exhibits inadmissible.
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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 both the Petition and Motion to Submit
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`Supplemental Information. See Pet. at 18; Paper 14 at 5-9. Therefore, Exhibits
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`1022, 1023, 1043, and 1057-1059 are admissible under the residual exception to
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`the rule against hearsay.
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`Patent Owner offers several meritless rebuttals to this analysis. First, Patent
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`Owner’s reliance on Conoco Inc. v. Dep’t of Energy, 99 F.3d 387, 392 (Fed. Cir.
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`1996), as amended on reh’g in part (Jan. 2, 1997) is misplaced: Conoco dealt with
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`7
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`IPR2015-00871
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`purchase schedules, not signed affidavits from individuals with personal
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`knowledge subject to cross-examination via the additional discovery provisions of
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`37 C.F.R. § 42.1(b)(2). Second, Patent Owner’s argument that former testimony
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`must always be “hearsay with no exception” contradicts its own extensive reliance
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`on former testimony. See generally Paper 6 (citing IPR2014-00237, Ex. 2009).
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`B.
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`Exhibits 1060 and 1063-1065 Are Admissible
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`Exhibits 1060 and 1063-1065 similarly qualify for the residual exception to
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`the rule against hearsay. Fed. R. Evid. 807. Exhibits 1060 and 1063 include the
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`testimony of Ms. Sandy Ginoza, Exhibit 1064 is an InfoWorld magazine article
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`from 1999, and Exhibit 1065 is a NetworkWorld magazine article from 1999.
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`Each of these exhibits is relied upon to show that each of RFC 2401 and RFC 2543
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`were publicly available for distribution via the Internet prior to February 2000.
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`Reply at 16-18; Paper 14 at 9-12.2 As explained below, to the extent these exhibits
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`contain statements that are hearsay, they satisfy the residual exception to hearsay,
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`and are admissible.
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`2 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 19; Paper 14 at 11. They are not hearsay when
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`offered for that purpose. See Fed. R. Evid. 801(c)(2).
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`8
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`IPR2015-00871
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`Petitioner’s Opp. to Mot. to Exclude
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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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`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 ¶¶186-93, 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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`1005 at ¶187. 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 ¶190), 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 14 at 9-12.
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`Third, Exhibits 1060 and 1063-1065 are 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. 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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`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
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`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
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`here, are perhaps one of the most well-known sources of technical information in
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`the art at issue in this proceeding. See, e.g., Control No. 95/001,7893, Action
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`Closing Prosecution (Sept. 9, 2012) (“Regarding the RFC(s), these publications are
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`among the most authoritative publications for Internet systems and protocols.”).4
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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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`and their exclusion would remove a reliable source of evidence from the record.
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`See Resp. at 58-60 (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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`3 Control No. 95/001,789 involves a family member of the patent at issue here.
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`4 “[M]uch of the development and technical management of the Internet has been
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`by the consensus of Internet users. This is evidenced… by IETF and the more than
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`2000 RFC’s which have been written and circulated.” PGMedia, Inc. v. Network
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`Solutions, Inc., 51 F. Supp. 2d 389, 391 (S.D.N.Y. 1999) (citation omitted).
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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 9-11. 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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`Patent Owner offers several meritless rebuttals to this analysis. First, Patent
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`Owner blankly states there is “no evidence corroborating” Ms. Ginoza’s statements
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`and those made in Exhibits 1064 and 1065, Mot. at 8, which entirely ignores they
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`are corroborated by and corroborate Dr. Tamassia’s RFC testimony and RFC
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`2026. See IBM Corp. v. Intellectual Ventures II LLC, IPR2015-00089, Paper 44 at
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`55-56 (Apr. 25, 2016). Second, Patent Owner suggests that Petitioner “could have
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`contacted the [RFC] authors” to obtain more probative testimony, Mot. at 8-9, but
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`4 pages earlier argues that testimony “prepared long after the events [it] purport[s]
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`to memorialize” “cuts against the [testimony’s] trustworthiness.” Mot. at 4.
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`C. Exhibits 1001-1004, 1006, 1007, 1017, 1019, 1024-1041, 1044-1049,
`1051-1054, 1067, 1069, and 1071 Are Admissible
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`Patent Owner moves to exclude Exhibits 1001-1004, 1006, 1007, 1017,
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`1019, 1024-1041, 1044-1049, 1051-1054, 1067, 1069, and 1071 as lacking
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`relevance because they are not cited in the Petition or Petitioner’s Reply. Mot. at
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`9-10. This is an erroneous basis for lacking relevance, as evidence relied upon in
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`forming an expert’s opinion is relevant under FRE 401 and 402. See Apple Inc. v.
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`Smartflash LLC, CBM2014-00180, Paper 50 at 19-20 (Sep. 25, 2015). The
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`admissibility of this type of evidence is particularly important because “[e]xpert
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`testimony that does not disclose the underlying facts or data on which the opinion
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`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. Indeed, most of these relied upon
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`exhibits are discussed explicitly in his report. See, e.g., ¶55 (Ex. 1001), ¶61 (Ex.
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`1002), ¶55 (Ex. 1003), ¶62 (Ex. 1004), ¶6 (Ex. 1006), ¶312 (Ex. 1007), ¶224 (Ex.
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`1019), ¶408 (Ex. 1024), ¶415 (Ex. 1025), ¶200 (Ex. 1030), ¶254 (Ex. 1031), ¶163
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`(Ex. 1032), ¶163 (Ex. 1033), ¶163 (Ex. 1034), ¶163 (Ex. 1035), ¶187 (Ex. 1036),
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`¶198 (Ex. 1037), ¶328 (Ex. 1038), ¶330 (Ex. 1039), ¶351 (Ex. 1040), ¶61 (Ex.
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`1044), ¶175 (Ex. 1045), ¶177 (Ex. 1046), ¶177 (Ex. 1047), ¶335 (Ex. 1048), ¶202
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`(Ex. 1049), ¶63 (Ex. 1051), ¶350 (Ex. 1052), ¶202 (Ex. 1053). The remaining
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`exhibits that were not discussed explicitly in his report were nevertheless relied on
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`by Dr. Tamassia in informing his understanding of the issues in this proceeding,
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`Ex. 1005 at ¶9, and are thus relevant, see Smartflash, CBM2014-00180, Paper 50
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`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. 1071, which was
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`submitted pursuant to 37 C.F.R. § 42.53(f)(5), and Exhibits 1067 and 1069. The
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`continued presence of these latter exhibits causes no conceivable prejudice to
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`Patent Owner or the Board. Patent Owner’s challenge should thus 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 10.
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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); Samsung Electronics America, Inc.
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`v. Smarthflash LLC, CBM2014-00193, Paper 45 at 24 (Mar. 30, 2016).
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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 would create unnecessary work and cause
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`undue confusion, and should 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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`Dated: June 6, 2016
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`Respectfully Submitted,
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`/ Jeffrey P. Kushan /
`Jeffrey P. Kushan
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`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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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), I hereby certify that on this 6th day of June,
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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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`Dated: June 6, 2016
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`Respectfully Submitted,
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`/ 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