Filed on behalf of: VirnetX Inc.
`By:
`
`Joseph E. Palys
`Paul Hastings LLP
`875 15th Street NW
`Washington, DC 20005
`Telephone: (202) 551-1996
`Facsimile: (202) 551-0496
`E-mail: josephpalys@paulhastings.com
`
`
`
`Paper No. ___
`Filed: June 13, 2016
`
`Naveen Modi
`Paul Hastings LLP
`875 15th Street NW
`Washington, DC 20005
`Telephone: (202) 551-1990
`Facsimile: (202) 551-0490
`E-mail: naveenmodi@paulhastings.com
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`
`
`
`APPLE INC.,
`Petitioner
`
`v.
`
`VIRNETX INC.
`Patent Owner
`
`
`
`
`
`
`
`Case IPR2015-00871
`Patent No. 8,560,705
`
`
`
`
`
`
`
`
`
`
`PATENT OWNER’S REPLY TO
`PETITIONER’S OPPOSITION OF MOTION TO EXCLUDE
`
`
`By:
`
`Joseph E. Palys
`Paul Hastings LLP
`875 15th Street NW
`Washington, DC 20005
`Telephone: (202) 551-1996
`Facsimile: (202) 551-0496
`E-mail: josephpalys@paulhastings.com
`
`
`
`Paper No. ___
`Filed: June 13, 2016
`
`Naveen Modi
`Paul Hastings LLP
`875 15th Street NW
`Washington, DC 20005
`Telephone: (202) 551-1990
`Facsimile: (202) 551-0490
`E-mail: naveenmodi@paulhastings.com
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`
`
`
`APPLE INC.,
`Petitioner
`
`v.
`
`VIRNETX INC.
`Patent Owner
`
`
`
`
`
`
`
`Case IPR2015-00871
`Patent No. 8,560,705
`
`
`
`
`
`
`
`
`
`
`PATENT OWNER’S REPLY TO
`PETITIONER’S OPPOSITION OF MOTION TO EXCLUDE
`
`
`
`Case No. IPR2015-00871
`Patent No. 8,560,705
`
`Table of Contents
`
`Exhibits 1022, 1023, 1043, 1057-1060, and 1063-1065 Should Be
`Excluded .......................................................................................................... 1
`
`A.
`
`B.
`
`Exhibits 1022, 1023, 1043, and 1057-1059 Should Be Excluded ........ 1
`
`Exhibits 1060 and 1063-1065 Should Be Excluded ............................. 3
`
`Exhibits 1001-1004, 1006, 1007, 1017, 1019, 1024-1041, 1044-1049,
`1051-1054, 1067, 1069, and 1071 and Portions of Exhibit 1005
`Should be Excluded ......................................................................................... 5
`
`
`
`
`
`I.
`
`II.
`
`
`
`
`
`i
`
`
`
`Case No. IPR2015-00871
`Patent No. 8,560,705
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`
`
`Cases
`
`Pozen Inc. v. Par Pharm., Inc.,
`
`696 F.3d 1511 (Fed. Cir. 2012) ............................................................................ 1
`
`Conoco Inc. v. DOE,
`
`99 F.3d 387 (Fed. Cir. 1996) ................................................................................ 2
`
`Doe v. United States,
`
`976 F.2d 1071 (7th Cir. 1992) ............................................................................. 1
`
`Actifio, Inc., v. Delphix Corp.,
`IPR2015-00108, Paper No. 56 (Apr. 29, 2016) .................................................... 5
`
`People v. Bowers,
`801 P.2d 511 (Colo.1990) ..................................................................................... 4
`
`Rules
`
`Federal Rule of Evidence 807 ............................................................................... 1, 2
`
`
`
`
`
`
`
`On June 6, 2016, Petitioner Apple Inc. (“Apple”) filed an Opposition (Paper
`
`Case No. IPR2015-00871
`Patent No. 8,560,705
`
`
`No. 33) to Patent Owner’s Motion to Exclude (Paper No. 30). Apple, however,
`
`provides insufficient reasons for admitting the exhibits at issue, i.e., Exhibits 1001-
`
`1004, 1006, 1007, 1017, 1019, 1022-1041, 1044-1049, 1051-1054, 1057-1060,
`
`1063-1065, 1067, 1069, and 1071, and portions of Exhibit 1005. As such, Patent
`
`Owner’s Motion to Exclude should be granted.
`
`I.
`
`Exhibits 1022, 1023, 1043, 1057-1060, and 1063-1065 Should Be
`Excluded
`
`Apple argues that Exhibits 1022, 1023, 1043, 1057-1060, and 1063-1065
`
`should be admitted under the residual exception of Fed. R. Evid 807. Paper No. 33
`
`at 1. Apple states that courts have “wide discretion” in applying the residual
`
`exception to the hearsay rule. See Paper No. 33 at 1 (citing Doe v. United States,
`
`976 F.2d 1071, 1076-77 (7th Cir. 1992)). But “Congress intended that the residual
`
`exceptions be used sparingly . . . [a judge’s discretion] . . . is ‘tempered by the
`
`requirement that the exception be reserved for exceptional cases.’” Doe, 976 F.2d
`
`at 1074 (emphasis added). Indeed, the Federal Circuit recently excluded a sworn
`
`declaration assumed to be trustworthy. Pozen Inc. v. Par Pharm., Inc., 696 F.3d
`
`1151, 1161 n.6 (Fed. Cir. 2012).
`
`A. Exhibits 1022, 1023, 1043, and 1057-1059 Should Be Excluded
`Ignoring the mandate that the residual hearsay exception is to be “used
`
`sparingly” for truly “exceptional cases,” Apple attempts to establish that these
`
`1
`
`
`
`exhibits meet the five requirements of Rule 807. For instance, Apple argues that
`
`Case No. IPR2015-00871
`Patent No. 8,560,705
`
`
`the statements have circumstantial guarantees of trustworthiness. This is incorrect.
`
`For instance, Mr. Hopen baldly “estimate[s]” that “thousands of” copies of
`
`Aventail were distributed in the first six months of 1999. Ex. 1023 at ¶ 16. But the
`
`time lapse of over ten years between Aventail’s alleged distribution and Mr.
`
`Hopen’s statement cuts against the trustworthiness of his statements. See, e.g.,
`
`Conoco Inc. v. DOE, 99 F.3d 387, 392-394 (Fed. Cir. 1996). Indeed, Mr. Hopen
`
`failed to provide a single piece of evidence (e.g., an e-mail showing the
`
`distribution of Aventail to a customer) supporting his assertion. Ex. 1057 at 189:1-
`
`191:6.
`
`Apple’s contention that Mr. Hopen’s statements have “circumstantial
`
`guarantees of trustworthiness” because they are corroborated (see Paper No. 33 at
`
`2-6, citing Exs. 1022, 1023, 1043, and 1057-59) is incorrect. For instance, the
`
`documents attached to Mr. Hopen’s declaration (Exhibits A, B, D, H, and J) say
`
`nothing about the dissemination activities in the time frame before the Patent’s
`
`priority date and some of them do not even refer to the correct version of Aventail
`
`at issue, i.e., Aventail Connect v3.01 and AEC v3.0. Ex. 1023 at 10, 94, 293, 295,
`
`424. Mr. Chester’s statements regarding events in July 1998 are irrelevant to Mr.
`
`Hopen’s statements regarding the alleged dissemination of Aventail in the first six
`
`months of 1999. Ex. 1022 at ¶ 19; Ex. 1023 at ¶ 16. Mr. Fratto’s statement that he
`
`2
`
`
`
`Case No. IPR2015-00871
`Patent No. 8,560,705
`
`received a single copy of Aventail does not corroborate Mr. Hopen’s statements
`
`regarding “thousands of” copies being distributed. Ex. 1043 at ¶¶ 8-14. In fact,
`
`Mr. Fratto’s statements cannot provide the necessary corroboration given that he
`
`has repeatedly demonstrated bias against Patent Owner’s patents. Paper No. 25 at
`
`51, citing Exs. 2018-2031. Both he and his co-declarants, Mr. Hopen and Mr.
`
`Chester, were retained by Apple and thus are predisposed toward supporting
`
`Apple’s position about the alleged publication date of Aventail.
`
`Apple also argues that “Patent Owner made no efforts in this proceeding to
`
`cross-examine any of these declarants.” Paper No. 33 at 2-3. This is irrelevant.
`
`Since these declarations were not prepared for purposes of this inter partes review,
`
`cross-examination of the declarants was not provided as routine discovery under 37
`
`C.F.R. § 42.51(b)(1)(ii).
`
`Apple does not argue, nor can it establish, that the present facts present an
`
`exceptional case that warrants admitting hearsay evidence under the residual
`
`exception. Thus, Exhibits 1022, 1023, 1043, and 1057-1059 constitute hearsay
`
`with no exception.
`
`Exhibits 1060 and 1063-1065 Should Be Excluded
`
`B.
`Apple also urges application of the residual exception to Exhibits 1060 and
`
`1063-1065 to support the proposition that RFC 2401 and 2543 were publicly
`
`available prior to the relevant date. Ms. Ginoza produced no evidence that could
`
`3
`
`
`
`Case No. IPR2015-00871
`Patent No. 8,560,705
`
`corroborate her statements in Exhibits 1060 and 1063. Ex. 1060 at ¶ 107; Ex. 1063
`
`at 11 (p. 40, ll. 2-5). She has no personal knowledge about the public availability
`
`of the RFCs. Ex. 1063 at 14 (page 50, lines 17-25).
`
`Apple relies on Exhibits 1064 and 1065 in an attempt to corroborate Ms.
`
`Ginoza’s statements. But this circular analysis must be rejected. See, e.g., People
`
`v. Bowers, 801 P.2d 511, 527 (Colo.1990) (one hearsay statement cannot
`
`corroborate another hearsay statement). Apple’s reliance on IBM Corp. v.
`
`Intellectual Ventures II LLC, IPR2015-00089, Paper No. 44 (Apr. 25, 2016), is
`
`incorrect. In IBM, an Internet Archive manager provided an affidavit with
`
`objective evidence establishing the publication date of a document. The Board
`
`relied on this affidavit as evidence corroborating non-declarant hearsay statements
`
`regarding the publication date. In contrast, Dr. Tamassia (being analogized to the
`
`manager), has not provided any objective evidence establishing the publication
`
`dates of the RFCs in dispute.
`
`Apple does not deny that it could have also contacted the authors of RFCs to
`
`obtain declarations regarding their personal knowledge of the publication dates.
`
`Rather, Apple suggests that testimony from the RFC authors may not have been
`
`trustworthy given the long period of time since the alleged publication. Paper No.
`
`33 at 7. But the very same criticism could be lodged against Dr. Tamassia’s
`
`testimony, which Apple suggests provides corroboration. Apple cannot have it
`
`4
`
`
`
`both ways. Thus, Exhibits 1060 and 1063-1065 constitute hearsay with no
`
`Case No. IPR2015-00871
`Patent No. 8,560,705
`
`
`exception.
`
`II. Exhibits 1001-1004, 1006, 1007, 1017, 1019, 1024-1041, 1044-1049, 1051-
`1054, 1067, 1069, and 1071 and Portions of Exhibit 1005 Should be
`Excluded
`
`Apple asserts that Dr. Tamassia’s consideration of Exhibits 1001-1004,
`
`1006, 1007, 1017, 1019, 1024-1041, 1044-1049, 1051-1054, 1067, 1069, and 1071
`
`makes them admissible. See Paper No. 33 at 7-9. However, these Exhibits were
`
`not cited by Dr. Tamassia (in Ex. 1005) as forming the basis for his positions that
`
`are relevant to this proceeding. See Actifio, Inc., v. Delphix Corp., IPR2015-
`
`00108, Paper No. 56 at 57 (Apr. 29, 2016) (excluding exhibits that were not relied
`
`upon). Thus, these exhibits should be excluded and the unrelated portions of Dr.
`
`Tamassia’s declaration to this proceeding should likewise be excluded. As for
`
`Exhibits 1067, 1069 and 1071, Apple does not deny that it does not rely on these
`
`exhibits in any of its papers. They should be excluded as irrelevant.
`
`Dated: June 13, 2016
`
`Respectfully submitted,
`
`By: /Joseph E. Palys/
`Joseph E. Palys
`Reg. No. 46,508
`
`Counsel for VirnetX, Inc.
`
`
`
`5
`
`
`
`
`
`Case No. IPR2015-00871
`Patent No. 8,560,705
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on this 13th day of June 2016, a copy of the foregoing
`
`Patent Owner’s Reply to Petitioner’s Opposition to Motion to Exclude was served
`
`electronically, pursuant to agreement, upon the following:
`
`Counsel for Apple Inc.:
`
`
`
`iprnotices@sidley.com
`Sidley Austin LLP
`1501 K Street NW
`Washington, DC 20005
`
`
`
`
`Respectfully submitted,
`
`By: /Joseph E. Palys/
`Joseph E. Palys
`Reg. No. 46,508
`Counsel for VirnetX Inc.
`
`Dated: June 13, 2016
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