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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: May 27, 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
`
`
`
`
`
`
`
`
`
`
`
`THE MANGROVE PARTNERS MASTER FUND, LTD. and APPLE INC.,
`Petitioner
`
`v.
`
`VIRNETX INC.
`Patent Owner.
`
`
`
`
`
`
`
`
`Case IPR2015-010461
`Patent No. 6,502,135
`
`
`
`
`
`
`
`
`PATENT OWNER’S MOTION TO EXCLUDE
`
`
`1 Apple Inc., who filed a petition in IPR2016-00062, has been joined as a Petitioner
`in the instant proceeding.
`
`

`
`Case No. IPR2015-01046
`Patent No. 6,502,135
`
`Table of Contents
`
`Precise Relief Requested ................................................................................. 1
`
`Legal Standard ................................................................................................. 1
`
`
`I.
`
`II.
`
`III. Exhibits 1005, 1010, 1014, 1020, 1025, 1029, 1031-1033, 1037, and
`1039-1042 Should be Excluded from the Record ........................................... 1
`
`A.
`
`B.
`
`C.
`
`D.
`
`Exhibits 1025 and 1037 Constitute Inadmissible Hearsay.................... 2
`
`Exhibits 1029 and 1031-1033 Constitute Inadmissible Hearsay .......... 3
`
`Exhibit 1039 Constitutes Inadmissible Hearsay ................................... 7
`
`Exhibits 1005, 1010, 1014, 1020, and 1040-1042 Lack
`Relevance .............................................................................................. 7
`
`IV. Conclusion ....................................................................................................... 8
`
`
`
`
`
`i
`
`

`
`TABLE OF AUTHORITIES
`
`Case No. IPR2015-01046
`Patent No. 6,502,135
`
` Page(s)
`
`Cases
`Conoco Inc. v. Dep’t of Energy,
`
`
`
`99 F.3d 387 (Fed. Cir. 1996) ........................................................................ 2, 5, 6
`
`Actifio, Inc., v. Delphix Corp.,
`
`
`
`IPR2015-00108, Paper No. 56 (Apr. 29, 2016) .................................................... 7
`
`Federal Regulations
`
`Federal Rule of Evidence 401 .................................................................................... 7
`
`Federal Rule of Evidence 402 ................................................................................ 1, 7
`
`Federal Rule of Evidence 403 .................................................................................... 7
`
`Federal Rule of Evidence 801 ............................................................................ 1-3, 7
`
`Federal Rule of Evidence 802 ............................................................................ 1-3, 7
`
`Federal Rule of Evidence 807 ................................................................................ 4-6
`
`37 C.F.R. 42.62(a) ...................................................................................................... 1
`
`Other
`
`Office Patent Trial Practice Guide,
` 77 Fed. Reg. 48758 .............................................................................................. 1
`
`
`
`
`
`ii
`
`

`
`Case No. IPR2015-01046
`Patent No. 6,502,135
`
`I.
`
`Precise Relief Requested
`
`Pursuant to 37 C.F.R. § 42.64, Patent Owner VirnetX Inc. (“Patent Owner”)
`
`moves to exclude certain exhibits submitted by The Mangrove Partners Master
`
`Fund, Ltd. and Apple Inc. (“Petitioners”). This motion is timely filed in
`
`accordance with the Board’s Scheduling Order (Paper No. 12). In particular,
`
`Patent Owner requests that Exhibits 1005, 1010, 1014, 1020, 1025, 1029, 1031-
`
`1033, 1037, and 1039-1042 be excluded from the record.
`
`II. Legal Standard
`The Federal Rules of Evidence apply to inter partes review proceedings. 37
`
`C.F.R. § 42.62(a); Office Patent Trial Practice Guide, 77 Fed. Reg. 48758. Under
`
`Federal Rule of Evidence 402, “irrelevant evidence is not admissible.” Fed. R.
`
`Evid. 402. Also, unless an exception applies, an out of court statement offered for
`
`the truth of the matter asserted is inadmissible. Fed. R. Evid. 801, 802.
`
`III. Exhibits 1005, 1010, 1014, 1020, 1025, 1029, 1031-1033, 1037, and 1039-
`1042 Should be Excluded from the Record
`
`The Board should exclude Exhibits 1005, 1010, 1014, 1020, 1025, 1029,
`
`1031-1033, 1037, and 1039-1042 because one or more of these exhibits includes
`
`evidence that is inadmissible hearsay or the evidence in these exhibits is irrelevant
`
`to the instant proceeding. Patent Owner timely objected to these exhibits stating
`
`the precise grounds under which these exhibits are inadmissible. Paper Nos. 14,
`
`36, 54.
`
`1
`
`

`
`Case No. IPR2015-01046
`Patent No. 6,502,135
`A. Exhibits 1025 and 1037 Constitute Inadmissible Hearsay
`Exhibits 1025 and 1037 should be excluded as inadmissible hearsay. See
`
`Fed. R. Evid. 801-802. Patent Owner previously objected to these exhibits on this
`
`ground. Paper No. 14 at 1; Paper No. 54 at 1. Petitioners have failed to rebut
`
`Patent Owner’s objections. As such, these exhibits should be excluded.
`
`Specifically, absent an applicable exception, the rule against hearsay
`
`operates to prohibit out-of-court statements from being offered to prove the truth of
`
`the matter asserted. Fed. R. Evid. 801-802. Here, Petitioners submitted out-of-
`
`court statements, i.e., statements that were not made for purposes of the present
`
`proceeding, in an attempt to establish the meaning of disputed claim terms. See
`
`Paper No. 1 at 11; see also Paper 51 at 9. Because Petitioners rely on the alleged
`
`truth of the above out-of-court statements to attempt to establish the meaning of
`
`disputed claim terms, these out-of-court statements constitute hearsay and are
`
`inadmissible. The rules permit the introduction of former testimony, but only if the
`
`declarant is unavailable. Fed. R. Evid 804(b)(1); cf. Conoco Inc. v. Dep’t of
`
`Energy, 99 F.3d 387, 393 (Fed. Cir. 1996) (concluding that the residual exception
`
`does not apply to evidence that nearly falls into a specific exception). Thus, the
`
`rules recognize that former statements carry credibility risks that must be guarded
`
`against.
`
`2
`
`

`
`Case No. IPR2015-01046
`Patent No. 6,502,135
`Moreover, Petitioners have neither alleged nor shown that any exception to
`
`the hearsay rule applies here. As a result, the Board should exclude Exhibits 1025
`
`and 1037 because they constitute inadmissible hearsay.
`
`B. Exhibits 1029 and 1031-1033 Constitute Inadmissible Hearsay
`Exhibits 1029 and 1031-1033 should be excluded as inadmissible hearsay.
`
`See Fed. R. Evid. 801-802. Patent Owner previously objected to these exhibits on
`
`this ground. Paper No. 36 at 1.2 Petitioners have failed to rebut Patent Owner’s
`
`objections. As such, these exhibits should be excluded.
`
`In its Petition, Mangrove made the naked assertion that RFC 1034 “was
`
`published on November 1987.” Paper No. 1 at 5. Apple (but not Mangrove)
`
`submitted Exhibits 1029-1033 in support of Mangrove’s contention that RFC 1034
`
`qualified as a printed publication as of November 1987. See IPR2016-00062,
`
`Paper No. 1 at 39-42 (the “Apple Petition”). Exhibit 10293 is “a declaration from
`
`2 Paper No. 36 included a typographical error, referring to Exhibit 1029 as Exhibit
`
`1028 right under the heading. But it is clear from the heading and the context that
`
`Patent Owner meant to refer to Exhibit 1029. Indeed, Exhibit 1028 is a declaration
`
`in support of a motion for pro hac vice admission that Patent Owner did not
`
`oppose. See also Paper No. 37 in IPR2015-01047 (objecting to the same Exhibit
`
`1029 as to hearsay).
`
`3 Referred to as Exhibit 1026 in Apple’s Petition. Apple Pet. at 40.
`
`3
`
`

`
`Case No. IPR2015-01046
`Patent No. 6,502,135
`Sandy Ginoza,” a representative of the IETF, submitted in litigation before the
`
`International Trade Commission (337-TA-858) and Exhibit 10314 is a “transcript
`
`of Ms. Ginoza’s February 8, 2013 deposition that was taken as part of the ITC
`
`action.” Apple Pet. at 40 and 41. Exhibit 10325 is allegedly an article “from
`
`InfoWorld magazine (dated August 16, 1999)” and Exhibit 10336 is allegedly an
`
`article from “NetworkWorld magazine (dated March 15, 1999).” Id. In their
`
`consolidated reply to the Patent Owner Response, Petitioners further relied on the
`
`above exhibits to support their assertion regarding the alleged publication date of
`
`RFC 1034. Reply, Paper No. 51 at 31. Each of Exhibits 1029 and 1031-1033
`
`include out-of-court statements, i.e., statements that were not made for purposes of
`
`the present proceeding, that Petitioners rely on for the alleged truth of the matter
`
`asserted. Therefore, they constitute hearsay and are inadmissible unless an
`
`exception applies.
`
`Petitioners have not asserted or shown that these out-of-court statements are
`
`admissible under any hearsay exception. In a related proceeding, Apple argued
`
`these exhibits are admissible under the residual exception set forth in Rule 807. To
`
`fall under this exception, the statement must: 1) have equivalent circumstantial
`
`4 Referred to as Exhibit 1028 in Apple’s Petition. Apple Pet. at 41.
`
`5 Referred to as Exhibit 1029 in Apple’s Petition. Apple Pet. at 41.
`
`6 Referred to as Exhibit 1030 in Apple’s Petition. Apple Pet. at 41.
`
`4
`
`

`
`Case No. IPR2015-01046
`Patent No. 6,502,135
`guarantees of trustworthiness; 2) be offered as evidence of a material fact; 3) be
`
`more probative on the point for which it is offered than any other evidence that the
`
`proponent can obtain through reasonable efforts; and 4) be in the interests of
`
`justice to admit. Fed. R. Evid. 807. The residual exception to the hearsay rule is to
`
`be reserved for “exceptional cases,” and is not “a broad license on trial judges to
`
`admit hearsay statements that do not fall within one of the other exceptions.”
`
`Conoco, 99 F.3d at 392, as amended on reh’g in part (Jan. 2, 1997) (internal
`
`quotations omitted). Here, Petitioners cannot show that all of the conditions for
`
`admissibility under FRE 807 are met.
`
`For example, Ms. Ginoza’s statements in Exhibits 1029 and 1031, and the
`
`statements in Exhibits 1032 and 1033 have no circumstantial guarantees of
`
`trustworthiness. There is no evidence corroborating Ms. Ginoza’s statements. She
`
`has no personal knowledge to support the assertions that RFC 1034 became
`
`publicly available in November 1987. She was not involved with the RFC editor’s
`
`publication process until June of 1999. See Ex. 1031 at 14 (page 50, lines 17-25).
`
`Worse, she not only failed to produce the RFC Editor records that formed the basis
`
`of her statements, but she also could not explain what existed in those records that
`
`were the basis for her statements with respect to RFC 1034. Ex. 1029 at ¶ 11; Ex.
`
`1031 at 6 (p. 21, ll. 15-18). Therefore, her blanket assertion that “RFC 1034 has
`
`been publicly available through the RFC editor’s web site or through other means
`
`5
`
`

`
`Case No. IPR2015-01046
`Patent No. 6,502,135
`since its publication in November 1987” (Ex. 1031 at ¶ 11) has no “circumstantial
`
`guarantee[] of
`
`trustworthiness.”
`
` Further,
`
`there
`
`is no evidence having
`
`“circumstantial guarantees of trustworthiness” for the statements in Exhibits 1032
`
`and 1033 (Ex. 1032 at 9; Ex. 1033 at 3) relating to the availability of RFCs from
`
`the IETF website that Petitioners rely on for their truth. Reply, Paper No. 51 at 29.
`
`In addition to lacking indicia of trustworthiness required by Rule 807, Ms.
`
`Ginoza’s statements and Exhibits 1032 and 1033 are not more probative than other
`
`evidence reasonably available to Petitioners, as required by FRE 807. As just one
`
`example, Petitioners could have contacted the author of RFC 1034 to obtain a
`
`declaration regarding his personal knowledge of the publication of RFC 1034.
`
`Petitioners’ failure to submit such in court testimony not only shows that the
`
`evidence currently of record is not “more probative on the point for which it is
`
`offered than any other evidence that the proponent can obtain through reasonable
`
`efforts” but also shows that admitting this evidence is not “in the interests of
`
`justice,” as required by FRE 807. Indeed, this is simply not one of those
`
`“exceptional” cases where admitting hearsay evidence under the residual exception
`
`is warranted. Conoco, 99 F.3d at 392.
`
`For at least the above reasons, the Board should exclude Exhibits 1029 and
`
`1031-1033 because they constitute inadmissible hearsay and no exception applies.
`
`6
`
`

`
`Case No. IPR2015-01046
`Patent No. 6,502,135
`
`C. Exhibit 1039 Constitutes Inadmissible Hearsay
`Exhibit 1039 should be excluded as inadmissible hearsay. See Fed. R. Evid.
`
`801-802. Patent Owner previously objected to this exhibit on this ground. Paper
`
`No. 54 at 1. Petitioners have failed to rebut Patent Owner’s objections. As such,
`
`this exhibit should be excluded.
`
`Petitioners submitted an out-of-court statement that Dr. Guerin authored an
`
`RFC (Ex. 1039) in an attempt to establish that Dr. Guerin has authored multiple
`
`RFCs. See Paper 51 at 21. Because Petitioners rely on the alleged truth of the
`
`above out-of-court statement to attempt to establish that Dr. Guerin has authored
`
`multiple RFCs, this out-of-court statement constitutes hearsay and is inadmissible
`
`unless an exception applies. Petitioners have neither alleged nor shown that any
`
`exception to the hearsay rule applies here.
`
`For at least the above reason, the Board should exclude Exhibit 1039
`
`because it constitutes inadmissible hearsay.
`
`D. Exhibits 1005, 1010, 1014, 1020, and 1040-1042 Lack Relevance
`Exhibits 1005, 1010, 1014, 1020, and 1040-1042 should be excluded
`
`because they lack relevance. Fed. R. Evid. 401-403; see also Actifio, Inc., v.
`
`Delphix Corp., IPR2015-00108, Paper No. 56 at 57 (Apr. 29, 2016) (excluding
`
`exhibits that were not relied upon). Patent Owner previously objected to these
`
`exhibits on this ground. Paper No. 14 at 1; Paper No. 36 at 1; Paper No. 54 at 1.
`
`7
`
`

`
`Case No. IPR2015-01046
`Patent No. 6,502,135
`Each of these exhibits is inadmissible because Petitioners have not
`
`established that they are relevant. Fed. R. Evid. 401-403. For instance, Petitioners
`
`do not cite Exhibits 1005, 1010, 1014, or 1020 in the Petition or the Apple Petition,
`
`and do not cite to Exhibits 1040-1042 in the Petitioners’ Consolidated Reply Brief
`
`or Appel’s Separate Reply Brief. Paper No. 1; Apple Pet.; Paper No. 51; Paper
`
`No. 53. Accordingly, each of these exhibits should be excluded from the record.
`
`IV. Conclusion
`For the reasons set forth above, the Board should exclude 1005, 1010, 1014,
`
`1020, 1025, 1029, 1031-1033, 1037, and 1039-1042 from the record.
`
`Dated: May 27, 2016
`
`Respectfully submitted,
`
`By: /Joseph E. Palys/
`Joseph E. Palys
`Reg. No. 46,508
`
`Counsel for VirnetX Inc.
`
`
`
`8
`
`

`
`CERTIFICATE OF SERVICE
`
`Case No. IPR2015-01046
`Patent No. 6,502,135
`
`I hereby certify that on this 27th day of May 2016, a copy of the foregoing
`
`Patent Owner’s Motion to Exclude was served by electronic mail upon the
`
`following:
`
`
`
`Dated: May 27, 2016
`
`Abraham Kasdan (akasdan@wiggin.com)
`Wiggin and Dana LLP
`450 Lexington Avenue
`New York, NY 10017
`IP@wiggin.com
`
`James T. Bailey (jtb@jtbaileylaw.com)
`504 W. 136th St. #1B
`New York, NY 10031
`
`Jeffrey P. Kushan
`Scott Border
`Thomas A. Broughan III
`Sidley Austin LLP
`1501 K Street NW
`Washington, DC 20005
`iprnotices@sidley.com
`
`
`
`Respectfully submitted,
`
`By: /Joseph E. Palys/
`Joseph E. Palys
`Counsel for VirnetX Inc.

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