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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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`––––––––––––––––––
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`THE MANGROVE PARTNERS MASTER FUND, LTD., and APPLE INC.,
`Petitioners,
`
`v.
`
`VIRNETX INC.,
`Patent Owner.
`
`––––––––––––––––––
`
`Case No. IPR2015-010461
`U.S. Patent No. 8,560,705
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`––––––––––––––––––
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`PETITIONERS’ OPPOSITION TO
`PATENT OWNER’S MOTION TO EXCLUDE
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`
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`1 Apple Inc., who filed a petition in IPR2016-00062, has been joined as a Petitioner
`in the instant proceeding.
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`IPR2015-01046
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`Petitioners’ 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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`Exhibits 1025 and 1037 Are Not Hearsay. ............................................ 1
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`Exhibits 1029 and 1031-1033 Are Admissible Under Fed. R. Evid.
`807. ........................................................................................................ 2
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`Exhibits 1037 and 1039 Are Admissible Under Fed. R. Evid. 803(17)
`and/or 807. ............................................................................................. 9
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`D.
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`Exhibits 1005, 1010, 1014, 1020, and 1040-1042 Are Relevant. ....... 13
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`III. Conclusion ..................................................................................................... 15
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`Petitioners’ 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) ...................................................... 14
`
`CA Inc. v. Simplecom Inc.,
`780 F. Supp. 2d 169 (E.D. N.Y. 2009) ................................................................. 3
`
`Conoco Inc. v. Dept. of Energy,
`99 F.3d 387 (Fed. Cir. 1996) .......................................................................... 9, 11
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`Doe v. United States,
`976 F.2d 1071 (7th Cir. 1992), cert. denied 510 U.S. 812 (1993) ....................... 3
`
`Ericsson Inc. v. Intellectual Ventures I LLC,
`IPR2014-00527, Paper 41 (May 18, 2015) ..................................................... 7, 10
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`HTC Corp. v. Advanced Audio Device, LLC,
`IPR2014-01157, Paper No. 41 (Jan. 22, 2016) ..................................................... 2
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`IBM Corp. v. Intellectual Ventures II LLC,
`IPR2015-00089, Paper 44 (Apr. 25, 2016) ....................................................... 3, 9
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`OddzOnProducts, Inc. v. Just Toys, Inc.,
`122 F.3d 1396 (Fed. Cir. 1997) .......................................................................... 13
`
`PGMedia, Inc. v. Network Solutions, Inc.,
`51 F. Supp. 2d 389 (S.D.N.Y. 1999) .................................................................... 8
`
`Poole v. Textron, Inc.,
`192 F.R.D. 494 (D. Md. 2000) ............................................................................. 6
`
`QSC Audio Prods., LLC v. Crest Audio, Inc.,
`IPR2014-00127, Paper 43 (Apr. 29, 2015) ......................................................... 11
`
`Ultratec, Inc. v. Sorenson Commc'ns, Inc.,
`No. 13-CV-346, 2014 WL 4829173 (W.D. Wis. Sept. 29, 2014) ........................ 6
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`United States v. North,
`910 F.2d 843 (D.C. Cir. 1990) cert. denied 500 U.S. 941 (1991) ........................ 3
`ii
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`IPR2015-01046
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`Statutes
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`Petitioners’ Opp. to Mot. to Exclude
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`35 U.S.C. § 316(b) ..................................................................................................... 7
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`Other Authorities
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`37 C.F.R. 42.1(b) ....................................................................................................... 7
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`37 C.F.R. § 42.65 ..................................................................................................... 14
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`Fed. R. Civ. P. 32(a)(8) .............................................................................................. 7
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`Fed. R. Evid. 401 ............................................................................................... 13, 14
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`Fed. R. Evid. 402 ..................................................................................................... 14
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`Fed. R. Evid. 801(c)(2) .............................................................................................. 1
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`Fed. R. Evid. 803(16) ............................................................................................... 10
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`Fed. R. Evid. 803(17) ..................................................................................... 9, 10, 11
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`Fed. R. Evid. 807 ..............................................................................................passim
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`iii
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`IPR2015-01046
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`I.
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`Introduction
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`Petitioners’ Opp. to Mot. to Exclude
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`The evidence of record establishes that Exhibits 1005, 1010, 1014, 1020,
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`1025, 1029, 1031-1033, 1037, and 1039-1042 are admissible. Patent Owner has
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`failed to show otherwise, and thus, its motion must be denied. See Paper 59
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`(“Mot.”).
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`II. Argument
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`A. Exhibits 1025 and 1037 Are Not Hearsay.
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`Patent Owner moves to exclude Exhibits 1025 and 1037 as inadmissible
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`hearsay. Mot. at 2-3. But none of these exhibits are hearsay because they are not
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`being offered for the truth of their contents. Fed. R. Evid. 801(c). Under Federal
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`Rule of Evidence 801(c), “Hearsay means a statement that… (2) a party offers in
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`evidence to prove the truth of the matter asserted in the statement.” Fed. R. Evid.
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`801(c)(2) (emphasis added).
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`In related proceedings, Patent Owner has mischaracterized Dr. Guerin’s
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`testimony in IPR2014-00401 about the term “VPN.” Petitioners rely on Exhibit
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`1025, Dr. Guerin’s declaration from IPR2014-00401, to preemptively refute Patent
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`Owner’s mischaracterizations of that testimony. Paper 5 (Corr. Pet.) at 10-11.
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`Thus, Petitioners reliance on Exhibit 1025 is not for the truth of its contents.
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`Furthermore, Patent Owner had the opportunity to, and could have, cross-examined
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`Dr. Guerin on any statements in Exhibit 1025 if it had desired. It did not.
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`1
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`IPR2015-01046
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`Petitioners’ Opp. to Mot. to Exclude
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`Petitioners rely on Exhibit 1037—RFC 1983, “Internet User’s Glossary”—to
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`show how a person of ordinary skill would have understood the term “client.”
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`Paper 50 at 9. Therefore, the exhibit is being offered to show what it would have
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`conveyed to a person of ordinary skill in the art rather than the truth of its contents.
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`See HTC Corp. v. Advanced Audio Device, LLC, IPR2014-01157, Paper No. 41 at
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`(Jan. 22, 2016) (citing, inter alia, Joy Techs., Inc. vc. Manbeck, 751 F. Supp. 225,
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`233 n.2 (D.D.C. 1990), aff’d, 959 F.2d 226 (Fed. Cir. 1992)). Exhibit 1037 also is
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`admissible for the reasons provided in §II.C, below.
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`Thus, Exhibits 1025 and 1037 are not hearsay, and Patent Owner’s hearsay
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`objections are misplaced. Both exhibits should be admitted as evidence in this
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`proceeding.
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`B.
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`Exhibits 1029 and 1031-1033 Are Admissible Under Fed. R. Evid.
`807.
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`Patent Owner seeks to exclude Exhibits 1029 and 1031-1033 as inadmissible
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`hearsay, Mot. at 3-6, but these exhibits, to the extent they are hearsay, fall within
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`an exception to the hearsay rule. Under Federal Rule of Evidence 807, a
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`“statement is not excluded by the rule against hearsay” if: “(1) the statement has
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`equivalent circumstantial guarantees of trustworthiness; (2) it is offered as
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`evidence of a material fact; (3) it is more probative on the point for which it is
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`offered than any other evidence that the proponent can obtain through reasonable
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`efforts; and (4) admitting it will best serve the purposes of these rules and the
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`Petitioners’ Opp. to Mot. to Exclude
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`interests of justice.” Fed. R. Evid. 807(a). The testimony’s proponent must also
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`give (5) “reasonable notice of the intent to offer the statement and its particulars.”
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`Fed. R. Evid. 807(b). Courts are accorded wide discretion in applying this
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`exception. IBM Corp. v. Intellectual Ventures II LLC, IPR2015-00089, Paper 44 at
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`55-56 (Apr. 25, 2016) (citing Doe v. United States, 976 F.2d 1071, 1076–77 (7th
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`Cir. 1992), cert. denied 510 U.S. 812 (1993); United States v. North, 910 F.2d 843,
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`909 (D.C. Cir. 1990) cert. denied 500 U.S. 941 (1991)).
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`Exhibits 1029 and 1031-1033 qualify for the residual exception to the rule
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`against hearsay. Fed. R. Evid. 807. Exhibits 1029 and 1031 include the testimony
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`of Ms. Sandy Ginoza. Exhibits 1032 and 10332 are articles from trade publications
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`2 Exhibits 1032-1033 are independently admissible because each is being used to
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`demonstrate that various RFCs are available from the IETF’s webpage, and that the
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`skilled person, exercising reasonable diligence, would have known how to locate
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`the RFCs, Paper 50 at 21. The exhibits are not hearsay when used for this purpose.
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`See, e.g., CA Inc. v. Simplecom Inc., 780 F. Supp. 2d 169, 227-228 (E.D. N.Y.
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`2009) (“The Meininger email is not hearsay because it is not being offered for the
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`truth of its contents… Rather, it is offered to show that the Meininger web page
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`was available in May of 1998 because it was disseminated to members of the
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`3
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`Petitioners’ Opp. to Mot. to Exclude
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`dated from 1999. Each exhibit is relied upon to show that RFCs—in particular
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`RFC 1034—were publicly available for distribution via the Internet prior to
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`February 2000. Paper 50 at 21. To the extent these exhibits contain statements
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`that are hearsay, they satisfy the residual exception to hearsay, and are admissible.
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`First, Exhibits 1029 and 1031-1033 have equivalent circumstantial
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`guarantees of trustworthiness. See Fed. R. Evid. 807(a)(1). Exhibits 1029 and
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`1031 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 1029 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. 1029 at ¶¶1-5; Ex. 1031 at 6:23-7:4, 10:5-14. In her
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`declaration, Ms. Ginoza testified that RFC 1034 was published on the RFC
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`Editor’s website and was publicly available on the website or through other means
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`since its publication in November 1987. Ex. 1029 at ¶¶9-11. Exhibit 1031 is the
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`transcript of Ms. Ginoza’s February 8, 2013 deposition that was taken as part of
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`the ITC action, where she testified that RFC 1034 was publicly available as of
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`
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`public…. Reply e-mails are not hearsay because… [they] show that others
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`accessed, used and were aware of the Meininger reference.”).
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`4
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`Petitioners’ Opp. to Mot. to Exclude
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`November 1987. Ex. 1031 at 20:23-22:9. During this deposition, Patent Owner
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`had an opportunity to cross-examine Ms. Ginoza about her testimony and
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`declaration, but developed no contrary testimony.
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`This testimony is corroborated by and corroborates the disclosure in
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`Exhibits 1032 and 1033, which are excerpts from industry publications that state it
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`was known that RFCs were publicly available through the Internet, such as through
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`the IETF’s website. See, e.g., Ex. 1032 at 9 (stating “All of these documents are
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`available on the IETF website: www.ietf.org/rfc.html”); Ex. 1033 at 3 (noting
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`IETF RFCs regarding IP security protocols are available at, e.g., “www.ietf.org
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`/rfc/rfc2401.txt”).
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`Substantial circumstantial guarantees of trustworthiness are also provided by
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`the evidence submitted with Petitioners’ filings, such as the testimony of Dr.
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`Guerin and RFC 2026. Dr. Guerin explained that RFCs are “prepared and
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`distributed under a formalized publication process overseen by one of several
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`Internet standards or governing bodies, such as the Internet Engineering Task
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`Force (IETF)” and that the publication process described in RFC 2026 (Ex. 1010),
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`Ex. 1003 at ¶¶41-47, explains that anyone can obtain RFCs from a number of
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`Internet hosts, Ex. 1010 at 5-6, and that each RFC “is made available for review
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`via world-wide on-line directories,” id. at 4; see Ex. 1003 at ¶42; see also Ex. 1041
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`at 7-9 and Ex. 1042 at 4-6 (historical documents describing same publication
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`5
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`Petitioners’ Opp. to Mot. to Exclude
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`process). Dr. Guerin testified from his personal knowledge that RFCs list their
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`publication date in the top corner of the first page. Ex. 1003 at ¶44. Indeed, RFC
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`1034 lists the date on its face, in the top corner, consistent with Dr. Guerin’s and
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`Ms. Ginoza’s testimony. See id.; Ex. 1031 at 22:5-9; Ex. 1005 at 1.
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`Second, Exhibits 1029 and 1031-1033 are offered as evidence of a material
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`fact (Fed. R. Evid. 807(a)(2)): the public availability of RFC 1034 since November
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`1987. Paper 50 at 21.
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`Third, Exhibits 1029 and 1031-1033 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). Exhibits 1032 and 1033 are
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`periodicals published prior to the earliest priority date for the patent-in-suit, and
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`directly answer the material fact at issue. Ex. 1032 at 9; Ex. 1033 at 3. Ms.
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`Ginoza’s testimony is probative because she testified “on behalf of the Internet
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`Engineering Task Force” as a designated corporate representative, (Ex. 1031 at
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`10:5-22; Ex. 1029 at 1 (entitled “Declaration of the RFC Publisher for the
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`[IETF]”)), and, as such, was testifying to “the knowledge of the corporation,”
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`Poole v. Textron, Inc., 192 F.R.D. 494, 504 (D. Md. 2000). And, corporate
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`witnesses like Ms. Ginoza commonly testify about publication date of a prior art
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`document. See, e.g., Ultratec, Inc. v. Sorenson Commc’ns, Inc., No. 13-CV-346,
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`2014 WL 4829173, at *6 (W.D. Wis. Sept. 29, 2014).
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`6
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`Petitioners’ Opp. to Mot. to Exclude
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`It is not reasonable to burden the IETF and Ms. Ginoza—who are not parties
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`to this dispute—with preparing more declarations and potentially additional
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`depositions to develop the same testimony contained in Exhibits 1029 and 1031.
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`Ms. Ginoza’s testimony was developed during concurrent litigation between Apple
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`and Patent Owner, where Patent Owner had an incentive to develop any contrary
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`testimony from Ms. Ginoza on the publication issue. See Fed. R. Civ. P. 32(a)(8)
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`(“Deposition Taken in an Earlier Action. A deposition lawfully taken… may be
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`used in a later action involving the same subject matter between the same parties…
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`to the same extent as if taken in the later action.”). The IETF thus already
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`authenticated and corroborated the publication of RFC 1034 in the context of a
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`related dispute, and it is not reasonable to force the IETF to do so again.
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`Fourth, it would be in the interests of justice to admit Exhibits 1029 and
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`1031-33. See Fed. R. Evid. 807(a)(4). An IPR is “an administrative proceeding
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`designed and intended to afford expedited and efficient relief.” Ericsson Inc. v.
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`Intellectual Ventures I LLC, IPR2014-00527, Paper 41 at 12 (May 18, 2015); see
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`35 U.S.C. § 316(b); 37 C.F.R. § 42.1(b). Exceptions to the hearsay rule should be
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`liberally applied in these proceedings because the Board is equipped to evaluate
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`the reliability and circumstantial guarantees of trustworthiness. It makes no sense
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`to exclude documents that are regularly relied upon by skilled artisans or to
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`exclude testimony that has been adequately tested by cross-examination.
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`7
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`IPR2015-01046
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`Petitioners’ Opp. to Mot. to Exclude
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`RFC documents, such as those at issue here, are perhaps one of the most
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`well-known sources of technical information in the art at issue in this proceeding.
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`See, e.g., Control No. 95/001,7893, Action Closing Prosecution (Sept. 9, 2012)
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`(“Regarding the RFC(s), these publications are among the most authoritative
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`publications for Internet systems and protocols.”).4 Ms Ginoza’s testimony about
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`the IETF’s publication practices and the publication of RFC documents—
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`particularly where Patent Owner has already cross-examined her on that
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`testimony—is reliable, and excluding it would be contrary to providing an
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`“expedited and efficient” proceeding. Likewise, Exhibits 1032 and 1033 are
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`articles from trade publications that were well-known to those of skill, and their
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`exclusion would remove a reliable source of evidence from the record.
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`Lastly, Petitioners gave Patent Owner “reasonable notice of the intent to
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`offer the statement and its particulars” (Fed. R. Evid. 807(b)), as evidenced by
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`Petitioner Apple’s Petition and Petitioners’ updated exhibit list submitted on
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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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`8
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`IPR2015-01046
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`Petitioners’ Opp. to Mot. to Exclude
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`February 4, 2016. See Paper 34 at 3; IPR2016-00062, Paper No. 1 at 39-42.
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`Therefore, Exhibits 1029 and 1031-1033 are admissible under the residual
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`exception to the rule against hearsay.
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`Patent Owner’s preemptive responses lack merit. First, Patent Owner
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`blankly states there are no “circumstantial guarantees of trustworthiness” because
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`there is “no evidence corroborating” Ms. Ginoza’s statements in Exhibits 1029 and
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`1031. Mot. at 5. That assertion entirely ignores the fact that they are corroborated
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`by and that they corroborate Dr. Guerin’s RFC testimony and RFC 2026. See IBM
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`Corp. v. Intellectual Ventures II LLC, IPR2015-00089, Paper 44 at 55-56 (Apr. 25,
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`2016). Patent Owner also attempts to discredit Ms. Ginoza’s statements because
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`she did not prepare or maintain the RFC herself. Mot. at 5. “Courts have made
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`clear, however, that the ‘custodian or other qualified witness’ who must
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`authenticate business records need not be the person who prepared or maintained
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`the records, …as long as the witness understands the system used to prepare the
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`records.” Conoco Inc. v. Dept. of Energy, 99 F.3d 387, 391 (Fed. Cir. 1996).
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`Patent Owner does not dispute that Ms. Ginoza understands how the RFC records
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`are created and maintained, or explain why testimony from an author of RFC 1034
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`would have been more probative than testimony from the IETF’s RFC publisher.
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`C. Exhibits 1037 and 1039 Are Admissible Under Fed. R. Evid.
`803(17) and/or 807.
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`Patent Owner objects to Exhibits 1037 and 1039 as inadmissible hearsay.
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`Petitioners’ Opp. to Mot. to Exclude
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`Mot. at 2, 7. Exhibit 1039 (and Exhibit 1037, to the extent it is hearsay, see §II.A,
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`above) are admissible under the exception for market reports and similar
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`commercial publications, or otherwise under the residual exception.
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`Under Federal Rule of Evidence 803(17), “[m]arket quotations, lists,
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`directories, or other compilations that are generally relied on by the public or by
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`persons in particular occupations” fall within a hearsay exception and are
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`admissible. Fed. R. Evid. 803(17). Petitioners rely on Exhibit 1039 for statements
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`about its authorship, and on Exhibit 1037 to provide a definition of a term used in
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`RFC documents. The Board has previously found that statements about authorship
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`and publication made by a well-known, reputable compiler and publisher of
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`scientific and technical publications, such as IEEE, are reliable and admissible
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`under 803(17). Ericsson, IPR2014-00527, Paper 41 at 11.
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`For the same reasons, Exhibits 10375 and 1039 should be admissible under
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`Federal Rule of Evidence 803(17). Both exhibits are RFCs that define Internet
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`standards and are published and overseen by the Internet Engineering Task Force
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`5 Exhibit 1037 published in August 1996, and Patent Owner does not contest its
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`authenticity. Thus, if this panel issues its decision after August 2016, Exhibit 1037
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`will be more than 20 years old and also subject to the ancient documents hearsay
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`exception. Fed. R. Evid. 803(16).
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`10
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`IPR2015-01046
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`Petitioners’ Opp. to Mot. to Exclude
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`(IETF). As Dr. Guerin’s sworn testimony and RFC 2026 (Ex. 1010) explain, RFCs
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`are “prepared and distributed under a formalized publication process overseen by
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`one of several Internet standards or governing bodies, such as the Internet
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`Engineering Task Force (IETF)” to the public and “[t]he formalized process of
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`preparing, publishing and widely distributing RFC documents is a very important
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`part of the Internet culture…[and] to the adoption of these standards, and the
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`stability and functionality of the Internet for developers to adhere to standard and
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`evolving ‘best practices.’” Ex. 1003 at ¶¶41-47; Ex. 1010 at 4-9 (each RFC “is
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`made available for review via world-wide on-line directories”). Thus, RFCs are
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`trustworthy because there is a “general reliance by the public or by a particular
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`segment of it” (Internet users), Advisory Note to Fed. R. Evid. 803(17), and they
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`are “prepared with the view that they would be in general use by an industry or
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`members of the public having a general need to rely on information of that type,”
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`Conoco, 99 F.3d at 393. Thus, these exhibits are admissible. See Ericsson,
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`IPR2014-00527, Paper 41 at 11.
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`Alternatively, Exhibits 1037 and 1039 fall within the residual exception
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`under Federal Rule of Evidence 807. First, Exhibits 1037 and 1039 have
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`equivalent circumstantial guarantees of trustworthiness. See Fed. R. Evid.
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`807(a)(1). These RFCs are standards that were prepared for and intended for
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`adherence by the public, without any motivation to deceive. And, Exhibits 1037
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`11
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`Petitioners’ Opp. to Mot. to Exclude
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`and 1039 possess the requisite indicia of trustworthiness on their respective cover
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`pages to show they are genuine RFC publications. See QSC Audio Prods., LLC v.
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`Crest Audio, Inc., IPR2014-00127, Paper 43 at 14-15(Apr. 29, 2015).
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`Second, Exhibits 1037 and 1039 are offered as evidence of a material fact
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`(Fed. R. Evid. 807(a)(2)): the meaning of “client” and to corroborate Dr. Guerin’s
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`knowledge of RFCs. Paper 50 at 9, 21.
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`Third, Exhibits 1037 and 1039 are more probative on the point for which
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`they are offered than any other evidence that the proponent can obtain through
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`reasonable efforts. See Fed. R. Evid. 807(a)(3). Exhibit 1037 is probative on the
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`meaning of “client” as understood by those of ordinary skill in the art during the
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`relevant time period because it is a glossary of terms for the RFC standards, which
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`those of ordinary skill in the art used at the time. Exhibit 1039 is probative of Dr.
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`Guerin’s familiarity and authorship of RFCs because it is an RFC that names him
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`as the author, and it is consistent with his testimony that he authored RFCs. Ex.
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`2037 at 139:12-140:6.
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`Fourth, it would be in the interests of justice to admit Exhibits 1037 and
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`1039. See Fed. R. Evid. 807(a)(4). As previously stated, RFC documents, such as
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`those at issue here, are perhaps one of the most well-known sources of technical
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`information in the art at issue in this proceeding. See, e.g., Control No.
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`95/001,789, Action Closing Prosecution (Sept. 9, 2012). Excluding these
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`12
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`Petitioners’ Opp. to Mot. to Exclude
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`documents would not comport with “an administrative proceeding designed and
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`intended to afford expedited and efficient relief.” See Ericsson, IPR2014-00527,
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`Paper 41 at 56.
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`Lastly, Petitioners gave Patent Owner “reasonable notice of the intent to
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`offer the statement and its particulars” (Fed. R. Evid. 807(b)), as evidenced by
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`Petitioners Reply. See Paper 50 at vii-viii. Therefore, Exhibits 1037 and 1039 are
`
`admissible under the residual exception to the rule against hearsay.
`
`D. Exhibits 1005, 1010, 1014, 1020, and 1040-1042 Are Relevant.
`
`Patent Owner moves to exclude Exhibits 1005, 1010, 1014, 1020, and 1040-
`
`1042 as lacking relevance. Mot. at 7-8. As the Federal Circuit has acknowledged,
`
`there is a “low threshold for relevancy.” OddzOnProducts, Inc. v. Just Toys, Inc.,
`
`122 F.3d 1396, 1407 (Fed. Cir. 1997). Evidence is relevant if it has any “tendency
`
`to make the existence of any fact that is of consequence to the determination of the
`
`action more probable or less probable than it would be without the evidence.” Fed.
`
`R. Evid. 401.
`
`First, Exhibit 1005, RFC 1034, is undisputedly relevant. Not only does it
`
`form the basis for one of the invalidity grounds asserted by Petitioners in the
`
`Petition, it is one of the references that the Board based institution on in this IPR.
`
`Paper 5 at 4-5, 35; Paper 11 at 2.
`
`Second, Patent Owner argues that Exhibits 1010, and 1014 are not relevant
`
`13
`
`
`
`IPR2015-01046
`
`
`
`Petitioners’ Opp. to Mot. to Exclude
`
`because they are not cited in the Petition or Petitioners’ Reply. Mot. at 7-8. But
`
`these exhibits are cited in Dr. Guerin’s declaration. See Ex. 1003 at ¶¶ 43-45
`
`(discussing and citing Exhibit 1010); id. at ¶ 19 (citing Exhibit 1014). The Board
`
`has repeatedly held that evidence relied upon in forming an expert’s opinion is
`
`relevant under FRE 401 and 402. See, e.g., Apple Inc. v. Smartflash LLC,
`
`CBM2014-00180, Paper 50 at 19-20 (Sep. 25, 2015). The admissibility of this
`
`type of evidence is particularly important because “[e]xpert testimony that does not
`
`disclose the underlying facts or data on which the opinion is based is entitled to
`
`little or no weight.” 37 C.F.R. § 42.65.
`
`The only purportedly irrelevant exhibits not relied upon in Dr. Guerin’s
`
`declaration are Exhibits 1020 and 1040-1042. Exhibit 1020 is a Petition for Inter
`
`Partes Review in IPR2013-00349. Exhibit 1040 corroborates Petitioners’
`
`assertion that Dr. Guerin has authored RFCs. Paper 50 at 21. Exhibit 1041-1042
`
`corroborate Petitioners’ assertion that RFC 2026 (Ex. 1010) describes the
`
`fundamental publication processes used by the IETF when publishing RFC 1034.
`
`The continued presence of these exhibits causes no conceivable prejudice to Patent
`
`Owner or the Board. Patent Owner’s challenge should thus be dismissed.
`
`
`
`
`
`14
`
`
`
`IPR2015-01046
`
`III. Conclusion
`
`
`
`Petitioners’ Opp. to Mot. to Exclude
`
`For the foregoing reasons, the Board should deny Patent Owner’s Motion.
`
`
`
`Dated: June 13, 2016
`
`/Jeffrey P. Kushan/
`Jeffrey P. Kushan
`Reg. No. 43,401
`Sidley Austin LLP
`Attorney for Petitioner Apple
`
`
`
`
`
`
`
`Respectfully Submitted,
`
`/Abraham Kasdan/
`Abraham Kasdan
`Reg. No. 32,997
`Wiggin & Dana LLP
`
`James T. Bailey
`Reg. No. 44,518
`The Law Office of James. T. Bailey
`Attorneys for Petitioner Mangrove
`
`15
`
`
`
`IPR2015-01046
`
`
`
`Petitioners’ Opp. to Mot. to Exclude
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), I hereby certify that on this 13th day of
`
`June, 2016, I caused to be served a true and correct copy of the foregoing by e-mail
`
`on the following counsel:
`
`Joseph E. Palys
`E-mail: josephpalys@paulhastings.com
`
`Naveen Modi
`E-mail: naveenmodi@paulhastings.com
`
`Dated: June 13, 2016
`
`/Jeffrey P. Kushan/
`Jeffrey P. Kushan
`Reg. No. 43,401
`Sidley Austin LLP
`Attorney for Petitioner Apple
`
`
`
`
`
`Respectfully Submitted,
`
`/Abraham Kasdan/
`Abraham Kasdan
`Reg. No. 32,997
`Wiggin & Dana LLP
`
`James T. Bailey
`Reg. No. 44,518
`The Law Office of James. T. Bailey
`Attorneys for Petitioner Mangrove
`
`
`
`
`
`
`
`
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