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 20, 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 REPLY TO
`PETITIONERS’ OPPOSITION OF MOTION TO EXCLUDE
`
`
`1 Apple Inc., who filed a petition in IPR2016-00062, has been joined as a Petitioner
`in the instant proceeding.
`
`
`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 20, 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 REPLY TO
`PETITIONERS’ OPPOSITION OF 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
`
`Exhibits 1025 and 1037 Should Be Excluded ................................................. 1
`
`Exhibits 1029 and 1031-1033 Should Be Excluded ........................................ 1
`
`
`
`I.
`
`II.
`
`III. Exhibits 1037 and 1039 Should Be Excluded ................................................. 4
`
`IV. Exhibits 1010, 1014, 1020, and 1040-1042 Should Be Excluded ................... 5
`
`
`
`
`
`i
`
`
`
`TABLE OF AUTHORITIES
`
`Case No. IPR2015-01046
`Patent No. 6,502,135
`
` Page(s)
`
`Cases
`Pozen Inc. v. Par Pharm., Inc.,
`696 F.3d 1511 (Fed. Cir. 2012) ............................................................................ 2
`
`Conoco Inc. v. DOE,
`99 F.3d 387 (Fed. Cir. 1996) ................................................................................ 4
`
`Doe v. United States,
`976 F.2d 1071 (7th Cir. 1992) ............................................................................. 1
`
`People v. Bowers,
`801 P.2d 511 (Colo.1990) ..................................................................................... 2
`
`Actifio, Inc., v. Delphix Corp.,
` IPR2015-00108, Paper No. 56 (Apr. 29, 2016) ................................................... 5
`
`IBM Corp. v. Intellectual Ventures II LLC,
` IPR2015-00089, Paper No. 44 (Apr. 25, 2016) ................................................... 3
`
`Rules
`
`Federal Rule of Evidence 803 .................................................................................... 4
`
`Federal Rule of Evidence 807 ............................................................................ 1, 4, 5
`
`Federal Rule of Evidence 901 .................................................................................... 4
`
`
`
`
`
`Case No. IPR2015-01046
`Patent No. 6,502,135
`On June 13, 2016, Petitioners’ filed an Opposition (Paper No. 61) to Patent
`
`Owner’s Motion to Exclude (Paper No. 59). Petitioners, however, provide
`
`insufficient reasons for admitting the exhibits at issue, i.e., Exhibits 1010, 1014,
`
`1020, 1025, 1029, 1031-1033, 1037, and 1039-1042.2 As such, Patent Owner’s
`
`Motion to Exclude should be granted.
`
`I.
`
`Exhibits 1025 and 1037 Should Be Excluded
`
`Petitioners assert that Exhibits 1025 and 1037 are “not [relied on] for the
`
`truth of their contents.” Paper 61 at 1. This is incorrect. Petitioners only rely on
`
`these exhibits for their alleged truth. See, e.g., Paper No. 50 at 9 (relying on the
`
`alleged truth of Exhibit 1037 to “confirm Dr. Guerin’s opinion”), Paper No. 1 at
`
`10, 11 (relying on the alleged truth of Exhibit 1025 to show Dr. Guerin’s opinion
`
`about the scope of the term VPN).
`
`Thus, Exhibits 1025 and 1037 are hearsay with no exception.
`
`II. Exhibits 1029 and 1031-1033 Should Be Excluded
`Petitioners argue Exhibits 1029 and 1031-1033 should be admitted under the
`
`residual exception of Fed. R. Evid. 807 and assert that courts have “wide
`
`discretion” in applying this exception. Paper No. 61 at 3. However, “Congress
`
`intended that the residual exception[] be used sparingly” and any “discretion is
`
`‘tempered by the requirement that the exception be reserved for exceptional
`
`
`2 Patent Owner withdraws its request to exclude Exhibit 1005 as lacking relevance.
`
`1
`
`
`
`Case No. IPR2015-01046
`Patent No. 6,502,135
`cases.’” Doe v. United States, 976 F.2d 1071, 1074 (7th Cir. 1992). Indeed, a
`
`sworn declaration assumed to be trustworthy was recently excluded. Pozen Inc. v.
`
`Par Pharm., Inc., 696 F.3d 1151, 1161 n.6 (Fed. Cir. 2012) (even if the declaration
`
`at issue was trustworthy, “this is not an exceptional case and thus does not warrant
`
`the residual hearsay exception”).
`
`The statements in Exhibits 1029 and 1031-1033 do not meet the five
`
`requirements of Rule 807. Paper 59 at 3-6. Petitioners argue Ms. Ginoza’s
`
`statements in Exhibits 1029 and 1031 are corroborated by and corroborate 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.3
`
`Paper No. 61 at 4-6. This circular analysis must be rejected. “[T]he corroborative-
`
`evidence requirement cannot be satisfied by using one or several . . . hearsay
`
`statements to corroborate . . . another hearsay statement.” People v. Bowers, 801
`
`P.2d 511, 527 (Colo. 1990). No evidence corroborates Ms. Ginoza’s statements,
`
`and no evidence corroborates the statements in Exhibits 1032 and 1033.
`
`
`3 Petitioners assert that Exhibits 1032 and 1033 are being submitted for another
`
`purpose as well and should be admitted. Paper No. 61 at 3 n.2. Patent Owner
`
`disagrees as these exhibits are being submitted for their truth. Paper No. 48 at 43,
`
`44.
`
`2
`
`
`
`Case No. IPR2015-01046
`Patent No. 6,502,135
`Petitioners next argue Dr. Guerin’s declaration corroborates Ms. Ginoza’s
`
`statements. Paper No. 61 at 9 (citing IBM Corp. v. Intellectual Ventures II LLC,
`
`IPR2015-00089, Paper No. 44 (Apr. 25, 2016)). IBM does not support Petitioners’
`
`position. In IBM, an Internet Archive manager provided an affidavit accompanied
`
`with objective evidence establishing the publication date of the non-patent
`
`literature in dispute. IBM, Paper No. 44 at 53-54. The Board relied on this
`
`affidavit as evidence corroborating non-declarant hearsay statements regarding the
`
`publication date. Id. at 53-57. In stark contrast, Dr. Guerin, which Petitioners
`
`analogize to the Internet Archive manager in IBM, has not provided any objective
`
`evidence establishing the publication date of the RFC in dispute.
`
`Petitioners next argue Ms. Ginoza is capable of authenticating business
`
`records. Paper No. 61 at 9. But Petitioners have not asserted, let alone established,
`
`that the RFC is a business record subject to the business record exception.
`
`Petitioners also miss that Ms. Ginoza failed to produce any records that support her
`
`statements, and could not explain the basis for her statements. Paper No. 59 at 4.
`
`Petitioners do not deny that that they could have contacted the author of the
`
`disputed document to obtain more probative evidence as to their alleged
`
`publication dates. Paper No. 61 at 9. Thus, Exhibits 1029 and 1031-1033
`
`constitute hearsay with no exception.
`
`
`
`3
`
`
`
`Case No. IPR2015-01046
`Patent No. 6,502,135
`
`III. Exhibits 1037 and 1039 Should Be Excluded
`Petitioners argue that Exhibits 1037 and 1039 fall under the commercial list
`
`exception, FRE 803(17). Paper No. 61 at 10. That is incorrect. Petitioners have
`
`not established that RFC documents are “generally relied on by the public or by
`
`persons in particular occupations” akin to the “newspaper market reports,
`
`telephone directories, and city directories” envisioned by FRE 803(17). Fed. R.
`
`Evid. 803(17) advisory comm. nn.
`
`Petitioners contend that Exhibits 1037 will be an ancient document under
`
`FRE 803(16). Paper No. 61 at 10 n.5. Petitioners miss that the document must be
`
`at least 20 years old when offered. FRE 901(b)(8)(C). When Exhibit 1037 was
`
`offered it was not 20 years old; it is not an ancient document.
`
`Petitioners next argue that Exhibits 1037 and 1039 fall under the residual
`
`exception, FRE 807. These exhibits explicitly state that they “do[] not specify an
`
`Internet standard of any kind” (Ex. 1037 at 1; Ex. 1039 at 1). These statements
`
`undermine Petitioners’ bald assertion that these exhibits “are standards that were
`
`prepared for and intended for adherence by the public” and “possess the requisite
`
`indicia of trustworthiness on their respective cover pages.” Paper No. 61 at 12.
`
`In addition, these exhibits are also not more probative on the point for which
`
`they are offered than other evidence Petitioners could have obtained through
`
`reasonable efforts. For example, Petitioners could have contacted the purported
`
`4
`
`
`
`Case No. IPR2015-01046
`Patent No. 6,502,135
`authors of these exhibits to obtain declarations. Admitting these exhibits is not “in
`
`the interests of justice,” as required by FRE 807. This is simply not one of those
`
`“exceptional” cases where admitting hearsay evidence under the residual exception
`
`is warranted. Conoco Inc. v. DOE, 99 F.3d 387, 392 (Fed. Cir. 1996).
`
`IV.
`
` Exhibits 1010, 1014, 1020, and 1040-1042 Should Be Excluded
`
`Petitioners argue that Exhibits 1010 and 1014 were considered by Dr.
`
`Guerin when he prepared his declaration. Paper 61 at 13, 14. However, Exhibits
`
`1010 and 1014 were not cited by Dr. Guerin (in Ex. 1003) 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.
`
`Petitioners do not deny failing to rely on Exhibits 1020 and 1040-1042. See
`
`Paper No. 61 at 14. They should thus be excluded as irrelevant.
`
`Dated: June 20, 2016
`
`Respectfully submitted,
`
`By: /Joseph E. Palys/
`Joseph E. Palys
`Reg. No. 46,508
`
`Counsel for VirnetX, Inc.
`
`
`
`5
`
`
`
`CERTIFICATE OF SERVICE
`
`Case No. IPR2015-01046
`Patent No. 6,502,135
`
`I hereby certify that on this 20th day of June 2016, a copy of the foregoing
`
`Patent Owner’s Reply to Petitioner’s Opposition to Motion to Exclude was served
`
`electronically upon the following:
`
`
`
`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
`Reg. No. 46,508
`Counsel for VirnetX Inc.
`
`Dated: June 20, 2016
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