UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________
`
`SYMANTEC CORP.,
`Petitioner,
`
`v.
`
`FINJAN, INC.,
`Patent Owner.
`
`____________________
`
`Case IPR2015-01892
`Patent 8,677,494
`
`__________________________________________________________
`
`PATENT OWNER’S OBJECTIONS TO EVIDENCE
`UNDER 37 C.F.R. § 42.64
`
`
`
`
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________
`
`SYMANTEC CORP.,
`Petitioner,
`
`v.
`
`FINJAN, INC.,
`Patent Owner.
`
`____________________
`
`Case IPR2015-01892
`Patent 8,677,494
`
`__________________________________________________________
`
`PATENT OWNER’S OBJECTIONS TO EVIDENCE
`UNDER 37 C.F.R. § 42.64
`
`
`
`
`
`Patent Owner’s Objections to Evidence
`IPR2015-01892 (U.S. Patent No. 8,677,494)
`
`Patent Owner Finjan, Inc. (“Finjan) objects under the Federal Rules of
`
`Evidence and 37 C.F.R. § 42.64(b)(1) to the admissibility of:
`
`• Swimmer (Ex. 1005) and all documents in support of Swimmer
`as prior art submitted by Symantec (“Petitioner”), including
`Exhibits 1006, 1010, 1010v2, 1010v3, and 1011;
`• The Declaration of Jack Davidson (Ex. 1018);
`• Petitioner’s use of Dictionaries in Exhibits 1014, 1015, and
`1016 to define “database.”
`Paper No. 1.
`
`The Board instituted trial as to claims 1, 2, 5, 6, 10, 11, 14 on March 18,
`
`2016. Paper No. 9. These objections are being timely served within 10 business
`
`days of the institution of trial, in accordance with 37 C.F.R. § 42.64(b)(1). Finjan
`
`serves Petitioner with these objections to provide notice that Finjan will move to
`
`exclude Swimmer and all documents in support of Swimmer, the Declaration of
`
`Jack Davidson, and Petitioner’s use of Dictionaries in Exhibits 1014, 1015, and
`
`1016 to define “database” as improper evidence.
`
`I.
`
`Declaration of Dr. Sylvia Hall-Ellis (Ex. 1006)
`
`Finjan objects to the admissibility of the declaration of Dr. Hall-Ellis for at
`
`least the following reasons: Under FRE 702, Dr. Hall-Ellis’ opinions are
`
`inadmissible because they are conclusory, do not disclose underlying facts or data
`
`in support of her opinions, and are unreliable. They are also irrelevant, confusing,
`
`and of minimal probative value under FRE 401, 402, and 403. Further, her
`
`- 1 -
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`
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`Patent Owner’s Objections to Evidence
`IPR2015-01892 (U.S. Patent No. 8,677,494)
`
`opinions that rely on the exhibits are also unreliable and inadmissible for the
`
`reasons set forth below.
`
`II.
`
`Swimmer (Ex. 1005)
`
`Finjan objects to the admissibility of Swimmer for at least the following
`
`reasons: Petitioner has failed to authenticate Swimmer under FRE 901 and FRE
`
`602. Specifically, Petitioner has failed to establish that Swimmer is what
`
`Petitioner claims it is, and has failed to authenticate the date by which Swimmer
`
`was allegedly publicly accessible as a printed publication, either by an examination
`
`of Swimmer on its face or by Exhibits 1010, 1010v2, 1010v3, and 1011, discussed
`
`below. To the extent that Petitioner attempts to rely on the date that appears on the
`
`conference bulletin or on a library network (discussed below) to establish public
`
`accessibility as a printed publication, the publication and its date are hearsay under
`
`FRE 801 and are inadmissible under FRE 802, and further, the date has not been
`
`authenticated and is inadmissible under FRE 901.
`
`Because of these deficiencies, Swimmer is not relevant under FRE 401 and
`
`is inadmissible under FRE 402 and 403 because Petitioner has failed to establish
`
`that Swimmer is a prior art printed publication under 35 U.S.C. § 102(b) (pre-
`
`AIA).
`
`- 2 -
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`
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`Patent Owner’s Objections to Evidence
`IPR2015-01892 (U.S. Patent No. 8,677,494)
`
`III. Copy of Virus Bulletin Proceedings (Ex. 1010, 1010v2, 1010v3)
`
`Finjan objects to the admissibility of the Copy of Virus Bulletin Proceedings
`
`for at least the following reasons: Petitioner has failed to authenticate the Copy of
`
`Virus Bulletin Proceedings under FRE 901 and FRE 602. Specifically, Petitioner
`
`has failed to establish that the Copy of Virus Bulletin Proceedings are what
`
`Petitioner claims they are, and has failed to authenticate the date by which this
`
`copy was allegedly publicly accessible as a printed publication.
`
`To the extent that Petitioner attempts to rely on the dates that appear on the
`
`Virus Bulletin to establish public accessibility as a printed publication, those dates
`
`are hearsay under FRE 801 and are inadmissible under FRE 802, and further, the
`
`date has not been authenticated and is inadmissible under FRE 901. To the extent
`
`that Petitioner relies on the Copy of Virus Bulletin Proceedings to show the
`
`publication date of Swimmer, Copy of Virus Bulletin Proceedings is inadmissible
`
`and irrelevant for such purposes under FRE 401 and inadmissible under FRE 402
`
`and FRE 403.
`
`IV. Copy of the MARC Record for Virus Bulletin Proceedings (Ex. 1011)
`
`Finjan objects to the admissibility of the Copy of the MARC Record for at
`
`least the following reasons: Petitioner has failed to authenticate the Copy of the
`
`MARC Record under FRE 901 and FRE 602. Specifically, Petitioner has failed to
`
`establish that the Copy of the MARC Record is what Petitioner claims it is, and has
`
`- 3 -
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`
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`Patent Owner’s Objections to Evidence
`IPR2015-01892 (U.S. Patent No. 8,677,494)
`
`failed to authenticate the document. To the extent that Petitioner attempts to rely
`
`on the date that appears on the Copy of the MARC Record to establish public
`
`accessibility as a printed publication, the date is hearsay under FRE 801 and are
`
`inadmissible under FRE 802, and further, the date has not been authenticated and
`
`is inadmissible under FRE 901.
`
`Moreover, to the extent that Petitioner relies on the Copy of the MARC
`
`Record to show the publication date of Swimmer, the Copy of the MARC Record
`
`shows that it was replaced on July 27, 2015. Moreover, the number of pages in
`
`Exhibit 1010 do not match the number of pages stated in the MARC Record.
`
`Compare Ex. 1010 with Ex. 1011. Accordingly, Petitioner has not established that
`
`this is a true and correct copy of Swimmer or the Virus Bulletin Proceedings as it
`
`allegedly existed in 1995. Because of these deficiencies, Petitioner has failed to
`
`establish that the copy of the MARC Record is relevant under FRE 401 and is
`
`therefore inadmissible under FRE 402 and FRE 403.
`
`V. Declaration of Jack W. Davidson (Ex. 1018)
`
`Finjan objects to the admissibility of the Declaration of Mr. Jack Davidson
`
`for at least the following reasons: Under FRE 702, Jack Davidson’s opinions are
`
`inadmissible because they are conclusory, do not disclose underlying facts or data
`
`in support of his opinions, and are unreliable. Additionally, Mr. Jack Davidson is
`
`unqualified as an expert to provide technical opinions of a person of skill in the art.
`
`- 4 -
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`
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`Patent Owner’s Objections to Evidence
`IPR2015-01892 (U.S. Patent No. 8,677,494)
`
`See Ex. 1019 (Curriculum Vitae of Jack W. Davidson). As such, his opinions are
`
`inadmissible under FRE 702. Under FRE 401 and FRE 402 (relevance), FRE 403
`
`(probative value outweighed by prejudice, confusing of issues, wasting time), his
`
`opinions are also irrelevant, confusing, and of minimal probative value. Mr. Jack
`
`Davidson improperly relies on Swimmer for his analysis, and for the reasons
`
`discussed above, Mr. Jack Davidson’s declaration is inadmissible.
`
`VI. Webster’s College Dictionary, 1999 Second Random House Edition (Ex.
`1014)
`
`Finjan objects to the admissibility of Webster’s College Dictionary, 1999
`
`for at least the following reasons: Under FRE 106, Petitioner introduced only a
`
`partial definition of the term “database” in its Petition. Compare Ex. 1014 with
`
`Paper No. 1 at 11. Because Petitioner did not use the entire definition from
`
`Webster’s College Dictionary, 1999, Exhibit 1014 relied upon by Petitioner to
`
`define “database” is irrelevant and inadmissible as irrelevant, confusing, and of
`
`minimal probative value under FRE 401, FRE 402, and FRE 403.
`
`Petitioner’s “database” Definition
`
`Exhibit 1014 “database” Definition
`
`“a collection or organized, related data.”
`Paper No. 1 at 11.
`
`“a collection of organized, related data,
`esp. one in electronic form that can be
`accessed and manipulated by specialized
`computer software.” Ex. 1014.
`
`- 5 -
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`Patent Owner’s Objections to Evidence
`IPR2015-01892 (U.S. Patent No. 8,677,494)
`
`VII. Ninth New Collegiate Dictionary, 1991 Merriam-Webster Inc. (Ex.
`1015)
`
`Finjan objects to the admissibility of Ninth New Collegiate Dictionary,
`
`1991 Mirriam-Webster Inc. for at least the following reasons: Under FRE 106,
`
`Petitioner introduced only a partial definition of the term “database” in its Petition.
`
`Compare Ex. 1015 with Paper No. 1 at 11. Because Petitioner did not use the
`
`entire definition from Ninth New Collegiate Dictionary, 1991 Merriam-Webster
`
`Inc., Exhibit 1015 relied upon by Petitioner to define “database” is irrelevant and
`
`inadmissible as irrelevant, confusing, and of minimal probative value under FRE
`
`401, FRE 402, and FRE 403.
`
`Petitioner’s “database” Definition
`
`Exhibit 1015 “database” Definition
`
`“a collection of data organized.” Paper
`No. 1 at 11.
`
`“a collection of data organized esp. for
`rapid search and retrieval (as by a
`computer).” Ex. 1015
`
`
`VIII. Webster’s New World Dictionary of Computer Terms, 4th Edition 1992
`(Ex. 1016)
`
`Finjan objects to the admissibility of Webster’s New World Dictionary of
`
`Computer Terms, 4th Edition 1992 for at least the following reasons: Under FRE
`
`106, Petitioner introduced only a partial definition of the term “database” in its
`
`Petition. Compare Ex. 1016 with Paper No. 1 at 11. Because Petitioner did not
`
`use the entire definition from Webster’s New World Dictionary of Computer
`
`- 6 -
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`
`
`Patent Owner’s Objections to Evidence
`IPR2015-01892 (U.S. Patent No. 8,677,494)
`
`Terms, 4th Edition 1992, Exhibit 1016 relied upon by Petitioner to define
`
`“database” is irrelevant and inadmissible as irrelevant, confusing, and of minimal
`
`probative value under FRE 401, FRE 402, and FRE 403.
`
`Petitioner’s “database” Definition
`
`Exhibit 1016 “database” Definition
`
`“‘any clearly identified collection of
`data,’ typically having ‘all its
`information in one central store or file’;
`‘a database [means] a coherent
`collection of data entered into a
`computer system.’” Paper No. 1 at 11.
`
`“Most generally, any clearly identified
`collection of data, such as a telephone
`book or the card catalog at a library. In
`theory, a database should contain all its
`information in one central store or file,
`each record in the file containing
`roughly the same type of information,
`such as name, address, city, state, zip
`code, area code, and telephone number.
`Each of these categories is called a field,
`while a record consists of a set of fields
`pertaining to one person or item. The
`database file is made up of a number of
`related records. Some people
`differentiate between a data base (two
`words), meaning an underlying
`collection of data in the real world, and
`a database (single world), a coherent
`collection of data entered into a
`computer system. As applied to data in
`the computer, it particularly means data
`
`- 7 -
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`
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`Patent Owner’s Objections to Evidence
`IPR2015-01892 (U.S. Patent No. 8,677,494)
`
`organized so that various programs can
`access and update the information.” Ex.
`1016
`
`
`IX. Conclusion
`Therefore, unless Petitioner can cure these deficiencies, Finjan will file
`
`motions to exclude these exhibits under 37 C.F.R. § 42.64(c).
`
`Dated: April 1, 2016
`
`(Case No. IPR2015-01892)
`
`Respectfully submitted,
`
`
`
`
`
`/James Hannah/
`
`James Hannah (Reg. No. 56,369)
`Kramer Levin Naftalis & Frankel LLP
`990 Marsh Road
`Menlo Park, CA 94025
`Tel: 650.752.1700 Fax: 212.715.8000
`
`Jeffrey H. Price (Reg. No. 69,141)
`Kramer Levin Naftalis & Frankel LLP
`1177 Avenue of the Americas
`New York, NY 10036
`Tel: 212.715.7502 Fax: 212.715.8302
`
`Michael Kim (Reg. No. 40,450)
`Finjan, Inc.
`2000 University Ave., Ste. 600
`E. Palo Alto, CA 94303
`Tel: 650.397.9567
`mkim@finjan.com
`
`Attorneys for Patent Owner
`
`- 8 -
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`
`
`Patent Owner’s Objections to Evidence
`IPR2015-01892 (U.S. Patent No. 8,677,494)
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that a true and
`
`correct copy of the foregoing Patent Owner’s Objections to Evidence Under 37
`
`C.F.R. § 42.64 was served on April 1, 2016, by filing this document through the
`
`Patent Review Processing System as well as delivering via electronic mail upon
`
`the following counsel of record for Petitioner:
`
`Daniel A. Crowe
`BRYAN CAVE LLP
`One Metropolitan Square
`211 N. Broadway, Suite 3600
`St. Louis, MO 63102
`dacrowe@bryancave.com
`
`
`
`
`
`
`
`/James Hannah/
`
`James Hannah (Reg. No. 56,369)
`Kramer Levin Naftalis & Frankel LLP
`990 Marsh Road,
`Menlo Park, CA 94025
`(650) 752-1700
`
`Joseph J. Richetti.
`BRYAN CAVE LLP
`1290 Avenue of the Americas
`New York, NY 10104
`joe.richetti@bryancave.com
`
`
`
`
`
`- 9 -
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