UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________
`
`
`SYMANTEC CORP., and
`BLUE COAT SYSTEMS, INC.,
`Petitioner,
`
`v.
`
`FINJAN, INC.,
`Patent Owner.
`
`____________________
`
`Case IPR2015-018921
`U.S. Patent No. 8,677,494
`
`__________________________________________________________
`
`PATENT OWNER’S REPLY TO PETITIONER’S OPPOSITION TO
`PATENT OWNER’S MOTION TO EXCLUDE
`
`
`1 Case IPR2016-00890 has been joined with the instant proceeding.
`
`
`
`
`
`__________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________
`
`
`SYMANTEC CORP., and
`BLUE COAT SYSTEMS, INC.,
`Petitioner,
`
`v.
`
`FINJAN, INC.,
`Patent Owner.
`
`____________________
`
`Case IPR2015-018921
`U.S. Patent No. 8,677,494
`
`__________________________________________________________
`
`PATENT OWNER’S REPLY TO PETITIONER’S OPPOSITION TO
`PATENT OWNER’S MOTION TO EXCLUDE
`
`
`1 Case IPR2016-00890 has been joined with the instant proceeding.
`
`
`
`
`
`
`Introduction
`
`I.
`
`
`
`Patent Owner’s Reply ISO Motion to Exclude
`IPR2015-01892 (U.S. Patent No. 8,677,494)
`
`The Board should grant Patent Owner’s Motion to Exclude (“Motion,” Paper
`
`41) for the reasons set forth below and in the Motion.
`
`II. The Board Should Exclude Exhibits Exs. 1026, 1027, 1030-1032 and
`1036-1043 As Outside the Proper Scope of Reply.
`
`The new evidence Petitioner introduced in its Reply should be excluded.
`
`Motion at 2–5. “[T]he expedited nature of IPRs bring with it an obligation for
`
`petitioners to make their case in their petition to institute” unlike in district courts
`
`where “parties have greater freedom to revise and develop their arguments over
`
`time.” Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369–
`
`70 (Fed. Cir. 2016). Indeed, contrary to Petitioner’s assertions, the Federal Circuit
`
`recognizes the appropriateness and timeliness of Patent Owner’s request here:
`
`“[Patent Owner] may move to exclude evidence, whether as improper under the
`
`response-only regulation, under the Trial Practice Guide’s advice, or on other
`
`grounds.” Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1081 (Fed. Cir. 2015).
`
`First, Petitioner claims that the newly filed evidence submitted with its
`
`Reply was to rebut Patent Owner’s arguments, but does not dispute that this
`
`information was available at the time it filed the Petition. Petitioner cannot explain
`
`away the new evidence it cites in order to cure deficiencies in its Petition. See
`
`Motion at 1–5. This is further exemplified by Petitioner’s admission that it had
`
`considered Exhibits 1030 – 1032 and 1036 prior to filing its Petition, but failed to
`
`1
`
`
`
`
`submit these exhibits at the time of its Petition. Instead, Petitioner tried to sandbag
`
`Patent Owner’s Reply ISO Motion to Exclude
`IPR2015-01892 (U.S. Patent No. 8,677,494)
`
`Patent Owner with new references and arguments that Patent Owner has
`
`prejudicially had no opportunity to substantively respond to. Motion at 3–4.
`
`Second, Petitioner should have been well aware that Patent Owner would
`
`challenge any date for the Swimmer document that Petitioner planned to rely on
`
`based on Patent Owner’s objections to evidence. Motion at 2-4. Accordingly, at
`
`the very least, the Ford, Kiegel, and Hawes Declarations and supporting exhibits
`
`could have been served as supplemental evidence.
`
`Therefore, the Board should exercise its discretion in excluding Exs. 1026,
`
`1027, 1030-1032 and 1036-1043.
`
`III. The Board Should Exclude Davidson’s Declarations (Exs. 1018 and
`1027).
`
`The Board should exclude Dr. Davidson’s testimony because his opinions
`
`are unreliable and conclusory. See Motion at 5–7. Indeed, Petitioner does not
`
`dispute that Dr. Davidson’s testimony is unreliable because Dr. Davidson’s
`
`testimony is directly contradicted by Petitioner’s definition of “database.”
`
`Compare id. with Petitioner’s Opposition (Paper 48) at 11–12. Thus, the Board
`
`should exclude Exhibits 1018 and 1027.
`
`2
`
`
`
`Patent Owner’s Reply ISO Motion to Exclude
`IPR2015-01892 (U.S. Patent No. 8,677,494)
`
`
`IV. Petitioner Narrowly Represents Patent Owner’s Objections and
`Swimmer Should Be Excluded.
`
`As an initial matter, Patent Owner’s objections to evidence include
`
`objections to the Swimmer Document (Ex. 1005), which indicates objections based
`
`on authentication, hearsay, and lack of personal knowledge. See Paper 11 at 2. In
`
`fact, Patent Owner specifically references its objections relating to the Swimmer’s
`
`alleged “public accessibility as a printed publication.” Id. Notwithstanding the
`
`foregoing, Petitioner disregards and fails to address Patent Owner’s multiple
`
`reasons for seeking to exclude Swimmer. Thus, for this reason alone, and those set
`
`forth in its Motion, the Swimmer Document should be excluded. Motion at 10-14.
`
`V. The Board Should Exclude the Hall-Ellis Declarations (Exhibits 1006
`and 1037).
`
`The Board should exclude both Hall-Ellis declarations, and at the very least,
`
`Exhibit 1037 because it was untimely for the reasons explained above. As a
`
`preliminary matter, it is Petitioner’s burden to demonstrate the veracity of Dr.
`
`Hall-Ellis’ statements and thus, Petitioner’s contention that “Patent Owner
`
`provides no evidence whatsoever to refuse Dr. Hall-Ellis’ testimony” is
`
`misleading. Petitioner’s Opposition at 5. Moreover, Dr. Hall-Ellis repeatedly
`
`admitted that she lacked personal knowledge regarding the public availability of
`
`the Swimmer Document. Motion at 8–10. Her opinions, therefore, are conclusory
`
`and unreliable. Id. at 7-10.
`
`3
`
`
`
`Patent Owner’s Reply ISO Motion to Exclude
`IPR2015-01892 (U.S. Patent No. 8,677,494)
`
`
`Furthermore, and tellingly, Petitioner claims that “Dr. Hall-Ellis confirmed
`
`that the copy of Swimmer in Ex. 1026 is the same as in Exs. 1005 and 1010” but
`
`fails to point to any support in either her declarations or deposition testimony to
`
`confirm its representation. Compare Petitioner’s Opposition at 6 with Motion at 9.
`
`For these reasons, and those set forth in the Motion, the Hall-Ellis
`
`Declarations should be excluded.
`
`VI. The Board Should Exclude the Newly Filed Hawes Declaration and
`Supporting Exhibits (Exhibits 1044 – 1048).
`
`Petitioner’s newly filed Hawes Declaration and supporting exhibits should
`
`be excluded as being untimely. Although Petitioner knew that Patent Owner was
`
`challenging the public availability of the Swimmer Document, Petitioner waited
`
`until its Opposition to Patent Owner’s Motion to Exclude before filing these
`
`exhibits. The Board should not condone Petitioner’s gamesmanship of submitting
`
`five new exhibits, which once again, could have been filed with its Petition, and at
`
`the very latest, with its Reply. Incredibly, Mr. Hawes’ first declaration is dated in
`
`October 2015 (Ex. 1044) and Mr. Hawes admitted that the exhibits in his second
`
`declaration (Ex. 1045) could have been included with his first declaration and in
`
`fact, certain of the exhibits are stored with and contained in the same manual as the
`
`exhibits to his first declaration. Ex. 2042, Hawes Rough Tr. at 34:4–20. Thus,
`
`Exhibits 1044–1048 should be excluded because Petitioner’s reliance is highly
`
`prejudicial to Patent Owner. Fed. R. Evid. 403.
`
`4
`
`
`
`Patent Owner’s Reply ISO Motion to Exclude
`IPR2015-01892 (U.S. Patent No. 8,677,494)
`
`
`Moreover, the Hawes Declaration (Ex. 1045) and exhibits should be
`
`excluded because they are hearsay. In fact, contrary to Petitioner’s representations,
`
`Mr. Hawes did not “testif[y] that the Swimmer article was made available and
`
`distributed to 163 attendees at the September 1995 Conference.” Petitioner’s
`
`Opposition at 10. Rather, Mr. Hawes admitted during deposition that the “163
`
`attendees” in Exhibit A to his declaration were only registered delegates for which
`
`there is no confirmation of whether they even attended the conference.2 Ex. 2042,
`
`Hawes Rough Tr. at 22:15–23: 2. Thus, for the foregoing reasons, the Hawes
`
`Declarations should be excluded.
`
`VII. Conclusion
`For the foregoing reasons, the Board should grant Patent Owner’s Motion to
`
`Exclude.
`
`
`
`
`
`
`2 Petitioner only relies on Exhibit 1045 in support of its statement that “the
`
`Swimmer article was made available and distributed to 163 attendees at the
`
`September 1995 Conference.” Petitioner’s Opposition at 10.
`
`5
`
`
`
`
`
`Dated: December 2, 2016
`
`Patent Owner’s Reply ISO Motion to Exclude
`IPR2015-01892 (U.S. Patent No. 8,677,494)
`
`Respectfully submitted,
`
`
`
`
`
`/James Hannah/
`
`James Hannah (Reg. No. 56,369)
`jhannah@kramerlevin.com
`Kramer Levin Naftalis & Frankel LLP
`990 Marsh Road
`Menlo Park, CA 94025
`Tel: 650.752.1700 Fax: 650.752.1800
`
`
`
`Jeffrey Price (Reg. No. 69,141)
`jprice@kramerlevin.com
`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)
`mkim@finjan.com
`Finjan, Inc.
`2000 University Ave., Ste. 600
`E. Palo Alto, CA 94303
`Tel: 650.397.9567
`
` (Case No. IPR2015-01892) Attorneys for Patent Owner
`
`
`
`6
`
`
`
`
`
`
`
`Patent Owner’s Reply ISO Motion to Exclude
`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 Reply to Petitioner’s Opposition to
`
`Patent Owner’s Motion to Exclude was served on December 2, 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 and Joinder
`
`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
`
`7
`
`Joseph J. Richetti
`BRYAN CAVE LLP
`1290 Avenue of the Americas
`New York, NY 10104
`joe.richetti@bryancave.com
`
`
`
`Michael T. Rosato
`Andrew S. Brown
`WILSON SONSINI GOODRICH
`& ROSATI
`701 Fifth Ave., Ste. 5100
`Seattle, WA 98104
`mrosato@wsgr.com
`asbrown@wsgr.com
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