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
`
`CONSOLIDATED FILING:
`
`PETITIONER’S OPPOSITION TO PATENT OWNER’S
`MOTION TO EXCLUDE PURSUANT TO 37 C.F.R. § 42.64(c)
`
`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
`
`CONSOLIDATED FILING:
`
`PETITIONER’S OPPOSITION TO PATENT OWNER’S
`MOTION TO EXCLUDE PURSUANT TO 37 C.F.R. § 42.64(c)
`
`1 Case IPR2016-00890 has been joined with the instant proceeding
`
`
`
`Case IPR 2015-01892
`U.S. Patent No. 8,677,494
`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`INTRODUCTION ...........................................................................................1
`
`PATENT OWNER WAIVED ANY OBJECTION TO THE
`ADMISSIBILITY OF SWIMMER AS PRIOR ART UNDER §102(A) .......2
`
`III. DR. HALL-ELLIS’S DECLARATIONS ESTABLISH THAT SWIMMER
`WAS PUBLICLY ACCESSIBLE IN DECEMBER 1995..............................3
`
`IV.
`
`THE EVIDENCE OVERWHELMINGLY ESTABLISHES THE
`ADMISSIBILITY OF SWIMMER.................................................................6
`
`A.
`
`B.
`
`SWIMMER IS AN AUTHENTIC DOCUMENT ................................7
`
`SWIMMER WAS PUBLICLY ACCESSIBLE LONG BEFORE THE
`‘494 PATENT .......................................................................................9
`
`PATENT OWNER’S CHALLENGES TO DR. DAVIDSON SHOULD BE
`DISREGARDED AS AN IMPROPER SUR-REPLY ..................................11
`
`PATENT OWNER’S “OUTSIDE THE SCOPE” ARGUMENTS ARE
`PLAINLY IMPROPER .................................................................................12
`
`V.
`
`VI.
`
`VII. CONCLUSION..............................................................................................15
`
`i
`
`
`
`Case IPR 2015-01892
`U.S. Patent No. 8,677,494
`
`TABLE OF AUTHORITIES
`
`CASES
`
`Actifio, Inc. v. Delphix Corp.,
`IPR2015-00034 (PTAB Apr. 26, 2016) ........................................................14
`
`Altaire Pharm., Inc. v. Pargaon Bioteck, Inc.,
`PGR2015-00011 (PTAB Nov. 14, 2016) ......................................................15
`
`ARRIS Group, Inc. v. C-Cation Technologies, LLC,
`IPR2015-00635 (PTAB Jul. 28, 2016)............................................................8
`
`Eastman Kodak Company v. CTP Innovations, LLC,
`IPR2014-00788 (PTAB Nov. 25, 2015)........................................................15
`
`EMC Corporation v. PersonalWeb Technologies, LLC,
`IPR2013-00084 (PTAB May 15, 2014) ..........................................................8
`
`FLIR Systems, Inc. v. Leak Surveys, Inc.,
`IPR2014-00411, (PTAB Sep. 3, 2015)..........................................................10
`
`In re Hall,
`781 F.2d 897 (Fed. Cir. 1986) .....................................................................4, 5
`
`Hayward Industries, Inc. v. Pentair Water Pool and Space, Inc., et al.,
`IPR2013-00285 (PTAB Nov. 19, 2014)........................................................12
`
`Honeywell International Inc., v. International Controls and Measurements
`Corp.,
`IPR2014-00219 (PTAB Apr. 1, 2015) ..........................................................13
`
`International Business Machines v. Intellectual Ventures II LLC,
`IPR2015-00092 (PTAB Apr. 25, 2016) ..........................................................3
`
`Kinetic Technologies, Inc. v. Skyworks Solutions, Inc.,
`IPR2014-00690 (PTAB Oct. 19, 2015).........................................................14
`
`Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co.,
`CBM2012-00002 (PTAB Jan. 23, 2014).......................................................12
`
`Motorola Mobility LLC v. Intellectual Ventures I LLC,
`CBM2015-00004 (PTAB Mar. 21, 2016) .................................................8, 12
`ii
`
`
`
`Case IPR 2015-01892
`U.S. Patent No. 8,677,494
`
`In re NTP, Inc.,
`654 F.3d 1279 (Fed. Cir. 2011) .......................................................................4
`
`Samsung Electronics Co., Ltd. v. Koninklijke KPN N.V.,
`IPR2016-00392 (PTAB Sep. 28, 2016)...........................................................4
`
`Symantec Corporation v. The Trustees of Columbia University
`in the City of New York,
`IPR2015-00372 (PTAB May 31, 2016) ....................................................7, 15
`
`TCL Corp. et al. v. Telefonaktiebolaget LM Ericsson,
`IPR2015-01584 (PTAB Mar. 7, 2016)............................................................7
`
`United States v. Turner,
`718 F.3d 226, 232 (3d Cir. 2013) ....................................................................7
`
`Valeo North America, Inc. v. Magna Electronics Inc.,
`IPR2014-01204 (PTAB Jan. 25, 2016) ...................................................3, 5, 7
`
`STATUTES AND RULES
`
`37 C.F.R. § 42.23 .....................................................................................................14
`
`37 C.F.R. § 42.64 .......................................................................................................3
`
`FRE 803(16).............................................................................................................10
`
`FRE 901 .....................................................................................................................7
`
`FRE 901(b)(4)............................................................................................................8
`
`FRE 901(b)(8)............................................................................................................8
`
`FRE 902(7).................................................................................................................8
`
`iii
`
`
`
`Exhibit No.
`Symantec 1001
`Symantec 1002
`
`Symantec 1003
`Symantec 1004
`
`Symantec 1005
`
`Symantec 1006
`Symantec 1007
`Symantec 1008
`Symantec 1009
`Symantec 1010
`Symantec 1011
`Symantec 1012
`Symantec 1013
`Symantec 1014
`
`Symantec 1015
`
`Symantec 1016
`
`Symantec 1017
`
`Symantec 1018
`
`Case IPR 2015-01892
`U.S. Patent No. 8,677,494
`
`LIST OF EXHIBITS
`
`Description
`U.S. Patent No. 8,677,494 to Edery et al. (“the ‘494 patent”)
`U.S. Provisional Application No. 60/030,639 (“the ‘639 pro-
`visional”)
`U.S. Patent No. 5,313,616 to David C. Cline et al. (“Cline”)
`A Sense of Self for Unix Processes, by Stephanie Forrest et
`al., Proceedings of the 1996 IEEE Symposium on Security
`and Privacy, IEEE Computer Society Press, 1996. (“Forrest”)
`Dynamic Detection and Classification of Computer Viruses
`Using General Behaviour Patterns, by Morton Swimmer et
`al., Virus Bulletin Conference, Virus Bulletin Ltd., September
`1995. (“Swimmer”)
`Declaration by Dr. Sylvia Hall-Ellis
`Curriculum Vitae of Dr. Sylvia Hall-Ellis
`Xplore Digital Library Database printout (Forrest)
`MARC record OCLC record number 34969890 (Forrest)
`1995 Virus Bulletin Proceedings
`MARC record OCLC record number 33834197 (Swimmer)
`U.S. Patent No. 5,623,600 to Shuang Ji et al. (“Ji”)
`U.S. Patent No. 6,092,194 (“the ‘194 patent”)
`Webster’s College Dictionary, 1999 Second Random House
`Edition, p. 339
`Ninth New Collegiate Dictionary, 1991 Merriam-Webster
`Inc., p. 325
`Webster’s New World Dictionary of Computer Terms, 4th Edi-
`tion 1992, Simon & Schuster, Inc., p. 95
`Joint Claim Construction and Pre-Hearing Statement, Dkt. No.
`68, Case No. 3:14cv2998
`Declaration of Jack Davidson in Support of Petition (“Da-
`vidson Dec.”)
`
`iv
`
`
`
`Exhibit No.
`Symantec 1019
`Symantec 1020
`Symantec 1021
`Symantec 1022
`Symantec 1023
`
`Symantec 1024
`
`Symantec 1025
`Symantec 1026
`Symantec 1027
`
`Symantec 1028
`Symantec 1029
`
`Symantec 1030
`
`Symantec 1031
`
`Symantec 1032
`
`Symantec 1033
`Symantec 1034
`
`Symantec 1035
`Symantec 1036
`
`Case IPR 2015-01892
`U.S. Patent No. 8,677,494
`
`Description
`Curriculum Vitae of Jack Davidson
`Advanced MS-DOS
`U.S. Patent No. 5,978,484 to Apperson et al. (“Apperson”)
`U.S. Patent No. 5,892,904 to Atkinson et al. (“Atkinson”)
`Efficient Software-Based Fault Isolation, by Robert Wahbe et
`al., ACM SIGOPS (Special Interest Group on Operating Sys-
`tems) Symposium on Operating Systems Principles, Decem-
`ber 1993
`Scott and Davidson, “Safe Virtual Execution Using Software
`Dynamic Translation”, 2002
`Affidavit of Alexander Walden
`Virus Bulletin Conference Proceedings Sept. 1995
`Declaration of Dr. Jack Davidson in Support of Petitioner’s
`Reply
`Updated Curriculum Vitae of Dr. Jack Davidson
`Selected Definitions from Microsoft Computer Dictionary 3rd
`Edition, 1997 (“MSCD”)
`D. Comer, “The Flat File Database Generator ffg”, Computer
`Science Technical Reports, Purdue University, 1981 (“Com-
`er”)
`G. Fowler, “cql - A flat file Database Query Language”, In
`Proceedings of the Winter 1994 USENIX Conference , San
`Francisco, California, Jan. 1994 (“Fowler”)
`D. Denning, “An intrusion detection model”, IEEE Transac-
`tions on Software Engineering, 13-2:222, Feb 1987 (“Den-
`ning”)
`Intel 8086 Family User’s Manual (“8086 Manual”)
`Transcript of Deposition of Dr. Medvidovic in IPR2015-
`01892 taken on Aug. 19, 2016
`U.S. Patent No. 5,398,196 (“the ‘196 patent”)
`A. Mounji et al. “Distributed Audit Trail Analysis”, In Pro-
`
`v
`
`
`
`Case IPR 2015-01892
`U.S. Patent No. 8,677,494
`
`Exhibit No.
`
`Symantec 1037
`Symantec 1038
`Symantec 1039
`
`Symantec 1040
`Symantec 1041
`Symantec 1042
`Symantec 1043
`Symantec 1044
`
`Symantec 1045
`
`Symantec 1046
`Symantec 1047
`Symantec 1048
`
`Description
`ceedings of the Internet Society Symposium on Network and
`Distributed System Security (ISOC'95), San Diego, Califor-
`nia, Feb 1995, IEEE (“Mounji”)
`Supplemental Declaration of Dr. Sylvia Hall-Ellis
`Declaration of Dr. Richard Ford
`Exhibit C to Declaration of Dr. Richard Ford - Excerpts from
`Virus Bulletin Conference Proceedings Sept. 1995
`Exhibit E to Declaration of Dr. Richard Ford – Photograph
`Declaration of Joseph Kiegel
`MARC Record - Denning
`MARC Record – Fowler
`Declaration of John Hawes of Virus Bulletin, dated October
`15, 2015
`Declaration of John Hawes of Virus Bulletin, dated October
`7, 2016
`The Delegates, 1995 Virus Bulletin International Conference
`Brochure - 1995 Virus Bulletin
`Virus Bulletin magazine, November 1995
`
`vi
`
`
`
`Case IPR2015-01892
`U.S. Patent No. 8,677,494
`
`I.
`
`INTRODUCTION
`
`Petitioner Symantec Corp. and Blue Coat Systems, Inc. (“Petitioner”) hereby
`
`opposes Patent Owner Finjan Inc.’s (“Patent Owner”) Motion to Exclude (Paper
`
`41, “Motion”). Patent Owner’s Motion is defective for a number of reasons. First,
`
`Patent Owner waived its right to object to the admissibility of the Swimmer refer-
`
`ence (Ex. 1005, “Swimmer”) as prior art under Section 102(a). Moreover, the evi-
`
`dence presented by Petitioner clearly establishes the authenticity and admissibility
`
`of Swimmer. Tellingly, Patent Owner has not offered any evidence to the contra-
`
`ry. Rather, the Motion selectively challenges some of Petitioner’s evidence, while
`
`wholly disregarding other key evidence demonstrating Swimmer’s admissibility.
`
`Second, Patent Owner’s accusations regarding the declarations of Petition-
`
`er’s technical expert, Dr. Davidson, lack merit. Indeed, this section of the Motion
`
`is an improper attempt by Patent Owner to reargue substantive issues and present a
`
`“sur-reply” to Petitioner’s Reply. Third, Patent Owner’s assertions concerning Pe-
`
`titioner’s reply exhibits are misplaced. It is well settled that such “outside-the-
`
`scope” arguments should not be raised in a motion to exclude. Moreover, here, the
`
`Board instructed Patent Owner to identify these issues in a separate 2-page list with
`
`no arguments. Paper 37. Thus, Patent Owner’s inclusion of these arguments in its
`
`Motion should be rejected for failing to comply with the Board’s Order. Id.
`
`Accordingly, Patent Owner’s Motion should be denied in its entirety.
`
`
`
`Case IPR2015-01892
`U.S. Patent No. 8,677,494
`PATENT OWNER WAIVED ANY OBJECTION TO THE ADMISSI-
`BILITY OF SWIMMER AS PRIOR ART UNDER §102(A)
`
`II.
`
`As set forth in the Petition, Swimmer is a printed publication, which quali-
`
`fies as prior art to the ’494 patent2 under both §102(b) and § 102(a). Pet. at 4-5.
`
`Swimmer was disseminated to the relevant public as part of the conference pro-
`
`ceedings (“VB Proceedings”) for a Virus Bulletin international conference held on
`
`September 20-22, 1995 (“September 1995 Conference”) and, therefore, it qualifies
`
`as prior art under § 102(b). Following the conference, Swimmer was included in a
`
`Virus Bulletin publication of the conference proceedings (“VB Publication”),
`
`which was made available to the general public through the library system by De-
`
`cember 1995 and, therefore, it also qualifies as prior art under § 102(a).
`
`After the Board instituted trial, Patent Owner filed evidentiary objections to
`
`the Petition (Paper 11, “Initial Objections”), but did not argue that Swimmer was
`
`not prior art under § 102(a). Rather, Patent Owner’s sole basis for objecting to the
`
`admissibility of Swimmer was that it is not prior art under § 102(b):
`
`Because of these deficiencies, Swimmer is not relevant under FRE
`401 and is inadmissible under FRE 402 and 403 because Petition-
`er has failed to establish that Swimmer is a prior art printed publi-
`cation under 35 U.S.C. § 102(b) (pre-AIA)
`
`Id. at 2 (emphasis in italics added).
`
`Any objections to a petition that are not filed within the required time period
`
`2 The ‘494 patent has an earliest possible priority date of November 8, 1996.
`
`2
`
`
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`Case IPR2015-01892
`U.S. Patent No. 8,677,494
`are waived and, therefore, cannot be relied upon in a motion to exclude. 37 C.F.R.
`
`§ 42.64; see also IPR2014-01204, Paper 52 at 8-22. The Board has made clear that
`
`a motion to exclude cannot raise any new objections or rely on new arguments or
`
`bases to support an objection that was previously asserted on different grounds.
`
`See, e.g., IPR2015-00092, Paper 44 at 55 (rejecting an argument to exclude a ref-
`
`erence as irrelevant on the basis that it was not prior art because “Patent Owner’s
`
`objection [in its motion to exclude] is not the same” as its initial relevance objec-
`
`tion and, therefore, had been waived).
`
`Patent Owner never argued that Swimmer is not a prior art under § 102(a),
`
`nor did it object to the relevance or admissibility of Swimmer on this basis.3 For
`
`this reason alone, the Board should reject Patent Owner’s challenges to Swimmer.
`
`III. DR. HALL-ELLIS’S DECLARATIONS ESTABLISH THAT SWIM-
`MER WAS PUBLICLY ACCESSIBLE IN DECEMBER 1995
`
`The Petition included a declaration from an expert librarian, Dr. Sylvia Hall-
`
`Ellis, who provided testimony and evidence in support of the public accessibility of
`
`Swimmer based on her 50+ years of experience with library cataloging systems,
`
`standards, and practices. Ex. 1006 at ¶¶ 2, 3, 5-14. Petitioner also provided a sup-
`
`plemental declaration by Dr. Hall-Ellis, which attached (as Exhibit D thereto) a
`
`3 Similarly, the Motion does not raise any evidentiary challenges to Exhibits 1026
`
`or 1028-1043 and, therefore, Patent Owner has waived any such objections.
`
`3
`
`
`
`Case IPR2015-01892
`U.S. Patent No. 8,677,494
`complete copy of the VB Publication held by and obtained from the University of
`
`Washington Library (“UWL”).4 Ex. 1037 at ¶ 9-17; see also Ex. 1026.
`
`Dr. Hall-Ellis testified that: (i) a MARC record corresponding to the VB
`
`Publication was created by a cataloger at UWL on December 1, 1995 (Ex. 1006 at
`
`¶19; Ex. 1037 at ¶ 18-20; Ex. 1011); and (ii) Exhibit 1026 is a copy of the VB Pub-
`
`lication held by UWL, which includes a UWL official date stamp of December 9,
`
`1995 (Ex. 1037 at ¶ 9-17; Ex. 1026 at 8); (iii) Exhibit 1005 is a true and correct
`
`copy of the Swimmer article that is included in the VB Publication (Ex. 1026), as
`
`well as in the VB Proceedings submitted as Ex. 1010 (Ex. 1006 at ¶ 18; Ex. 1037
`
`at ¶ 22; Ex. 1026 at 106-19; Ex. 1010 at 112-25); and (iv) Swimmer would have
`
`been available to the general public through the library system by December 1995
`
`(Ex. 1006 at ¶ 20; Ex. 1037 at ¶ 21-22). Thus, Dr. Hall-Ellis’ testimony, alone, is
`
`sufficient to demonstrate that Swimmer was publicly accessible by December
`
`1995. See, e.g., In re NTP, Inc., 654 F.3d 1279, 1294 (Fed. Cir. 2011) (“we have
`
`held in the past that ‘[c]ompetent evidence of general library practice may be relied
`
`upon to establish an approximate time when a [document] became available.’”)
`
`(quoting In re Hall, 781 F.2d 897, 899 (Fed. Cir. 1986)); IPR2016-00392, Paper 12
`
`4 Dr. Hall-Ellis’ supplemental declaration was timely-served as supplemental evi-
`
`dence in response to Patent Owner’s Initial Objections (see Paper 23 at 5-7), and
`
`subsequently filed with Patent Owner’s Reply (see Exs. 1037 and 1026).
`
`4
`
`
`
`Case IPR2015-01892
`U.S. Patent No. 8,677,494
`at 23-25 (finding the testimony of an “experienced academic librarian” sufficient to
`
`show that a journal was publicly accessible through the public library system).
`
`Significantly, Patent Owner provides no evidence whatsoever to refute Dr.
`
`Hall-Ellis’ testimony. Instead, Patent Owner asserts that her testimony should be
`
`excluded because she did not attend, or speak to anyone who attended, the Sep-
`
`tember 1995 Conference. Motion at 8-9. Patent Owner also argues that “the date
`
`on the MARC Record . . . does not indicate whether the Swimmer Document . . .
`
`was publicly available at the Virus Bulletin International Conference.” Id. at 8.
`
`This is a red herring. Dr. Hall-Ellis did not provide any factual testimony about the
`
`September 1995 Conference. Rather, as explained above (supra at 3-4), she of-
`
`fered expert testimony demonstrating that Swimmer was available to the general
`
`public through the library system by December 1995.
`
`Patent Owner’s reliance on Kyocera and SRI Int’l is equally misplaced.
`
`These cases do nothing to support Patent Owner’s assertion that “actual” or “per-
`
`sonal” knowledge “is the requirement for establishing that a document was public-
`
`ly accessible.” Motion at 8-9. In fact, it is well settled that such “first-hand” or
`
`“actual” knowledge is not required to prove public accessibility. See, e.g., In re
`
`Hall, 781 F.2d at 899; IPR2014-01204, Paper 52 at 13-14, 18-19.
`
`Patent Owner further argues that Dr. Hall-Ellis failed to establish a connec-
`
`tion between the MARC record (Ex. 1011) and Swimmer. Motion at 9. This is
`
`5
`
`
`
`Case IPR2015-01892
`U.S. Patent No. 8,677,494
`simply not true. As discussed above (supra at 4), Dr. Hall-Ellis explained the
`
`fields of the MARC record make clear that it was created by UWL cataloger on
`
`December 1, 1995 and corresponds to the copy of the VB Publication obtained
`
`from the UWL (Ex. 1026). Dr. Hall-Ellis also confirmed that the copy of Swim-
`
`mer in Ex. 1026 is the same as in Exs. 1005 and 1010. Tellingly, Patent Owner
`
`does not point to a single difference between any of these copies of Swimmer.
`
`Thus, there can be no real dispute that Swimmer was available to the public from
`
`the UWL more than 10 months before the date of the ’494 patent.
`
`IV. THE EVIDENCE OVERWHELMINGLY ESTABLISHES THE AD-
`MISSIBILITY OF SWIMMER
`
`Patent Owner asserts that Swimmer should be excluded “as unauthenticated,
`
`hearsay, and irrelevant.” Motion at 10. In so doing, Patent Owner appears to con-
`
`fuse and conflate the issue of authentication with the issue of public accessibility.
`
`Id. at 10-12 (“Petitioner failed to authenticate the Swimmer Document as a docu-
`
`ment that was publicly available in 1995.”). Similarly, with respect to hearsay, Pa-
`
`tent Owner merely argues that the copyright date on Swimmer does not prove it
`
`was publicly accessible. Id. at 12-13. In turn, Patent Owner’s conclusion that
`
`Swimmer is “irrelevant” and “inadmissible” is based solely on its argument that
`
`“Petitioner fail[ed] to establish it was available as prior art.” Id. at 13.
`
`Despite Patent Owner’s attempt to couch these as separate “evidentiary” ob-
`
`jections, they boil down to a single argument, namely: Swimmer is not relevant be-
`
`6
`
`
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`Case IPR2015-01892
`U.S. Patent No. 8,677,494
`cause Petitioner did not prove it was publicly accessible before the ’494 patent.
`
`This is not an evidentiary issue – it is a substantive issue that should be addressed
`
`in the parties’ main briefs. 5 See, e.g., IPR2014-01204, Paper 52 at 20-21 (“Re-
`
`garding relevance, Patent Owner contends that Petitioner has failed to establish
`
`that Broggi was published or made publically accessible prior to the [date of the]
`
`patent . . . Patent Owner’s argument is unpersuasive in that it challenges the suffi-
`
`ciency of the evidence rather than the admissibility.”); IPR2015-01584, Paper 18 at
`
`4. Patent Owner’s challenges to Swimmer are, therefore, improper.
`
`Moreover, and more importantly, the evidence in this proceeding over-
`
`whelmingly demonstrates that Swimmer is an authentic document that was made
`
`available to the public long before the date of the ’494 patent.
`
`A.
`
`SWIMMER IS AN AUTHENTIC DOCUMENT
`
`Authentication is an evidentiary requirement to provide a foundation that a
`
`document is what it purports to be. See FRE 901. It is well settled that “[t]he
`
`standard for authenticating evidence is ‘slight’ and may be satisfied by ‘evidence
`
`sufficient to support a finding that the item is what the proponent claims it is.”
`
`United States v. Turner, 718 F.3d 226, 232 (3d Cir. 2013); see also IPR2015-
`
`00372, Paper 57 at 29. Here, Petitioner’s evidence clearly demonstrates that
`
`5 Indeed, the parties have already addressed this public accessibility issue at-length
`
`in their respective briefs. See Pet. at 4-5; POR at 5, 16-18; Reply at 23-25.
`
`7
`
`
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`Case IPR2015-01892
`U.S. Patent No. 8,677,494
`Swimmer is an authentic document published by Virus Bulletin in 1995.
`
`Each page of Swimmer (Ex. 1005) indicates that the document was copy-
`
`righted by Virus Bulletin Ltd. in 1995 and published at the September 1995 Con-
`
`ference. Ex. 1005 at 1. Similarly, the VB Proceedings (Ex. 1010) and VB Publi-
`
`cation (Ex. 1026) both: (i) include Virus Bulletin’s official logos; (ii) state that the
`
`document was published by Virus Bulletin in 1995; (iii) list Swimmer in the table
`
`of contents; and (iv) contain a full copy of the Swimmer article that is identical to
`
`(and even has the same pagination as) the copy of Swimmer in Ex. 1005. Ex. 1010
`
`at 1-2, 13-14, 112-125; Ex. 1026 at 1-2, 4-5, 106-119. Thus, the appearance and
`
`contents of these exhibits bear the hallmarks of authentic documents published by
`
`a well-known organization, i.e., Virus Bulletin, in 1995. See FRE 901(b)(4) &
`
`902(7); IPR2013-00084, Paper 64 at 50-51; IPR2015-00635, Paper 55 at 36-37.
`
`Moreover, Swimmer is authentic and admissible as an “ancient document.”
`
`Under FRE 901(b)(8), a document qualifies as an “ancient document,” if it: (i) “is
`
`at least 20 year old”; (ii) “was in a place where, if authentic, it would likely be”;
`
`and (iii) “is in a condition that creates no suspicion about its authenticity.” See
`
`FRE 901(b)(8); see also IPR2015-00635, Paper 55 at 36; CBM2015-00004, Paper
`
`33 at 17-18. Here, Swimmer clearly meets these three requirements. First, Swim-
`
`mer was published in September 1995 and cataloged by the UWL on December 1,
`
`1995, both of which are more than 20 years ago. See, e.g., Ex. 1005 at 1; Ex. 1026
`
`8
`
`
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`Case IPR2015-01892
`U.S. Patent No. 8,677,494
`at 4-5,106-19; Ex. 1010 at 13-14, 112-25; Ex. 1011; Ex. 1006 at ¶ 6-12, 19; Ex.
`
`1037 at ¶ 9-13; Ex. 1044 at ¶ 3. Second, Swimmer was in a place it would likely
`
`be (e.g., held at a public university library and also maintained at Virus Bulletin’s
`
`offices). See, e.g., Ex. 1006 at ¶ 18-19; Ex. 1037 at ¶ 9-22; Ex. 1026 at 8, 2-3, 333;
`
`Ex. 1044 at ¶ 3-4. Lastly, Patent Owner has not argued (nor can it) that the condi-
`
`tion of Swimmer raises any doubts regarding its authenticity.
`
`In addition, Petitioner provided a declaration from the current Chief of Op-
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`erations at Virus Bulletin, Mr. Hawes. Ex. 1044. Among other things, Mr. Hawes
`
`confirmed that Swimmer was disseminated at the September 1995 Conference and
`
`then included in Virus Bulletin publication that was made available for sale to the
`
`public following the conference. Ex. 1044 at ¶ 3-4. Mr. Hawes also attached a
`
`copy of the Swimmer paper that has been maintained by Virus Bulletin in the ordi-
`
`nary course of its business, and which is identical to the copy of Swimmer in Ex.
`
`1005. Ex. 1044 at ¶ 3-4, Ex. A. Thus, Mr. Hawes’ testimony clearly establishes
`
`that Swimmer is an authentic document.
`
`B.
`
`SWIMMER WAS PUBLICLY ACCESSIBLE LONG BEFORE
`THE ‘494 PATENT
`
`Patent Owner incorrectly asserts that “the Swimmer Document should be
`
`excluded as irrelevant, because Petitioner fails to establish it was available as prior
`
`art.” Motion at 13-14. Swimmer was disseminated at the Virus Bulletin interna-
`
`tional conference held on September 20-22, 1995. As explained above, this is
`
`9
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`
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`Case IPR2015-01892
`U.S. Patent No. 8,677,494
`clearly demonstrated by the documents themselves. Ex. 1005 at 1; Ex. 1026 at 1, 5;
`
`Ex. 1010 at 1-10. Moreover, this was also confirmed by Virus Bulletin’s Chief of
`
`Operations, Mr. Hawes, who testified that the Swimmer article was made available
`
`and distributed to 163 attendees at the September 1995 Conference. Ex. 1044 at
`
`¶ 3, Ex. A.6 Thus, the evidence demonstrates that Swimmer was disseminated to
`
`the relevant public at the conference in September 1995, and was then made avail-
`
`able to the general public through the library system by December 1995. See supra
`
`at 3-6, 7-9; Ex. 1006 at ¶ 18-20; Ex. 1037 at ¶ 19-22; Ex. 1011; Ex. 1026 at 2, 8.
`
`Instead of offering any evidence to support its allegations, Patent Owner
`
`merely argues that the 1995 copyright date on Swimmer is hearsay and that the
`
`dates shown on the Virus Bulletin documents are insufficient, by themselves, to
`
`prove public accessibility. Motion at 11-13. Patent Owner’s arguments miss the
`
`mark for a number of reasons. First, as explained above, Swimmer and the Virus
`
`Bulletin documents qualify as “ancient documents” and, therefore, the dates on
`
`these documents fall within an exception to hearsay. See FRE 803(16); supra at 8-
`
`9. Second, the Board has held that a copyright date is evidence that the document
`
`was published by at least December 31st of that year. IPR2014-00411, Paper 9 at
`
`6 This is further confirmed by the supplemental declaration of Mr. Hawes, which
`
`was timely served by Petitioner as supplemental evidence in response to Patent
`
`Owner’s objections to the Reply. Ex. 1045 at ¶4-6 & Exs. 1046-1048.
`
`10
`
`
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`Case IPR2015-01892
`U.S. Patent No. 8,677,494
`18-19. Thus, here, the copyright date establishes that Swimmer was published by
`
`at least December 31, 1995, which is still 10 months before the date of the ’494 pa-
`
`tent. Moreover, and more importantly, Petitioner is not relying solely on the dates
`
`on these documents; rather, it provided numerous other exhibits – including testi-
`
`mony from an expert librarian and a Virus Bulletin executive – that clearly demon-
`
`strate Swimmer was publicly accessible in 1995.
`
`V.
`
`PATENT OWNER’S CHALLENGES TO DR. DAVIDSON SHOULD
`BE DISREGARDED AS AN IMPROPER SUR-REPLY
`
`Patent Owner asserts that Dr. Davidson’s two expert declarations should be
`
`excluded in their entirety. Motion at 5-7. Notably, however, Patent Owner does
`
`not challenge Dr. Davidson’s qualifications as an expert. Rather, Patent Owner
`
`merely argues that his testimony is “conclusory” and “unreliable” under FRE 702
`
`because he did not disclose the underlying facts or data supporting his opinions.
`
`Id. at 5. This is simply not true. Dr. Davidson provides detailed discussions and
`
`explanations – spanning more than 160 pages – concerning the state of the art, the
`
`knowledge of a person of ordinary skill in the art, the ‘494 patent, and the asserted
`
`prior art references. Exs. 1018, 1027. Dr. Davidson also cites to and discusses
`
`more than 15 exhibits and other background references to further support his
`
`statements and opinions. Thus, Patent Owner’s objections have no merit.7
`
`7 As the authority cited in Patent Owner’s Motion makes clear, these arguments, at
`
`11
`
`
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`Case IPR2015-01892
`U.S. Patent No. 8,677,494
`Moreover, these three pages of the Motion consist almost entirely of sub-
`
`stantive arguments regarding the teachings of Swimmer, the proper construction of
`
`claim terms, and the knowledge of a person of ordinary skill in the art. According-
`
`ly, this section appears to be nothing more than an improper attempt by Patent
`
`Owner to reargue the merits of various substantive disputes under the guise of “ev-
`
`identiary” objections to Dr. Davidson’s testimony. The Board has made clear that
`
`“a motion to exclude … is not an opportunity to file a sur-reply” and that motions
`
`“contain[ing] such improper arguments … in the nature of a sur-reply” should be
`
`denied. See, e.g., CBM2012-00002, Paper 66 at 62, 70; IPR2013-000285, Paper
`
`31 at 3 (“a Motion to Exclude that contests the merits of an opponent’s response . .
`
`. is not appropriate.”).
`
`VI. PATENT OWNER’S “OUTSIDE THE SCOPE” ARGUMENTS ARE
`PLAINLY IMPROPER
`
`Patent Owner devotes approximately five pages of its Motion to arguing
`
`why 13 of the 18 exhibits submitted with Petitioner’s Reply should be excluded for
`
`being outside the scope of a reply under 37 C.F.R. § 42.61. Motion at 1-5, 13-14.
`
`The Board has made clear, however, that such “outside-the-scope” arguments are
`
`not evidentiary in nature and, therefore, should not be included in a motion to ex-
`
`best, go to the weight of Dr. Davidson’s expert testimony – not its admissibility.
`
`Motion at 5; see also, CBM2015-00004, Paper 33 at 10-11.
`
`12
`
`
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`Case IPR2015-01892
`U.S. Patent No. 8,677,494
`clude. See, e.g., IPR2014-00219, Paper 38, at 1-2 (expunging the motion to ex-
`
`clude). Thus, these sections of the Motion should be rejected as improper.
`
`Moreover, here, Patent Owner previously contacted the Board and requested
`
`authorization to submit a separate paper addressing its “outside-the-scope” objec-
`
`tions. Email dated October 23, 2016. The Board granted the request and instruct-
`
`ed Patent Owner to submit a 2-page paper containing a list of citations to the Reply
`
`and exhibits. Paper 37. Importantly, the Board explicitly stated that Patent Owner
`
`should not include any arguments. Id. Thus, Patent Owner’s decision to present
`
`these arguments in its Motion (while cross-referencing its 2-page paper) should be
`
`rejected as a blatant attempt to circumvent the Board’s October 26th Order.
`
`Additionally, to the extent the Board decides to consider these sections of
`
`the Motion, Patent Owner’s “outside-the-scope” arguments lack merit. For exam-
`
`ple, in its Response, Patent Owner asserted that “Swimmer . . . was not publically
`
`accessible” (POR at 16), that Petitioner did not provide evidence from anyone who
`
`attended the conference (POR at 5, 17), and that Dr. Hall-Ellis did not have “per-
`
`sonal knowledge” about the creation of the MARC record by, and availability of
`
`the VB Publication at, the UWL (POR at 18). To rebut these arguments, Petitioner
`
`provided additional declarations and exhibits in its Reply.
`
`Specifically, as discussed above (supra at 3-4, fn. 4), Petitioner submitted a
`
`supplemental declaration by Dr. Hall-Ellis, which included the UWL copy of the
`
`13
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`
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`Case IPR2015-01892
`U.S. Patent No. 8,677,494
`VB Publication. (Ex. 1037, together with Ex. 1026). Curiously, Patent Owner’s
`
`Motion completely ignores this evidence and merely asserts that it is untimely.
`
`Motion at 1-3, 13-14, fn. 4. Both Patent Owner and the Board, however, have
`
`agreed that this supplemental evidence was timely. Paper 23 at 5-7. Thus, Patent
`
`Owner’s attempt to reargue this issue is plainly improper.
`
`Patent Owner also provided a declaration by Dr. Richard Ford (Ex. 1038, to-
`
`gether with Exs. 1005, 1010, 1039, 1040, 1044), who personally attended the Sep-
`
`tember 1995 Conference and still has, in his possession, a copy of the VB Proceed-
`
`ings binder, including Swimmer, that he received at the conference. Ex. 1038 at
`
`¶ 2, 12-15; Ex. A (Ex. 1010). In addition, Petitioner submitted a declaration from
`
`Dr. Joseph Kiegel (Ex. 1041), who has worked in the UWL cataloging department
`
`for over 30 years, and confirmed that the MARC record corresponding to Ex. 1026
`
`was created by a UWL cataloger on December 1, 1995 and, therefore, Swimmer
`
`would have been available to the general public at that time. Ex. 1041 at ¶ 4-7.
`
`Accordingly, these exhibits are proper reply evidence within the scope of 37
`
`C.F.R. § 42.23(b). See also, IPR2015-00034, Paper 63 at 46-47 (Petitioner may
`
`submit additional evidence of public accessibility [in its reply] based on differ-
`
`ences in standard of proof between institution and trial); IPR2014-00690, Paper 43
`
`at 17 (“Petitioner was entitled to rebut Patent Owner’s arguments concerning the
`
`public accessibility of LT1932 in its Reply with Mr. Reimund’s Declaration”);
`
`14
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`
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`Case IPR2015-01892
`U.S. Patent No. 8,677,494
`IPR2014-00788, Paper 35 at 19-20. Likewise, Petitioner’s other reply exhibits
`
`(i.e., Exs. 1027, 1029-33, and 1035-36) are directly responsive to specific argu-
`
`ments raised in the Patent Owner Response and are entirely consistent with the ar-
`
`gume
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