UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________
`
`PALO ALTO NETWORKS, INC.,
`Petitioner,
`
`v.
`
`FINJAN, INC.,
`Patent Owner.
`
`____________________
`
`Case IPR2015-01974
`Patent 7,647,633
`
`__________________________________________________________
`
`PATENT OWNER’S OBJECTIONS TO EVIDENCE
`UNDER 37 C.F.R. § 42.64
`
`
`
`
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________
`
`PALO ALTO NETWORKS, INC.,
`Petitioner,
`
`v.
`
`FINJAN, INC.,
`Patent Owner.
`
`____________________
`
`Case IPR2015-01974
`Patent 7,647,633
`
`__________________________________________________________
`
`PATENT OWNER’S OBJECTIONS TO EVIDENCE
`UNDER 37 C.F.R. § 42.64
`
`
`
`
`
`Patent Owner’s Objections to Evidence
`IPR2015-01974 (U.S. Patent No. 7,647,633)
`
`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 the following
`
`documents submitted by Palo Alto Networks, Inc. (“Petitioner”) in Paper No. 1:
`
`• “Java Bytecode Modification and Applet Security” (“Shin”) as Ex. 1009
`
`• Webpage: Workshop and Miscellaneous Publications (“Author’s Webpage”)
`
`as Ex. 1006
`
`• Webpage: Filewatcher (“Filewatcher”) as Ex. 1007
`
`• “Kava – A Reflective Java Based on Bytecode Rewriting” (“Kava”) as Ex.
`
`1008
`
`• Affidavit of Chris Butler of Internet Archive (the “Butler I Affidavit”) as Ex.
`
`1095
`
`• “Poison Java” IEEE Spectrum (“Poison Java”) as Ex. 1004
`
`• 2015-09-10 Declaration of Gerard P. Grenier in support of the ‘Poison Java’
`
`Reference (the “Grenier Declaration”) as Ex. 1005
`
`• “Using Netscape 3” (“Brown”) as Ex. 1041
`
`• 2015-09-13 Declaration of Peter Kent (the “Kent Declaration”) as Ex. 1082
`
`• Affidavit of Chris Butler of Internet Archive (the “Butler II Affidavit”) as
`
`Ex. 1092
`
`• Affidavit of David Sherfesee of Alexa Internet (the “Sherfesee Affidavit”) as
`
`Ex. 1093
`
`1
`
`
`
`Patent Owner’s Objections to Evidence
`IPR2015-01974 (U.S. Patent No. 7,647,633)
`
`• Declaration of Dr. Aviel Rubin (the “Rubin Declaration”) (Exhibit 1002);
`
`and
`
`• Exhibits 1010, 1011, 1012, 1016, 1017, 1018, 1019, 1020, 1021, 1022, 1023,
`
`1034, 1035, 1044, 1045, 1046, 1047, 1048,1049, 1050, 1051, 1052, 1053,
`
`1054, 1055, 1056, 1057, 1058, 1059, 1060, 1061, 1062, 1063, 1064, 1065,
`
`1066, 1067, 1068, 1069, 1070, 1071, 1072, 1073, 1074, 1075, 1076, 1077,
`
`1078, 1079, 1080, 1081, 1083, 1084, 1085, 1086, 1087, and 1090.
`
`The Institution Decision issued on March 29, 2016. Paper No. 7. The Board
`
`instituted trial as to claims 14 and 19 based on Shin, Poison Java, and Brown. Id.
`
`Finjan’s objections are timely under 37 C.F.R. section 42.64(b)(1). Finjan serves
`
`Petitioner with these objections to provide notice that Finjan will move to exclude
`
`these exhibits as improper evidence.
`
`I.
`
`Shin (Ex. 1009)
`
`Finjan objects to the admissibility of Shin for at least the following reasons:
`
`Petitioner has failed to authenticate Shin under FRE 901 and FRE 602.
`
`Specifically, Petitioner has failed to establish that Shin is what Petitioner claims it
`
`is, and has failed to authenticate the date by which Shin was publicly accessible as
`
`a printed publication, either by examination of Shin on its face, or by Exhibits
`
`1006, 1007, 1008, 1093, and 1095. To the extent that Petitioner attempts to rely on
`
`the date that appears on Shin to establish public accessibility as a printed
`
`2
`
`
`
`Patent Owner’s Objections to Evidence
`IPR2015-01974 (U.S. Patent No. 7,647,633)
`
`publication, the date is hearsay under FRE 801 and is inadmissible under FRE
`
`802, and further, the date has not been authenticated and is inadmissible under
`
`FRE 901.
`
`Because of these deficiencies, Petitioner has failed to establish that Shin is a
`
`prior art printed publication. Additionally, Shin as improper prior art because it is
`
`not an enabling disclosure. Accordingly, Shin is not relevant under FRE 401 and
`
`is inadmissible under FRE 402 and FRE 403 because Petitioner has failed to
`
`establish that Shin is a prior art printed publication.
`
`II. Author’s Webpage (Ex. 1006)
`
`Finjan objects to the admissibility of the Author’s Webpage for at least the
`
`following reasons: Petitioner has failed to authenticate the Author’s Webpage
`
`under FRE 901 and FRE 602. Specifically, Petitioner has failed to establish that
`
`the Author’s Webpage is what Petitioner claims it is, and has failed to authenticate
`
`the Author’s Webpage. Petitioner has also failed to establish that the Shin
`
`reference cited in Author’s Webpage is the same Shin reference relied on by
`
`Petitioner. To the extent that Petitioner attempts to rely on the date that appears on
`
`the Author’s Webpage to establish public accessibility of Shin as a printed
`
`publication, the date is hearsay under FRE 801 and is inadmissible under FRE
`
`802, and further, the date has not been authenticated and is inadmissible under
`
`3
`
`
`
`Patent Owner’s Objections to Evidence
`IPR2015-01974 (U.S. Patent No. 7,647,633)
`
`FRE 901. Accordingly, for the foregoing reasons, the Author’s Webpage is not
`
`relevant under FRE 401 and is inadmissible under FRE 402 and FRE 403.
`
`III. Filewatcher (Ex. 1007)
`
`Finjan objects to the admissibility of the Filewatcher for at least the
`
`following reasons: Petitioner has failed to authenticate Shin through the
`
`Filewatcher under FRE 901 and FRE 602. Specifically, Petitioner has failed to
`
`establish that the Filewatcher is what Petitioner claims it is, and has failed to
`
`authenticate Filewatcher or that Shin was publicly available on the Filewatcher.
`
`Petitioner has also failed to establish that the Shin reference cited in Filewatcher is
`
`the same Shin reference relied on by Petitioner. To the extent that Petitioner
`
`attempts to rely on the date that appears on the Filewatcher to establish public
`
`accessibility of Shin as a printed publication, the date is hearsay under FRE 801
`
`and is inadmissible under FRE 802, and further, the date has not been
`
`authenticated and is inadmissible under FRE 901. Accordingly, for the foregoing
`
`reasons, the Filewatcher is not relevant under FRE 401 and is inadmissible under
`
`FRE 402 and FRE 403.
`
`IV. Kava (Ex. 1008)
`
`Finjan objects to the admissibility of Kava for at least the following reasons:
`
`Petitioner has failed to authenticate Kava under FRE 901 and FRE 602.
`
`Specifically, Petitioner has failed to establish that Kava is what Petitioner claims it
`
`4
`
`
`
`Patent Owner’s Objections to Evidence
`IPR2015-01974 (U.S. Patent No. 7,647,633)
`
`is, and has failed to authenticate Kava. Petitioner has also failed to establish that
`
`the Shin reference cited in Kava is the same Shin reference relied on by Petitioner.
`
`To the extent that Petitioner attempts to rely on the date that appears on Kava to
`
`establish public accessibility of Shin as a printed publication, the date is hearsay
`
`under FRE 801 and is inadmissible under FRE 802, and further, the date has not
`
`been authenticated and is inadmissible under FRE 901. Accordingly, for the
`
`foregoing reasons, Kava is not relevant under FRE 401 and is inadmissible under
`
`FRE 402 and FRE 403.
`
`V. Butler I Affidavit (Ex. 1095)
`
`Finjan objects to the admissibility of the Butler I Affidavit for at least the
`
`following reasons: Under FRE 702, Mr. Christopher Butler’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. Christopher Butler
`
`is unqualified as an expert to provide technical opinions of a person of skill in the
`
`art. As such, his opinions are inadmissible under FRE 702. Moreover, Petitioner
`
`has failed to authenticate Shin through the Butler I Affidavit or through his
`
`supporting Exhibit A under FRE 901 and FRE 602. Specifically, Petitioner has
`
`failed to establish that the Shin document referenced in the Butler I Affidavit is
`
`what Petitioner claims it is, and has failed to authenticate the date by which Shin
`
`was allegedly publicly accessible as a printed publication through the Butler I
`
`5
`
`
`
`Patent Owner’s Objections to Evidence
`IPR2015-01974 (U.S. Patent No. 7,647,633)
`
`Affidavit. To the extent that Petitioner attempts to rely on the date that appears in
`
`the Butler I Affidavit to establish public accessibility of Shin as a printed
`
`publication, the date is hearsay under FRE 801 and is inadmissible under FRE
`
`802, and further, the date has not been authenticated and is inadmissible under
`
`FRE 901.
`
`Finjan also objects because the Butler I Affidavit is hearsay under FRE 801
`
`and inadmissible under FRE 802. Accordingly, the Butler I Affidavit is not
`
`relevant under FRE 401 and is inadmissible under FRE 402 and FRE 403.
`
`VI. Poison Java (Ex. 1004)
`
`Finjan objects to the admissibility of Poison Java for at least the following
`
`reasons: Petitioner has failed to authenticate Poison Java under FRE 901 and FRE
`
`602. Specifically, Petitioner has failed to establish that Poison Java is what
`
`Petitioner claims it is, and has failed to authenticate the date by which Poison Java
`
`was publicly accessible as a printed publication, either by examination of Poison
`
`Java on its face, or by Exhibit 1005. To the extent that Petitioner attempts to rely
`
`on the date that appears on Poison Java to establish public accessibility as a printed
`
`publication, the date is hearsay under FRE 801 and is inadmissible under FRE
`
`802, and further, the date has not been authenticated and is inadmissible under
`
`FRE 901. Additionally, Finjan objects to Poison Java as improper prior art
`
`because it is not an enabling disclosure.
`
`6
`
`
`
`Patent Owner’s Objections to Evidence
`IPR2015-01974 (U.S. Patent No. 7,647,633)
`
`Because of these deficiencies, Petitioner has failed to establish that Poison
`
`Java is a prior art printed publication. Accordingly, Poison Java is not relevant
`
`under FRE 401 and is inadmissible under FRE 402 and FRE 403 because
`
`Petitioner has failed to establish that Poison Java is a prior art printed publication.
`
`VII. Grenier Declaration (Ex. 1005)
`
`Finjan objects to the admissibility of the Grenier Declaration for at least the
`
`following reasons: Petitioner has failed to authenticate Poison Java through the
`
`Grenier Declaration. Under FRE 702, Mr. Gerard Grenier’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. Gerard Grenier is
`
`unqualified as an expert to provide technical opinions of a person of skill in the art.
`
`As such, his opinions are inadmissible under FRE 702. Moreover, Petitioner has
`
`failed to authenticate Poison Java through the Grenier Declaration or through his
`
`supporting Exhibits A and B under FRE 901 and FRE 602. Specifically,
`
`Petitioner has failed to establish that the Poison Java document referenced in the
`
`Grenier Declaration is what Petitioner claims it is, and has failed to authenticate
`
`the date by which Poison Java was allegedly publicly accessible as a printed
`
`publication through the Grenier Declaration. To the extent that Petitioner attempts
`
`to rely on the date that appears in the Grenier Declaration to establish public
`
`accessibility of Shin as a printed publication, the date is hearsay under FRE 801
`
`7
`
`
`
`Patent Owner’s Objections to Evidence
`IPR2015-01974 (U.S. Patent No. 7,647,633)
`
`and is inadmissible under FRE 802, and further, the date has not been
`
`authenticated and is inadmissible under FRE 901.
`
`Finjan also objects because the Grenier Declaration is hearsay under FRE
`
`801 and inadmissible under FRE 802. Accordingly, the Grenier Declaration is not
`
`relevant under FRE 401 and is inadmissible under FRE 402 and FRE 403.
`
`VIII. Brown (Ex. 1041)
`
`Finjan objects to the admissibility of Brown for at least the following
`
`reasons: Petitioner has failed to authenticate Brown under FRE 901 and FRE 602.
`
`Specifically, Petitioner has failed to establish that Brown is what Petitioner claims
`
`it is, and has failed to authenticate the date by which Brown was publicly
`
`accessible as a printed publication, either by examination of Brown on its face, or
`
`by Exhibits 1082, 1092, and 1093. To the extent that Petitioner attempts to rely on
`
`the date that appears on Brown to establish public accessibility as a printed
`
`publication, the date is hearsay under FRE 801 and is inadmissible under FRE
`
`802, and further, the date has not been authenticated and is inadmissible under
`
`FRE 901. Additionally, Finjan objects to Brown as improper prior art because it is
`
`not an enabling disclosure.
`
`Because of these deficiencies, Petitioner has failed to establish that Brown is
`
`a prior art printed publication. Accordingly, Brown is not relevant under FRE 401
`
`8
`
`
`
`Patent Owner’s Objections to Evidence
`IPR2015-01974 (U.S. Patent No. 7,647,633)
`
`and is inadmissible under FRE 402 and FRE 403 because Petitioner has failed to
`
`establish that Brown is a prior art printed publication.
`
`IX. Kent Declaration (Ex. 1082)
`
`Finjan objects to the admissibility of the Kent Declaration for at least the
`
`following reasons: Under FRE 702, Mr. Peter Kent’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. Peter Kent is unqualified as an
`
`expert to provide technical opinions of a person of skill in the art. As such, his
`
`opinions are inadmissible under FRE 702. Moreover, Petitioner has failed to
`
`authenticate Brown through the Kent Declaration under FRE 901 and FRE 602.
`
`Specifically, Petitioner has failed to establish that the Brown document referenced
`
`in the Kent Declaration is what Petitioner claims it is, and has failed to authenticate
`
`the date by which Brown was allegedly publicly accessible as a printed publication
`
`through the Kent Declaration.
`
`Finjan also objects because the Kent Declaration is hearsay under FRE 801
`
`and inadmissible under FRE 802. Accordingly, the Kent Declaration is not
`
`relevant under FRE 401 and is inadmissible under FRE 402 and FRE 403.
`
`X. Butler II Affidavit (Ex. 1092)
`
`Finjan objects to the admissibility of Butler II Affidavit for at least the
`
`following reasons: Under FRE 702, Mr. Christopher Butler’s opinions are
`
`9
`
`
`
`Patent Owner’s Objections to Evidence
`IPR2015-01974 (U.S. Patent No. 7,647,633)
`
`inadmissible because they are conclusory, do not disclose underlying facts or data
`
`in support of his opinions, and are unreliable. Additionally, Mr. Christopher Butler
`
`is unqualified as an expert to provide technical opinions of a person of skill in the
`
`art. As such, his opinions are inadmissible under FRE 702. Moreover, Petitioner
`
`has failed to authenticate Brown through the Butler II Affidavit or through his
`
`supporting Exhibit A under FRE 901 and FRE 602. Specifically, Petitioner has
`
`failed to establish that the Brown document referenced in Butler II Affidavit is
`
`what Petitioner claims it is, and has failed to authenticate the date by which Brown
`
`was allegedly publicly accessible as a printed publication through Butler II
`
`Affidavit. Petitioner has also failed to establish that the Brown reference cited in
`
`Butler II Affidavit is the same Brown reference relied on by Petitioner. To the
`
`extent that Petitioner attempts to rely on the date that appears in Butler II Affidavit
`
`to establish public accessibility of Brown as a printed publication, the date is
`
`hearsay under FRE 801 and is inadmissible under FRE 802, and further, the date
`
`has not been authenticated and is inadmissible under FRE 901.
`
`Finjan also objects because Butler II Affidavit is hearsay under FRE 801
`
`and inadmissible under FRE 802. Accordingly, Butler II Affidavit is not relevant
`
`under FRE 401 and is inadmissible under FRE 402 and FRE 403.
`
`10
`
`
`
`Patent Owner’s Objections to Evidence
`IPR2015-01974 (U.S. Patent No. 7,647,633)
`
`XI. Sherfesee Affidavit (Ex. 1093)
`
`Finjan objects to the admissibility of the Sherfesee Affidavit for at least the
`
`following reasons: Under FRE 702, Mr. David Sherfesee’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. David Sherfesee is
`
`unqualified as an expert to provide technical opinions of a person of skill in the art.
`
`As such, his opinions are inadmissible under FRE 702. Moreover, Petitioner has
`
`failed to authenticate Shin and Brown through the Sherfesee Affidavit under FRE
`
`901 and FRE 602. Specifically, Petitioner has failed to establish that the Shin and
`
`Brown documents referenced in the Sherfesee Affidavit are what Petitioner claims
`
`they are, and has failed to authenticate the dates by which Shin and Brown were
`
`allegedly publicly accessible as a printed publications through the Sherfesee
`
`Affidavit.
`
`Finjan also objects because the Sherfesee Affidavit is hearsay under FRE
`
`801 and inadmissible under FRE 802. Accordingly, the Sherfesee Affidavit is not
`
`relevant under FRE 401 and is inadmissible under FRE 402 and FRE 403.
`
`XII. Rubin Declaration (Ex. 1002)
`
`Finjan objects to the admissibility of the Rubin Declaration for at least the
`
`following reasons: Under FRE 702, Dr. Aviel Rubin’s opinions are inadmissible
`
`because they are conclusory, do not disclose underlying facts or data in support of
`
`11
`
`
`
`Patent Owner’s Objections to Evidence
`IPR2015-01974 (U.S. Patent No. 7,647,633)
`
`his opinions, and are unreliable. Additionally, Dr. Aviel Rubin is unqualified as an
`
`expert to provide technical opinions of a person skilled in the art. See Ex. 1022
`
`(Curriculum Vitae of Dr. Aviel Rubin). Further, his opinions relating to the
`
`aforementioned exhibits is improper because these are not publicly available prior
`
`art. As such, his opinions are inadmissible under FRE 702.
`
`Finjan also objects because the Rubin Declaration is hearsay under FRE 801
`
`and inadmissible under FRE 802. Accordingly, the Rubin Declaration is not
`
`relevant, and his opinions are also irrelevant, confusing, and of minimal probative
`
`value under FRE 401, 402, and 403.
`
`XIII. Objections to Additional Exhibits Lacking Authentication
`
`In addition to the objections noted above, Finjan objects to Exhibits 1010,
`
`1011, 1012, 1016, 1017, 1018, 1019, 1020, 1021, 1022, 1023, 1044, 1045, 1046,
`
`1047, 1048,1049, 1050, 1051, 1052, 1053, 1054, 1055, 1056, 1057, 1058, 1059,
`
`1060, 1061, 1062, 1063, 1064, 1065, 1066, 1067, 1068, 1069, 1070, 1071, 1072,
`
`1073, 1074, 1075, 1076, 1077, 1078, 1079, and 1090 under FRE 901 because
`
`these exhibits lack authentication.
`
`XIV. Objections to Exhibits Based on Hearsay
`
`In addition to the objections noted above, Finjan objects to Exhibits 1043
`
`under FRE 802 because certain statements in these Exhibits that are relied upon in
`
`the Petition constitute inadmissible hearsay.
`
`12
`
`
`
`Patent Owner’s Objections to Evidence
`IPR2015-01974 (U.S. Patent No. 7,647,633)
`
`XV. Objections to Exhibits Based on Relevance
`
`In addition to the objections noted above, Finjan objects to Exhibits 1019,
`
`1034, 1035, 1044, 1045, 1046, 1047, 1048, 1049, 1050, 1051, 1052, 1053, 1054,
`
`1055, 1056, 1057, 1058, 1059, 1060, 1061, 1062, 1063, 1064, 1065, 1066, 1067,
`
`1068, 1069, 1070, 1071, 1072, 1073, 1074, 1075, 1076, 1077, 1078, 1079, 1080,
`
`1081, 1083, 1084, 1085, 1086, and 1087 as irrelevant under FRE 401–403 because
`
`Petitioner never relied on these Exhibits in the Petition.
`
`XVI. Conclusion
`
`Therefore, Finjan reserves its right to file motions to exclude these exhibit
`
`and evidence under 37 C.F.R. § 42.64(c).
`
`///
`
`///
`
`///
`
`
`
`13
`
`
`
`Patent Owner’s Objections to Evidence
`IPR2015-01974 (U.S. Patent No. 7,647,633)
`
`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
`
`Dated: April 12, 2016
`
`(Case No. IPR2015-01974)
`
`
`
`14
`
`
`
`Patent Owner’s Objections to Evidence
`IPR2015-01974 (U.S. Patent No. 7,647,633)
`
`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 12, 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:
`
`Jennifer Volk-Fortier
`COOLEY LLP
`One Freedom Square
`Reston Town Center
`11951 Freedom Drive
`Reston, Virginia 2019
`jvolkfortier@cooley.com
`zpatdcdocketing@cooley.com
`
`
`
`
`
`
`
`
`
`/James Hannah/
`
`James Hannah (Reg. No. 56,369)
`Kramer Levin Naftalis & Frankel LLP
`990 Marsh Road,
`Menlo Park, CA 94025
`(650) 752-1700
`
`15
`
`Orion Armon
`Brian Eutermoser
`COOLEY LLP
`380 Interlocken Crescent, Suite 900
`Broomfield, Colorado 80021
`oarmon@cooley.com
`beutermoser@cooley.com
`zpatdcdocketing@cooley.com
`
`Max Colice
`COOLEY LLP
`500 Boylston Street, 14th Floor
`Boston, Massachusetts 02116-3736
`mcolice@cooley.com
`zpatdcdocketing@cooley.com
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