UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`Palo Alto Networks, Inc.
`Petitioner
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`v.
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`Finjan, Inc.
`Patent Owner
`
`Case IPR2015-019741
`Patent No. 7,647,633 B2
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`
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`Petitioner’s Objections to Evidence Under 37 C.F.R. § 42.64
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`1 Case IPR2016-00480 has been joined with this proceeding.
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
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`Palo Alto Networks, Inc.
`Petitioner
`
`v.
`
`Finjan, Inc.
`Patent Owner
`
`Case IPR2015-019741
`Patent No. 7,647,633 B2
`
`
`
`Petitioner’s Objections to Evidence Under 37 C.F.R. § 42.64
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`1 Case IPR2016-00480 has been joined with this proceeding.
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`Petitioner’s Objections to Evidence
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`IPR2015-01974 (U.S. Patent No. 7,647,633)
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`Petitioner Palo Alto Networks, Inc. (“Petitioner”) objects under the Federal
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`Rules of Evidence and 37 C.F.R. § 42.64(b)(1) to the admissibility of the following
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`exhibits submitted by Finjan, Inc. (“Patent Owner”) in support of its Patent Owner
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`Response: Ex. 2019, the Declaration of Dr. Michael Goodrich (“Goodrich
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`Declaration”); Ex. 2020, the Declaration of Dr. Harry Bims (“Bims Declaration”);
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`Ex. 2021, the Declaration of S.H. Michael Kim (“Kim Declaration”); Ex. 2004,
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`verdict form in Finjan, Inc. v. Blue Coat Systems, Inc., Case No. 13-cv-03999-BLF
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`(N.D. Cal.); Ex. 2007, Declaration of Dr. Peter Reiher in Support of Blue Coat’s
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`Responsive Claim Construction Brief in Finjan, Inc. v. Blue Coat Systems, Inc.,
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`Case No. 13-cv-03999-BLF (N.D. Cal.); Ex. 2018, Blue Coat’s Responsive Claim
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`Construction Brief in Finjan, Inc. v. Blue Coat Systems, Inc., Case No. 13-cv-
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`03999-BLF (N.D. Cal.); Ex. 2012, Finjan’s Trial Exhibit PTX-45 from Finjan, Inc.
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`v. Blue Coat Systems, Inc., Case No. 13-cv-03999-BLF (N.D. Cal.); Ex. 2014,
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`Finjan’s Trial Exhibit PTX-200 from Finjan, Inc. v. Blue Coat Systems, Inc., Case
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`No. 13-cv-03999-BLF (N.D. Cal.); Ex. 2016, Finjan’s Trial Exhibit PTX-204 from
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`Finjan, Inc. v. Blue Coat Systems, Inc., Case No. 13-cv-03999-BLF (N.D. Cal.);
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`Ex. 2027, trial transcript excerpts from Finjan, Inc. v. Blue Coat Systems, Inc.,
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`Case No. 13-cv-03999-BLF (N.D. Cal.); Ex. 2028, Finjan, Inc. v. Secure
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`Computing Corporation, et al., Civil Action No. 06-369-GMS (D. Del.), Dkt. No.
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`305; Ex. 2029, Finjan, Inc. v. Secure Computing Corporation, et al., Civil Action
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`1
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`Petitioner’s Objections to Evidence
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`IPR2015-01974 (U.S. Patent No. 7,647,633)
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`No. 06-369-GMS (D. Del.), Dkt. No. 284; Ex. 2037, Finjan’s Trial Exhibit PTX-36
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`from Finjan, Inc. v. Secure Computing Corporation, et al., Civil Action No. 06-
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`369-GMS (D. Del.); Ex. 2030, Appendix B to Finjan’s Disclosure of Asserted
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`Claims and Infringement Contentions in Finjan, Inc. v. Websense, Inc., Case No.
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`13-cv-04398 (N.D. Cal.) (“Websense claim chart”); Ex. 2032, Appendix B to
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`Finjan’s Disclosure of Asserted Claims and Infringement Contentions in Finjan,
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`Inc. v. Proofpoint Technologies, Inc., et al., Case No. 13-cv-05808 (N.D. Cal.)
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`(“Proofpoint claim chart”); and Ex. 2048, Finjan’s First Supplemental Objections
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`and Responses to Defendant Blue Coat Systems, Inc.’s Third Set of Interrogatories
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`in Finjan, Inc. v. Proofpoint Technologies, Inc., et al., Case No. 13-cv-05808 (N.D.
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`Cal.).
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`Patent Owner served its Patent Owner’s Response on August 9, 2016. Paper
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`No. 22. Petitioner’s objections are timely under 37 C.F.R. § 42.64(b)(1). By
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`serving these objections on Patent Owner, Petitioner reserves its right to file
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`motions to exclude these exhibits under 37 C.F.R. § 42.64(c).
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`I.
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`GOODRICH DECLARATION (EX. 2019)
`Petitioner objects to the admissibility of the Goodrich Declaration under
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`FRE 702 and 703 because it contains opinions that are conclusory, does not
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`disclose supporting facts or data, is based on unreliable facts, data, or methods,
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`and/or includes testimony outside the scope of Dr. Goodrich’s specialized
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`2
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`Petitioner’s Objections to Evidence
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`IPR2015-01974 (U.S. Patent No. 7,647,633)
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`knowledge that will not assist the trier of fact. For example, Dr. Goodrich relies on
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`the Bims Declaration and other unspecified documents for his opinions concerning
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`secondary considerations. See, e.g., Ex. 2019 at ¶57. Dr. Goodrich’s opinions are
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`not based on sufficient facts or data, are not the product of reliable principles and
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`methods, and will not assist the trier of fact because Dr. Goodrich provides no
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`support for these opinions and because the subject of the testimony is not within
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`the scope of Dr. Goodrich’s alleged expertise. Dr. Goodrich is also unqualified as
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`an expert to provide opinions from the perspective of a person of ordinary skill in
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`the art, rendering the Goodrich Declaration inadmissible under FRE 702. The
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`Goodrich Declaration also contains opinions that are irrelevant, confusing, and of
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`minimal probative value under FRE 401, 402, and 403.
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`II. BIMS DECLARATION (EX. 2020)
`Petitioner objects to the admissibility of the Bims Declaration under FRE
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`702 and 703 because it contains opinions that are conclusory, do not disclose
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`supporting facts or data, and/or are based on unreliable facts, data, or methods. For
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`example, Dr. Bims opines on the alleged obviousness of the ’633 patent without
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`considering a number of relevant factors, including but not limited to the scope and
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`content of the prior art and any alleged differences between the claimed invention
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`and the prior art. As another example, Dr. Bims opines that certain Websense and
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`Proofpoint products are covered by claims of the ’633 patent based on his review
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`3
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`Petitioner’s Objections to Evidence
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`IPR2015-01974 (U.S. Patent No. 7,647,633)
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`of Patent Owner’s made-for-litigation infringement contentions. See, e.g., Ex.
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`2020, ¶¶ 28-29. Accordingly, the opinions contained in the Bims Declaration are
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`not based on sufficient facts or data, are not the product of reliable principles and
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`methods, and should therefore be excluded under FRE 702 and 703. Dr. Bims is
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`also unqualified as an expert to provide opinions from the perspective of a person
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`of ordinary skill in the art, rendering the Bims Declaration inadmissible under FRE
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`702. The Bims Declaration also contains opinions that are irrelevant, confusing,
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`and of minimal probative value under FRE 401, 402, and 403. Finally, the Bims
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`Declaration relies on exhibits that are inadmissible and unreliable for the reasons
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`set forth below.
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`III. KIM DECLARATION (EX. 2021)
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`Petitioner objects to the Kim Declaration because it does not introduce
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`evidence of Mr. Kim’s personal knowledge of the subject matter of the testimony
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`contained therein, rendering such testimony inadmissible under FRE 602. For
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`example, the Kim Declaration states that Mr. Kim has been IP counsel at Patent
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`Owner since March 2015, yet Mr. Kim testifies regarding events that occurred
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`before that date without showing how Mr. Kim gained personal knowledge of
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`those events. In addition, the Kim Declaration contains testimony regarding the
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`terms of several Patent Owner license agreements, but Mr. Kim was not part of the
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`4
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`Petitioner’s Objections to Evidence
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`IPR2015-01974 (U.S. Patent No. 7,647,633)
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`negotiation or execution of the licenses. The Kim Declaration produces no
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`evidence of Mr. Kim’s personal knowledge of these licenses.
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`The Kim Declaration is also inadmissible hearsay under FRE 801 and 802.
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`The Kim Declaration is also inadmissible under FRE 401, 402, and 403 as
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`irrelevant, prejudicial, misleading, and of minimal probative value.
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`Petitioner also objects to the admissibility of the Kim Declaration under FRE
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`702. The Kim Declaration offers inadmissible expert testimony because the
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`opinions contained in his Declaration are conclusory, do not disclose supporting
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`facts or data, and are biased and unreliable, and because the Kim Declaration
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`provides no basis to support Mr. Kim’s qualifications as an expert. Accordingly,
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`Mr. Kim’s opinions are inadmissible under FRE 702.
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`IV. BLUE COAT VERDICT FORM (EX. 2004)
`Petitioner objects to the admissibility of the verdict form filed in Finjan, Inc.
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`v. Blue Coat Systems, Inc., Case No. 13-cv-03999-BLF (N.D. Cal.) under FRE
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`401, 402, 403, and 703. Patent Owner improperly relies on the verdict form in the
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`Blue Coat case as evidence of alleged copying, despite the fact that the verdict
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`form shows, at most, that the jury found claim 14 of the ’633 patent to be infringed
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`only under the doctrine of equivalents. Accordingly, it is irrelevant, confusing, of
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`minimal probative value, and not the type of evidence reasonably relied upon by an
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`5
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`Petitioner’s Objections to Evidence
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`IPR2015-01974 (U.S. Patent No. 7,647,633)
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`expert or person of ordinary skill during the relevant time period. The Blue Coat
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`verdict form is also inadmissible hearsay under FRE 801 and 802.
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`V. BLUE COAT CLAIM CONSTRUCTION BRIEF AND REIHER DECLARATION
`(EXS. 2007 AND 2018)
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`Petitioner objects to the admissibility of Blue Coat’s responsive claim
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`construction brief and supporting declaration of Dr. Peter Reiher filed in Finjan,
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`Inc. v. Blue Coat Systems, Inc., Case No. 13-cv-03999-BLF (N.D. Cal.) under FRE
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`401, 402, 403, and 703. Blue Coat’s claim construction arguments and the
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`opinions of its expert are irrelevant, confusing, of minimal probative value, and not
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`the type of evidence reasonably relied upon by an expert in the field. The claim
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`construction brief and the Reiher declaration are also inadmissible hearsay under
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`FRE 801 and 802.
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`VI. BLUE COAT TRIAL EXHIBITS (EXS. 2012, 2014, AND 2016)
`Petitioner objects to the admissibility of three trial exhibits admitted in
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`Finjan, Inc. v. Blue Coat Systems, Inc., Case No. 13-cv-03999-BLF (N.D. Cal.)
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`under FRE 401, 402, 403, and 703. Patent Owner improperly relies on trial
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`exhibits from the Blue Coat case as evidence of alleged copying, despite the fact
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`that none of the exhibits relate to the ’633 patent. Accordingly, the exhibits are
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`irrelevant, confusing, of minimal probative value, and not the type of evidence
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`reasonably relied upon by an expert in the relevant field. The Blue Coat trial
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`exhibits are also inadmissible hearsay under FRE 801 and 802.
`6
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`Petitioner’s Objections to Evidence
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`IPR2015-01974 (U.S. Patent No. 7,647,633)
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`VII. BLUE COAT TRIAL TESTIMONY (EX. 2027)
`Petitioner objects to the admissibility of trial transcript excerpts from Finjan,
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`Inc. v. Blue Coat Systems, Inc., Case No. 13-cv-03999-BLF (N.D. Cal.) under FRE
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`401, 402, 403, and 703. Trial testimony from the Blue Coat case is irrelevant,
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`confusing, of minimal probative value, and not the type of evidence reasonably
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`relied upon by an expert in the field. The trial transcript is also inadmissible
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`hearsay under FRE 801 and 802.
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`VIII. SECURE COMPUTING LITIGATION DOCUMENTS (EX. 2028, 2029, AND 2037)
`Petitioner objects to the admissibility of the district court’s order on post-
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`trial motions, Finjan’s post-trial brief, and a trial exhibit from Finjan, Inc. v.
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`Secure Computing Corporation, et al., Civil Action No. 06-369-GMS (D. Del.)
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`under FRE 401, 402, 403, and 703. Finjan relies on documents from an action
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`involving different patents and different defendants as evidence of alleged copying.
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`Accordingly, this evidence is irrelevant, confusing, of minimal probative value,
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`and not the type of evidence reasonably relied upon by an expert in the field.
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`Finjan’s post-trial brief (Ex. 2029) and trial exhibit (Ex. 2037) are also
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`inadmissible hearsay under FRE 801 and 802.
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`IX. WEBSENSE AND PROOFPOINT CLAIM CHARTS (EXS. 2030 AND 2032)
`Petitioner objects to the admissibility of the Websense and Proofpoint Claim
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`Charts under FRE 401, 402, 403, and 703. Patent Owner improperly relies on the
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`7
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`Petitioner’s Objections to Evidence
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`IPR2015-01974 (U.S. Patent No. 7,647,633)
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`claim charts to support its arguments concerning alleged nexus between the claims
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`of the ’633 patent and Patent Owner’s licensing program and alleged commercial
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`success of products purportedly covered by the claims of the ’633 patent. Patent
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`Owner’s made-for-litigation infringement contentions do not prove infringement
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`and do not establish nexus, and are therefore irrelevant, of no probative value, and
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`not the type of evidence reasonably relied upon by a person of ordinary skill during
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`the relevant time period. The claim charts are also inadmissible hearsay under
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`FRE 801 and 802 and lack authentication under FRE 901.
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`X.
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`FINJAN INTERROGATORY RESPONSES (EX. 2048)
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`Petitioner objects to the admissibility of Finjan’s interrogatory responses in
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`the Blue Coat litigation under FRE 401, 402, 403, and 703. Patent Owner
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`improperly relies on a claim chart in its interrogatory responses as evidence of
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`alleged copying. Patent Owner’s made-for-litigation interrogatory responses do
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`not prove that Finjan practiced the claims of the ’633 patent and do not establish
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`nexus, and are therefore irrelevant, of no probative value, and not the type of
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`evidence reasonably relied upon by a person of ordinary skill during the relevant
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`time period. The claim charts are also inadmissible hearsay under FRE 801 and
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`802 and lack authentication under FRE 901.
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`8
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`Dated: August 16, 2016
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`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Ave., NW, Suite 700
`Washington, DC 20004
`Tel: (703) 456-8000
`Fax: (202) 842-7899
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`Petitioner’s Objections to Evidence
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`IPR2015-01974 (U.S. Patent No. 7,647,633)
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`Respectfully submitted,
`COOLEY LLP
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`By:
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`/Orion Armon/
`Orion Armon
`Reg. No. 65,421
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`9
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`Petitioner’s Objections to Evidence
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`IPR2015-01974 (U.S. Patent No. 7,647,633)
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on August 16,
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`2016, a complete and entire copy of this Petitioner’s Objections to Evidence
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`Under 37 C.F.R. § 42.64, was served by filing this document through the Patent
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`Review Processing System and via electronic mail upon the following counsel of
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`Jeffrey H. Price
`KRAMER LEVIN NAFTALIS &
`FRANKEL LLP
`1177 Avenue of the Americas
`New York, NY 10036
`Phone: (212) 715-7502
`Fax: (212) 715-8302
`jprice@kramerlevin.com
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`By:
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`
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`/Orion Armon/
`Orion Armon
`Reg. No. 65,421
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`record for Patent Owner:
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`
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`James Hannah
`KRAMER LEVIN NAFTALIS &
`FRANKEL LLP
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`990 Marsh Road
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`Menlo Park, CA 94025
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`Phone: (650) 752-1712
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`Fax: (650) 752-1812
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`jhannah@kramerlevin.com
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`Michael Kim
`Finjan, Inc.
`2000 University Ave., Ste. 600
`E. Palo Alto, CA 94303
`Phone: 650.397.9567
`mkim@finjan.com
`USPTO Reg. No. 40,450
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