UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`PALO ALTO NETWORKS, INC.,
`Petitioner,
`
`
`v.
`
`FINJAN, INC.,
`Patent Owner.
`____________________
`
`Case IPR2015-019741
`U.S. Patent No. 7,647,633
`
`__________________________________________________________
`
`PATENT OWNER’S MOTION TO EXCLUDE EVIDENCE
`
`
`
` 1
`
` Case IPR2016-00480 has been joined with this proceeding.
`
`
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`PALO ALTO NETWORKS, INC.,
`Petitioner,
`
`
`v.
`
`FINJAN, INC.,
`Patent Owner.
`____________________
`
`Case IPR2015-019741
`U.S. Patent No. 7,647,633
`
`__________________________________________________________
`
`PATENT OWNER’S MOTION TO EXCLUDE EVIDENCE
`
`
`
` 1
`
` Case IPR2016-00480 has been joined with this proceeding.
`
`
`
`
`
`Patent Owner’s Motion to Exclude Evidence
`IPR2015-01974 (U.S. Patent No. 7,647,633)
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`Pursuant to 37 C.F.R. § 42.64, Patent Owner Finjan, Inc. (“Patent Owner”)
`
`hereby moves to exclude the following evidence submitted in this proceeding by
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`Petitioner Palo Alto Networks, Inc. and Blue Coat Systems, Inc. (“Petitioner”):
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`1002, 1004, 1005, 1006, 1007, 1008, 1009, 1041, 1082, 1092, 1093, 1095, 1099,
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`1101, 1035. The Board should grant Patent Owner’s Motion to Exclude Evidence
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`for the reasons set forth below.
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`Patent Owner timely raised the objections set forth in this Motion to
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`Exclude. On April 12, 2016, Patent Owner timely filed its objections to the
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`evidence in Petitioner’s Petition. Paper 10 (objecting to Exs. 1002, 1004, 1005,
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`1006, 1007, 1008, 1009, 1041, 1082, 1092, 1093, 1095). On November 10, 2016,
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`Patent Owner timely filed its objections to the evidence in Petitioner’s Reply.
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`Paper 33 (objecting to Exs.1099, 1101, 1035).
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`I.
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`The Board Should Exclude Dr. Rubin’s Claim Construction Testimony
`(Ex. 1002)
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`The testimony of Dr. Rubin regarding claim construction (¶¶ 79-93) should
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`be excluded because Petitioner characterized those opinions as irrelevant and did
`
`not permit Patent Owner to question Dr. Rubin regarding those opinions, rendering
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`them irrelevant, conclusory and unreliable. Fed. R. Evid. 702; Fed. R. Evid. 401;
`
`Fed. R. Evid. 402; Intellectual Ventures Mgmt., LLC v. Xilink, Inc., Case IPR2012-
`
`00020, Paper 34 at 10 (P.T.A.B. Feb. 11, 2014) (stating that an expert’s
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`“conclusory testimony is entitled to little or no weight.”); Tietex Int’l, Ltd. v.
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`1
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`Patent Owner’s Motion to Exclude Evidence
`IPR2015-01974 (U.S. Patent No. 7,647,633)
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`Precision Fabrics. Grp., Inc., Case IPR2014-01248, Paper 39 at 17 (P.T.A.B. Jan.
`
`27, 2016) (a lack of objective support for an expert opinion “may render the
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`testimony of little probative value in [a patentability] determination.”) (quoting
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`Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir.
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`1985).
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`Specifically, Petitioner argued during the deposition of Dr. Rubin that his
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`opinions on claim construction, in particular those regarding Claim 14 of the ‘633
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`Patent, were outside the scope of his declaration and irrelevant. Ex. 2022 at 93:7-
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`94:12, 107:4-11. Petitioner specifically instructed Dr. Rubin not to answer
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`questions regarding his opinion on claim construction. Ex. 2022 at 91:13-15.
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`Because of Petitioner’s direction to Dr. Rubin not to answer questions regarding
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`claim construction and objections to his opinions as being beyond the scope of the
`
`Petition and his declaration, Dr. Rubin’s opinions regarding claim construction
`
`should be given no weight. Praxair Distribution, Inc. v. INO Therapeutics LLC,
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`IPR2015-00529, Paper 33 at 2 (P.T.A.B. Dec. 22, 2015) (declarations are accorded
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`little or no weight if there has not been a fair opportunity to challenge the
`
`testimony). To provide a proper invalidity opinion, an expert “must identify each
`
`claim element, state the witnesses’ interpretation of the claim element, and explain
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`in detail how each claim element is disclosed in the prior art reference.” Schumer
`
`v. Lab. Computer Sys., Inc., 308 F.3d 1304, 1315-1316 (Fed. Cir. 2002). Thus, Dr.
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`2
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`Patent Owner’s Motion to Exclude Evidence
`IPR2015-01974 (U.S. Patent No. 7,647,633)
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`Rubin’s testimony should be excluded because Petitioner’s refusal to allow Dr.
`
`Rubin to answer questions regarding claim construction render his invalidity
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`analysis improper. Moreover, Dr. Rubin’s declaration should be given no weight
`
`because Petitioner argues (via its objections) that Dr. Rubin did not provide a claim
`
`construction opinion in his declaration.
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`Accordingly, Dr. Rubin’s testimony should be given no weight and excluded
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`in these proceedings. At the very least, the Board should exclude paragraphs 79-93
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`of Exhibit 1002 as unreliable.
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`II. The Board Should Exclude the Grenier Declaration (Ex. 1005)
`The Board should exclude the Grenier Declaration (Ex. 1005) for lack of
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`personal knowledge, authentication and relevance. Fed. R. Evid. 602, 901, 401,
`
`402. Mr. Grenier purports to authenticate a version of Poison Java that he obtained
`
`from the IEEE Xplore website in September 2015. However, Mr. Grenier
`
`admitted that the earliest this version of Poison Java could have been publicly
`
`available is at least May 2000 when IEEE Digital Explore was launched. Ex.
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`2023, Grenier Tr. at 34:12 – 18. A May 2000 (or later) version of Poison Java is
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`irrelevant to these proceedings, as Petitioner is relying on a purported August 31,
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`1999 version of Poison Java. Petition at 4. The May 2000 version is after the
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`priority date of all challenged claims, as admitted by Petitioner. Id. Therefore, Mr.
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`
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`3
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`Patent Owner’s Motion to Exclude Evidence
`IPR2015-01974 (U.S. Patent No. 7,647,633)
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`Grenier’s testimony has no relevance to the prior art at issue, and should be
`
`excluded. Fed. R. Evid. 401, 402.
`
`Mr. Grenier’s Declaration also should be excluded for lack of foundation
`
`and personal knowledge. Specifically, Mr. Grenier admits he was never involved
`
`with the printed version of the IEEE magazine (alleged to be the source of Poison
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`Java), and he based his statement that the Poison Java document was available as
`
`of August 31, 1999 on a magazine that Petitioner has not produced. Ex. 2023,
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`Grenier Tr. at 33:5–34:11. Accordingly, Mr. Grenier’s testimony should be
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`excluded under FRE 602 as not based on “personal knowledge of the matter.”
`
`III. The Board Should Exclude Ex. 1006 (“Author’s Webpage”)
`The Board should exclude the Author’s Webpage based on lack of
`
`authentication, because it is hearsay, and because it is not relevant. Fed. R. Evid.
`
`901, 801, 802, 401, 402, 403. Specifically, Petitioner relies on a date on Ex. 1006
`
`to attempt to establish that the Shin Document (Ex. 1009) was publicly accessible.
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`Paper 1 at 5; Paper 31 at 9. However, such a date lacks independent authentication
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`and cannot demonstrate that the Shin Document was publicly accessible. Fed. R.
`
`Evid. 901; see, e.g., TRW Automotive U.S. LLC v. Magna Elecs. Inc., Case
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`IPR2014-01347, Paper 25 at 5–12 (P.T.A.B. Jan. 6, 2016). Further, the alleged
`
`publication date is hearsay because Petitioner relies on the date to prove the truth
`
`of the matter asserted—that the Shin Document was publicly accessible as of 1998.
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`4
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`Patent Owner’s Motion to Exclude Evidence
`IPR2015-01974 (U.S. Patent No. 7,647,633)
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`Fed. R. Evid. 801, 802. There is also nothing tying together the hyperlink
`
`identified in Ex. 1006 and the Shin Document (Ex. 1009) relied on by Petitioner.
`
`Accordingly, Ex. 1006 is not relevant under FRE 401 – 402 to establish the date of
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`Shin or for any other purpose. Thus, the Board should exclude Ex. 1006.
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`IV. The Board Should Exclude Webpage – Filewatcher (Ex. 1007)
`The Board should exclude Ex. 1007 for lack of authentication and because it
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`is hearsay and not relevant. Fed. R. Evid. 901, 801 – 802, 401 – 403. Ex. 1007 is
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`an obscure FTP page that Petitioner alleges demonstrates that the Shin Document
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`was publicly available and cataloged as of July 27, 1998. Petition at 5; Reply at 9.
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`Ex. 1007 cannot authenticate when the Shin Document was publicly accessible
`
`because there is nothing tying the purported links in Ex. 1007 with the Shin
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`Document that Petitioner relies on. Indeed, there is no evidence that the link was
`
`actually available as of July 27, 1998, let alone that the link leads to the Shin
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`Document Petitioner relies on. Nor is there any indication that the Shin Document
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`was cataloged based on Ex. 1007.
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`Further, the July 27, 1998 date on Ex. 1007 is hearsay because Petitioner is
`
`relying on it for the truth of the matter asserted, i.e., that the Shin Document was
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`available as of a certain date. Fed. R. Evid. 801 (Hearsay is an out-of-court
`
`statement offered to prove the truth of the matter asserted.); Hilgraeve, Inc. v.
`
`Symantec Corp., 271 F. Supp. 2d 964, 974 and n.4 (E.D. Mich. 2003) (“Plaintiff
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`
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`5
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`Patent Owner’s Motion to Exclude Evidence
`IPR2015-01974 (U.S. Patent No. 7,647,633)
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`correctly notes that the dates imprinted on these documents are hearsay when
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`offered to prove the truth of the matter asserted, that is, that SAM 1.3 was
`
`accessible to the public as of the date set forth on the documents”) (citing Fed. R.
`
`Evid. 801(c)) (citations omitted).
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`Accordingly, the Board should exclude Ex. 1007 because it has no relevance
`
`under FRE 401 – 402 as to whether the Shin Document was publicly available and
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`because it is hearsay.
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`V. The Board Should Exclude the Kava Paper (Ex. 1008)
`The Board should exclude the Kava Paper and any reliance therein for lack
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`of authentication and relevance. Fed. R. Evid. 901, 401 – 403. Specifically,
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`Petitioner attempts to rely on the Kava Paper to establish that the Shin Document
`
`was publicly available as of 1999. See Paper 31 at 9. However, there is no
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`indication that the purported Shin reference cited in the Kava Paper is the same
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`Shin Document that Petitioner relies on in this proceeding. Therefore, the Kava
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`Paper is not relevant under FRE 401–402.
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`VI. The Board Should Exclude the Kent Declaration (Ex. 1082)
`The Board should exclude the Kent Declaration (Ex. 1082) for lack of
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`personal knowledge. Petitioner relies on Ex. 1082 to attempt to establish when the
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`Brown Document was publicly available, yet, Mr. Kent was relying on an entirely
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`different, pre-published version of Brown in his declaration. Ex. 2024, Kent Tr. at
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`
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`6
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`Patent Owner’s Motion to Exclude Evidence
`IPR2015-01974 (U.S. Patent No. 7,647,633)
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`22:9–25. Accordingly, because the Kent Declaration does not purport to
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`authenticate the actual Brown Document that Petitioner relies on (Ex. 1041) it is
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`not relevant under FRE 401–402. Thus, the Board should exclude the testimony of
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`Mr. Kent.
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`VII. The Board Should Exclude the Sherfesee Affidavit (Ex. 1093)
`The Board should exclude the Sherfesee Affidavit (Ex. 1093) because of Mr.
`
`Sherfesee’s lack of personal knowledge and because it is hearsay. Fed. R. Evid.
`
`602, 802. Specifically, Mr. Sherfesee lacks personal knowledge regarding Alexa’s
`
`web crawling function because he never worked directly with Alexa’s web
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`crawling function in the relevant time frame of the prior art at issue. Ex. 2049,
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`(“Sherfesee Tr.”) at 22:20–23:10. Rather, Mr. Sherfesee began his work as a
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`server engineer at Alexa in 2000, and then only indirectly worked with Alexa by
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`incorporating information that was already gathered from the web crawling
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`function. Sherfesee Tr. at 11:22 – 12:10 (“I developed services that relied on the
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`data that was retrieved by the web crawler, but I was not involved in the web
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`crawling technology.”). Mr. Sherfesee’s opinions were based merely on hearsay.
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`Sherfesee Tr. at 19:3 – 17 (“I was not directly involved, so that’s mostly just based
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`on conversations overheard, processes that were in place, and anything that
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`happened prior to my arrival in 2000 just could be based on assurances from other
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`7
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`Patent Owner’s Motion to Exclude Evidence
`IPR2015-01974 (U.S. Patent No. 7,647,633)
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`staff members. But obviously I wasn’t there in ’96 so I had no direct
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`observations.”).
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`For all the reasons discussed, and because the Sherfesee Affidavit is from an
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`entirely different proceeding, the Board should exclude the Sherfesee Affidavit
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`because it is not relevant under Fed. R. Evid. 401 and Fed. R. Evid. 402, is hearsay
`
`under FRE 802 and is not based on personal knowledge (FRE 602).
`
`VIII. The Board Should Exclude the Butler Affidavits (Exs. 1092, 1095)
`The Board should exclude the Butler Affidavits and any reliance therein for
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`lack of personal knowledge, authentication and relevance. Mr. Butler lacked
`
`personal knowledge of the existence of the Shin and Brown documents.
`
`Significantly, Mr. Butler only identified the existence of certain webpages. See
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`Ex. 1092 at 3. He did not click on any of the links identified in Ex. 1092, Ex. A to
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`verify that what is contained in the hyperlinks themselves were publicly available.
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`Ex. 2025, Butler Tr. at 23:22 – 24 (stating that he does not recall clicking on any of
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`the hyperlinks identified on page 3); Exhibit 1092, Butler Affidavit at Ex. A; Ex.
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`2025, Butler Tr. at 21:13-15. Further, the links identified in Exs. 1092 and 1095
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`were provided to Mr. Butler, and have no bearing on the ability to locate the
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`documents contained in his affidavits. Ex. 2025, 21:25-22:7; 24:19-25 (stating that
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`the URLs were provided to him in 2015). Therefore, the Board should exclude
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`Exs. 1092 and 1095 under FRE 401, 402 and 602.
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`8
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`Patent Owner’s Motion to Exclude Evidence
`IPR2015-01974 (U.S. Patent No. 7,647,633)
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`IX. The Board Should Exclude Portions of Exs. 1099, 1101, 1035, 2022 And
`Petitioner’s Reply As Outside the Proper Scope of Reply
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`The Board should exclude Exhibits 1099, 1101, 1035 and 2022 and
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`Petitioner’s related arguments. Petitioner improperly introduced this new evidence
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`and related arguments for the first time in its Reply. These exhibits and arguments
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`are inadmissible under 37 C.F.R. § 42.61, and are properly subject to exclusion
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`because Petitioner is not permitted to introduce new evidence and arguments in its
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`Reply in order to resolve the deficient arguments and evidentiary shortcomings of
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`its Petition. Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1081 (Fed. Cir. 2015)
`
`(“a party may move to exclude evidence, whether as improper under the response-
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`only regulation, under the Trial Practice Guide’s advice, or on other grounds.”).
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`Specifically, Petitioner introduced for the first time in its Reply new
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`arguments regarding claim construction, the Shin Document, the combination of
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`Poison Java and Brown, and the public availability of the Shin and Poison Java
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`Documents. In regards to claim construction, Petitioner discusses IAT tables to
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`support a new claim construction position and also introduces for the first time
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`Exhibit 1099. See Reply at 4-6, 16-17 (citing Dr. Rubin’s deposition and Ex.
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`1099). These arguments were publicly argued and explicitly rejected in the Blue
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`Coat case long before Petitioner filed its Petition. Finjan, Inc. v. Blue Coat
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`Systems, Inc., Case No. 13-cv-03999-BLF, (N.D. Cal. Aug. 26, 2014) Dkt. No. 86.
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`Petitioner could have raised these issues if it identified these theories regarding
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`
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`9
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`Patent Owner’s Motion to Exclude Evidence
`IPR2015-01974 (U.S. Patent No. 7,647,633)
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`IAT tables from the specification itself. Petitioner failure to raise these arguments
`
`in its Petition prevented Patent Owner the adequate ability to respond to these
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`arguments. Thus, these new arguments should be excluded.
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`In regards to the Shin Document, Petitioner for the first time argues that a
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`web browser is the mobile code executor and that Shin does not modify the
`
`executable code. Reply at 13-17. Petitioner recognizes that its arguments
`
`regarding Shin are flawed and attempts to change its own mapping of claim
`
`elements. See Reply at 14-15 (citing Dr. Rubin’s deposition and Shin reference to
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`make new arguments). Petitioner makes the new argument regarding Shin and
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`IAT tables. See Reply at 16. Petitioner also tries to argue that Shin rewriting of
`
`the Java applet is not the same as modifying the executable code. See Reply at 17
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`Neither of these arguments were previously identified or addressed in the Petition
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`and should therefore be excluded.
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`Similarly, for the combination of Poison Java and Brown, Petitioner also
`
`introduces new evidence and arguments. Specifically, Petitioner now relies on Ex.
`
`1101 to attempt to establish that Finjan was aware that Java was unsafe and also
`
`argues that the combination is similar to IAT tables. See Reply at 20–21.
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`Petitioner also makes the new argument that Poison Java and Brown do not modify
`
`the executable code. See Reply at 21-22 (citing Dr. Rubin’s deposition because
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`this argument is not in the Petition). Neither of these arguments were previously
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`10
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`Patent Owner’s Motion to Exclude Evidence
`IPR2015-01974 (U.S. Patent No. 7,647,633)
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`identified or addressed in the Petition even though such information was available
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`and should therefore be excluded.
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`Finally, Petitioner attempts to shoehorn new public availability arguments
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`for Shin and Poison Java by citing Dr. Rubin’s deposition as evidence of public
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`availability. Reply at 9-11. These are new arguments that should be excluded.
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`Petitioner may not use its Reply as a vehicle to add in new evidence that
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`could have been included in its Petition, and all such evidence should be excluded.
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`See, e.g., Toshiba Corp. v. Optical Devices, LLC, IPR2014-01447, Paper 34, pp.
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`44–47 (P.T.A.B. Mar. 9, 2016) (“[Section 42.23(b)], however, does not authorize
`
`or otherwise provide a means for supplementing the evidence of record.”); Toyota
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`Motor Corp. v. Am. Vehicular Scis. LLC, IPR2013-00424, Paper 50, p. 21
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`(P.T.A.B. Jan. 12, 2015) (“[Petitioner] cannot rely belatedly on this evidence in its
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`Reply and Reply Declaration of [its expert] to make up for the deficiencies in its
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`Petition.”); The Scotts Co. LLC v. Encap, LLC, IPR 2013-00110, Paper 79, pp. 5–6
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`(P.T.A.B. June 24, 2014) (declining to consider untimely evidence and arguments
`
`because the patent owner “was denied the opportunity to file responsive
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`evidence.”).
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`Petitioner’s attempt to sandbag Patent Owner with these untimely
`
`submissions is highly prejudicial, as Patent Owner has not had the opportunity to
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`respond to this untimely evidence and Petitioner’s related arguments.
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`11
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`Patent Owner’s Motion to Exclude Evidence
`IPR2015-01974 (U.S. Patent No. 7,647,633)
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`X. The Board Should Exclude the Shin Document (Ex. 1009), Poison Java
`Document (Ex. 1004), and Brown Document (Ex. 1041)
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`The Board should exclude the Shin, Poison Java and Brown Documents
`
`based on lack of authentication and relevance and because they are hearsay.
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`The Shin, Poison Java, and Brown Documents should be excluded as
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`irrelevant, because Petitioner failed to establish when any of these documents were
`
`available as prior art. Evidence is only relevant if (1) it has any tendency to make
`
`a fact more or less probably than it would be without the evidence, and (2) the fact
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`is of consequence in determining the action. Fed. R. Evid. 401. A Petitioner can
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`challenge the validity of a patent based only on prior art patents and printed
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`publications. 35 U.S.C. § 311(b). It is Petitioner’s burden to establish that a
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`document is a “printed publication” by demonstrating that the document was
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`publicly accessible to persons concerned with the prior art to which the document
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`relates. ServiceNow, Inc. v. Hewlett-Packard Co., Case IPR2015-00716, Paper 13
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`at 8, 15–17 (P.T.A.B. Aug. 26, 2015) (denying institution because Petitioner did
`
`not meet its burden of establishing that a reference is prior art); see also In re
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`Wyer, 655 F.2d 221, 227 (C.C.P.A. 1981). The mere existence of an article on a
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`website is insufficient to establish public accessibility. Blue Calypso, LLC v.
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`Groupon, Inc., 815 F.3d 1331, 1349–50 (Fed. Cir. 2016) (“The record is devoid of
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`any evidence that a query of a search engine before the critical date, using any
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`12
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`Patent Owner’s Motion to Exclude Evidence
`IPR2015-01974 (U.S. Patent No. 7,647,633)
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`combination of search words, would have led to [the reference] appearing in the
`
`search results.”).
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`The mere appearance of a date on a document cannot authenticate the date of
`
`when the document was available to the public. See, e.g., TRW Automotive U.S.
`
`LLC v. Magna Elecs. Inc., Case IPR2014-01347, Paper 25 at 5–12 (P.T.A.B. Jan.
`
`6, 2016) (granting patent owner’s motion to exclude prior art for lack of
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`authentication); Hilgraeve, Inc. v. Symantec Corp., 271 F. Supp. 2d 964, 975 (“If
`
`anything, the dates imprinted upon these documents establish simply the date of
`
`copyright, or the date that the document was created or printed.… A date imprinted
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`on a document, without more, does not prove by clear and convincing evidence
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`[when it] was known or used by others in this country…”).
`
`Indeed, even a copyright date is insufficient, as a matter of law, to establish
`
`that it qualifies as a printed publication, let alone was accessible to the public in
`
`1999. See, e.g., TRW Automotive U.S. LLC v. Magna Elecs. Inc., Case IPR2014-
`
`01347, Paper 25 at 5–12 (P.T.A.B. Jan. 6, 2016) (“Although [a] copyright notice is
`
`probative that IEEE owns a copyright to the article, it is not probative that the
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`article was ever published by IEEE or anyone else.”); Stryker Corp. v. Karl Storz
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`Endoscopy-Am., Inc., Case IPR2015-00677 at 18–19 (P.T.A.B. Sept. 2, 2015)
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`(Paper 15) (a copyright notice does not establish when a document was publicly
`
`accessible under patent law); In re Lister, 583 F.3d 1307, 1316-17 (Fed. Cir. 2009)
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`13
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`Patent Owner’s Motion to Exclude Evidence
`IPR2015-01974 (U.S. Patent No. 7,647,633)
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`(finding that a manuscript that had a copyright date and was available in the
`
`Copyright Office was not publicly accessible); iOnROAD Ltd. v. Mobileye Techs.
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`Ltd., Case IPR2013-00227, Paper 18 at 3, 16 (P.T.A.B. Aug. 27, 2013) (stating that
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`a copyright date does not mean that a reference was published).
`
`The date on the face of a document is itself inadmissible hearsay when
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`offered to prove the truth of the matter asserted, i.e., the date the document became
`
`available. Fed. R. Evid. 801; Hilgraeve, Inc. v. Symantec Corp., 271 F. Supp. 2d
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`964, 974 and n.4 (E.D. Mich. 2003).
`
`A. The Board Should Exclude the Shin Document (Ex. 1009)
`Petitioner has not come forward with admissible evidence to authenticate the
`
`Shin Document as publicly available as prior art. The Shin Document does not
`
`bear a date that would indicate it was ever published. The only date on the face of
`
`the Shin Document is the identification of an asterisk, stating that it was
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`“submitted to OOPLSA ’98.” See Ex. 1009 at 1. However, this date does not even
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`relate to the public availability of the Shin Document and is irrelevant for the
`
`reasons set forth above. As set forth above, the Sherfesee Affidavit, Butler
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`Affidavit, Kava Paper and Author’s Webpage documents are not admissible to
`
`establish the purported public accessibility of the Shin Document. Kyocera
`
`Wireless Corp. v. Int’l Trade Comm’n, 545 F.3d 1340, 1350 (Fed. Cir. 2008) (to be
`
`publicly available prior art, there must be a “satisfactory showing that such
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`14
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`Patent Owner’s Motion to Exclude Evidence
`IPR2015-01974 (U.S. Patent No. 7,647,633)
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`document has been disseminated or otherwise made available to the extent that
`
`persons interested and ordinarily skilled in the subject matter or art exercising
`
`reasonable diligence, can locate it.”) (internal quotation marks omitted) (quoting
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`SRI Int’l v. Internet Sec. Sys. Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008)).
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`Therefore, Petitioner has failed to meet its burden of demonstrating that the Shin
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`Document is prior art, and it should be excluded as irrelevant FRE 401 – 402 and
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`as unauthenticated under FRE 901.
`
`B.
`
`The Board Should Exclude the Poison Java Document (Ex. 1004)
`and Brown Document (Ex. 1041)
`
`The Board should exclude the Poison Java Document (Ex. 1004) and Brown
`
`Document (Ex. 1041) as irrelevant and as unauthenticated as prior art, for the
`
`reasons set for above. Specifically, the IEEE date on the Poison Java Document
`
`and the copyright date on the Brown Document have not been authenticated with
`
`any admissible evidence, and Petitioner’s belated evidence should be excluded as
`
`improperly filed with its Reply.
`
`XI. Conclusion
`For these reasons, the Board should grant Patent Owner’s Motion to Exclude
`
`Evidence.
`
`
`
`
`
`
`
`15
`
`
`
`Respectfully submitted,
`
`Dated: November 22, 2016
`
`Case No. IPR2015-01974
`
`Patent Owner’s Motion to Exclude Evidence
`IPR2015-01974 (U.S. Patent No. 7,647,633)
`
`
`
`
`
`/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 H. 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
`
`Attorneys for Patent Owner
`
`
`
`16
`
`
`
`
`
`Patent Owner’s Motion to Exclude 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 Motion to Exclude Evidence was
`
`served on November 22, 2016, by filing this document through the PTAB E2E
`
`system as well as delivering via electronic mail upon the following counsel of
`
`17
`
`record for Petitioner:
`
`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
`
`Jennifer Volk-Fortier
`COOLEY LLP
`One Freedom Square
`Reston Town Center
`11951 Freedom Drive
`Reston, Virginia 2019
`jvolkfortier@cooley.com
`zpatdcdocketing@cooley.com
`
`
`
`
`
`Patent Owner’s Motion to Exclude Evidence
`IPR2015-01974 (U.S. Patent No. 7,647,633)
`
`
`Michael T. Rosato
`Andrew. S. Brown
`WILSON SONSINI GOODRICH & ROSATI
`701 Fifth Avenue, Suite 5100
`Seattle, WA 98104-7036
`mrosato@wsgr.com
`asbrown@wsgr.com
`
`Neil N. Desai
`WILSON SONSINI GOODRICH & ROSATI
`633 West Fifth Street, 15th Floor
`Los Angeles, CA 90071-2027
`ndesai@wsgr.com
`
`
`
`
`
`/James Hannah/
`
`James Hannah (Reg. No. 56,369)
`Kramer Levin Naftalis & Frankel LLP
`990 Marsh Road
`Menlo Park, CA 94025
`(650) 752-1700
`
`18
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