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 OPPOSITION TO PETITIONER’S MOTION TO
`EXCLUDE
`
`
`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 OPPOSITION TO PETITIONER’S MOTION TO
`EXCLUDE
`
`
`1 Case IPR2016-00480 has been joined with this proceeding.
`
`
`
`
`
`Patent Owner’s Opposition to Motion to Exclude
`IPR2015-01974 (U.S. Patent No. 7,647,633)
`Patent Owner Finjan Inc. (“Patent Owner”) opposes Petitioner Palo Alto
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`Networks, Inc. and Blue Coat Systems, Inc.’s (“Petitioner”) Motion to Exclude
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`(Paper 35, “Motion”). The Board should deny Petitioner’s request to exclude
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`paragraph 57 of the Goodrich Declaration (Ex. 2019), paragraphs 13-27 and 30-34
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`of the Bims Declaration (Ex. 2020, “Bims Decl.”), and Exhibits 2004, 2007, 2012,
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`2014, 2016, 2018, 2027, 2028, 2029, 2037, and 2048 because Petitioner has failed
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`to meet its “burden of proof to establish that it is entitled to the requested relief.”
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`37 C.F.R. § 42.20(c). Patent Owner has submitted two declarations from its
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`experts, Drs. Goodrich and Bims, which establish the relevance of these exhibits.
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`Petitioner’s objections as to hearsay are inapposite as, even if true, an expert may
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`rely on such materials. And Petitioner waived its remaining objections by failing
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`to timely assert them. Accordingly, the Board should deny Petitioner’s Motion.
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`I.
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`Paragraph 57 of the Goodrich Declaration is Admissible.
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`Paragraph 57 of the Goodrich Declaration is admissible. Paragraph 57 of the
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`Goodrich Declaration (Ex. 2019) is admissible under FRE 702 and 703 because
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`Dr. Goodrich provides (1) independent analysis for opinion concerning licensing
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`and copying; (2) overwhelming evidence or sufficient analysis to show nexus; and
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`(3) applies the correct legal understanding of “copying.” As a preliminary matter,
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`the Board should reject Petitioner’s arguments because Petitioner failed to object to
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`the admissibility of paragraph 57 of the Goodrich Declaration on these bases. See
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`1
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`Patent Owner’s Opposition to Motion to Exclude
`IPR2015-01974 (U.S. Patent No. 7,647,633)
`Paper 23 (“Objections”) at 2-3. Nonetheless, these arguments also fail for the
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`reasons set forth below.
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`First, paragraph 57 of Dr. Goodrich’s declaration states that he performed
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`independent analysis for his licensing and copying opinions. In fact, Dr. Goodrich
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`independently “reviewed Dr. Harry Bims’ Declaration on secondary
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`considerations” and determined that “secondary considerations are relevant here,
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`especially because [the] ‘633 Patent was licensed to Websense and Proofpoint after
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`being accused of infringement.” See Ex. 2019 at ¶ 57; Ex. 2051 (“Goodrich Suppl.
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`Decl.”) at ¶¶ 1–6. Dr. Goodrich also independently analyzed evidence of copying
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`by “review[ing] the various documents from Petitioner that show (1) Petitioner
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`knew of Finjan’s patent and (2) wanted to compete with Finjan in detecting
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`malicious mobile code.” Ex. 2019 at ¶ 57; see also Goodrich Suppl. Decl. at ¶ 6.
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`During deposition, Dr. Goodrich further confirmed that he undertook an
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`independent analysis of the underlying materials by reviewing many of the
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`documents that Dr. Bims cites to determine the accuracy and verifiability of the
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`opinions he draws. See Ex. 1097, Goodrich Tr. at 74:17-24, 75:21-25; see also id.,
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`Goodrich Tr. at 69:19-70:13. Furthermore, “the facts and data underlying [Dr.
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`Goodrich’s] testimony do not need to be independently admissible.” L-3
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`Commc’ns Holdings, Inc. v. Power Survey, LLC, Case IPR2014-00834, Paper 68 at
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`30 (PTAB Nov. 23, 2015) (denying petitioner’s motion to exclude); FRE 703.
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`
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`2
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`Patent Owner’s Opposition to Motion to Exclude
`IPR2015-01974 (U.S. Patent No. 7,647,633)
`Thus, the Board should overrule Petitioner’s objections.
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`Second, Petitioner’s assertions regarding Dr. Goodrich’s testimony confirm
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`that Petitioner’s challenges are improperly directed to the sufficiency of his
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`opinions rather than their admissibility. See Valeo N. Am., Inc. v. Magna Elecs.,
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`IPR2014-00220, Paper 59 at 10-11 (PTAB May 28, 2015); 77 Fed. Reg. 48,756,
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`48,767 (Aug. 14, 2012) (“A motion to exclude … may not be used to challenge the
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`sufficiency of the evidence to prove a particular fact.”). Thus, Petitioner’s
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`assertions regarding paragraph 57 of Dr. Goodrich’s declaration are not grounds to
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`exclude the admissibility of this opinion.
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`Because Petitioner fails to identify any legitimate basis for exclusion, the
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`Board should deny Petitioner’s request to exclude Dr. Goodrich’s testimony.
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`II.
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`Paragraphs 13-27 and 30-34 of the Bims Declaration Concerning
`Copying, Licensing Nexus and Long-Felt Need Are Admissible.
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`Petitioner’s assertions, raised for the first time now, are that Dr. Bims’
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`testimony is “based on insufficient facts and data.” Motion at 4-6. These claims,
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`however, are undermined given that Dr. Bims relied on substantial third party
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`information, including factual information regarding Websense’s products,
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`Proofpoint, and Armorize’s products. This information comes directly from
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`Websense, Proofpoint, and Armorize and he analyzes the benefits of the patented
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`technology to those products and revenues that these third parties make publicly
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`available. Bims Decl. at ¶¶ 26-31; Ex. 2050 (“Bims Suppl. Decl.”) at ¶ 24. To the
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`
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`3
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`Patent Owner’s Opposition to Motion to Exclude
`IPR2015-01974 (U.S. Patent No. 7,647,633)
`extent Petitioner disagrees, it only confirms, once again, that Petitioner’s
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`challenges are improperly directed to the weight of his opinions, but is not grounds
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`to challenge the admissibility of his opinions. As a “non-jury tribunal with
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`administrative expertise, [the Board] is well positioned to determine and assign
`
`appropriate weight and/or relevance to evidence presented.” HTC Corp. v. NFC
`
`Tech., LLC, IPR2014-01198, Paper 56 at 47 (PTAB Feb. 3, 2016)(citing Gnosis
`
`S.p.A. v. S. Ala. Med. Sci. Found., Case IPR2013- 00118, slip op. at 43 (PTAB
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`June 20, 2014) (Paper 64)).
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`Moreover, Petitioner waived its objections to Paragraphs 13-27 and 30-34 of
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`the Bims Declaration because Petitioner failed to identify Paragraphs 13-27 and
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`30-34 of the Bims Declaration concerning copying, licensing, nexus and long-felt
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`need in Petitioner’s Objections. Further, Petitioner waived any objections
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`regarding copying, licensing, nexus and long-felt need because it failed to object to
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`the admissibility of the Bims Declaration on these bases in its Objections. When
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`any objections to evidence are not filed within the required time period, they are
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`waived and cannot be relied upon in a motion to exclude. 37 C.F.R. § 42.64; see
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`also Valeo N. Am., Inc. v. Magna Elects., Inc., IPR2014-01204, Paper 52 at 8-22
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`(PTAB Jan. 25, 2016).
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`To the extent Petitioner attempts to point to a general, unspecified objection
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`to Dr. Bims Declaration, Petitioner failed to put Patent Owner on notice of the
`
`
`
`4
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`Patent Owner’s Opposition to Motion to Exclude
`IPR2015-01974 (U.S. Patent No. 7,647,633)
`objection, which also is improper. The Board has confirmed the principle that a
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`motion to exclude cannot raise any new objections or rely on new arguments or
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`bases to support an objection that was previously asserted on different grounds.
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`See, e.g., Int’l. Bus. Machines Corp. v. Intellectual Ventures II LLC, IPR2015-
`
`00092, Paper 44 at 55 (P.T.A.B. Apr. 25, 2016)(rejecting an argument to exclude a
`
`reference as irrelevant on the basis that it was not prior art because the “objection
`
`[in its motion to exclude] is not the same” as its initial relevance objection and,
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`therefore, had been waived). For these reasons alone, the Board should reject
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`Patent Owner’s challenges to the Bims Declaration.
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`More specifically, as Petitioner’s Motion acknowledges, Paragraphs 13-27
`
`and 30-34 of the Bims Declaration set forth his opinions concerning copying,
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`licensing, nexus and long-felt need. Bims Decl. at ¶¶ 13-27, 30-34; see Motion at
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`5 (“Dr. Bims’ opinions on licensing (paragraphs 25-27) and a purported nexus with
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`the challenged claims (paragraphs 30-32)…”); see id. at 8 (“Dr. Bims’ opinions
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`concerning long-felt need (paragraphs 33-34)…”). In contrast, Petitioner’s
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`evidentiary objections to the Bims Declaration never mention Dr. Bims’ opinions
`
`concerning licensing, nexus and industry praise. Rather, Petitioner primarily relied
`
`on its general and unspecified objections under FRE 702 and 703, which is
`
`insufficient as a matter of law. See Objections at 3-4.
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`Furthermore, Petitioner’s Objections identifies only two paragraphs (i.e. ¶¶
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`
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`5
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`
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`Patent Owner’s Opposition to Motion to Exclude
`IPR2015-01974 (U.S. Patent No. 7,647,633)
`28-29) of the Bims Declaration, and these paragraphs are regarding Dr. Bims’
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`opinion of commercial success, not copying, licensing, nexus and long-felt need.
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`See Objections at 4 (citing Ex. 2020 at ¶¶ 28, 29). Thus, Petitioner waived its
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`ability to raise objections to opinions in Dr. Bims’ declaration regarding copying,
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`licensing, nexus and long-felt need. Accordingly, Petitioner’s request should be
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`denied because Petitioner waived any objection to the admissibility of paragraphs
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`13-27 and 30-34 of the Bims Declaration.
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`Because Petitioner fails to identify any legitimate basis for exclusion, its
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`request to exclude Dr. Bims’ highly relevant testimony should be denied.
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`III.
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`Exhibit 2004 (Finjan-Blue Coat Verdict Form) is Admissible.
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`The Board should deny Petitioner’s request to exclude Exhibit 2004, which
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`is the Verdict from the Finjan v. Blue Coat case.
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`First, Exhibit 2004 is relevant to copying by Petitioner. Indeed, Petitioner’s
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`Motion admits that the Verdict shows that the jury found that Blue Coat infringed
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`claim 14 of the 633 Patent, the independent claim at issue in this proceeding.
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`Motion at 8. Thus, there should be no dispute that Exhibit 2004 is relevant to
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`Petitioner’s copying of claim 14. Petitioner appears to argue that the relevance of
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`this finding should be disregarded as irrelevant because infringement was found
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`under the doctrine of equivalents. Such an argument flies in the face of well-
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`established law. The Supreme Court specifically rejected the notion that copying
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`
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`6
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`
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`Patent Owner’s Opposition to Motion to Exclude
`IPR2015-01974 (U.S. Patent No. 7,647,633)
`is irrelevant to the doctrine of equivalents inquiry. Warner-Jenkinson Co. v. Hilton
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`David Chem. Co., 520 U.S. 17, 35-36 (1997). In fact, the Supreme Court
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`explained that limiting protection to the claim's literal scope allowed someone "to
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`make unimportant and insubstantial changes and substitutions in the patent which,
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`though adding nothing, would be enough to take the copied matter outside the
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`claim, and hence outside the reach of law." Graver Tank & Mfg. Co. v. Linde Air
`
`Prods. Co., 339 U.S. 605, 607 (1950); Warner Jenkinson, 520 U.S. at 36. Denying
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`the patentee access to the doctrine of equivalents "would leave room for--indeed
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`encourage--the unscrupulous copyist." Id. Indeed, courts routinely refer to the
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`doctrine of equivalents as a means to capture copiers when discussing the rationale
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`behind the doctrine. See, e.g., Trading Techs. Int'l, Inc. v. eSpeed, Inc., 507 F.
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`Supp. 2d 854, 860-61 (N.D. Ill. 2007).
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`Second, Exhibit 2004 is relevant to the ‘633 Patent’s validity over Poison
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`Java in view of Brown. In fact, Petitioner’s Motion admits that the jury’s Verdict
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`found that the ‘633 Patent was valid over Ji and the Board already agreed that the
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`“subject matter disclosed in Poison Java is the same as the subject matter disclosed
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`in Ji.” See Motion at 8; see also Paper 7 (“Decision”) at 7. In fact, Ji merely
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`provides more detail of the same applet instrumentation system disclosed by
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`Poison Java. Decision at 8. Petitioner’s sole argument against the relevance of the
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`jury verdict regarding validity is that it was based on a different burden of proof
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`
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`7
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`Patent Owner’s Opposition to Motion to Exclude
`IPR2015-01974 (U.S. Patent No. 7,647,633)
`and different claim construction standard. Motion at 9. That argument, however,
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`does not render the Verdict irrelevant. The jury’s finding regarding validity after a
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`lengthy trial and hearing all the experts testify live and seeing the cross-
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`examination is relevant because it has tendency to make a fact more or less
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`probable than it would be without the evidence. See Valeo N. Am., Inc. v. Magna
`
`Elecs., IPR2014-01208, Paper 49 at 16 (PTAB Dec. 21, 2015). Further, the
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`Federal Circuit has held that “[e]ven with a more lenient standard of proof, the
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`PTO ideally should not arrive at a different conclusion.” In re Baxter Int’l, Inc.,
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`678 F.3d 1357, 1365 (Fed. Cir. 2012).
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`Because Exhibit 2004 is at least relevant to Petitioner’s copying and the
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`Poison Java reference and Petitioner fails to identify any legitimate basis for
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`exclusion, Petitioner’s request to exclude this evidence should be denied.
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`IV.
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`Exhibit 2018 (Petitioner’s Claim Construction Brief), Exhibit 2007
`(Petitioner’s Expert Declaration) and Exhibit 2027 (Finjan-Blue Coat
`Trial Testimony) are Admissible.
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`The Board should deny Petitioner’s request to exclude Exhibits 2018, 2007
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`and 2027, which are regarding statements made by Petitioner and its experts and
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`Patent Owner’s experts during the Finjan v. Blue Coat case. Petitioner’s
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`arguments for excluding these exhibits are that they are allegedly (1) irrelevant and
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`potentially confusing; and (2) inadmissible hearsay. Both of these arguments fail
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`as they are contrary to the law and this Board’s practice.
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`
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`8
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`Patent Owner’s Opposition to Motion to Exclude
`IPR2015-01974 (U.S. Patent No. 7,647,633)
`First, Exhibits 2018, 2007 and 2027 are relevant to Patent Owner’s claim
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`construction for claim 14 regarding “without modifying the executable code.” In
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`fact, Petitioner admits that Exhibits 2018 and 2007 are “statements made by Blue
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`Coat and its experts” and Exhibit 2027 is expert testimony from the trial between
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`Patent Owner and Blue Coat in support of Patent Owner’s claim construction for
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`claim 14 regarding “without modifying the executable code.” Motion at 9-10.
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`This was a primary claim construction issue in this proceeding. As the Board has
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`routinely recognized, “evidence is relevant if it has any tendency to make a fact
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`more or less probable than it would be without the evidence.” Valeo N. Am., Inc.,
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`IPR2014-01208, Paper 49 at 16. Thus, there should be no dispute that Petitioner’s
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`statements these are highly relevant.
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`Second, Exhibits 2018, 2007 and 2027 are not potentially confusing because
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`there can be no dispute that the “Petitioner” in this proceeding includes both Palo
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`Alto Networks and Blue Coat. Palo Alto Networks never disputed Blue Coat’s
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`request for joinder in this proceeding. Thus, Patent Owner can attribute the
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`“statements made by Blue Coat and its experts” to Petitioner. The plain "petition"
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`language of 315(b) would preclude severability. See Agilysys, Inc. v. Ameranth,
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`Inc., CBM2014-00016, Paper 11 (PTAB Feb. 11, 2014) (Multiple parties stand in
`
`the shoes of a single petitioner. Citing 37 C.F.R. § 42.2 as using singular
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`"petitioner.").
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`
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`9
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`
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`Patent Owner’s Opposition to Motion to Exclude
`IPR2015-01974 (U.S. Patent No. 7,647,633)
`Third, Exhibits 2018, 2007 and 2027 fall within a hearsay exception because
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`they are admissions by a party opponent and are government records. FRE
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`801(d)(2), FRE 803(8). Petitioner’s hearsay objection is inapposite because Patent
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`Owner’s experts may rely on hearsay. Goodrich Decl. at 36, Bims Decl. at 19;
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`FRE 703; Brose N. Am., Inc. v. UUSI, LLC, Case IPR2014-00417, Paper 49 at 26
`
`(PTAB July 20, 2015) (“an expert may rely upon evidence regardless of whether
`
`the evidence is admissible…”).
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`Thus, the Board should deny Petitioner’s request to exclude Exhibits 2018,
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`2007 and 2027.
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`V.
`
`Exhibits 2012, 2014 and 2016 (Finjan-Blue Coat Trial Exhibits) are
`Admissible.
`
`The Board should deny Petitioner’s request to exclude Exhibits 2012, 2014
`
`and 2016, which are trial exhibits Petitioner included from the Finjan v. Blue Coat
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`case. Petitioner’s arguments for excluding these exhibits are that they are allegedly
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`(1) irrelevant and potentially confusing; and (2) inadmissible hearsay. Both of
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`these arguments fail as they are contrary to the law and this Board’s practice.
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`First, Exhibits 2012, 2014 and 2016 are relevant to evidence of secondary
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`considerations of non-obviousness. These exhibits are Blue Coat documents
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`regarding Blue Coat’s copying that Finjan used at trial against Blue Coat, and thus
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`should be considered. See In re Cyclobenzaprine Pat. Litig., 676 F.3d 1063, 1075-
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`79 (Fed. Cir. 2012) (secondary considerations of non-obviousness serve as an
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`
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`10
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`Patent Owner’s Opposition to Motion to Exclude
`IPR2015-01974 (U.S. Patent No. 7,647,633)
`important check on hindsight bias and "must always when present be
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`considered."). Petitioner’s sole relevance argument is that the Blue Coat emails do
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`not “reference the ‘633 patent.” Motion at 12. But Petitioner identifies no
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`authority that an exhibit must reference a patent in order qualify as relevant
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`evidence to support copying. Indeed, the law allows “evidence that might be used
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`to support an inference of copying, such as knowledge of the patented technology
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`during development of the accused products…” Genband US LLC v. Metaswitch
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`Networks Corp., Case No. 2:14-cv-33-JRG-RSP, Case No. 2:14-cv-33-JRG-RSP,
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`2016 U.S. Dist. LEXIS 5158, at *4 (E.D. Tex. Jan. 15, 2016). Thus, Petitioner’s
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`request should be rejected as its relevance arguments are without merit.
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`Second, Exhibits 2012, 2014 and 2016 fall within a hearsay exception
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`because they are admissions by a party opponent and are government records.
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`FRE 801(d)(2), FRE 803(8). Petitioner’s hearsay objection is inapposite because
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`Patent Owner’s experts may rely on hearsay. Bims Decl. at ¶¶ 13, 18; FRE 703;
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`Nestle Health. Nutr., Inc. v. Steuben Foods, Inc., Case IPR2015-00249, Paper 76 at
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`13–14 (PTAB June 2, 2016) (hearsay evidence relied upon by expert is admissible
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`because FRE 703 “permits an expert to base an opinion on facts or data in the case
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`that an expert has been made aware of if experts in the field would reasonably have
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`relied on such facts or data in forming an opinion.”).
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`Because Petitioner fails to identify any legitimate basis for exclusion, the
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`11
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`Patent Owner’s Opposition to Motion to Exclude
`IPR2015-01974 (U.S. Patent No. 7,647,633)
`Board should deny Petitioner’s request to exclude Exhibits 2012, 2014 and 2016.
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`VI.
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`Exhibit 2048 (Finjan-Blue Coat Claim Chart) is Admissible.
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`The Board should deny Petitioner’s request to exclude Exhibit 2048, which
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`is a claim chart Finjan provided to Petitioner showing how Claim 14 of the ‘633
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`Patent is embodied by Finjan’s Vital Security product. Petitioner’s argument for
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`excluding this exhibit are that it is allegedly (1) improper opinion testimony and
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`violates incorporation by reference (2) irrelevant and potentially confusing; (3)
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`inadmissible hearsay.
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`First, Petitioner waived its “improper opinion testimony” and “incorporation
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`by reference” objections because Petitioner’s Objections never objected to the
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`admissibility of the Exhibit 2048 on these bases. Rather, Petitioner relied on
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`general and unspecified objections under FRE 401, 402, 403, 703, 801, 802 and
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`901, which never mention “incorporation by reference” or that “Finjan’s attorneys
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`are not qualified to provide opinion testimony…” Compare Objections at 8 with
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`Motion at 12. Thus, the Board should disregard Petitioner’s attempts to revive
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`waived objections.
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`Second, Exhibit 2048 is relevant to Petitioner’s copying of Finjan’s
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`technology. In particular, Exhibit 2048 shows that Finjan provided a chart to
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`Petitioner showing how Claim 14 of the ‘633 Patent is embodied by Finjan’s Vital
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`Security product. See Ex. 2048, ‘633 Claim Chart at 281-334. Petitioner does not
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`
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`12
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`Patent Owner’s Opposition to Motion to Exclude
`IPR2015-01974 (U.S. Patent No. 7,647,633)
`dispute this fact nor does it dispute that Claim 14 of the ‘633 Patent is embodied by
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`Vital Security. Petitioner argues, without explanation, that this claim chart is not
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`probative to copying. To the contrary, the law allows “evidence that might be used
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`to support an inference of copying, such as knowledge of the patented technology
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`during development of the accused products…” Genband US LLC, 2016 U.S.
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`Dist. LEXIS 5158, at *4. Thus, this disclosure is probative of Blue Coat’s copying
`
`of Finjan’s Vital Security product.
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`Third, Exhibit 2048 is not hearsay. See FRE 801(c). Patent Owner is not
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`relying on Exhibit 2048 to prove the truth of the matter asserted. Rather, Patent
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`Owner cites Exhibit 2048 to demonstrate that Petitioner had notice of Exhibit 2048
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`because Finjan served the First Supplemental Response to Petitioner in Finjan, Inc.
`
`v. Blue Coat Sys., Inc. (served on Dec. 12, 2014). See PO Response, Paper 22 at
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`42 (“Finjan provided a chart to Petitioner showing how Claim 14 of the ‘633
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`Patent is embodied by Vital Security. See Ex. 2048, ‘633 Claim Chart at 281-
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`334.”). Thus, the Board should overrule Petitioner’s objection to Exhibit 2048 as
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`hearsay because Patent Owner offers Exhibit 2048 to demonstrate the fact that a
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`statement was made. EMC Corp. v. PersonalWeb Tech., LLC, IPR2013-00087,
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`Paper 69 at 43 (PTAB May 15, 2014) (citing FRE 801(c) 1997 Adv. Comm. Note)
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`(“If the significance of an offered statement lies solely in the fact that it was made,
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`no issue is raised as to the truth of anything asserted, and the statement is not
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`13
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`Patent Owner’s Opposition to Motion to Exclude
`IPR2015-01974 (U.S. Patent No. 7,647,633)
`hearsay.”). Nonetheless, even if considered hearsay, Exhibit 2048 falls within a
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`hearsay exception because it is a government record. FRE 803(8).
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`Because Petitioner fails to identify any legitimate basis for exclusion, the
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`Board should deny Petitioner’s request to exclude Exhibit 2048.
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`VII.
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`Exhibit 2037 (Trial Exhibit - Copying) and Exhibit 2029
`(Corresponding Trial Brief) are Admissible.
`
`The Board should deny Petitioner’s request to exclude Exhibit 2037,
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`evidence presented during the Finjan-Secure Computing trial that proved copying
`
`by the defendants in the Secure Computing litigation, and Exhibit 2029, which is
`
`the corresponding post trial brief. Petitioner’s arguments for excluding these
`
`exhibits are that they are allegedly irrelevant and inadmissible hearsay. These
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`arguments fail as they are contrary to the law and this Board’s practice.
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`First, Exhibits 2029 and 2037 are relevant evidence of copying. These
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`exhibits show that during the Secure Computing trial, Finjan presented evidence
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`that another competitor wanted to do “what Finjan does” and wanted to “compete
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`exactly with [Finjan]” and sought Finjan’s products to actively test them.
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`Petitioner’s argument that these exhibits are not relevant because they allegedly
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`only concern the ‘822 Patent is belied by Petitioner’s own expert, who testified in
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`court, that Claim 14 of the ‘633 Patent is “very similar” the ‘822 Patent claims.
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`See Ex. 2027, Trial Tr. at 1648:10-12; see also Bims Decl. ¶ 19.
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`Second, Exhibit 2037 falls within a hearsay exception because it is a
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`
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`14
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`Patent Owner’s Opposition to Motion to Exclude
`IPR2015-01974 (U.S. Patent No. 7,647,633)
`government record. FRE 803(8). Petitioner’s hearsay objection is inapposite
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`because Patent Owner’s experts may rely on hearsay. Bims Decl. ¶ 21; FRE 703;
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`Brose N. Am., Inc., Case IPR2014-00417, Paper 49 at 26 (“an expert may rely
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`upon evidence regardless of whether the evidence is admissible…”); see, e.g.,
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`Bims Decl. at ¶¶ 20, 21 (citing Ex. 2029, Ex. 2037).
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`Because Petitioner fails to identify any legitimate basis for exclusion, the
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`Board should deny Petitioner’s request to exclude Exhibits 2029 and 2037.
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`VIII.
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`Exhibit 2028 (Finjan-Secure Computing Order) is Admissible.
`
`The Board should deny Petitioner’s request to exclude Exhibit 2028, which
`
`is the district court order from the Finjan-Secure Computing case, upholding the
`
`jury’s finding of willfulness that is relevant to copying by the defendants in the
`
`Secure Computing litigation. Petitioner’s argument for excluding this exhibit is
`
`that it is allegedly irrelevant because it concerns the ‘822 Patent. As described
`
`above, Petitioner’s argument is belied by Petitioner’s own expert, who testified in
`
`court, that Claim 14 of the ‘633 Patent is “very similar” the ‘822 Patent claims.
`
`Thus, Petitioner’s challenge is improperly directed to the sufficiency rather than
`
`their admissibility. See Valeo N. Am., Inc., IPR2014-00220, Paper 59 at 10-11; 77
`
`Fed. Reg. at 48,767 (“A motion to exclude … may not be used to challenge the
`
`sufficiency of the evidence to prove a particular fact.”). Thus, the Board should
`
`deny Petitioner’s request to exclude Exhibit 2028.
`
`
`
`15
`
`
`
`Patent Owner’s Opposition to Motion to Exclude
`IPR2015-01974 (U.S. Patent No. 7,647,633)
`
`IX.
`
`Conclusion
`
`For the foregoing reasons, the Board should deny Petitioner’s request to
`
`exclude paragraph 57 of the Goodrich Declaration (Ex. 2019), paragraphs 13-27
`
`and 30-34 of the Bims Declaration (Ex. 2020), and Exhibits 2004, 2007, 2012,
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`2014, 2016, 2018, 2027, 2028, 2029, 2037, and 2048.
`
`
`
`Dated: December 6, 2016
`
`Respectfully submitted,
`
`
`
`
`
`/James Hannah/
`
`James Hannah (Reg. No. 56,369)
`jhannah@kramerlevin.com
`Kramer Levin Naftalis & Frankel LLP
`990 Marsh Road
`Menlo Park, CA 94025
`Tel: 650.752.1700 Fax: 650.752.1800
`
`
`
`Jeffrey Price (Reg. No. 69,141)
`jprice@kramerlevin.com
`Kramer Levin Naftalis & Frankel LLP
`1177 Avenue of the Americas
`New York, NY 10036
`Tel: 212.715.7502 Fax: 212.715.8302
`
` (Case No. IPR2015-01974) Attorneys for Patent Owner
`
`
`
`16
`
`
`
`
`
`
`
`Patent Owner’s Opposition to Motion to Exclude
`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 Opposition to Motion to Exclude was
`
`served on December 6, 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:
`
`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
`
`Michael T. Rosato
`Andrew. S. Brown
`WILSON SONSINI GOODRICH & ROSATI
`
`
`
`17
`
`
`
`Patent Owner’s Opposition to Motion to Exclude
`IPR2015-01974 (U.S. Patent No. 7,647,633)
`
`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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