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 REPLY IN SUPPORT OF ITS 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 REPLY IN SUPPORT OF ITS MOTION TO
`EXCLUDE EVIDENCE
`
`
`1 Case IPR2016-00480 has been joined with this proceeding.
`
`
`
`
`
`Patent Owner’s Reply In Support of Motion to Exclude
`IPR2015-01974 (U.S. Patent No. 7,647,633)
`
`
`I.
`
`
`Patent Owner’s Motion to Exclude (“Motion,” Paper 36) should be granted.
`
`The Board Should Exclude Dr. Rubin’s Claim Construction Opinions.
`
`The Board should exclude Dr. Rubin’s claim construction opinions. Motion
`
`at 2–3. Petitioner tacitly admits that its now jettisoned objections were improper,
`
`making no attempt to defend them. Exclusion of the related testimony is warranted
`
`here where Petitioner’s counsel has “improperly frustrate[d] the fair examination
`
`of the deponent, such as making improper objections or giving directions not to
`
`answer.” Fed. R. Civ. P. 30, comm. notes at 4. Petitioner’s argument that there
`
`was no harm because “the court reporter merely notes objections and the witness
`
`answers subject to the objections” is plainly contrary to the record. What actually
`
`happened is that Petitioner’s counsel improperly directed Dr. Rubin not to answer
`
`questions regarding the basis of his opinions and, further admitted that Dr. Rubin
`
`has failed to provide an opinion on claim construction. See Ex. 2022 at 94:4-8 (Q:
`
`In your opinion does claim 14 allow mobile protection code that modifies
`
`executable code? Mr. Eutermoser: Objection. Calls for legal conclusion. Vague.
`
`Ambiguous. Outside the scope of the declaration and irrelevant.) (emphasis
`
`added). Patent Owner did not waive any complaint, as it sought the discovery
`
`during the deposition and was thwarted by Petitioner’s improper instructions.
`
`Thus, Dr. Rubin’s claim construction opinions should be excluded because
`
`Dr. Rubin did not provide the basis for his opinions and therefore, his opinions are
`
`1
`
`
`
`Patent Owner’s Reply In Support of Motion to Exclude
`IPR2015-01974 (U.S. Patent No. 7,647,633)
`
`unreliable. Koito Mfg. Co. v. Turn-Key-Tech, LLC, 381 F.3d 1142, 1152 (Fed. Cir.
`
`2004) (invalidity experts must explain in detail how each claim element is
`
`disclosed in the prior art reference). Given Petitioner’s counsel’s admissions that
`
`Dr. Rubin’s testimony regarding claim terms is outside the scope of his declaration
`
`and is not relevant, Dr. Rubin’s declaration and testimony fall apart and must be
`
`excluded as unreliable. Schumer v. Lab. Computer Sys., Inc., 308 F.3d 1304,
`
`1315-16 (Fed. Cir. 2002).
`
`II. The Board Should Exclude the Grenier Declaration (Ex. 1005).
`
`The Board should exclude the Grenier Declaration (Ex. 1005). Motion at 3–
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`4. Petitioner concedes Mr. Grenier lacks personal knowledge regarding Poison
`
`Java in particular and, instead, claims he relied on IEEE procedure. However, Mr.
`
`Grenier admits he even lacks personal knowledge as to the procedures IEEE used
`
`for printed publications and, therefore, he cannot authenticate the Poison Java
`
`document. Ex. 2023, Grenier Tr. at 33:5–34:11 (admitting that he was not
`
`involved with the printed version of the IEEE magazine). Petitioner also does not
`
`dispute that the May 2000 electronic publication is itself irrelevant as published
`
`after the priority date of the challenged claims. Thus, the Board should exclude
`
`Exhibit 1005 as irrelevant and for lack of foundation and personal knowledge.
`
`III. The Board Should Exclude Exhibits 1006 (Author’s Webpage), 1007
`(Filewatcher Webpage), and 1008 (Kava Paper).
`
`The Board should exclude Exhibits 1006 – 1008 for lack of proper
`
`2
`
`
`
`Patent Owner’s Reply In Support of Motion to Exclude
`IPR2015-01974 (U.S. Patent No. 7,647,633)
`
`authentication, because they are hearsay, and are not relevant. Motion 4-6. These
`
`documents do not prove when Shin became publicly available.
`
`First, Petitioner has failed to properly authenticate Exhibits 1006–1008.
`
`Motion at 4–6. Because Petitioner relies on the content in these pages, particularly
`
`the dates, it was required to provide a witness to properly authenticate these
`
`documents, which is an admissibility requirement, not an issue of the weight of the
`
`evidence. Fed. R. Evid. 901; Specht v. Google Inc., 758 F. Supp. 2d 570, 580
`
`(N.D. Ill. 2010) (excluding webpages that were not authenticated by a
`
`knowledgeable witness); Standard Innovation Corp. v. Lelo, Inc., IPR2014-00148,
`
`Paper 42 at 10–11 (P.T.A.B. Apr. 23, 2015) (excluding exhibits for lack of
`
`authentication). Because Petitioner did not do so, these exhibits should be
`
`excluded.
`
`Second, Petitioner relies on Exhibits 1006–1008 for a hearsay purpose—
`
`attempting to establish the date Shin was available. Motion at 4–6. These exhibits
`
`do not fall within the residual hearsay rule, even if offered to prove the purported
`
`consistency of documents as Petitioner suggests. Standard Innovation, IPR2014-
`
`00148, Paper 42 at 15–16 (rejecting petitioner’s argument that the residual hearsay
`
`exception applied) (citing Conoco Inc. v. Dep’t of Energy, 99 F.3d 387, 392 (Fed.
`
`Cir. 1996) (the residual exception to the hearsay rule is to be reserved for
`
`“exceptional cases” and is not “a broad license on trial judges to admit hearsay
`
`3
`
`
`
`Patent Owner’s Reply In Support of Motion to Exclude
`IPR2015-01974 (U.S. Patent No. 7,647,633)
`
`statements that do not fall within one of the other exceptions.”) (emphasis
`
`added).
`
`IV. The Board Should Exclude the Kent Declaration (Ex. 1082)
`
`Petitioner concedes Kent relied on a pre-published version of Brown,
`
`confirming exclusion is warranted. Motion at 6–7.
`
`V. The Board Should Exclude the Sherfesee and Butler Affidavits (Exs.
`1092, 1093, 1095)
`
`Petitioner concedes that (1) Sherfesee never worked directly with Alexa’s
`
`web crawling function in the relevant time frame and relies on (2) information that
`
`was gathered from the web crawling function prior to his career at Alexa and (3)
`
`statements made by others in conversations that he happened to overhear or from
`
`other staff members. Thus, the Board should exclude Exhibit 1093. Motion at 7-8.
`
`Similarly, The Board should exclude the Butler Affidavits because Petitioner
`
`concedes Mr. Butler lacks personal knowledge of the existence of certain
`
`webpages and did not verify the links identified in Ex. 1092, Ex. A to determine
`
`whether what was in the hyperlinks was publicly available. Ex. 2025, Butler Tr. at
`
`23:22–24 (indicating that he does not recall clicking on the hyperlinks); Ex. 1092,
`
`Butler Affidavit at Ex. A; Ex. 2025, Butler Tr. at 21:14–22:13.
`
`VI. The Board Should Exclude Petitioner’s Newly Minted Evidence (Exs.
`1099, 1101, 1035, 2022).
`
`This Motion is a proper vehicle to object to Petitioner’s improper reply
`
`4
`
`
`
`Patent Owner’s Reply In Support of Motion to Exclude
`IPR2015-01974 (U.S. Patent No. 7,647,633)
`
`evidence because the Federal Circuit recognizes the appropriateness and timeliness
`
`of Patent Owner’s request here: “[Patent Owner] may move to exclude evidence,
`
`whether as improper under the response-only regulation, under the Trial Practice
`
`Guide’s advice, or on other grounds.” Belden Inc. v. Berk-Tek LLC, 805 F.3d
`
`1064, 1081 (Fed. Cir. 2015); see also Toshiba Corp. v. Optical Devices, LLC,
`
`IPR2014-01447, Paper 34, at 44–47 (P.T.A.B. Mar. 9, 2016) (granting a patent
`
`owner’s motion to exclude Petitioner’s newly filed evidence and arguments).
`
`Petitioner concedes that this newly filed evidence was available at the time it
`
`filed its Petition, which alone dictates exclusion. Motion at 9-11. This belated
`
`evidence is not necessitated by Patent Owner’s response, as Petitioner incorrectly
`
`suggests. Petitioner should have introduced its own claim constructions in its
`
`Petition, rather than electing to wait until its Reply, which is highly prejudicial
`
`given that Patent Owner has no opportunity to respond. Motion at 9-10. Petitioner
`
`is using its Reply to improperly supplement its prima facie case of invalidity with
`
`the following new and belated contentions that Finjan contests, all of which were
`
`available well before Petitioner filed its Petition. Motion at 10–11. Petitioner’s
`
`belated introduction of this evidence has “denied [Patent Owner] the opportunity to
`
`file responsive evidence,” warranting exclusion. Scotts Co. v. Encap, LLC,
`
`IPR2013-00110, Paper 79 at 5–6 (P.T.A.B. June 24, 2014).
`
`5
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`
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`Patent Owner’s Reply In Support of Motion to Exclude
`IPR2015-01974 (U.S. Patent No. 7,647,633)
`
`VII. Conclusion
`For the foregoing reasons, the Board should grant Finjan’s Motion to
`
`Exclude Petitioner’s Evidence.
`
`Dated: December 13, 2016
`
`(Case No. IPR2015-01974)
`
`
`
`Respectfully submitted,
`
`
`
`
`
`/James Hannah/
`
`James Hannah (Reg. No. 56,369)
`Kramer Levin Naftalis & Frankel LLP
`990 Marsh Road
`Menlo Park, CA 94025
`Tel: 650.752.1700 Fax: 650.752.1800
`
`Jeffrey H. Price (Reg. No. 69,141)
`Kramer Levin Naftalis & Frankel LLP
`1177 Avenue of the Americas
`New York, NY 10036
`Tel: 212.715.7502 Fax: 212.715.8000
`
`Michael Kim (Reg. No. 40,450)
`Finjan, Inc.
`2000 University Ave., Ste. 600
`E. Palo Alto, CA 94303
`Tel: 650.397.9567
`
`Attorneys for Patent Owner
`
`6
`
`
`
`Patent Owner’s Reply In Support of 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 Reply In Support of Its Motion to
`
`Exclude was served on December 13, 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 and Joinder Petitioner:
`
`7
`
`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 Reply In Support of Motion to Exclude
`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
`
`8
`
`
`
`
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