`
`
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`Palo Alto Networks, Inc. and
`Blue Coat Systems, Inc.,
`Petitioners
`
`v.
`
`Finjan, Inc.
`Patent Owner
`
`Inter Partes Review No. 2015-019741
`U.S. Patent No. 7,647,633
`
`PETITIONER’S MOTION TO EXCLUDE
`EVIDENCE UNDER 37 C.F.R. § 42.64(c)
`
`
`
`
`
`
`
`
`
`
`
`1 Case IPR2016-00480 has been joined with this proceeding.
`
`

`

`Table of Contents
`
`
`Page
`
`
`I.
`
`II.
`
`PARAGRAPH 57 OF THE GOODRICH DECLARATION SHOULD
`BE EXCLUDED ............................................................................................. 1
`A. Dr. Goodrich’s licensing opinions are based on insufficient
`facts or data and unreliable principles and methods ............................ 1
`B. Dr. Goodrich’s opinions on alleged copying are based on
`insufficient facts and data and unreliable principles and
`methods ................................................................................................ 3
`PARAGRAPHS 13-27 AND 30-34 OF THE BIMS DECLARATION
`SHOULD BE EXCLUDED ........................................................................... 4
`A. Dr. Bims’s opinions on alleged copying are outside the scope of
`his specialized knowledge, are based on insufficient facts and
`data and unreliable principles and methods, and are unhelpful,
`confusing, and prejudicial .................................................................... 4
`B. Dr. Bims’s opinions on licensing and alleged nexus are outside
`the scope of his specialized knowledge and are based on
`insufficient facts and data and unreliable principles and
`methods ................................................................................................ 5
`C. Dr. Bims’s opinions on long-felt need are unhelpful and
`irrelevant ............................................................................................... 8
`III. THE BLUE COAT VERDICT FORM IS IRRELEVANT AND
`POTENTIALLY CONFUSING ..................................................................... 8
`IV. BLUE COAT ARGUMENTS AND TESTIMONY ARE
`INADMISSIBLE HEARSAY AND ARE IRRELEVANT AND
`POTENTIALLY CONFUSING ..................................................................... 9
`BLUE COAT TRIAL EXHIBITS ARE INADMISSIBLE HEARSAY
`AND ARE IRRELEVANT, UNFAIRLY PREJUDICIAL, AND
`POTENTIALLY CONFUSING ................................................................... 11
`VI. FINJAN’S BLUE COAT INTERROGATORY RESPONSE IS
`IMPROPER OPINION TESTIMONY, INADMISSIBLE HEARSAY,
`AND IRRELEVANT ................................................................................... 12
`
`V.
`
`
`
`
`i
`
`
`
`

`

`Table of Contents
`(continued)
`
`Page
`
`
`VII. SECURE COMPUTING ARGUMENTS AND EXHIBITS ARE
`INADMISSIBLE HEARSAY AND ARE IRRELEVANT AND
`POTENTIALLY CONFUSING ................................................................... 13
`VIII. THE SECURE COMPUTING ORDER IS IRRELEVANT,
`UNFAIRLY PREJUDICIAL, AND POTENTIALLY CONFUSING ........ 15
`IX. CONCLUSION ............................................................................................. 15
`
`
`
`
`
`ii
`
`
`
`

`

`Table of Authorities
`
`
`Page
`
`Cases
`In re Antor Media Corp.,
`689 F.3d 1282 (Fed. Cir. 2012) ........................................................................ 3, 7
`Apple, Inc. v. Ameranth, Inc.,
`CBM2015-00080, Paper 44 (PTAB Aug. 26, 2016) ........................................ 2, 6
`Blonder-Tongue Labs., Inc. v. Univ. of Ill. Found.,
`402 U.S. 313 (1971) ............................................................................................ 10
`Endo Pharms., Inc. v. Depomed, Inc.,
`IPR2014-00652, Paper 68 (PTAB Sept. 16, 2015) ............................................. 13
`Graftech Int’l Holdings, Inc. v. Laird Techs, Inc.,
`652 Fed. Appx. 973 (Fed. Cir. June 17, 2016) ..................................................... 7
`Iron Grip Barbell Co. v. USA Sports, Inc.,
`392 F.3d 1317 (Fed. Cir. 2004) ...................................................................passim
`MotivePower, Inc. v. Cutsforth, Inc.,
`IPR2013-00274, Paper 44 (PTAB Sept. 9, 2016) ................................................. 8
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) ............................................................ 9
`Standard Innovation Corp. v. Lelo, Inc.,
`IPR2014-00148, Paper 41 (PTAB Apr. 23, 2015) ............................................. 10
`Tre Milano, LLC v. TF3 Limited,
`IPR2015-00649, Paper 37 (PTAB May 2, 2016) ............................................. 2, 5
`Other Authorities
`37 C.F.R.
`§ 42.64(c) .............................................................................................................. 1
`§ 42.100(b) ............................................................................................................ 9
`
`
`
`
`iii
`
`
`
`

`

`Table of Contents
`(continued)
`
`Page
`
`
`Fed. R. Evid.
`401 ................................................................................................................. 11, 12
`402 ................................................................................................................passim
`403 ................................................................................................................passim
`702 ................................................................................................................. 1, 3, 8
`703 ................................................................................................................passim
`801 ................................................................................................................... 9, 14
`802 ................................................................................................................passim
`
`
`
`
`
`
`iv
`
`
`
`

`

`Petitioner’s Motion to Exclude
`IPR2015-01974
`
`
`Pursuant to 37 C.F.R. § 42.64(c), Petitioner moves 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, 2014, 2016, 2018, 2027,
`
`2028, 2029, 2037, and 2048 submitted by Patent Owner. Petitioner objected to
`
`these exhibits on August 16, 2016. (Paper 23.)
`
`I.
`
`PARAGRAPH 57 OF THE GOODRICH DECLARATION SHOULD BE EXCLUDED
`Petitioner moves to exclude paragraph 57 of Dr. Michael Goodrich’s
`
`declaration (Ex. 2019) because it contains conclusory opinions and testimony
`
`outside the scope of Dr. Goodrich’s specialized knowledge that will not assist the
`
`trier of fact. See Fed. R. Evid. 702, 703. Rather than performing secondary
`
`considerations analysis of his own, Dr. Goodrich adopts the opinions of a second
`
`Finjan expert.2 (Ex. 2019 at ¶ 57.) Dr. Goodrich also fails to provide analysis
`
`concerning alleged nexus between
`
`the ’633 patent and any secondary
`
`considerations evidence, and Dr. Goodrich admitted that he has no concept of what
`
`constitutes evidence of copying.
`
`A. Dr. Goodrich’s licensing opinions are based on insufficient facts
`or data and unreliable principles and methods
`The sole basis for Dr. Goodrich’s licensing opinions is a declaration
`
`submitted by a second Finjan expert, Dr. Harry Bims. (Ex. 2019 at ¶ 57; Ex. 1097,
`
`
`2 As explained in Section II below, those opinions should also be excluded.
`
`
`
`1
`
`

`

`Petitioner’s Motion to Exclude
`IPR2015-01974
`
`
`Goodrich Dep. at 69:7-17.) Dr. Goodrich performed no independent investigation
`
`or analysis concerning any Finjan licenses. (See id.) In fact, Dr. Goodrich testified
`
`that he first read Dr. Bims’s declaration only after it was completed and signed by
`
`Dr. Bims, and has never even spoken to Dr. Bims. (Ex. 1097, Goodrich Dep. at
`
`71:19-73:16.) Dr. Goodrich also testified that: (1) he could not recollect ever
`
`reviewing a Finjan patent license; (2) no license agreements were produced; and
`
`(3) no terms of any license agreements were ever provided. (Id. at 65:22-66:10,
`
`68:23-69:17, 76:18-77:9.) Similarly, Dr. Goodrich performed no independent
`
`analysis to determine whether any licensee’s products embodied any claims of the
`
`’633 patent, and instead relied only on claim charts attached to Dr. Bims’s
`
`declaration. (Id. at 92:1-22.) Like opinions that merely parrot the petition, opinions
`
`that repeat the arguments of another paid expert are not the product of reliable
`
`principles and methods and are not helpful to the Board. See Tre Milano, LLC v.
`
`TF3 Limited, IPR2015-00649, Paper 37 at *20 (PTAB May 2, 2016).
`
`Dr. Goodrich’s licensing opinions are also deficient because they provide
`
`neither adequate evidence nor sufficient analysis to show nexus. See Apple, Inc. v.
`
`Ameranth, Inc., CBM2015-00080, Paper 44 at *36-37 (PTAB Aug. 26, 2016)
`
`(finding secondary considerations relevant only where there is a “nexus”—i.e., that
`
`the secondary evidence is “commensurate in scope with the claimed invention”).
`
`Dr. Goodrich relies on the fact that two accused infringers licensed Finjan’s patent
`2
`
`
`
`

`

`Petitioner’s Motion to Exclude
`IPR2015-01974
`
`
`portfolio to avoid litigation. (See Ex. 2019 at ¶ 57; Ex. 1097, Goodrich Dep. at
`
`76:3-79:22.) But that fact is plainly insufficient to establish nexus between a
`
`license and challenged claims. See In re Antor Media Corp., 689 F.3d 1282, 1293-
`
`94 (Fed. Cir. 2012) (finding that there must be a “nexus between the merits of the
`
`invention and the licenses themselves”). Accordingly, Dr. Goodrich’s licensing
`
`opinions are unreliable and unhelpful to the Board. See Fed. R. Evid. 702, 703.
`
`B. Dr. Goodrich’s opinions on alleged copying are based on
`insufficient facts and data and unreliable principles and methods
`Dr. Goodrich’s testimony regarding alleged copying should be excluded
`
`because it is based on an incorrect legal understanding of what constitutes
`
`“copying.” (Compare Ex. 1097, Goodrich Dep. at 101:2-17 (confirming his
`
`understanding that copying is shown by knowledge of the patent, desire to
`
`compete, and infringement) with Iron Grip Barbell Co. v. USA Sports, Inc., 392
`
`F.3d 1317, 1325 (Fed. Cir. 2004) (“[C]opying requires the replication of a specific
`
`product.”).) Dr. Goodrich provides no independent analysis of Blue Coat’s
`
`products and whether they practiced any claim of the ’633 patent. (See Ex. 2019 at
`
`¶ 57; Ex. 1097, Goodrich Dep. at 101:19-103:15.) Nor did he compare Blue Coat’s
`
`products to any Finjan product. (Id.) Thus, Dr. Goodrich’s opinions regarding
`
`alleged copying are unreliable and unhelpful to the Board. See Fed. R. Evid. 702,
`
`703. Paragraph 57 of the Goodrich Declaration should be excluded in its entirety.
`
`
`
`3
`
`

`

`Petitioner’s Motion to Exclude
`IPR2015-01974
`
`II.
`
`
`PARAGRAPHS 13-27 AND 30-34 OF THE BIMS DECLARATION SHOULD BE
`EXCLUDED
`Petitioner moves to exclude ¶¶ 13-27 and 30-34 of Dr. Harry Bims’s
`
`declaration (Ex. 2020) because it contains opinions that are conclusory, is based on
`
`insufficient facts or data and unreliable principles and methods, and includes
`
`testimony outside the scope of Dr. Bims’s specialized knowledge that will not
`
`assist the trier of fact. See Fed. R. Evid. 702, 703.
`
`A. Dr. Bims’s opinions on alleged copying are outside the scope of his
`specialized knowledge, are based on insufficient facts and data
`and unreliable principles and methods, and are unhelpful,
`confusing, and prejudicial
`Dr. Bims’s opinions concerning alleged copying (paragraphs 13-24) should
`
`be excluded because they are based on an incorrect understanding of what
`
`constitutes “copying.” (Compare Ex. 1098, Bims Dep. at 56:22-57:2 (“I would say
`
`that for knowledge of a competitor’s products, combined with a motivation to
`
`copy, resulting in infringement, is evidence of copying.”) with Iron Grip, 392 F.3d
`
`at 1325 (“[C]opying requires the replication of a specific product.”).) Dr. Bims
`
`performed no technical analysis of any Blue Coat or Finjan product to determine
`
`whether Blue Coat’s products “replicat[ed] a specific product.” (See id.; see Ex.
`
`2020 at ¶¶ 13-24.) Rather, Dr. Bims draws a legal conclusion based on litigation
`
`documents and results, which is outside the scope of his specialized knowledge and
`
`expertise. (See Ex. 2020 at ¶¶ 2-12 (confirming that Dr. Bims is a technical expert
`
`
`
`4
`
`

`

`Petitioner’s Motion to Exclude
`IPR2015-01974
`
`
`retained to provide technical opinions).) Moreover, Dr. Bims’s summary of trial
`
`exhibits and litigation results is unhelpful to the Board and not properly the subject
`
`of expert testimony. See Fed. R. Evid. 702, 703; Tre Milano, IPR2015-00649,
`
`Paper 37 at *20 (finding expert testimony unhelpful where it did not add anything
`
`to attorney arguments previously made).
`
`Dr. Bims’s references to “Petitioner’s” alleged copying are also misleading,
`
`potentially confusing, and unfairly prejudicial because they imply that PAN
`
`participated in the Blue Coat litigation and/or allegedly copied the challenged
`
`claims. (Ex. 2020 at ¶¶ 13, 15-21, 23.) But PAN was not a party to the Blue Coat
`
`litigation, and Dr. Bims admitted that the litigation documents and results he relies
`
`on are limited to Blue Coat, and not PAN. (Ex. 1098, Bims Dep. at 52:15-55:15.)
`
`Accordingly, paragraphs 13-24 of the Bims Declaration should also be excluded
`
`because the danger of unfair prejudice and confusion substantially outweighs any
`
`limited probative value. See Fed. R. Evid. 403.
`
`B. Dr. Bims’s opinions on licensing and alleged nexus are outside the
`scope of his specialized knowledge and are based on insufficient
`facts and data and unreliable principles and methods
`Dr. Bims’s opinions on licensing (paragraphs 25-27) and a purported nexus
`
`with the challenged claims (paragraphs 30-32) should be struck because they are
`
`outside the scope of Dr. Bims’s technical expertise and are not based on reliable
`
`facts or methods. See Fed. R. Evid. 702, 703.
`
`
`
`5
`
`

`

`Petitioner’s Motion to Exclude
`IPR2015-01974
`
`
`Dr. Bims’s opinions regarding Finjan licenses are based only on his
`
`conversations with attorneys and his review of a declaration by Finjan’s president.
`
`(Ex. 2020 at ¶¶ 25-27; Ex. 1098, Bims Dep. at 45:17-46:24.) Dr. Bims performed
`
`no independent investigation or analysis concerning any Finjan licenses. (Ex. 1098,
`
`Bims Dep. at 46:25-48:21.) In fact, Dr. Bims testified that he (1) was not provided
`
`with any Finjan licenses; (2) did not review Finjan licenses; (3) did not speak to
`
`anyone at Finjan other than its attorneys; and (4) did not speak with anyone at any
`
`of Finjan’s licensees. (Id. at 43:5-14, 47:24-48:4.) Dr. Bims admitted that he would
`
`need to review the licenses themselves to fully understand what the parties to those
`
`licenses agreed to, but was not able to do that in this case. (Id. at 47:15-23.) Expert
`
`testimony based only on attorney-relayed facts is unreliable. See Apple, Inc. v.
`
`Ameranth, Inc., CBM2015-00080, Paper 44, at *38-39 (PTAB Aug. 26, 2016)
`
`(finding alleged evidence of nexus to be merely attorney argument where counsel
`
`provided the annotated evidence and the witness had merely relied on the attorney-
`
`provided evidence to provide his opinion). Because Dr. Bims identifies no other
`
`basis for his opinions concerning Finjan licenses, paragraphs 25-27 should be
`
`excluded on this basis alone. See Fed. R. Evid. 702, 703.
`
`Dr. Bims’s licensing opinions are also deficient because they provide neither
`
`adequate evidence nor sufficient analysis to show nexus. See Apple, Inc. v.
`
`Ameranth, Inc., CBM2015-00080, Paper 44 at *36-37 (PTAB Aug. 26, 2016).
`6
`
`
`
`

`

`Petitioner’s Motion to Exclude
`IPR2015-01974
`
`
`As explained in Section I.A, the mere existence of a license is insufficient to
`
`establish nexus. See, e.g., In re Antor Media Corp., 689 F.3d 1282, 1293-94 (Fed.
`
`Cir. 2012). Dr. Bims admitted that all of Finjan’s licenses are portfolio licenses
`
`that cover multiple patents, and that none of them allocate royalties on a patent-by-
`
`patent basis. (Ex. 1098 at 43:15-17, 45:5-16.) Moreover, Dr. Bims did not know
`
`the amount of any Finjan license and did no analysis to determine whether any
`
`Finjan licensee paid more for a license than it would have cost to litigate through
`
`trial and appeal. (Id. at 48:5-21.) Accordingly, Dr. Bims’s licensing opinions are
`
`unreliable and unhelpful to the Board. See Fed. R. Evid. 702, 703.
`
`Dr. Bims’s opinions concerning a purported nexus between the challenged
`
`claims and Finjan’s alleged evidence of secondary considerations (paragraphs 30-
`
`32) should be excluded for similar reasons. See Graftech Int’l Holdings, Inc. v.
`
`Laird Techs, Inc., 652 Fed. Appx. 973, 978-79 (Fed. Cir. June 17, 2016) (nexus
`
`must exist between the claimed invention and the commercial success). Dr. Bims
`
`did no analysis to determine whether the patented inventions drove demand for any
`
`allegedly infringing products. (Ex. 1098 at 38:22-39:22.) Dr. Bims also did not
`
`analyze whether the allegedly infringing products contained non-patented features,
`
`or what portion, if any, of the accused infringers’ revenues were attributable to the
`
`claimed inventions. (Id. at 37:22-38:21, 40:3-6.) Similarly, Dr. Bims did not
`
`perform any market share analysis or customer surveys for purposes of his
`7
`
`
`
`

`

`Petitioner’s Motion to Exclude
`IPR2015-01974
`
`
`opinions. (Id. at 40:7-17.) Without such evidence, paragraphs 30-32 of the Bims
`
`Declaration are unreliable and should be excluded. See Fed. R. Evid. 702, 703.
`
`C. Dr. Bims’s opinions on long-felt need are unhelpful and irrelevant
`Dr. Bims’s opinions concerning long-felt need (paragraphs 33-34) should be
`
`excluded because they are based on nothing more than a recitation of the
`
`background section of the ’633 patent. (See Ex. 2020 at ¶¶ 33-34.) Evidence of
`
`long-felt need requires “an articulated identified problem and evidence of efforts to
`
`solve that problem which were, before the invention, unsuccessful.” MotivePower,
`
`Inc. v. Cutsforth, Inc., IPR2013-00274, Paper 44 at *60-61 (PTAB Sept. 9, 2016).
`
`Dr. Bims identifies no evidence that others tried and failed to solve the problem.
`
`(See Ex. 2020 at ¶¶ 33-34.) Accordingly, Dr. Bims’s testimony lacks supporting
`
`facts or data and is not helpful to the Board. See Fed. R. Evid. 702.
`
`III. THE BLUE COAT VERDICT FORM IS IRRELEVANT AND POTENTIALLY
`CONFUSING
`Petitioner moves to exclude Exhibit 2004, the verdict form filed in Finjan,
`
`Inc. v. Blue Coat Sys., Inc., Case No. 13-cv-03999-BLF (N.D. Cal.), because it is
`
`irrelevant and potentially confusing. See Fed. R. Evid. 402, 403. The jury found
`
`that Blue Coat infringed claim 14 of the ’633 patent—but only under the doctrine
`
`of equivalents—and did not find the ’633 patent invalid in view of Ji. (Ex. 2004 at
`
`3-4, 6.) Finjan cites Exhibit 2004 as evidence that (1) Blue Coat supposedly copied
`
`
`
`8
`
`

`

`Petitioner’s Motion to Exclude
`IPR2015-01974
`
`
`the alleged inventions (id. at 42) and (2) Poison Java in view of Brown does not
`
`render obvious the instituted claims (id. at 4, 36).
`
`The jury’s verdict in Blue Coat is irrelevant to any issue in this proceeding.
`
`The jury’s verdict on validity is not relevant at least because it was based on a
`
`different burden of proof and a different claim construction standard. Compare 37
`
`C.F.R. § 42.100(b) with Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en
`
`banc). The verdict is also not probative of whether Blue Coat copied the alleged
`
`invention, because infringement is not the equivalent of copying. Iron Grip, 392
`
`F.3d at 1325 (“Not every competing product that arguably falls within the scope of
`
`a patent is evidence of copying. . . . Rather, copying requires the replication of a
`
`specific product.”). Accordingly, Exhibit 2004 should be excluded. See Fed. R.
`
`Evid. Rules 402, 403.
`
`IV. BLUE COAT ARGUMENTS AND TESTIMONY ARE INADMISSIBLE HEARSAY
`AND ARE IRRELEVANT AND POTENTIALLY CONFUSING
`Petitioner moves to exclude Blue Coat’s claim construction brief (Ex. 2018),
`
`the Reiher Declaration (Ex. 2007), and Blue Coat trial testimony (Ex. 2027) under
`
`Federal Rules of Evidence 802, 402, and 403.
`
`First, each of these exhibits contains out-of-court statements offered for the
`
`truth of the matter asserted. See Fed. R. Evid. 801. For example, Finjan offers
`
`litigation statements made by Blue Coat and its expert (Exs. 2018 and 2007) and
`
`
`
`9
`
`

`

`Petitioner’s Motion to Exclude
`IPR2015-01974
`
`
`the trial testimony of various other experts (Ex. 2027) in support of Finjan’s
`
`argument that claim 14 must be construed to include the limitation “without
`
`modifying the executable code.” (Paper 22 at 2, 15-16, 18.) Finjan also relies on
`
`Blue Coat trial testimony for the proposition that Poison Java in view of Brown
`
`cannot render obvious the challenged claims and that the ’633 patent and ’822
`
`patent are “very similar.” (Paper 22 at 36.)
`
`Despite Finjan’s suggestions to the contrary,3 statements in Exhibits 2018,
`
`2007, and 2027 do not fall within any exception to the hearsay rule. In particular,
`
`admissions by Blue Coat or other parties in the Blue Coat case cannot be attributed
`
`to PAN. See Blonder-Tongue Labs., Inc. v. Univ. of Ill. Found., 402 U.S. 313, 329
`
`(1971) (noting that due process prohibits application of collateral estoppel to
`
`nonparties); Standard Innovation Corp. v. Lelo, Inc., IPR2014-00148, Paper 41 at
`
`*13-14 (PTAB Apr. 23, 2015) (excluding statements made by “Leloi AB” and not
`
`
`3 As PAN explained in its Reply, Finjan defines “Petitioner” (singular) to refer to
`
`PAN and joinder party Blue Coat. (Paper 22 at 2.) Finjan then repeatedly
`
`characterizes Blue Coat’s litigation statements as admissions by “Petitioner,”
`
`improperly attributing Blue Coat’s litigation positions to PAN. (Id. at 2, 42, 43; Ex.
`
`2019, Goodrich Decl. at 13; Ex. 2020, Bims Decl. at ¶ 19.)
`
`
`
`10
`
`

`

`Petitioner’s Motion to Exclude
`IPR2015-01974
`
`
`Patent Owner “Lelo, Inc.” where Petitioner did not present sufficient evidence to
`
`establish that the admissions of one should be attributed to the other).
`
`Exhibits 2018, 2007, and 2027 should also be excluded because they are
`
`irrelevant, unfairly prejudicial, and potentially confusing. See Fed. R. Evid. 402,
`
`403. As explained above, Finjan attempts to improperly attribute Blue Coat’s
`
`positions to PAN who was not part of the Blue Coat case and, as a result, had no
`
`opportunity to cross-examine witnesses or respond to the parties’ arguments.
`
`Accordingly, the limited probative value of statements made during the Blue Coat
`
`case is outweighed by the danger of confusion and unfair prejudice to PAN.
`
`V. BLUE COAT TRIAL EXHIBITS ARE INADMISSIBLE HEARSAY AND ARE
`IRRELEVANT, UNFAIRLY PREJUDICIAL, AND POTENTIALLY CONFUSING
`Petitioner moves to exclude three trial exhibits (Exs. 2012, 2014, and 2016)
`
`admitted in Finjan, Inc. v. Blue Coat Sys., Inc., Case No. 13-cv-03999-BLF (N.D.
`
`Cal.) under Federal Rules of Evidence 802, 402, and 403.
`
`Each of these exhibits is an internal Blue Coat email that contains out-of-
`
`court statements offered for the truth of the matter asserted. For example, Finjan
`
`relies on statements in Exhibit 2012 as evidence that a Blue Coat product “provides
`
`sandboxing just like Finjan.” (Paper 22 at 43.) Finjan cites statements in in
`
`Exhibits 2014 and 2016 as evidence that Blue Coat intended to compete with
`
`Finjan. (Id.) Finjan does not argue that a hearsay exception applies, and as
`
`
`
`11
`
`

`

`Petitioner’s Motion to Exclude
`IPR2015-01974
`
`
`explained in the previous section, alleged admissions by Blue Coat cannot be
`
`attributed to PAN in this proceeding. Exhibits 2012, 2014, and 2016 should
`
`therefore be excluded as hearsay. Fed. R. Evid. 802.
`
`Blue Coat trial exhibits should also be excluded because they are irrelevant
`
`and potentially confusing. See Fed. R. Evid. 402, 403. Finjan and its expert, Dr.
`
`Bims, rely on each of these exhibits as evidence of alleged copying. (Paper 22 at 3,
`
`42-43; Ex. 2020, Bims Decl. at ¶¶ 14-24.) But Blue Coat’s emails do not reference
`
`the ’633 patent and, at most, indicate a desire by Blue Coat to compete with Finjan.
`
`Accordingly, the Blue Coat trial exhibits are not probative of whether Blue Coat
`
`“replicat[ed] [ ] a specific product.” See Iron Grip, 392 F.3d at 1325.
`
`VI. FINJAN’S BLUE COAT INTERROGATORY RESPONSE IS IMPROPER OPINION
`TESTIMONY, INADMISSIBLE HEARSAY, AND IRRELEVANT
`Petitioner moves to exclude Exhibit 2048, Finjan’s interrogatory response in
`
`Finjan, Inc. v. Blue Coat Sys., Inc., Case No. 13-cv-03999-BLF (N.D. Cal.), which
`
`includes a claim chart prepared by Finjan’s attorneys.
`
`Finjan cites a claim chart prepared for litigation by its attorneys as evidence
`
`that certain Finjan products practiced claim 14 of the ’633 patent. (Paper 22 at 43.)
`
`But attorney-generated claim charts are not evidence—Finjan’s attorneys are not
`
`qualified to provide opinion testimony regarding whether the products embody the
`
`patent and citing the charts “violates [the] rule against incorporation by reference.”
`
`
`
`12
`
`

`

`Petitioner’s Motion to Exclude
`IPR2015-01974
`
`
`Fed. R. Evid. 703; Endo Pharms., Inc. v. Depomed, Inc., IPR2014-00652, Paper 68
`
`at *36-37 (PTAB Sept. 16, 2015) (finding cited claim charts, without further
`
`explanation in the Patent Owner Response, insufficient to demonstrate that Patent
`
`Owner’s product embodied the patent). Claim charts are also inadmissible hearsay,
`
`and Exhibit 2048 should also be excluded under Federal Rule of Evidence 802.
`
`Exhibit 2048 should also be excluded because it is irrelevant. See Fed. R.
`
`Evid. 402, 403. As discussed above, Exhibit 2048 merely contains a litigation
`
`claim chart comparing certain Finjan products to the ’633 patent. Accordingly,
`
`Exhibit 2048 is not probative of whether Blue Coat “replicat[ed] [ ] a specific
`
`product.” Iron Grip, 392 F.3d at 1325. Exhibit 2048 should therefore be excluded.
`
`See Fed. R. Evid. 402, 403.
`
`VII. SECURE COMPUTING ARGUMENTS AND EXHIBITS ARE INADMISSIBLE
`HEARSAY AND ARE IRRELEVANT AND POTENTIALLY CONFUSING
`Petitioner moves to exclude Finjan’s post-trial brief (Ex. 2029) and a trial
`
`exhibit (Ex. 2037) from Finjan, Inc. v. Secure Computing Corporation, et al., Civ.
`
`Action No. 06-369-GMS (D. Del.) under FRE 802, 402, and 403.
`
`Exhibit 2029 is a litigation brief that contains out-of-court statements—
`
`specifically, attorney argument—offered for the truth of the matter asserted. Finjan
`
`cites its own brief in order to improperly incorporate additional argument regarding
`
`alleged copying and as evidence that one of the Secure Computing defendants
`
`
`
`13
`
`

`

`Petitioner’s Motion to Exclude
`IPR2015-01974
`
`
`allegedly copied the ’822 patent. (Paper 22 at 44.) But attorney argument is
`
`inadmissible hearsay, not evidence. See Fed. R. Evid. 801. Exhibit 2029 should
`
`therefore be excluded. See Fed. R. Evid. 802.
`
`Similar to the Blue Coat trial exhibits discussed above, Exhibit 2037 is a
`
`series of emails that contain out-of-court statements offered for the truth of the
`
`matter asserted. For example, Finjan cites statements in Exhibit 2037 as evidence
`
`that Webwasher wanted to do “what Finjan does” and wanted to “compete” with
`
`Finjan. (Paper 22 at 44.) Finjan does not argue that a hearsay exception applies,
`
`and as explained in Section IV, alleged admissions by nonparties cannot be
`
`attributed to PAN in this proceeding. Exhibit 2037 should therefore be excluded as
`
`hearsay. Fed. R. Evid. 802.
`
`Exhibits 2029 and 2037 should also be excluded because they are irrelevant
`
`and potentially confusing. See Fed. R. Evid. 402, 403. Finjan relies on these
`
`exhibits as evidence of alleged copying. (Paper 22 at 44.) But the ’633 patent was
`
`not asserted in that case and is not discussed in Exhibits 2029 or 2037. As a result,
`
`neither exhibit is relevant to whether any of the Secure Computing defendants even
`
`infringed any claim of the ’633 patent, much less whether any of those defendants
`
`copied any claimed invention. See Iron Grip, 392 F.3d at 1325. Thus, Exhibits
`
`2029 and 2038 should be excluded because the danger of confusion and unfair
`
`prejudice outweighs any limited probative value. See Fed. R. Evid. 403.
`14
`
`
`
`

`

`Petitioner’s Motion to Exclude
`IPR2015-01974
`
`
`VIII. THE SECURE COMPUTING ORDER IS IRRELEVANT, UNFAIRLY PREJUDICIAL,
`AND POTENTIALLY CONFUSING
`Petitioner moves to exclude Exhibit 2028, a post-trial order in Finjan, Inc. v.
`
`Secure Computing Corp., et al., Civ. Action No. 06-369-GMS (D. Del.), under
`
`Federal Rules of Evidence 402 and 403. Finjan relies on the district court order
`
`upholding the jury’s willfulness as evidence of alleged copying by the defendants
`
`in the Secure Computing litigation. (Paper 22 at 43-44.) But the ’633 patent was
`
`not asserted in that case and is not discussed in Exhibit 2028. Thus, as explained in
`
`the previous section, Secure Computing materials are not relevant to whether any
`
`of the Secure Computing defendants even infringed any claim of the ’633 patent,
`
`much less whether any of those defendants copied any claimed invention. See Iron
`
`Grip, 392 F.3d at 1325.
`
`IX. CONCLUSION
`For the foregoing reasons, paragraph 57 of the Goodrich Declaration,
`
`paragraphs 13-27 and 30-34 of the Bims Declaration, and Exhibits 2004, 2007,
`
`2012, 2014, 2016, 2018, 2027, 2028, 2029, 2037, and 2048 should be excluded.
`
`
`
`
`
`
`
`15
`
`

`

`Petitioner’s Motion to Exclude
`IPR2015-01974
`
`Dated: November 22, 2016
`
`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Ave., NW, Suite 700
`Washington, DC 20004
`Tel: (703) 456-8000
`Fax: (202) 842-7899
`
`
`
`
`
`
`
`By:
`
`
`
`
`
`Respectfully submitted,
`COOLEY LLP
`
`
`
`/Orion Armon/
`Orion Armon
`Reg. No. 65,421
`
`
`
`16
`
`

`

`Petitioner’s Motion to Exclude
`IPR2015-01974
`
`
`
`CERTIFICATE OF COMPLIANCE WITH PAGE LIMIT
`Pursuant to 37 C.F.R. § 42.24(d), I certify that this Motion complies with the
`
`type-volume limits of 37 C.F.R. § 42.24(a)(1)(v) because it contains 15 pages,
`
`excluding the parts of this Reply that are exempted by 37 C.F.R. § 42.24(a).
`
`
`Dated: November 22, 2016
`
`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Ave., NW, Suite 700
`Washington, DC 20004
`Tel: (703) 456-8000
`Fax: (202) 842-7899
`
`
`
`
`Respectfully submitted,
`COOLEY LLP
`
`By:
`
`/Orion Armon/
`Orion Armon
`Reg. No. 65,421
`
`
`
`
`
`
`
`

`

`Petitioner’s Motion to Exclude
`IPR2015-01974
`
`
`
`CERTIFICATE OF SERVICE
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on November
`
`
`
`22, 2016, a complete and entire copy of this PETITIONER’S MOTION TO
`
`EXCLUDE was served by filing this document through the E2E System and via
`
`electronic mail upon the following counsel of record:
`
`
`
`
`James Hannah
`KRAMER LEVIN NAFTALIS &
`FRANKEL LLP
`
`
`
`990 Marsh Road
`
`
`
`Menlo Park, CA 94025
`
`
`Phone: (650) 752-1712
`
`
`Fax: (650) 752-1812
`
`
`jhannah@kramerlevin.com
`
`
`
`
`
`Michael Kim
`
`
`
`Finjan, Inc.
`2000 University Ave., Ste. 600
`E. Palo Alto, CA 94303
`
`Phone: 650.397.9567
`
`
`mkim@finjan.com
`
`
`USPTO Reg. No. 40,450
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Jeffrey H. Price
`
`KRAMER LEVIN NAFTALIS &
`
`FRANKEL LLP
`
` 1177 Avenue of the Americas
`
`New York, NY 10036
`
`Phone: (212) 715-7502
`
`Fax: (212) 715-8302
`
`jprice@kramerlevin.com
`
`
`
`
`
`
`
`
`
`
`
`
`Michael T. Rosato
`Andrew S. Brown
`WILSON SONSINI GOODRICH
` & ROSATI
`701 Fifth Avenue, Suite 5100
`Seattle, WA 98104-7036
`Phone: (206) 883-2925
`Fax: (206) 883-2699
`mrosato@wsgr.com
`asbrown@wsgr.com
`
`By:
`
`
`
`/Orion Armon/
`Orion Armon
`Reg. No. 65,421
`
`
`
`
`
`
`
`