UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________
`
`PALO ALTO NETWORKS, INC.,
`Petitioner,
`
`v.
`
`FINJAN, INC.,
`Patent Owner.
`
`____________________
`
`Case IPR2015-01979
`Patent 8,141,154
`
`__________________________________________________________
`
`PATENT OWNER’S OBJECTIONS TO EVIDENCE
`UNDER 37 C.F.R. § 42.64
`
`
`
`
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________
`
`PALO ALTO NETWORKS, INC.,
`Petitioner,
`
`v.
`
`FINJAN, INC.,
`Patent Owner.
`
`____________________
`
`Case IPR2015-01979
`Patent 8,141,154
`
`__________________________________________________________
`
`PATENT OWNER’S OBJECTIONS TO EVIDENCE
`UNDER 37 C.F.R. § 42.64
`
`
`
`
`
`Patent Owner’s Objections to Evidence
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`
`Patent Owner Finjan, Inc. (“Finjan) objects under the Federal Rules of
`
`Evidence and 37 C.F.R. § 42.64(b)(1) to the admissibility of the Declaration of Dr.
`
`Aviel Rubin (the “Rubin Declaration”), Sirer, the Declaration of Mr. Emin Sirer
`
`(the “Sirer Declaration”), Detours Article, the use of U.S. Patent No. 6,324,685
`
`(the “’685 Patent”) to establish Sirer as prior art, and the annotated figures
`
`included in Petitioner’s Petition from U.S. Patent Publication No. 2005/0108562
`
`(“Khazan”) (the “Annotated Figures”), submitted by Palo Alto Networks
`
`(“Petitioner”) as Exhibits 1002, 1004, 1008, and 1012, 1024, and Paper No. 2,
`
`respectively. Paper No. 2.
`
`The Institution Decision issued on March 24, 2016. Paper No. 8. The Board
`
`instituted trial as to claims 1-8, 10, and 11. Id. Specifically, the Board instituted
`
`trial for claims 1-5 based on Khazan and Sirer, and claims 6-8, 10, and 11 based on
`
`Khazan, Sirer, and Ben-Natan references. Id. Finjan’s objections are timely under
`
`37 C.F.R. section 42.64(b)(1). Finjan serves Petitioner with these objections to
`
`provide notice that Finjan will move to exclude the Rubin Declaration, Sirer, Sirer
`
`Declaration, Detours Article, the ’685 Patent, and the Annotated Figures as
`
`improper evidence.
`
`I.
`
`Dr. Aviel Rubin Declaration (Ex. 1002)
`
`Finjan objects to the admissibility of the Rubin Declaration for at least the
`
`following reasons: Under FRE 702, Dr. Aviel Rubin’s opinions are inadmissible
`
`- 1 -
`
`
`
`Patent Owner’s Objections to Evidence
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`
`because they are conclusory, do not disclose underlying facts or data in support of
`
`his opinions, and are unreliable. Additionally, Dr. Aviel Rubin is unqualified as an
`
`expert to provide technical opinions of a person skilled in the art. See Ex. 1007
`
`(Curriculum Vitae of Dr. Aviel Rubin). As such, his opinions are inadmissible
`
`under FRE 702. They are also irrelevant, confusing, and of minimal probative
`
`value under FRE 401, 402, and 403. Further, his opinions that rely on the exhibits
`
`are also unreliable and inadmissible for the reasons set forth below.
`
`II.
`
`Sirer (Ex. 1004)
`
`Finjan objects to the admissibility of Sirer for at least the following reasons:
`
`Petitioner has failed to authenticate Sirer under FRE 901 and FRE 602.
`
`Specifically, Petitioner has failed to establish that Sirer is what Petitioner claims it
`
`is, and has failed to authenticate the date by which Sirer was allegedly publicly
`
`accessible as a printed publication, either by examination of Sirer on its face, or by
`
`Exhibits 1008 or Exhibit 1024 at 2 (discussed below). To the extent that Petitioner
`
`attempts to rely on the date that appears on Sirer to establish public accessibility as
`
`a printed publication, the date is hearsay under FRE 801 and is inadmissible under
`
`FRE 802, and further, the date has not been authenticated and is inadmissible
`
`under FRE 901.
`
`- 2 -
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`
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`Patent Owner’s Objections to Evidence
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`
`Because of these deficiencies, Sirer is not relevant under FRE 401 and is
`
`inadmissible under FRE 402 and FRE 403 because Petitioner has failed to
`
`establish that Sirer is a prior art printed publication under 35 U.S.C. § 102(b).
`
`III. Emin Gun Sirer Declaration (Ex. 1008)
`Finjan objects to the admissibility of the Sirer Declaration for at least the
`
`following reasons: Under FRE 702, Mr. Emin Sirer’s opinions are inadmissible
`
`because they are conclusory, do not disclose underlying facts or data in support of
`
`his opinions, and are unreliable. Additionally, Mr. Emin Sirer is unqualified as an
`
`expert to provide technical opinions of a person of skill in the art. As such, his
`
`opinions are inadmissible under FRE 702. Moreover, Petitioner has failed to
`
`authenticate Sirer through the Sirer Declaration under FRE 901. Specifically,
`
`Petitioner has failed to establish that the Sirer document referenced in the Sirer
`
`Declaration is what Petitioner claims it is, and has failed to authenticate the date by
`
`which Sirer was allegedly publicly accessible as a printed publication through the
`
`Sirer Declaration. Finjan also objects because the Sirer Declaration is hearsay
`
`under FRE 801 and inadmissible under FRE 802. Accordingly, the Sirer
`
`Declaration is not relevant under FRE 401 and is inadmissible under FRE 402 and
`
`FRE 403.
`
`- 3 -
`
`
`
`Patent Owner’s Objections to Evidence
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`
`IV. Detours Article (Ex. 1012)
`Finjan objects to the admissibility of the Detours Article for at least the
`
`following reasons: Petitioner has failed to authenticate the Detours article under
`
`FRE 901 and FRE 602. Specifically, Petitioner has failed to establish that the
`
`Detours Article is what Petitioner claims it is. Finjan also objects on the grounds
`
`that the Detours Article is hearsay under FRE 801 and is inadmissible under FRE
`
`802. Accordingly, the Detours Article is not relevant under FRE 401 and is
`
`inadmissible under FRE 402 and FRE 403.
`
`V. The ’685 Patent To Establish Sirer As Prior Art (Ex. 1024)
`Finjan objects to the admissibility of the ’685 Patent for at least the
`
`following reasons: Petitioner is improperly introducing the ’685 Patent for the
`
`purpose of establishing the date Sirer was publicly available prior art. Paper No. 2
`
`at 5 (“ … citations to the article in prior-art patents confirm the publication date.”).
`
`Accordingly, Petitioner has failed to authenticate Sirer through the ’685 Patent
`
`under FRE 901 and FRE 602. Specifically, Petitioner has failed to establish that
`
`the Sirer document cited in the ’685 Patent is what Petitioner claims it is, and has
`
`failed to authenticate the date by which Sirer was allegedly publicly accessible as a
`
`printed publication through the ’685 Patent. To the extent that Petitioner attempts
`
`to rely on the date that appears on the ’685 Patent to establish public accessibility
`
`of Sirer as a printed publication, the date is hearsay under FRE 801 and is
`
`- 4 -
`
`
`
`Patent Owner’s Objections to Evidence
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`
`inadmissible under FRE 802. Because of these deficiencies, Petitioner has failed
`
`to demonstrate that the ’685 Patent establishes that Sirer is a prior art printed
`
`publication under 35 U.S.C. § 102(b). Accordingly, the ’685 Patent is not relevant
`
`under FRE 401 and is inadmissible under FRE 402 and FRE 403.
`
`VI. Annotated Figures
`Finjan objects to the admissibility of the Annotated Figures included in
`
`Petitioner’s Petition (Paper No. 2) for at least the following reasons: Petitioner is
`
`improperly relying on annotated figures that are not directly from Khazan.
`
`Compare Paper No. 2 at 24, Fig. 1 with Ex. 1003 at Fig. 7; compare Paper No. 2 at
`
`29, Fig. 2 with Ex. 1003 at Fig. 9; compare Paper No. 2 at 40, Fig. 4 with Ex. 1003
`
`at Fig. 9. Accordingly, Petitioner has failed to authenticate these annotated
`
`exhibits under FRE 901 and FRE 602. Specifically, these exhibits are not the
`
`same exhibits as those in Khazan. To the extent that Petitioner attempts to rely on
`
`these annotated exhibits, these annotations are hearsay under FRE 801 and are
`
`inadmissible under FRE 802. Because of these deficiencies, the annotated exhibits
`
`are not relevant under FRE 401 and are inadmissible under FRE 402 and FRE
`
`403.
`
`VII. Conclusion
`Therefore, Finjan reserves its right to file motions to exclude these exhibits
`
`and evidence under 37 C.F.R. section 42.64(c).
`
`- 5 -
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`
`
`Patent Owner’s Objections to Evidence
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`
`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: 212.715.8000
`
`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: 212.715.8302
`
`Michael Kim (Reg. No. 40,450)
`Finjan, Inc.
`2000 University Ave., Ste. 600
`E. Palo Alto, CA 94303
`Tel: 650.397.9567
`mkim@finjan.com
`
`Attorneys for Patent Owner
`
`Dated: April 4, 2016
`
`(Case No. IPR2015-01979)
`
`- 6 -
`
`
`
`Patent Owner’s Objections to Evidence
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`
`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 Objections to Evidence Under 37
`
`C.F.R. § 42.64 was served on April 4, 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:
`
`
`
`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
`
`
`
`
`
`
`
`
`/James Hannah/
`
`James Hannah (Reg. No. 56,369)
`Kramer Levin Naftalis & Frankel LLP
`990 Marsh Road,
`Menlo Park, CA 94025
`(650) 752-1700
`
`
`Orion Armon
`Brian Eutermoser
`COOLEY LLP
`380 Interlocken Crescent, Suite 900
`Broomfield, Colorado 80021
`oarmon@cooley.com
`beutermoser@cooley.com
`zpatdcdocketing@cooley.com
`
`
`
`
`
`- 7 -
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