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 SUPPLEMENTAL 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 SUPPLEMENTAL EVIDENCE
`UNDER 37 C.F.R. § 42.64
`
`
`
`
`
`Patent Owner’s Objections to Supplemental Evidence
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`
`Palo Alto Networks, Inc. (“Petitioner”) served supplemental evidence on
`
`April 15, 2016. Patent Owner Finjan, Inc. (“Finjan”) objects under the Federal
`
`Rules of Evidence and 37 C.F.R. § 42.64 to the admissibility of the supplemental
`
`evidence. Specifically, Finjan objects to:
`
`• Declaration of Mel DeSart (the “DeSart Declaration”), submitted by Palo
`
`Alto Networks (“Petitioner”) as Exhibit 1036
`
`Finjan timely serves Petitioner this second set of objections under 37 C.F.R.
`
`§ 42.64 to provide notice that Finjan will move to exclude the supplemental
`
`evidence as improper evidence.
`
`I.
`
`The DeSart Declaration (Ex. 1036)
`
`Finjan objects to the admissibility of the DeSart Declaration for at least the
`
`following reasons: Petitioner’s service of the DeSart Declaration is untimely and
`
`procedurally improper to the extent it is supplemental information under 37 C.F.R.
`
`§ 42.123, not supplemental evidence. Under FRE 702, Mr. Mel DeSart’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. Mel DeSart is
`
`unqualified as an expert to provide technical opinions of a person skilled in the art
`
`and lacks knowledge regarding the public accessibility of Sirer. As such, his
`
`opinions are inadmissible under FRE 702 and he lacks personal knowledge under
`
`FRE 602. Moreover, Petitioner has failed to establish that the Operating Systems
`
`- 1 -
`
`
`
`Patent Owner’s Objections to Supplemental Evidence
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`
`Review Article (“Exhibit A”) referenced in the DeSart Declaration is what
`
`Petitioner claims it is, and has failed to authenticate the date by which Exhibit A
`
`was allegedly publicly accessible as a printed publication. Finjan also objects
`
`because the DeSart Declaration is hearsay under FRE 801 and inadmissible under
`
`FRE 802 and FRE 803. His opinions 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.
`
`
`
` Operating Systems Review Article (Exhibit A) A.
`
`Finjan objects to the admissibility of Exhibit A for at least the following
`
`reasons: Petitioner is improperly introducing Exhibit A for the purpose of
`
`establishing the date Sirer (Ex. 1036, pp. 6-20) was publicly available prior art.
`
`Accordingly, Petitioner has failed to authenticate Sirer through the DeSart
`
`Declaration under FRE 901 and FRE 602. Exhibit A is not self-authenticating
`
`under FRE 901, not the original under FRE 1002, and not a “duplicate” under
`
`FRE 1001(e) and FRE 1003. Specifically, Petitioner has failed to establish that
`
`Exhibit A is what Petitioner claims it to be. For example, it cannot be determined
`
`whether the Sirer article was actually in the Operating Systems Review.
`
`Moreover, the original Sirer article (Ex. 1004) that Petitioner introduced is
`
`different than the article produced in Exhibit A. Finjan further objects to
`
`- 2 -
`
`
`
`Patent Owner’s Objections to Supplemental Evidence
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`
`Petitioner’s selective inclusion of material from the document in Exhibit A. Under
`
`FRE 106, the complete version of Exhibit 2001, in fairness, ought to be
`
`considered.
`
`To the extent that Petitioner attempts to rely on any date that appears on
`
`Exhibit A to establish public accessibility of Sirer as a printed publication, the date
`
`is hearsay under FRE 801 and is inadmissible under FRE 802 and FRE 803, and
`
`further, the date has not been authenticated and is inadmissible under FRE 901 and
`
`FRE 902.
`
`Because of these deficiencies, Petitioner has failed to establish that Sirer is a
`
`prior art printed publication through the DeSart Declaration and Exhibit A.
`
`Accordingly, Exhibit A is irrelevant, confusing, and of minimal probative value
`
`under FRE 401, FRE 402, and FRE 403.
`
`II. Conclusion
`
`Therefore, Finjan will file motions to exclude these exhibits under 37 C.F.R.
`
`§ 42.64(c).
`
`
`
`
`
`- 3 -
`
`
`
`Patent Owner’s Objections to Supplemental Evidence
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`
`Dated: April 22, 2016
`
`(Case No. IPR2015-01979)
`
`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
`
`- 4 -
`
`
`
`Patent Owner’s Objections to Supplemental 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 Supplemental
`
`Evidence Under 37 C.F.R. § 42.64 was served on April 22, 2016, by 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
`
`- 1 -
`
`Orion Armon
`Brian Eutermoser
`COOLEY LLP
`380 Interlocken Crescent, Suite 900
`Broomfield, Colorado 80021
`oarmon@cooley.com
`beutermoser@cooley.com
`zpatdcdocketing@cooley.com
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