UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`Palo Alto Networks, Inc.
`Petitioner
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`v.
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`Finjan, Inc.
`Patent Owner
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`U.S. Patent No. 8,141,154
`Filing Date: June 14, 2010
`Issue Date: March 20, 2012
`
`Title: System and Method for Inspecting
`Dynamically Generated Executable Code
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`
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`Inter Partes Review No. 2015-01979
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`Petitioner’s Objections to Supplemental Evidence Under 37 C.F.R. § 42.64
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
`
`Palo Alto Networks, Inc.
`Petitioner
`
`v.
`
`Finjan, Inc.
`Patent Owner
`
`U.S. Patent No. 8,141,154
`Filing Date: June 14, 2010
`Issue Date: March 20, 2012
`
`Title: System and Method for Inspecting
`Dynamically Generated Executable Code
`
`
`
`Inter Partes Review No. 2015-01979
`
`Petitioner’s Objections to Supplemental Evidence Under 37 C.F.R. § 42.64
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`Petitioner’s Objections to Evidence
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`IPR2015-01979 (U.S. Patent No. 8,141,154)
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`Petitioner Palo Alto Networks, Inc. (“Petitioner”) objects to the Declaration
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`of Michael Goodrich served by Finjan, Inc. (“Patent Owner”) as supplemental
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`evidence in support of its Patent Owner Response.
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`
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`Patent Owner served its Patent Owner’s Response on July 12, 2016. Paper
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`No. 22. Petitioner objected to Patent Owner’s evidence on July 19, 2016. Paper
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`No. 23. Patent Owner served supplemental evidence on August 2, 2016.
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`Petitioner’s objections to Patent Owner’s supplemental evidence are timely under
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`37 C.F.R. § 42.64(b)(1). By serving these objections on Patent Owner, Petitioner
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`reserves its right to file a motion to exclude the Goodrich Declaration under 37
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`C.F.R. § 42.64(c).
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`I.
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`DECLARATION OF MICHAEL GOODRICH
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`Petitioner objects to the admissibility of the Goodrich Declaration under
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`FRE 702 because it does not disclose supporting facts or data, or is based on
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`unreliable facts, data, or methods, or includes testimony outside the scope of Dr.
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`Goodrich’s specialized knowledge that will not assist the trier of fact.
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`For example, Dr. Goodrich opines that the infringement charts discussed by
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`Dr. Medvidovic: “[D]emonstrate that the companies discussed therein were able to
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`obtain success as a result of their licenses from Finjan for the ’154 Patent. These
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`charts confirm that the ’154 Patent is not obvious because they are adequate
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`secondary considerations of licensing and commercial success.” Goodrich Decl. at
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`1
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`Petitioner’s Objections to Evidence
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`IPR2015-01979 (U.S. Patent No. 8,141,154)
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`9. Dr. Goodrich’s opinion with respect to Dr. Medvidivic’s opinions regarding
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`secondary considerations is not based on sufficient facts or data, is not the product
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`of reliable principles and methods, will not assist the trier of fact because the
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`subject of the testimony is not within the scope of Dr. Goodrich’s alleged expertise
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`and should therefore be excluded under FRE 702.
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`In another example, Dr. Goodrich states that his review of the Kim
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`Declaration (Ex. 2004) confirms that Mr. Kim had personal knowledge of
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`competitors in the security field, knowledge of Patent Owner’s assertions of
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`infringement, and extensive experience in the field of computer network security.
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`Goodrich Decl. at 10. The Goodrich Declaration’s opinions regarding the Kim
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`Declaration are not based on personal knowledge, are not helpful to the
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`determination of a fact in issue, are irrelevant, are confusing, and are of minimal
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`probative value and should be excluded under FRE 401, 402, 403, 602 and 701.
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`To the extent Dr. Goodrich’s testimony related to the Kim Declaration are
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`intended to be expert opinions, the opinions are outside the scope of Dr.
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`Goodrich’s alleged technical expertise. For example, Dr. Goodrich is not an expert
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`in the fields of competition in the network security business and Patent Owner’s
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`licensing programs. For these reasons, the Goodrich Declaration is also
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`inadmissible under FRE 702.
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`2
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`Petitioner’s Objections to Evidence
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`IPR2015-01979 (U.S. Patent No. 8,141,154)
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`The Goodrich Declaration provides opinions related to the articles submitted
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`by Patent Owner as Exhibits 2009, 2011-2013. Dr. Goodrich’s opinions regarding
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`Exhibits 2009, 2011-2013 are not based on adequate supporting facts or data and
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`are therefore inadmissible under FRE 702.
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`Finally, Petitioner objects to the Goodrich Declaration because it is not cited
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`in Patent Owner’s Response and is an untimely submission of new expert
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`testimony.
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`Dated: August 9, 2016
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`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Ave., NW, Suite 700
`Washington, DC 20004
`Tel: (703) 456-8000
`Fax: (202) 842-7899
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`By:
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`Respectfully submitted,
`COOLEY LLP
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`/Orion Armon/
`Orion Armon
`Reg. No. 65,421
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`3
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`Petitioner’s Objections to Evidence
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`IPR2015-01979 (U.S. Patent No. 8,141,154)
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on August 9,
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`2016, a complete and entire copy of this Petitioner’s Objections to Supplemental
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`Evidence Under 37 C.F.R. § 42.64, was served by filing this document through
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`the Patent Review Processing System and via electronic mail upon the following
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`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
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`By:
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`
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`/Orion Armon/
`Orion Armon
`Reg. No. 65,421
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`counsel of record for Patent Owner:
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`James Hannah
`KRAMER LEVIN NAFTALIS &
`FRANKEL LLP
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`990 Marsh Road
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`Menlo Park, CA 94025
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`Phone: (650) 752-1712
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`Fax: (650) 752-1812
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`jhannah@kramerlevin.com
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`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
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`135247737 v1
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