UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`PALO ALTO NETWORKS, INC.,
`Petitioner,
`
`
`v.
`
`FINJAN, INC.,
`Patent Owner.
`____________________
`
`Case IPR2015-019791
`U.S. Patent No. 8,141,154
`
`__________________________________________________________
`
`PATENT OWNER’S OBJECTIONS TO EVIDENCE IN PETITIONER’S
`REPLY UNDER 37 C.F.R. § 42.64
`
`
`1 Case IPR2016-00919 has been joined with this proceeding.
`
`
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`PALO ALTO NETWORKS, INC.,
`Petitioner,
`
`
`v.
`
`FINJAN, INC.,
`Patent Owner.
`____________________
`
`Case IPR2015-019791
`U.S. Patent No. 8,141,154
`
`__________________________________________________________
`
`PATENT OWNER’S OBJECTIONS TO EVIDENCE IN PETITIONER’S
`REPLY UNDER 37 C.F.R. § 42.64
`
`
`1 Case IPR2016-00919 has been joined with this proceeding.
`
`
`
`Patent Owner’s Objections to Evidence
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`
`Patent Owner Finjan, Inc. (“Patent Owner”) objects under the Federal Rules
`
`
`
`
`of Evidence and 37 C.F.R. § 42.64(b)(1) to the admissibility of the following
`
`documents submitted by Palo Alto Networks, Inc. and Symantec Corp.
`
`(“Petitioner”) in its Reply to Patent Owner’s Response (“Reply”). Paper No. 35.
`
`Patent Owner also incorporates its Objections to Evidence to Petitioner’s Petition
`
`for IPR, filed on April 4, 2016, below. Paper No. 10.
`
`
`
`Petitioner’s Reply was filed on October 28, 2016. Patent Owner’s
`
`objections are timely under 37 C.F.R. § 42.64(b)(1). Patent Owner serves
`
`Petitioner with these objections to provide notice that Patent Owner will move to
`
`exclude these exhibits as improper evidence.
`
`I.
`
`PETITIONER’S REPLY EVIDENCE
`A. Dr. Aviel Rubin Declaration (“Rubin Declaration”) (Ex. 1002)
`Patent Owner objects to the admissibility of the Rubin Declaration for at
`
`least the following reasons:
`
`
`1.
`
`Under FRE 702, Dr. Aviel Rubin’s opinions are inadmissible 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.
`
`1
`
`
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`Patent Owner’s Objections to Evidence
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`
`
`Petitioner has failed to authenticate the Rubin Declaration under FRE
`
`
`2.
`
`901 and FRE 602. To the extent that Petitioner attempts to rely on any date that
`
`appears on the Rubin Declaration, 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.
`
`
`3.
`
`Patent Owner objects to the Rubin Declaration because it does not
`
`introduce evidence of Dr. Rubin’s personal knowledge of the subject matter of the
`
`testimony contained therein, rendering such testimony inadmissible under FRE
`
`602.
`
`
`4.
`
`Patent Owner also objects because the Rubin Declaration is hearsay
`
`under FRE 801 and inadmissible under FRE 802 and FRE 803.
`
`
`5.
`
`His opinions are also irrelevant, confusing, and of minimal probative
`
`value under FRE 401, 402, and 403. Further, his opinions that rely on the cited
`
`exhibits are also unreliable and inadmissible.
`
`Sirer (Exhibit 1004)
`
`B.
`Patent Owner objects to the admissibility of Sirer for at least the following
`
`reasons:
`
`
`1.
`
`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
`
`
`
`2
`
`
`
`publicly accessible as a printed publication, either by examination of Sirer on its
`
`Patent Owner’s Objections to Evidence
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`
`
`face, or by Exhibit 1008. 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 FRE 803,
`
`and further, the date has not been authenticated and is inadmissible under FRE
`
`901.
`
`
`2.
`
`Because of these deficiencies, Sirer is not relevant under FRE 401
`
`and is inadmissible under FRE 402 and FRE 403.
`
`C. Declaration of Mr. Emin Sirer (“Sirer Declaration”) (Exhibit
`1008)
`
`Patent Owner objects to the admissibility of the Sirer Declaration for at least
`
`the following reasons:
`
`
`1.
`
`Petitioner previously withdrew the Sirer Declaration and replaced it
`
`with the Declaration of Mel DeSart. Accordingly, the Sirer Declaration is not
`
`relevant under FRE 401 and FRE 402, and any such reliance on the Sirer
`
`Declaration would be highly prejudicial to Patent Owner under FRE 403.
`
`
`2.
`
`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. As such, his opinions are inadmissible under FRE 702. Moreover,
`
`Petitioner has failed to authenticate Sirer through the Sirer Declaration under FRE
`
`
`
`3
`
`
`
`901. Specifically, Petitioner has failed to establish that the Sirer document
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`Patent Owner’s Objections to Evidence
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`
`
`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.
`
`
`3.
`
`To the extent that Petitioner attempts to rely on the date that appears
`
`on the Sirer Declaration to establish public accessibility 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.
`
`
`4.
`
`Patent Owner also objects because the Sirer Declaration is hearsay
`
`under FRE 801 and inadmissible under FRE 802 and FRE 803.
`
`
`5.
`
`Patent Owner objects to the Sirer Declaration because it does not
`
`introduce evidence of Mr. Sirer’s personal knowledge of the subject matter of the
`
`testimony contained therein, rendering such testimony inadmissible under FRE
`
`602.
`
`
`6.
`
`Accordingly, the Sirer Declaration is not relevant under FRE 401 and
`
`is inadmissible under FRE 402. Moreover, the Sirer Declaration is confusing, of
`
`minimal probative value, outweighed by prejudice, and/or a waste of time and is
`
`therefore inadmissible under FRE 403.
`
`
`
`4
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`
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`Patent Owner’s Objections to Evidence
`IPR2015-01979 (U.S. Patent No. 8,141,154)
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`D. Detours Article (Exhibit 1012)
`Patent Owner objects to the admissibility of the Detours Article for at least
`
`the following reasons:
`
`
`1.
`
`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, and has failed to authenticate the date by
`
`which the Detours article was allegedly publicly accessible as a printed
`
`publication, either by examination of the Detours article on its face. To the extent
`
`that Petitioner attempts to rely on the date that appears on the Detours article to
`
`establish public accessibility 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.
`
`
`2.
`
`Patent Owner also objects on the grounds that the Detours Article is
`
`hearsay under FRE 801 and is inadmissible under FRE 802 and FRE 803.
`
`
`3.
`
`Accordingly, the Detours Article is not relevant under FRE 401 and is
`
`inadmissible under FRE 402. Moreover, the Detours Article is confusing, of
`
`minimal probative value, outweighed by prejudice, and/or a waste of time and is
`
`therefore inadmissible under FRE 403.
`
`
`
`5
`
`
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`Patent Owner’s Objections to Evidence
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`
`
`The ’685 Patent To Establish Sirer As Prior Art (“’685 Patent”)
`(Ex. 1024)
`
`E.
`
`Patent Owner objects to the admissibility of the ’685 Patent for at least the
`
`following reasons:
`
`
`1.
`
`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.
`
`
`2.
`
`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 inadmissible under FRE 802 and FRE
`
`803, and further, the date has not been authenticated and is inadmissible under
`
`FRE 901.
`
`
`3.
`
`The ‘685 Patent is hearsay under FRE 801 and is inadmissible under
`
`FRE 802 and FRE 803.
`
`
`4.
`
`Because of these deficiencies, Petitioner has failed to demonstrate that
`
`the ’685 Patent establishes that Sirer is prior art.
`
`
`
`6
`
`
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`Patent Owner’s Objections to Evidence
`IPR2015-01979 (U.S. Patent No. 8,141,154)
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`Accordingly, the ’685 Patent is not relevant under FRE 401 and is
`
`
`5.
`
`inadmissible under FRE 402. Moreover, the ’685 Patent is confusing, of minimal
`
`probative value, outweighed by prejudice, and/or a waste of time and is therefore
`
`inadmissible under FRE 403.
`
`F. Annotated Figures
`Patent Owner objects to the admissibility of the Annotated Figures included
`
`in Petitioner’s Petition (Paper No. 2) for at least the following reasons:
`
`
`1.
`
`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.
`
`
`2.
`
`Petitioner has failed to authenticate the Annotated Figures under FRE
`
`901 and FRE 602. Specifically, Petitioner has failed to establish that the
`
`Annotated Figures are what Petitioner claims they are.
`
`
`3.
`
`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.
`
`
`
`7
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`Patent Owner’s Objections to Evidence
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`
`
`Because of these deficiencies, the annotated exhibits are not relevant
`
`
`4.
`
`under FRE 401 and are inadmissible under FRE 402. Moreover, the annotated
`
`exhibits are confusing, of minimal probative value, outweighed by prejudice,
`
`and/or a waste of time and are therefore inadmissible under FRE 403.
`
`G. Declaration of Mel DeSart (“DeSart Declaration”) (Exhibit 1036)
`Patent Owner objects to the admissibility of the DeSart Declaration for at
`
`least the following reasons:
`
`
`1.
`
`Patent Owner objects to the DeSart Declaration as not relevant under
`
`FRE 401 and FRE 402 because it exceeds the proper scope of Petitioner’s Reply.
`
`See 37 C.F.R. § 42.23(b). Patent Owner further objects to the DeSart Declaration
`
`under FRE 403 because of the prejudice arising from Patent Owner’s inability to
`
`respond to the untimely evidence and arguments therein.
`
`
`2.
`
`Patent Owner objects to the DeSart Declaration as untimely because it
`
`should have been introduced in its Petition. See 37 C.F.R. § 42.104(b); 37 C.F.R. §
`
`42.23(b). Patent Owner objects to the DeSart Declaration because it is
`
`supplemental information that is improper and untimely under 37 C.F.R. § 42.123.
`
`
`3.
`
`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 and lacks personal knowledge regarding the public accessibility of Sirer. As
`
`
`
`8
`
`
`
`such, his opinions are inadmissible under FRE 702 and he lacks personal
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`Patent Owner’s Objections to Evidence
`IPR2015-01979 (U.S. Patent No. 8,141,154)
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`knowledge under FRE 602.
`
`
`4.
`
`Patent Owner also objects because the DeSart Declaration is hearsay
`
`under FRE 801 and inadmissible under FRE 802 and FRE 803.
`
`
`5.
`
`His opinions are also irrelevant, confusing, and of minimal probative
`
`value under FRE 401 and FRE 402. Moreover, the DeSart Declaration is
`
`confusing, of minimal probative value, outweighed by prejudice, and/or a waste of
`
`time and is therefore inadmissible under FRE 403.
`
`
`6.
`
`Further, his opinions that rely on the exhibits are also unreliable and
`
`inadmissible for the reasons set forth below.
`
`
`
`9
`
`
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`Patent Owner’s Objections to Evidence
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`
`
`1. Operating Systems Review Article (Exhibit A)
`Patent Owner objects to Exhibit A as not relevant under FRE 401 and
`
`
`1.
`
`FRE 402 because it exceeds the proper scope of Petitioner’s Reply. See 37 C.F.R.
`
`§ 42.23(b). Patent Owner further objects to Exhibit A under FRE 403 because of
`
`the prejudice arising from Patent Owner’s inability to respond to the untimely
`
`evidence and arguments therein.
`
`
`2.
`
`Patent Owner objects to Exhibit A as untimely because it should have
`
`been introduced in its Petition. See 37 C.F.R. § 42.104(b); 37 C.F.R. § 42.23(b).
`
`Patent Owner objects to Exhibit A because it is supplemental information that is
`
`improper and untimely under 37 C.F.R. § 42.123.
`
`
`3.
`
`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.
`
`
`
`10
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`
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`Patent Owner’s Objections to Evidence
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`
`
`Patent Owner further objects to Petitioner’s selective inclusion of
`
`
`4.
`
`material from the document in Exhibit A. Under FRE 106, the complete version
`
`of Exhibit 2001, in fairness, ought to be considered.
`
`
`5.
`
`Petitioner has failed to authenticate Exhibit A under FRE 901 and
`
`FRE 602. Specifically, Petitioner has failed to establish that Exhibit A 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, either by examination of
`
`Exhibit A on its face. To the extent that Petitioner attempts to rely on any date that
`
`appears on Exhibit A to establish public accessibility 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.
`
`
`6.
`
`Patent Owner objects to Exhibit A because it does not introduce
`
`evidence of Mr. DeSart’s personal knowledge of the subject matter of the
`
`testimony contained therein, rendering such testimony inadmissible under FRE
`
`602.
`
`
`7.
`
`Patent Owner also objects because Exhibit A is hearsay under FRE
`
`801 and inadmissible under FRE 802 and FRE 803.
`
`
`8.
`
`Because of these deficiencies, Petitioner has failed to establish that
`
`Sirer is a prior art printed publication through the DeSart Declaration and Exhibit
`
`
`
`11
`
`
`
`A. Accordingly, Exhibit A is not relevant under FRE 401 and inadmissible under
`
`Patent Owner’s Objections to Evidence
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`
`
`FRE 402. Further, Exhibit A is confusing, of minimal probative value,
`
`outweighed by prejudice, and/or a waste of time and therefore inadmissible under
`
`FRE 403.
`
`H. Declaration of Nenad Medvidovic in Support of Plaintiff Finjan,
`Inc.’s Opening Claim Construction Brief, in Finjan, Inc. v.
`Websense, Inc., Case No. 13-cv-04398-BLF (Exhibit 2 to
`Deposition of Nenad Medvidovic, taken October 21, 2016)
`(“Medvidovic Declaration Ex. 2”) (Exhibit 1039)
`
`Patent Owner objects to the admissibility of the Medvidovic Declaration Ex.
`
`2 for at least the following reasons:
`
`
`1.
`
`Patent Owner objects to the Medvidovic Declaration Ex. 2 as not
`
`relevant under FRE 401 and FRE 402 because it exceeds the proper scope of
`
`Petitioner’s Reply. See 37 C.F.R. § 42.23(b). Patent Owner further objects to the
`
`Medvidovic Declaration Ex. 2 under FRE 403 because of the prejudice arising
`
`from Patent Owner’s inability to respond to the untimely evidence and arguments
`
`therein.
`
`
`2.
`
`Patent Owner objects to the Medvidovic Declaration Ex. 2 as
`
`untimely because it should have been introduced in its Petition. See 37 C.F.R. §
`
`42.104(b); 37 C.F.R. § 42.23(b). Patent Owner objects to the Medvidovic
`
`Declaration Ex. 2 because it is supplemental information that is improper and
`
`untimely under 37 C.F.R. § 42.123.
`
`
`
`12
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`
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`Patent Owner’s Objections to Evidence
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`
`
`Petitioner has failed to authenticate the Medvidovic Declaration Ex. 2
`
`
`3.
`
`under FRE 901 and FRE 602. Specifically, Petitioner has failed to establish that
`
`the Medvidovic Declaration Ex. 2 is what Petitioner claims it to be.
`
`
`4.
`
`Patent Owner objects to the portions of the Medvidovic Declaration
`
`Ex. 2 that Petitioner does not cite to or rely on in its Reply. Accordingly, such
`
`evidence is not relevant under FRE 401 and is inadmissible under FRE 402. Any
`
`attempt by Petitioner to rely on these portions would be highly prejudicial to Patent
`
`Owner under FRE 403.
`
`
`5.
`
`Patent Owner also objects because the Medvidovic Declaration Ex. 2
`
`is hearsay under FRE 801 and inadmissible under FRE 802 and FRE 803.
`
`
`6.
`
`Accordingly, for at least the foregoing reasons, the Medvidovic
`
`Declaration Ex. 2 is not relevant under FRE 401 and inadmissible under FRE 402.
`
`Moreover, the Medvidovic Declaration Ex. 2 is confusing, of minimal probative
`
`value, outweighed by prejudice, and/or a waste of time and is therefore
`
`inadmissible under FRE 403.
`
`I.
`
`Declaration of Nenad Medvidovic in Support of Plaintiff Finjan,
`Inc.’s Opening Claim Construction Brief, in Finjan, Inc. v.
`Symantec Corp., Case No. 5:13-cv-02298-HSG (Exhibit 3 to
`Deposition of Nenad Medvidovic, taken October 21, 2016)
`(“Medvidovic Declaration Ex. 3”) (Exhibit 1040)
`
`Patent Owner objects to the admissibility of the Medvidovic Declaration Ex.
`
`3 for at least the following reasons:
`
`
`
`13
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`
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`Patent Owner’s Objections to Evidence
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`
`
`Patent Owner objects to the Medvidovic Declaration Ex. 3 as not
`
`
`1.
`
`relevant under FRE 401 and FRE 402 because it exceeds the proper scope of
`
`Petitioner’s Reply. See 37 C.F.R. § 42.23(b). Patent Owner further objects to the
`
`Medvidovic Declaration Ex. 3 under FRE 403 because of the prejudice arising
`
`from Patent Owner’s inability to respond to the untimely evidence and arguments
`
`therein.
`
`
`2.
`
`Patent Owner objects to the Medvidovic Declaration Ex. 3 as
`
`untimely because it should have been introduced in its Petition. See 37 C.F.R. §
`
`42.104(b); 37 C.F.R. § 42.23(b). Patent Owner objects to the Medvidovic
`
`Declaration Ex. 3 because it is supplemental information that is improper and
`
`untimely under 37 C.F.R. § 42.123.
`
`
`3.
`
`Petitioner has failed to authenticate the Medvidovic Declaration Ex. 3
`
`under FRE 901 and FRE 602. Specifically, Petitioner has failed to establish that
`
`the Medvidovic Declaration Ex. 3 is what Petitioner claims it to be.
`
`
`4.
`
`Patent Owner objects to the portions of the Medvidovic Declaration
`
`Ex. 3 that Petitioner does not cite to or rely on these portions in its Reply.
`
`Accordingly, such evidence is not relevant under FRE 401 and is inadmissible
`
`under FRE 402. Any attempt by Petitioner to rely on these portions would be
`
`highly prejudicial to Patent Owner under FRE 403.
`
`
`
`14
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`
`
`Patent Owner’s Objections to Evidence
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`
`
`Patent Owner also objects because the Medvidovic Declaration Ex. 3
`
`
`5.
`
`is hearsay under FRE 801 and inadmissible under FRE 802 and FRE 803.
`
`
`6.
`
`Patent Owner also objects because the Medvidovic Declaration Ex. 3
`
`is not relevant. For example, the Medvidovic Declaration Ex. 3 was supporting the
`
`claim construction of the term “content processor,” which is outside the scope of
`
`the “content” discussed in the present case.
`
`
`7.
`
`Accordingly, the Medvidovic Declaration Ex. 3 is not relevant under
`
`FRE 401 and inadmissible under FRE 402. Moreover, Medvidovic Declaration
`
`Ex. 3 is confusing, of minimal probative value, outweighed by prejudice, and/or a
`
`waste of time and is therefore inadmissible under FRE 403.
`
`J.
`
`Declaration of Nenad Medvidovic in Support of Plaintiff Finjan,
`Inc.’s Opening Claim Construction Brief, in Finjan, Inc. v.
`Proofpoint, Inc. and Armorize Technologies, Inc., Case No. 13-cv-
`04398-BLF (Exhibit 4 to Deposition of Nenad Medvidovic, taken
`October 21, 2016) (“Medvidovic Declaration Ex. 4”) (Exhibit
`1041)
`
`Patent Owner objects to the admissibility of the Medvidovic Declaration Ex.
`
`4 for at least the following reasons:
`
`
`1.
`
`Patent Owner objects to the Medvidovic Declaration Ex. 4 as not
`
`relevant under FRE 401 and FRE 402 because it exceeds the proper scope of
`
`Petitioner’s Reply. See 37 C.F.R. § 42.23(b). Patent Owner further objects to the
`
`Medvidovic Declaration Ex. 4 under FRE 403 because of the prejudice arising
`
`
`
`15
`
`
`
`from Patent Owner’s inability to respond to the untimely evidence and arguments
`
`Patent Owner’s Objections to Evidence
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`
`
`therein.
`
`
`2.
`
`Patent Owner objects to the Medvidovic Declaration Ex. 4 as
`
`untimely because it should have been introduced in its Petition. See 37 C.F.R. §
`
`42.104(b); 37 C.F.R. § 42.23(b). Patent Owner objects to the Medvidovic
`
`Declaration Ex. 4 because it is supplemental information that is improper and
`
`untimely under 37 C.F.R. § 42.123.
`
`
`3.
`
`Petitioner has failed to authenticate the Medvidovic Declaration Ex. 4
`
`under FRE 901 and FRE 602. Specifically, Petitioner has failed to establish that
`
`the Medvidovic Declaration Ex. 4 is what Petitioner claims it to be.
`
`
`4.
`
`Patent Owner objects to the portions of the Medvidovic Declaration
`
`Ex. 4 that Petitioner does not cite to or rely on in its Reply. Accordingly, such
`
`evidence is not relevant under FRE 401 and is inadmissible under FRE 402. Any
`
`attempt by Petitioner to rely on these portions would be highly prejudicial to Patent
`
`Owner under FRE 403.
`
`
`5.
`
`Patent Owner also objects because the Medvidovic Declaration Ex. 4
`
`is hearsay under FRE 801 and inadmissible under FRE 802 and FRE 803.
`
`
`6.
`
`Patent Owner also objects because the Medvidovic Declaration Ex. 4
`
`is not relevant. For example, the Medvidovic Declaration Ex. 4 was discussing a
`
`
`
`16
`
`
`
`means-plus-function argument, which is outside the scope of the “content”
`
`Patent Owner’s Objections to Evidence
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`
`
`discussed in the present case.
`
`
`7.
`
`Accordingly, the Medvidovic Declaration Ex. 4 is not relevant under
`
`FRE 401 and inadmissible under FRE 402. Moreover, the Medvidovic
`
`Declaration Ex. 4 is confusing, of minimal probative value, outweighed by
`
`prejudice, and/or a waste of time and is therefore inadmissible under FRE 403.
`
`K. Massachusetts Institute of Technology Bio of Dr. Roger I. Khazan
`(“Khazan Bio”) (Exhibit 1042)
`
`Patent Owner objects to the admissibility of the Khazan Bio for at least the
`
`following reasons:
`
`
`1.
`
`Patent Owner objects to the Khazan Bio because Petitioner does not
`
`cite to or rely on the Khazan Bio in its Reply. Accordingly, such evidence is not
`
`relevant under FRE 401 and is inadmissible under FRE 402. Any attempt to rely
`
`on the Khazan Bio would be highly prejudicial to Patent Owner under FRE 403.
`
`
`2.
`
`Patent Owner objects to the Khazan Bio as not relevant under FRE
`
`401 and FRE 402 because it exceeds the proper scope of Petitioner’s Reply. See
`
`37 C.F.R. § 42.23(b). Patent Owner further objects to the Khazan Bio under FRE
`
`403 because of the prejudice arising from Patent Owner’s inability to respond to
`
`the untimely evidence and arguments therein.
`
`
`3.
`
`Patent Owner objects to the Khazan Bio as untimely because it should
`
`have been introduced in its Petition. See 37 C.F.R. § 42.104(b); 37 C.F.R. §
`
`
`
`17
`
`
`
`42.23(b). Patent Owner objects to the Khazan Bio because it is supplemental
`
`Patent Owner’s Objections to Evidence
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`
`
`information that is improper and untimely under 37 C.F.R. § 42.123.
`
`
`4.
`
`Petitioner has failed to authenticate the Khazan Bio under FRE 901
`
`and FRE 602. Specifically, Petitioner has failed to establish that the Khazan Bio is
`
`what Petitioner claims it to be.
`
`
`5.
`
`Patent Owner also objects because the Khazan Bio is hearsay under
`
`FRE 801 and inadmissible under FRE 802 and FRE 803.
`
`
`6.
`
`Accordingly, the Khazan Bio is not relevant under FRE 401 and
`
`inadmissible under FRE 402. Moreover, the Khazan Bio is confusing, of minimal
`
`probative value, outweighed by prejudice, and/or a waste of time and is therefore
`
`inadmissible under FRE 403.
`
`L. Danny Nebenzahl, et al, “Install-time Vaccination of Windows
`Executables to Defend Against Stack Smashing Attacks
`(“Nebenzahl”) (Exhibit 1044)
`
`Patent Owner objects to the admissibility of Nebenzahl for at least the
`
`following reasons:
`
`
`1.
`
`Patent Owner objects to Nebenzahl as not relevant under FRE 401
`
`and FRE 402 because it exceeds the proper scope of Petitioner’s Reply. See 37
`
`C.F.R. § 42.23(b). Patent Owner further objects to Nebenzahl under FRE 403
`
`because of the prejudice arising from Patent Owner’s inability to respond to the
`
`untimely evidence and arguments therein.
`
`
`
`18
`
`
`
`Patent Owner’s Objections to Evidence
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`
`Patent Owner objects to Nebenzahl as untimely because it should have
`
`
`2.
`
`been introduced in its Petition. See 37 C.F.R. § 42.104(b); 37 C.F.R. § 42.23(b).
`
`Patent Owner objects to Nebenzahl because it is supplemental information that is
`
`improper and untimely under 37 C.F.R. § 42.123.
`
`
`3.
`
`Petitioner has failed to authenticate Nebenzahl under FRE 901 and
`
`FRE 602. Specifically, Petitioner has failed to establish that the Nebenzahl is what
`
`Petitioner claims it to be.
`
`
`4.
`
`Patent Owner objects to Nebenzahl because Petitioner does not cite to
`
`or rely on Nebenzahl in its Reply. Accordingly, such evidence is not relevant
`
`under FRE 401 and is inadmissible under FRE 402. Any attempt to rely on
`
`Nebenzahl would be highly prejudicial to Patent Owner under FRE 403.
`
`
`5.
`
`To the extent that Petitioner attempts to rely on any date that appears
`
`on Nebenzahl to establish the public accessibility of Nebenzahl as a printed
`
`publication, the date is hearsay under FRE 801 and is inadmissible under FRE 802
`
`and FRE 803. Further, the date has not been authenticated and is inadmissible
`
`under FRE 901.
`
`
`6.
`
`Additionally, the Board did not institute IPR based on Nebenzahl, and
`
`therefore it is not relevant under FRE 401, is inadmissible under FRE 402, and
`
`highly prejudicial to Patent Owner under FRE 403.
`
`
`
`19
`
`
`
`Patent Owner’s Objections to Evidence
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`
`
`Patent Owner also objects because Nebenzahl is hearsay under FRE
`
`
`7.
`
`801 and inadmissible under FRE 802 and FRE 803.
`
`
`8.
`
`Accordingly, the Nebenzahl is not relevant under FRE 401 and
`
`inadmissible under FRE 402. Moreover, Nebenzahl is confusing, of minimal
`
`probative value, outweighed by prejudice, and/or a waste of time and therefore
`
`inadmissible under FRE 403.
`
`M. Supplemental Declaration of Aviel D. Rubin In Support of
`Petitioner’s Reply (“Rubin Supplemental Declaration”) (Exhibit
`1045)
`
`Patent Owner objects to the admissibility of the Rubin Supplemental
`
`Declaration for at least the following reasons:
`
`
`1.
`
`Patent Owner objects to the Rubin Supplemental Declaration as not
`
`relevant under FRE 401 and FRE 402 because it exceeds the proper scope of
`
`Petitioner’s Reply. See 37 C.F.R. § 42.23(b). Patent Owner further objects to the
`
`Rubin Supplemental Declaration under FRE 403 because of the prejudice arising
`
`from Patent Owner’s inability to respond to the untimely evidence and arguments
`
`therein.
`
`
`2.
`
`Patent Owner objects to the Rubin Supplemental Declaration as
`
`untimely because it should have been introduced in its Petition. See 37 C.F.R. §
`
`42.104(b); 37 C.F.R. § 42.23(b). Patent Owner objects to the Rubin Supplemental
`
`
`
`20
`
`
`
`Declaration because it is supplemental information that is improper and untimely
`
`Patent Owner’s Objections to Evidence
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`
`
`under 37 C.F.R. § 42.123.
`
`
`3.
`
`Under FRE 702, Dr. Aviel Rubin’s opinions are inadmissible 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.
`
`
`4.
`
`Petitioner has failed to authenticate the Rubin Supplemental
`
`Declaration under FRE 901 and FRE 602. Specifically, Petitioner has failed to
`
`establish that the Rubin Supplemental Declaration is what Petitioner claims it is.
`
`To the extent that Petitioner attempts to rely on any date that appears in the Rubin
`
`Supplemental Declaration to establish public accessibility 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.
`
`
`5.
`
`Patent Owner objects to the Rubin Supplemental Declaration because
`
`it does not introduce evidence of Mr. Rubin’s personal knowledge of the subject
`
`matter of the testimony contained therein, rendering such testimony inadmissible
`
`under FRE 602.
`
`
`
`21
`
`
`
`Patent Owner’s Objections to Evidence
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`
`
`Patent Owner also objects to the Rubin Supplemental Declaration
`
`
`6.
`
`because it is hearsay under FRE 801 and does not fall within a hearsay exception
`
`under FRE 802 and FRE 803.
`
`
`7.
`
`Dr. Rubin’s opinions are not relevant under FRE 401 and FRE 402.
`
`Moreover, the Rubin Supplemental Declaration is confusing, of minimal probative
`
`value, outweighed by prejudice, and/or a waste of time and is therefore
`
`inadmissible under FRE 403. Further, his opinions that rely on the exhibits cited
`
`therein are also unreliable and inadmissible for the reasons discussed above.
`
`
`
`
`
`
`
`22
`
`
`
`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)
`jhannah@kramerlevin.com
`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: 212.715.8302
`
`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: November 1, 2016
`
`Case No. IPR2015-01979
`
`
`
`23
`
`
`
`
`
`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 in
`
`Petitioner’s Reply Under 37 C.F.R. § 42.64 was served on November 1, 2016, by
`
`filing this document through the Patent Review Processing System as well as
`
`delivering via electronic mail upon the following counsel of
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