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 MOTION TO EXCLUDE
`
`
`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 MOTION TO EXCLUDE
`
`
`1 Case IPR2016-00919 has been joined with this proceeding.
`
`
`
`
`
`
`Introduction
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`I.
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`
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`Patent Owner’s Motion to Exclude
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`
`Pursuant to 37 C.F.R. § 42.64, Patent Owner Finjan, Inc. (“Patent Owner”)
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`hereby moves to exclude evidence the following evidence submitted in this
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`proceeding by Petitioners Palo Alto Networks, Inc. and Symantec Corp.
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`(collectively, “Petitioner”): Exhibits 1004, 1008, 1012, 1024, 1036, 1039-1042,
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`1044-1045 and Petition Annotated Figures 1-4. The Board should grant Patent
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`Owner’s Motion to Exclude for the reasons set forth below.
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`II.
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`Patent Owner’s Objections Were Timely Made.
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`Patent Owner timely raised the objections set forth herein. On April 4,
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`2016, Patent Owner timely served Petitioner with objections to the exhibits to its
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`Petition. Paper 10. On June 22, 2016, Patent Owner timely served Petitioner with
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`objections to evidence pursuant to the Board’s order during a conference call held
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`on June 14, 2016. Paper 20. On November 1, 2016, Patent Owner timely served
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`Petitioner with objections to the exhibits to its Reply. Paper 36. Patent Owner
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`does not assert any new objections in this Motion to Exclude.
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`III. The Board Should Exclude Petitioner’s Belated Exhibits as Outside the
`Proper Scope of Reply (Exs. 1036, 1039-1042, 1044-1045).
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`The Board should exclude Exhibits 1036, 1039-1042 and 1044-1045 and
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`Petitioner’s related arguments. Petitioner improperly introduced this new evidence
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`and related arguments for the first time in its Reply. These exhibits and arguments
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`are inadmissible under 37 C.F.R. § 42.61, and are properly subject to exclusion
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`1
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`
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`because Petitioner is not permitted to introduce new evidence and arguments in its
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`Patent Owner’s Motion to Exclude
`IPR2015-01979 (U.S. Patent No. 8,141,154)
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`Reply in order to resolve the deficient arguments and evidentiary shortcomings of
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`its Petition. Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1081 (Fed. Cir. 2015)
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`(“a party may move to exclude evidence, whether as improper under the response-
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`only regulation, under the Trial Practice Guide’s advice, or on other grounds.”).
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`Specifically, Petitioner introduced for the first time in its Reply new
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`exhibits, including a new rebuttal declaration from Dr. Rubin, references to which
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`it does not rely upon in its Reply, declarations from a Finjan expert in unrelated
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`district court proceedings, and additional support to attempt to establish the public
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`accessibility of the Sirer document. There is no reason why Petitioner could not
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`have included such evidence in its Petition. To the contrary, Exhibits 1036, 1039,
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`1040, 1041, 1042, 1044 and 1045 contain information that was available at the
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`time Petitioner filed its Petition.
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`Petitioner may not use its Reply as a vehicle to add in new evidence that
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`could have been included in its Petition, and all such evidence should be excluded.
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`See, e.g., Toshiba Corp. v. Optical Devices, LLC, IPR2014-01447, Paper 34, pp.
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`44–47 (P.T.A.B. Mar. 9, 2016) (“[Section 42.23(b)], however, does not authorize
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`or otherwise provide a means for supplementing the evidence of record.”); Toyota
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`Motor Corp. v. Am. Vehicular Scis. LLC, IPR2013-00424, Paper 50, p. 21
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`(P.T.A.B. Jan. 12, 2015) (“[Petitioner] cannot rely belatedly on this evidence in its
`
`2
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`
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`Reply and Reply Declaration of [its expert] to make up for the deficiencies in its
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`Patent Owner’s Motion to Exclude
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`
`Petition.”); The Scotts Co. LLC v. Encap, LLC, IPR 2013-00110, Paper 79, pp. 5–6
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`(P.T.A.B. June 24, 2014) (declining to consider untimely evidence and arguments
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`because the patent owner “was denied the opportunity to file responsive
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`evidence.”).
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`Petitioner’s attempt to sandbag Patent Owner with these untimely
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`submissions is highly prejudicial, as Patent Owner has not had the opportunity to
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`respond to this untimely evidence and Petitioner’s related arguments.
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`First, Petitioner improperly offers Exhibit 1036 (the “DeSart Declaration”),
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`and Exhibit A thereto, in its Reply as a belated attempt to supplement its evidence
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`that the Sirer Document was publicly available prior art and to bolster its grounds
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`of patent invalidity. The Board should not consider this evidence because it was
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`available to Petitioner at the time it filed the Petition and, as explained more fully
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`below, is simply a failed attempt to rectify Petitioner’s withdrawn Sirer
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`Declaration. Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,767 (Aug. 14,
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`2012)(“[A] reply that raises a new issue or belatedly presents evidence will not be
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`considered and may be returned. The Board will not attempt to sort proper from
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`improper portions of the reply.”). “[I]ndications that a new issue has been raised in
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`a reply include new evidence necessary to make out a prima facie case for …
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`unpatentability … and new evidence that could have been presented in a prior
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`3
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`
`
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`filing.” Id.
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`Patent Owner’s Motion to Exclude
`IPR2015-01979 (U.S. Patent No. 8,141,154)
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`Second, Petitioner also should have submitted Exhibit 1044 (“Nebenzahl”)
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`and Dr. Rubin’s Supplemental Declaration (Ex. 1045) with its Petition. Instead,
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`Petitioner submitted these exhibits for the first time with its Reply, in an attempt to
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`supplement its prima facie invalidity case for the ’154 Patent by attempting to
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`remedy the deficiencies of the Khazan reference. See Ex. 1045 at ¶ 11 (noting
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`alleged “techniques for instrumenting Win32 EXE files, like those disclosed in
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`Khazan, were widely known” to the “extent one might argue that Khazan’s
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`disclosure does not provide enough detail”). During his deposition, Dr. Rubin
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`confirmed that he was aware of Nebenzahl at the time he submitted his first
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`declaration (and for over a decade prior to that), “followed closely” the associated
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`research and could have cited Nebenzahl at the time Petitioner filed the Petition.
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`Ex. 2035 (Rubin Tr.) pg. 10, line 10- pg. 11, line 20.
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`To the extent Dr. Rubin’s Supplemental Declaration (Ex. 1045) is not
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`excluded in its entirety, at a minimum, Paragraph 12 should be excluded as
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`improper new evidence belatedly introduced in a Reply. Paragraph 12 discusses
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`the belated Nebenzahl reference (Ex. 1044).2
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`2 Petitioner does not cite to or rely on Exhibit 1044 in its Reply. However, Dr.
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`Rubin cites to Exhibit 1044 in his belated Supplemental Declaration.
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`4
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`
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`Patent Owner’s Motion to Exclude
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`
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`Third, in its Reply, Petitioner improperly attempts to introduce three new
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`exhibits to supplement its claim construction position. Specifically, Petitioner
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`relies on Exhibits 1039–1041 – declarations by Dr. Nenad Medvidovic in unrelated
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`district court actions – to support its assertion that “in the context of the ‘154
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`patent, content means code.” Reply at 7. Petitioner could have relied on each of
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`these declarations in its Petition, thus they should be excluded as untimely.3
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`IV. The Board Should Disregard and Exclude the Sirer Declaration
`(Ex. 1008)
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`The Board should disregard the Sirer Declaration (Ex. 1008) because
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`Petitioner has not made Dr. Sirer available for deposition, and exclude it as hearsay
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`and for lack of foundation. See HTC Corp. and HTC Am., Inc. v. NFC Tech., LLC,
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`Case IPR2014-01198, Paper 41, at 2–5 (P.T.A.B. Nov. 6, 2015) (expunging a
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`declaration where the witness was not made available and declining to give any
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`3 Exhibits 1039-1041 should also be excluded as irrelevant and as misleading. Dr.
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`Medvidovic’s opinions in other proceedings is not relevant to the construction of
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`the terms at issue here. Moreover, Petitioner solely relies on small portions of
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`Exhibits 1039-1041, rendering its citation to these exhibits highly prejudicial as
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`Petitioner does not adequately and properly convey the positions and arguments
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`Dr. Medvidovic presented in the totality of these exhibits. See Reply at 8 (relying
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`solely on limited portions of Exs. 1039-1041).
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`5
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`
`
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`weight to the reliance on the expunged exhibit). Specifically during a conference
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`Patent Owner’s Motion to Exclude
`IPR2015-01979 (U.S. Patent No. 8,141,154)
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`call with the Board on June 14, 2016, the Board granted Petitioner’s request to
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`replace, in the record, the Sirer Declaration with the DeSart Declaration, holding
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`that the DeSart Declaration should be treated as supplemental information. Paper
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`No. 43 (6/14/16 Tr.) at 24. Petitioner elected to replace the Sirer Declaration after
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`it decided it would not pay Dr. Sirer the fees he was looking for to testify at
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`deposition and over concerns that paying the requested fee would render Dr.
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`Sirer’s testimony unreliable. Id. at 15 (“he wanted a $35,000 non-refundable fee
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`plus $650 an hour . . . to appear to speak to the contents of the declaration . . .
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`plainly there’d be a huge bias problem that would make the testimony worthless
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`anyway.” Patent Owner has not had any opportunity to cross-examine Dr. Sirer on
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`his testimony offered in his declaration. Accordingly, the Board should exclude
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`the Sirer Declaration. See HTC Corp. and HTC Am., Inc., Case IPR2014-01198,
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`Paper 41 at 4 (the offering party “is responsible for the availability of its chosen
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`declarants….”).
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`Having withdrawn Dr. Sirer as a witness and in view of Patent Owner not
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`having an opportunity to cross-examine Dr. Sirer, Petitioner’s continued reliance
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`on the Sirer Declaration, particularly in its Reply, is improper, irrelevant and
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`highly prejudicial to Patent Owner, particularly under Federal Rules of Evidence
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`401, 402 and 403, and the Board should either disregard or exclude the Sirer
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`6
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`
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`Declaration. Patent Owner is entitled to cross-examine through deposition any
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`Patent Owner’s Motion to Exclude
`IPR2015-01979 (U.S. Patent No. 8,141,154)
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`direct testimony offered by Petitioner. 37 C.F.R. § 42.53 (cross-examination
`
`deposition procedure); 37 C.F.R. § 42.51(b)(1)(ii) (authorizing as “routine
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`discovery” “[c]ross examination of affidavit testimony”). Because Petitioner has
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`failed to comply with the requirements of 37 C.F.R. § 42 by providing Petitioner
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`with the requisite deposition, the Sirer Declaration is inadmissible. 37 C.F.R. §
`
`42.61 (“Evidence that is not taken, sought, or filed in accordance with this subpart
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`is not admissible.”).
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`The Sirer Declaration also should be excluded as hearsay, as Petitioner
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`offered it to “prove the truth of the matter asserted in the statement,” i.e., when the
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`document became available. FRE 801(c)(2). Because Patent Owner had no
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`opportunity to cross-examine Dr. Sirer on his testimony, it should be excluded as
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`an out-of-court statement rather than trial testimony. FRE 801(c).
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`The Sirer Declaration should be excluded for the additional reasons that his
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`opinions are conclusory and unreliable and for lack of foundation. Fed. R. Evid.
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`702, 602. Petitioner relies on the Sirer Declaration as evidence of when Sirer
`
`became publicly available. However, Dr. Sirer does not disclose underlying facts
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`in support of his opinions, rendering them unreliable. Specifically, Dr. Sirer
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`simply states that the article “was published within the United States in or before
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`December 1999.” Ex. 1008 at ¶ 3. Dr. Sirer does not explain how he knows this,
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`7
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`
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`what evidence he is relying on, or any of the who/what/when/where and how the
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`Patent Owner’s Motion to Exclude
`IPR2015-01979 (U.S. Patent No. 8,141,154)
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`document purportedly became available to the public.
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`Fed. R. Evid. 602 provides that “[a] witness may testify to a matter only if
`
`evidence is introduced sufficient to support a finding that the witness has personal
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`knowledge of the matter.” Dr. Sirer offers nothing to support his testimony as to
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`the requirement that the article was publicly accessible. Kyocera Wireless Corp. v.
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`Int’l Trade Com’n, 545 F.3d 1340, 1350 (Fed. Cir. 2008) (to be publicly available
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`prior art, there must be a “satisfactory showing that such document has been
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`disseminated or otherwise made available to the extent that persons interested and
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`ordinarily skilled in the subject matter or art exercising reasonable diligence, can
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`locate it.”) (internal quotation marks omitted) (quoting SRI Int’l v. Internet Sec.
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`Sys. Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008)). Mr. Sirer’s blanket statement that
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`an article was “published within the United States” falls short of establishing any
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`public accessibility particularly with no explanation, support or analysis as to the
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`meaning of “published” and no basis for the conclusory statement.
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`V. The Board Should Exclude the DeSart Declaration (Ex. 1036).
`In addition to the fact that it was untimely and improperly disclosed in
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`Petitioner Reply (Section III supra), the DeSart Declaration (Ex. 1036) should be
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`excluded for lack of foundation and because his opinions are conclusory and
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`unreliable. Fed. R. Evid. 702. Mr. DeSart, while purportedly experienced with the
`
`8
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`
`
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`University of Washington Engineering Library’s “normal business practices,” does
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`Patent Owner’s Motion to Exclude
`IPR2015-01979 (U.S. Patent No. 8,141,154)
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`not claim to have any actual knowledge as to whether a person of ordinary skill in
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`the art would have been able to locate the Sirer Document, which is the
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`requirement for establishing that a document was publicly accessible. Ex.1036 at ¶
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`1; see also Kyocera Wireless Corp., 545 F.3d at 1350 (to be publicly available
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`prior art, there must be a “satisfactory showing that such document has been
`
`disseminated or otherwise made available to the extent that persons . . . ordinarily
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`skilled in the subject matter or art exercising reasonable diligence, can locate it.”)
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`(internal quotation marks omitted) (citation omitted).
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`In particular, Mr. DeSart revealed during his deposition that the Sirer
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`Document is not a properly indexed “printed publication.” Specifically, Mr.
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`DeSart explained that for an interested person in the art, during the relevant time
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`period, to have been able to find the Sirer Document at the University of
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`Washington Library, that person would have needed to know that the Sirer
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`Document was located within the “Operating Systems Review” journal within the
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`library. Ex. 2006 (“DeSart Tr.”) at 9:17-12:1.
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`Thus, it would have been impossible to locate the Sirer Document without
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`this exact knowledge particularly because, at the time, the University of
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`Washington organized references in alphabetical order by journal name and not by
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`subject matter, let alone article name. In fact, Mr. DeSart admitted that a search
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`9
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`
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`for the Sirer Document by its title would not have generated any results. DeSart
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`Patent Owner’s Motion to Exclude
`IPR2015-01979 (U.S. Patent No. 8,141,154)
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`Tr. at 11:24-12:1. Thus, the DeSart Declaration does not establish that the Sirer
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`Document was publicly accessible because it could not have been located without
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`having specific knowledge as to its existence and in particular, a specific journal
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`name. See Application of Bayer, 568 F.2d 1357, 1361 (C.C.P.A. 1978) (holding
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`that a reference in a library was not publicly available because a person would
`
`have needed to be informed of its existence to find it, rather than use “customary
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`research aids available in the library” to find it).
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`Accordingly, Mr. DeSart’s testimony fails to authenticate the Sirer
`
`Document (Ex. 1004), and is unreliable and conclusory as to the date Petitioner
`
`purports the Sirer Document was publicly available. For these reasons, Ex. 1036 is
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`not relevant and thus inadmissible under FRE 401, FRE 402 and FRE 901.
`
`VI. The Board Should Exclude the Sirer Document (Ex. 1004) and Related
`Exhibit 1024.
`
`The Board should exclude Exhibit 1004 (the “Sirer Document”) and related
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`Exhibit 1024, U.S. Patent No. 6,324,685 (the “‘685 Patent”), because Petitioner
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`has not authenticated the Sirer Document, it is hearsay and it is irrelevant.
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`First, Petitioner failed to authenticate the Sirer Document as a document
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`that was publicly available in December 1999. Specifically, Petitioner offers no
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`evidence of the publication date beyond the Sirer and DeSart Declarations and
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`Exhibit 1024 (the ‘“685 Patent”). As discussed above, the Sirer and Desart
`
`10
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`
`
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`Declarations are inadmissible and fail to provide foundation for their claims
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`Patent Owner’s Motion to Exclude
`IPR2015-01979 (U.S. Patent No. 8,141,154)
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`regarding when, if at all, the Sirer Document became publicly available.
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`The ‘685 Patent (Ex. 1024) is also inadmissible as an attempt to establish the
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`Sirer Document as publicly available prior art. Specifically, there is no evidence in
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`the record that the reference cited in the ‘685 Patent, which Petitioner purports to
`
`be “Sirer,” is the same document Petitioner relies on in these proceedings. In re
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`Lister, 583 F.3d 1307, 1317 (Fed. Cir. 2009) (“the IDS [does not] provides
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`substantial evidence that the [reference] was publicly accessible as of the critical
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`date”).
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`Because none of these exhibits authenticate or establish the public
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`availability of the Sirer Document, Petitioner has failed “[t]o satisfy the
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`requirement of authenticating or identifying an item of evidence” because it fails to
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`proffer any “evidence sufficient to support a finding that the item is what the
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`proponent claims it is.” Fed. R. Evid. 901.
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`More specifically, the Sirer Document bears a date of December 1999 which
`
`is insufficient to authenticate it as a document that was publicly available as of
`
`1999. The mere appearance of a date on a document is insufficient to establish the
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`date of when the document was available to the public. See, e.g., TRW Automotive
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`U.S. LLC v. Magna Elecs. Inc., IPR2014-01347, Paper 25, pp. 5–12 (P.T.A.B. Jan.
`
`6, 2016) (granting patent owner’s motion to exclude prior art for lack of
`
`11
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`
`
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`authentication); Hilgraeve, Inc. v. Symantec Corp., 271 F. Supp. 2d 964, 975 (E.D.
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`Patent Owner’s Motion to Exclude
`IPR2015-01979 (U.S. Patent No. 8,141,154)
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`Mich. 2003) (“If anything, the dates imprinted upon these documents establish
`
`simply the date of copyright, or the date that the document was created or
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`printed.… A date imprinted on a document, without more, does not prove by clear
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`and convincing evidence [when it] was known or used by others in this
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`country….”).
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`Petitioner identifies the date on the face of the document as the “copyright
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`date” but a copyright date, as a matter of law, fails to establish that a document
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`qualifies as a printed publication, let alone its public accessibility. Reply at 3; see
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`also, e.g., TRW Automotive U.S. LLC, IPR2014-01347, Paper 25, pp. 5–12
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`(“[a]lthough [a] copyright notice is probative that IEEE owns a copyright to the
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`article, it is not probative that the article was ever published by IEEE or anyone
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`else.”); Stryker Corp. v. Karl Storz Endoscopy-Am., Inc., Case IPR2015-00677, pp.
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`18–19 (P.T.A.B. Sept. 2, 2015) (Paper 15) (a copyright notice does not establish
`
`when a document was publicly accessible under patent law); In re Lister, 583 F.3d
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`at 1316-17 (finding that a manuscript that had a copyright date and was available
`
`in the Copyright Office was not publicly accessible); CNET Networks, Inc. v.
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`Etilize, Inc., 584 F. Supp. 2d 1260, 1273-74 (N.D. Cal. 2008) (finding that a
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`copyright date does not prove that a reference was publicly accessible); iOnROAD
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`Ltd. v. Mobileye Techs. Ltd., IPR2013-00227, Paper 18, pp. 3 n.4, 15-16 (P.T.A.B.
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`12
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`
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`Aug. 27, 2013) (stating that a copyright date does not mean that a reference was
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`Patent Owner’s Motion to Exclude
`IPR2015-01979 (U.S. Patent No. 8,141,154)
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`published). Accordingly, the Board should exclude the Sirer Document because it
`
`was not properly authenticated.
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`Second, the copyright date on the Sirer Document is itself inadmissible
`
`hearsay. Hearsay is an out-of-court statement offered to prove the truth of the
`
`matter asserted. Fed. R. Evid. 801. Petitioner attempts to rely on the copyright
`
`date for a hearsay purpose, i.e., to prove the truth of the contention that the Sirer
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`Document was publicly accessible as a printed publication as of September 1995.
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`Hilgraeve, Inc. v. Symantec Corp., 271 F. Supp. 2d at 974 and n.4 (“Plaintiff
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`correctly notes that the dates imprinted on these documents are hearsay when
`
`offered to prove the truth of the matter asserted, that is, that SAM 1.3 was
`
`accessible to the public as of the date set forth on the documents”) (citing Fed. R.
`
`Evid. 801(c)) (citations omitted). In addition, no hearsay exception applies.
`
`Therefore, the copyright date is hearsay under FRE 801, and is inadmissible under
`
`FRE 802 and FRE 803.
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`Third, the Sirer Document and ‘685 Patent should be excluded as irrelevant,
`
`because Petitioner fails that the Sirer Document was available as prior art.
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`Evidence is relevant if (1) it has any tendency to make a fact more or less probably
`
`than it would be without the evidence, and (2) the fact is of consequence in
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`determining the action. Fed. R. Evid. 401. A Petitioner can challenge the validity
`
`13
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`
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`of a patent based only on prior art patents and printed publications. 35 U.S.C. §
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`Patent Owner’s Motion to Exclude
`IPR2015-01979 (U.S. Patent No. 8,141,154)
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`311(b). It is Petitioner’s burden to establish that a document is a “printed
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`publication” by demonstrating that the document was publicly accessible to
`
`interest persons. ServiceNow, Inc. v. Hewlett-Packard Co., IPR2015-00716, Paper
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`13, at 8, 15–17 (P.T.A.B. Aug. 26, 2015) (denying institution because Petitioner
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`did not meet its burden of establishing that a reference is prior art); In re Wyer, 655
`
`F.2d 221, 227 (C.C.P.A. 1981).
`
`As discussed above, the Sirer Document is unauthenticated, is inadmissible
`
`hearsay, and is not prior art. Accordingly, the Sirer Document cannot be relevant
`
`in determining whether the ’154 Patent is valid. Thus, allowing Petitioner to rely
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`on the Sirer Document as prior art would be unfairly prejudicial to Patent Owner
`
`under Federal Rule of Evidence 403, given that it is unauthenticated, its
`
`publication date is hearsay, and the document is irrelevant. For all of the reasons
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`discussed above, the Board should exclude the Sirer Document.
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`The ‘685 Patent is not offered for any purpose other than propping up the
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`Sirer Document. With the exclusion of the Sirer Document, the ‘685 Patent
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`should, therefore, be excluded as irrelevant under Fed. R. Evid. 401-403.
`
`VII. The Board Should Exclude the Detours Article (Exhibit 1012) and
`Annotated Figures 1-4
`
`The Board should exclude Exhibit 1012 (the “Detours Article”) and
`
`Annotated Figures 1-4 in its Petition. First, the Board instituted IPR of the ‘154
`
`14
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`
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`Patent based on Khazan, Sirer and Ben-Natan. Paper 8. The Detours Article is not
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`Patent Owner’s Motion to Exclude
`IPR2015-01979 (U.S. Patent No. 8,141,154)
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`part of the instituted grounds. As such, it is irrelevant and should be excluded
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`under Federal Rules of Evidence 401-402.
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`Second, Petitioner has failed to authenticate the Detours Article. In
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`particular, Petitioner offers no evidence establishing when, if ever, the Detours
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`Article became publicly accessible as a printed publication. Thus, the Detours
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`Article should be excluded under Fed. R. Evid. 602, 901.
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`Third, the Annotated Figures should be excluded as irrelevant and highly
`
`prejudicial. The Annotated Figures are modified versions of the figures in Khazan
`
`and Sirer, including Petitioner’s contentions and characterizations of the figures.
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`The Annotated Figures are not evidence of the disclosure of Khazan and Sirer, but
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`rather a juxtaposition and comingling of Petitioner’s attorney argument and the
`
`actual references at issue. 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. Therefore, the Annotated Figures should be
`
`excluded as inadmissible as they are not relevant, confusing, outweighed by
`
`prejudice, and a waste of time. Fed. R. Evid. 401-403.
`
`VIII. Conclusion
`For the foregoing reasons, the Board should grant Patent Owner’s Motion to
`
`Exclude.
`
`15
`
`
`
`
`
`Dated: November 17, 2016
`
`Patent Owner’s Motion to Exclude
`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 Price (Reg. No. 69,141)
`jprice@kramerlevin.com
`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)
`mkim@finjan.com
`Finjan, Inc.
`2000 University Ave., Ste. 600
`E. Palo Alto, CA 94303
`Tel: 650.397.9567
`
` (Case No. IPR2015-01979) Attorneys for Patent Owner
`
`
`
`16
`
`
`
`
`
`
`
`Patent Owner’s Motion to Exclude
`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 Motion to Exclude was served on
`
`November 17, 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 and Joinder Petitioner:
`
`17
`
`Orion Armon
`Brian Eutermoser
`COOLEY LLP
`380 Interlocken Crescent, Suite 900
`Broomfield, Colorado 80021
`oarmon@cooley.com
`beutermoser@cooley.com
`zpatdcdocketing@cooley.com
`
`
`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
`
`
`
`
`
`Patent Owner’s Motion to Exclude
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`
`
`
`
`
` /James Hannah/
`James Hannah (Reg. No. 56,369)
`Kramer Levin Naftalis & Frankel LLP
`990 Marsh Road,
`Menlo Park, CA 94025
`(650) 752-1700
`
`
`Nathaniel A. Hamstra
`Quinn Emanuel Urquhart & Sullivan LLP
`500 West Madison St., Ste. 2450
`Chicago, IL 60661
`nathanhamstra@quinnemanuel.com
`
`
`
`
`18
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