UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`PALO ALTO NETWORKS, INC.
`Petitioner
`
`v.
`
`FINJAN, INC.
`Patent Owner
`
`
`
`Inter Partes Review No. 2015-019791
`U.S. Patent No. 8,141,154
`
`
`
`PETITIONER’S MOTION TO EXCLUDE
`EVIDENCE UNDER 37 C.F.R. § 42.64(c)
`
`
`
`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
`
`
`
`Inter Partes Review No. 2015-019791
`U.S. Patent No. 8,141,154
`
`
`
`PETITIONER’S MOTION TO EXCLUDE
`EVIDENCE UNDER 37 C.F.R. § 42.64(c)
`
`
`
`1 Case IPR2016-00919 has been joined with this proceeding.
`
`
`
`
`
`
`
`
`Petitioner’s Motion to Exclude
`Evidence Under 37 C.F.R. § 42.64(c)
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`TABLE OF AUTHORITIES
`
`
`Page
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`
`
`I.
`
`II.
`
`THE KERNEL32.DLL WEBOPEDIA DEFINITION (EX. 2009)
`SHOULD BE EXCLUDED BECAUSE IT IS IRRELEVANT AND
`IS INADMISSIBLE HEARSAY.................................................................... 1
`THE WIKIPEDIA DEFINITION OF “TYPE SIGNATURE” (EX.
`2011) SHOULD BE EXCLUDED BECAUSE IT IS IRRELEVANT
`AND IS INADMISSIBLE HEARSAY .......................................................... 3
`III. THE MICROSOFT WEBPAGE REGARDING DETOURS (EX.
`2012) SHOULD BE EXCLUDED BECAUSE IT IS IRRELEVANT
`AND IS INADMISSIBLE HEARSAY .......................................................... 5
`IV. THE STACKOVERFLOW WEBPAGE (EX. 2013) SHOULD BE
`EXCLUDED BECAUSE IT IS IRRELEVANT AND IS
`INADMISSIBLE HEARSAY ........................................................................ 7
`CONCLUSION ............................................................................................... 9
`
`
`
`V.
`
`
`
`i
`
`
`
`Petitioner’s Motion to Exclude
`Evidence Under 37 C.F.R. § 42.64(c)
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`TABLE OF AUTHORITIES
`
`
`Page
`
`
`Cases
`Sony Corp. v. Yissum Research and Dev. Co. of the Hebrew Univ. of
`Jerusalem,
`Case IPR2013-00219, Paper 16 (P.T.A.B. Sept. 22, 2014) .......................... 4, 5, 8
`Other Authorities
`37 C.F.R. § 42.64(c) ................................................................................................... 1
`Fed. R. Evid.
`401 ............................................................................................................. 1, 3, 5, 8
`402 ............................................................................................................. 1, 3, 6, 8
`802 ............................................................................................................. 2, 4, 6, 8
`803(18) ...................................................................................................... 2, 4, 7, 9
`901 ............................................................................................................. 2, 5, 7, 9
`
`
`
`
`ii
`
`
`
`Petitioner’s Motion to Exclude
`Evidence Under 37 C.F.R. § 42.64(c)
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`
`Pursuant to 37 C.F.R. § 42.64(c), Petitioner moves to exclude Exhibits 2009
`
`and 2011-2013 submitted by Patent Owner. Petitioner objected to these exhibits on
`
`July 19, 2016. (Paper 23 at 3-5 (objections to each exhibit based on relevance,
`
`hearsay, and lack of authentication).)
`
`I.
`
`THE KERNEL32.DLL WEBOPEDIA DEFINITION (EX. 2009) SHOULD BE
`EXCLUDED BECAUSE IT IS IRRELEVANT AND IS INADMISSIBLE HEARSAY
`
`Petitioner moves to exclude Exhibit 2009 because it is irrelevant and hearsay,
`
`with no applicable hearsay exception. Patent Owner relies on Exhibit 2009 in the
`
`Declaration of Dr. Medvidovic. (Ex. 2002 at ¶¶ 65, 93.)
`
`Exhibit 2009 is a Webopedia dictionary entry relied on by Patent Owner to
`
`show the definition of “kernel32.dll” as used in the Khazan reference and how
`
`kernel32.dll would have been understood by a person of ordinary skill in December
`
`2005. (Ex. 2002 at ¶¶ 32-39, 65, 93.) Evidence is relevant if “it has a tendency to
`
`make a fact more or less probable than it would be without the evidence.” Fed. R.
`
`Evid. 401. Exhibit 2009 bears no publication date and was retrieved on July 12,
`
`2016, more than 10 years after the December 2005 priority date of the challenged
`
`patent. (Ex. 2009 at 1; Ex. 2002 at ¶ 34.) Accordingly, Exhibit 2009 is not probative
`
`of how kernel32.dll would have been understood by a person of ordinary skill in the
`
`art in 2005 and should be excluded. Fed. R. Evid. 401-402. (Ex. 2002 at ¶¶ 33-36
`
`(“Counsel has informed me, and I understand, that the [POSA] is a hypothetical
`
`
`
`1
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`
`
`Petitioner’s Motion to Exclude
`Evidence Under 37 C.F.R. § 42.64(c)
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`
`person who is presumed to be familiar with the relevant scientific field and its
`
`literature at the time of the invention.”).)
`
`Exhibit 2009 is also an out-of-court statement offered for the truth of the
`
`matter asserted. Patent Owner quotes from Exhibit 2009 to show that a
`
`“[k]ernel32.dll is the 32-bit dynamic link library found in the Windows operating
`
`system kernel.” (Ex. 2009 at 1; Ex. 2002 at ¶¶ 65, 93.) Exhibit 2009 as used by the
`
`Patent Owner is inadmissible hearsay and Patent Owner did not argue that a hearsay
`
`exception applies. Fed. R. Evid. 802. The most obvious hearsay exception that might
`
`apply here is the learned treatise exception, which requires that the publication be
`
`established as a reliable authority either through expert testimony or judicial notice.
`
`Fed. R. Evid. 803(18). Patent Owner has not established that Webopedia is reliable
`
`or technically accurate, or shown that the Webopedia information reflects the
`
`knowledge of a person skilled in the art in 2005, so the learned treatise exception
`
`does not apply. (Ex. 2002 at ¶¶ 65, 93.)
`
`Patent Owner also has not produced evidence that Exhibit 2009 is what it
`
`purports to be. Nor has Patent Owner presented any evidence that Dr. Medvidovic,
`
`or any other witness, had first-hand knowledge of Exhibit 2009. Patent Owner failed
`
`to authenticate Exhibit 2009. Fed. R. Evid. 901. Exhibit 2009 should be excluded.
`
`
`
`2
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`
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`Petitioner’s Motion to Exclude
`Evidence Under 37 C.F.R. § 42.64(c)
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`
`II. THE WIKIPEDIA DEFINITION OF “TYPE SIGNATURE” (EX. 2011) SHOULD BE
`EXCLUDED BECAUSE IT IS IRRELEVANT AND IS INADMISSIBLE HEARSAY
`
`Petitioner moves to exclude Exhibit 2011 because it is irrelevant and hearsay,
`
`with no applicable hearsay exception. Patent Owner relies on Exhibit 2011 in the
`
`Declaration of Dr. Medvidovic. (Ex. 2002 at ¶ 99.)
`
`Exhibit 2011 is the Wikipedia page for “type signature,” which Patent Owner
`
`relies on to provide the definition of “type signature” as understood by a person of
`
`ordinary skill in December 2005. (Ex. 2002 at ¶¶ 32-39, 99.) Evidence is relevant if
`
`“it has a tendency to make a fact more or less probable than it would be without the
`
`evidence.” Fed. R. Evid. 401. Exhibit 2011 bears no publication date, was retrieved
`
`on July 12, 2016, and was last modified on June 17, 2016, more than 10 years after
`
`the December 2005 priority date of the challenged patent. (Ex. 2011 at 5; Ex. 2002
`
`at ¶ 34.) Exhibit 2011 is not probative of how “type signature” would have been
`
`understood by a person of ordinary skill in the art in 2005 and should be excluded.
`
`Fed. R. Evid. 401-402. (Ex. 2002 at ¶¶ 33-36, 99.)
`
`Exhibit 2011 is also an out-of-court statement on a webpage offered for the
`
`truth of the matter asserted. Patent Owner quotes from Exhibit 2011 to show that a
`
`“type signature” “defines the inputs and outputs for a function … A type signature
`
`includes the number of arguments, the types of arguments and the order of the
`
`arguments contained by a function.” (Ex. 2011 at 1; Ex. 2002 at ¶ 99.) Exhibit 2011
`
`
`
`3
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`
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`Petitioner’s Motion to Exclude
`Evidence Under 37 C.F.R. § 42.64(c)
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`
`as used by the Patent Owner is inadmissible hearsay and Patent Owner did not argue
`
`that a hearsay exception applies. Fed. R. Evid. 802; see Sony Corp. v. Yissum
`
`Research and Development Co. of the Hebrew Univ. of Jerusalem, Case IPR2013-
`
`00219, Paper 16, at 41-42, 45-48, 51-52 (P.T.A.B. Sept. 22, 2014) (excluding
`
`portions of Wikipedia article and parts of expert testimony based on Wikipedia
`
`article on hearsay and authentication grounds). The most obvious hearsay exception
`
`that might apply here is the learned treatise exception, which requires that the
`
`publication be established as a reliable authority either through expert testimony or
`
`judicial notice. Fed. R. Evid. 803(18). Patent Owner has not shown that the
`
`Wikipedia page of Exhibit 2011 is reliable or technically accurate, or that its contents
`
`accurately reflect the state of the art in 2005 (as opposed to 2016), so the learned
`
`treatise exception does not apply. (Ex. 2002 at ¶ 99.)
`
`Patent Owner also has not produced evidence showing who authored Exhibit
`
`2011 or that Exhibit 2011 is what it purports to be. Nor has Patent Owner presented
`
`evidence that Dr. Medvidovic, or any other witness, had first-hand knowledge of
`
`Exhibit 2011. Patent Owner failed to authenticate Exhibit 2011. Fed. R. Evid. 901.
`
`See Sony Corp., Case IPR2013-00219, Paper 16, at 44 n.16, 45. Exhibit 2011 should
`
`be excluded.
`
`
`
`4
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`
`
`Petitioner’s Motion to Exclude
`Evidence Under 37 C.F.R. § 42.64(c)
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`
`III. THE MICROSOFT WEBPAGE REGARDING DETOURS (EX. 2012) SHOULD BE
`EXCLUDED BECAUSE IT IS IRRELEVANT AND IS INADMISSIBLE HEARSAY
`
`Petitioner moves to exclude Exhibit 2012 because it is irrelevant and hearsay,
`
`with no applicable hearsay exception. Patent Owner relies on Exhibit 2012 in the
`
`Declaration of Dr. Medvidovic. (Ex. 2002 at ¶ 100.)
`
`Exhibit 2012 is a Microsoft webpage describing the Detours software package
`
`that Patent Owner uses to show how a person of ordinary skill in December 2005
`
`would have understood the operation of the Detours package. (Ex. 2002 at ¶¶ 32-39,
`
`99-100 (“Microsoft documentation describes how the Detours allows a user to
`
`intercepts [sic] Win32 functions by re-writing the in-memory code for target
`
`functions.”).) Evidence is relevant if “it has a tendency to make a fact more or less
`
`probable than it would be without the evidence.” Fed. R. Evid. 401. Exhibit 2012
`
`bears no publication date and was retrieved on July 12, 2016, more than 10 years
`
`after the December 2005 priority date of the challenged patent. (Ex. 2012 at 1.)
`
`Although Ex. 2012 states “Established: January 16, 2002,” Patent Owner presents
`
`no evidence that January 16, 2002 is the page’s creation or publication date or that
`
`the information contained in Exhibit 2012 dates from 2002. In fact, the webpage
`
`describes the most recent versions of the Detours package, not versions that existed
`
`in 2002. For example, Ex. 2012 includes a section titled “What’s New?” and
`
`describes improvements over old versions of Detours. (Exhibit 2012 at 1-2 (“Detours
`
`
`
`5
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`
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`Petitioner’s Motion to Exclude
`Evidence Under 37 C.F.R. § 42.64(c)
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`
`3.0 includes the following new features over Detours 2.x.”).) Exhibit 2012 also states
`
`that Detours has been “[u]nder commercial release for over 10 years.” (Id.) Patent
`
`Owner has not shown that Exhibit 2012 is probative to the understanding of a person
`
`of ordinary skill in the art as to the function of the Detours package in 2005. Fed. R.
`
`Evid. 402. (Ex. 2002 at ¶¶ 32-39, 99-100.)
`
`Exhibit 2012 is also an out-of-court statement on a webpage offered for the
`
`truth of the matter asserted. Patent Owner relies on Exhibit 2012 to show that
`
`“Detours intercepts Win32 functions by re-writing the in-memory code for target
`
`functions.” (Ex. 2012 at 2; Ex. 2002 at ¶ 100.) Exhibit 2012 as used by the Patent
`
`Owner is inadmissible hearsay and Patent Owner does not argue that a hearsay
`
`exception applies. Fed. R. Evid. 802. The most obvious hearsay exception that might
`
`apply here is the learned treatise exception, which requires that the publication be
`
`established as a reliable authority either through expert testimony or judicial notice.
`
`Fed. R. Evid. 803(18). Patent Owner has not shown that Exhibit 2012 is reliable or
`
`that its content accurately reflects the state of the art in 2005 (as opposed to 2016),
`
`so the learned treatise exception does not apply. (Ex. 2002 at ¶¶ 99-100.)
`
`Patent Owner also has not produced evidence showing that Exhibit 2012 is
`
`what it purports to be, nor has Patent Owner presented evidence that
`
`Dr. Medvidovic, or any other witness, had first-hand knowledge of Exhibit 2012.
`
`
`
`6
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`
`
`Petitioner’s Motion to Exclude
`Evidence Under 37 C.F.R. § 42.64(c)
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`
`Patent Owner has failed to authenticate Exhibit 2012. Fed. R. Evid. 901. Exhibit
`
`2012 should be excluded.
`
`IV. THE STACKOVERFLOW WEBPAGE (EX. 2013) SHOULD BE EXCLUDED
`BECAUSE IT IS IRRELEVANT AND IS INADMISSIBLE HEARSAY
`
`Petitioner moves to exclude Exhibit 2013 because it is irrelevant and hearsay,
`
`with no applicable hearsay exception. Patent Owner relies on Exhibit 2013 in the
`
`Declaration of Dr. Medvidovic. (Ex. 2002 at ¶ 100.)
`
`Exhibit 2013 is a webpage from a Stack Overflow online discussion board
`
`that Patent Owner uses to show a person of ordinary skill’s understanding of the
`
`Detours software package in December 2005. (Ex. 2002 at ¶¶ 32-39, 99-100
`
`(“Microsoft Detours is used to gather information regarding the system calls a
`
`process makes, namely by attaching arbitrary DLLs.”).) Evidence is relevant if “it
`
`has a tendency to make a fact more or less probable than it would be without the
`
`evidence.” Fed. R. Evid. 401. The information in Exhibit 2013 was posted in
`
`December 2010 and edited in August and November 2012. (Ex. 2013 at 1-3.) The
`
`information contained in Exhibit 2013 was posted at least five years after the priority
`
`date of the challenged patent. (Exhibit 2002 at ¶ 34.) Exhibit 2013 is not probative
`
`to the understanding of a person of ordinary skill in the art as to the function of the
`
`Detours package in 2005 because it was posted at least five years after the relevant
`
`time period. Fed. R. Evid. 402. (Ex. 2002 at ¶¶ 32-39, 99-100.)
`
`
`
`7
`
`
`
`Petitioner’s Motion to Exclude
`Evidence Under 37 C.F.R. § 42.64(c)
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`
`Exhibit 2013 also contains out-of-court statements made on a web forum
`
`offered for the truth of the matter asserted. Patent Owner relies on Exhibit 2013 to
`
`show that “Microsoft Detours is used to gather information regarding the system
`
`calls a process makes, namely by attaching arbitrary DLLs.” (Ex. 2002 at ¶ 100.)
`
`Exhibit 2013 as used by the Patent Owner is inadmissible hearsay and Patent Owner
`
`does not argue that any hearsay exception applies. Fed. R. Evid. 802; see Sony Corp.,
`
`Case IPR2013-00219, Paper 16, at 41-42, 45-48, 51-52. The most obvious hearsay
`
`exception that might apply is the learned treatise exception, which requires that the
`
`publication be established as a reliable authority either through expert testimony or
`
`judicial notice. Fed. R. Evid. 803(18). Patent Owner has not shown that the web
`
`forum in Exhibit 2013 is reliable or that its content accurately reflects the state of
`
`the art in 2005 (as opposed to 2016), so the learned treatise exception does not apply
`
`here. (Ex. 2002 at ¶ 100.)
`
`Exhibit 2013 also lacks authentication. Fed. R. Evid. 901. Patent Owner has
`
`not produced evidence showing who authored Exhibit 2013 or that Exhibit 2013 is
`
`what it purports to be. Nor has Patent Owner presented evidence that
`
`Dr. Medvidovic, or any other witness, had first-hand knowledge of Exhibit 2013.
`
`See Sony Corp., Case IPR2013-00219, Paper 16, at 44 n.16, 45. Patent Owner has
`
`
`
`8
`
`
`
`Petitioner’s Motion to Exclude
`Evidence Under 37 C.F.R. § 42.64(c)
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`
`failed to authenticate Exhibit 2013. Fed. R. Evid. 901. Exhibit 2013 should be
`
`excluded.
`
`V. CONCLUSION
`For the foregoing reasons, Exhibits 2009 and 2011-2013 should be excluded
`
`as irrelevant and hearsay.
`
`
`
`
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`
`
`9
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`
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`Petitioner’s Motion to Exclude
`Evidence Under 37 C.F.R. § 42.64(c)
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`
`
`
`
`
`Respectfully submitted,
`COOLEY LLP
`
`Dated: November 17, 2016
`
`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Ave., NW, Suite 700
`Washington, DC 20004
`Tel: (703) 456-8000
`Fax: (202) 842-7899
`
`
`
`
`By:
`
`
`
`/Orion Armon/
`Orion Armon
`Reg. No. 65,421
`
`10
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`
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`CERTIFICATE OF SERVICE
`
`
`
`Pursuant to 37 C.F.R. §§ 42.6(e), the undersigned certifies that on
`
`November 17, 2016, a complete and entire copy of this PETITIONER’S MOTION
`
`TO EXCLUDE EVIDENCE UNDER 37 C.F.R. § 42.64(c) was served by filing
`
`this document through the E2E System, as well as delivering via electronic mail
`
`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
`
`Nathaniel A. Hamstra
`David Nelson
`Kenneth K. Suh
`QUINN EMANUEL
`500 W. Madison St., Suite 2450
`Chicago, IL 60661
`nathanhamstra@quinnemanuel.com
`davenelson@quinnemanuel.com
`kennethsuh@quinnemanuel.com
`
`By:
`
`
`
`/Orion Armon/
`Orion Armon
`Reg. No. 65,421
`
`
`
`upon the following counsel of record:
`
`
`
`
`James Hannah
`KRAMER LEVIN NAFTALIS &
`FRANKEL LLP
`
`
`
`990 Marsh Road
`
`
`
`Menlo Park, CA 94025
`
`
`Phone: (650) 752-1712
`
`
`Fax: (650) 752-1812
`
`
`jhannah@kramerlevin.com
`
`
`
`
`
`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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