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 REPLY TO PETITIONER’S OPPOSITION TO
`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 REPLY TO PETITIONER’S OPPOSITION TO
`PATENT OWNER’S MOTION TO EXCLUDE
`
`
`1 Case IPR2016-00919 has been joined with this proceeding.
`
`
`
`
`
`Patent Owner’s Reply ISO Motion to Exclude
`IPR2015-01979 (U.S. Patent No. 8,141,154)
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`Patent Owner’s Motion to Exclude (“Motion,” Paper 48) should be granted.
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`I.
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`The Board Should Exclude the Sirer Declaration (Ex. 1008).
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`The Board should exclude the Sirer Declaration.
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`First, the Board should disregard the Sirer Declaration (Ex. 1008) because
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`Petitioner still has not made Dr. Sirer available for deposition, despite Patent
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`Owner’s explicit request on the November 16, 2016 call with the Board. Motion at
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`5–7; see also Ex. 2037, 11/16/16 Teleconference Tr. at 13:2–6; HTC Corp. and
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`HTC Am., Inc. v. NFC Tech., LLC, Case IPR2014-01198, Paper 41, at 2–5
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`(P.T.A.B. Nov. 6, 2015) (expunging a declaration where the witness was not made
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`available and declining to give any weight to the expunged exhibit).
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`Indeed, the Board forewarned Petitioner that it would need to make Dr. Sirer
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`available if it wanted the Board to give any weight to the Sirer Declaration. Ex.
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`2037, 11/16/16 Teleconference Tr. at 12:2–6 (“So you know, you pick your poison
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`in a way. So if you rely on it, then you know what our rules are on declarations
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`that have not – have not had the benefit of cross-examination.”). Petitioner entirely
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`ignored this in its Opposition, even though the call took place nearly two weeks
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`prior to Petitioner’s Opposition. Indeed, Petitioner completely mischaracterizes
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`the facts of this case, and overlooks its own prior admission that “there’d be a huge
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`bias problem that would make the testimony worthless anyway.” Paper 43 at
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`15:13-14. Now, in a sandbagging attempt, Petitioner improperly attempts to shift
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`1
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`Patent Owner’s Reply ISO Motion to Exclude
`IPR2015-01979 (U.S. Patent No. 8,141,154)
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`the blame to Patent Owner. Petitioner Opp. at 5–6. Therefore, because Petitioner
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`violated the Rules through its failure to make Dr. Sirer available, the Board should
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`exclude the Sirer Declaration.
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`Second, because Petitioner has not made Dr. Sirer available, his declaration
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`should be considered hearsay since it is an out-of-court statement being used to
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`prove the truth of the matter asserted. Motion at 7. Petitioner’s preventing Patent
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`Owner from cross-examining Dr. Sirer justifies classifying the Sirer Declaration as
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`an out-of-court statement. See Motion at 7; Fed. R. Evid. 801(c). Therefore, the
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`Board should exclude the Sirer Declaration as impermissible hearsay.
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`Third, Dr. Sirer fails to offer support indicating any personal knowledge for
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`his testimony that the article was publicly accessible. In fact, he provides nothing
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`more than conclusory statements. See Motion at 7–8. Again, the Sirer Declaration
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`itself does not provide the basis for his statements. Accordingly, the Board should
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`exclude the Sirer Declaration based on lack of personal knowledge.
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`II. Exhibits Outside the Proper Scope of Reply.
`The new evidence Petitioner introduced in its Reply should be excluded.
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`Motion at 1–5. In fact, Petitioner does not dispute that this newly filed evidence
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`was available at the time it filed its Petition. “[T]he expedited nature of IPRs bring
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`with it an obligation for petitioners to make their case in their petition to institute”
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`unlike in district courts where “parties have greater freedom to revise and develop
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`2
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`Patent Owner’s Reply ISO Motion to Exclude
`IPR2015-01979 (U.S. Patent No. 8,141,154)
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`their arguments over time.” Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd.,
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`821 F.3d 1359, 1369–70 (Fed. Cir. 2016).
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`Petitioner’s claims that it is only directly replying to Patent Owner’s
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`arguments are belied by the untimely filed Reply evidence to support its newly
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`minted arguments. As explained in the Motion, Petitioner attempts to use the
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`Rubin Declaration to cure its prima facie case of invalidity by discussing what was
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`purportedly widely known. See Motion at 4. Patent Owner has not had a fair
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`opportunity to respond to this evidence because Petitioner’s belated introduction of
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`it has “denied [Patent Owner] the opportunity to file responsive evidence.” The
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`Scotts Co. v. Encap, LLC, IPR2013-00110, Paper 79 at 5–6 (PTAB June 24, 2014).
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`Similarly, Petitioner’s reliance on Dr. Medvidovic’s declarations (Exhibits
`
`1039-1041) from other prior cases is not only outside the proper scope of reply, but
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`is also irrelevant and misleading. Petitioner purports that these declarations
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`support Dr. Rubin’s constructions, which only further demonstrates that Petitioner
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`could have introduced these exhibits with its Petition. Motion at 5.
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`Further, Exhibits 1039-1041 are consistent with Dr. Medvidovic’s opinion in
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`this case, which demonstrates that they are not proper reply or impeachment
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`evidence. Petitioner Opp. at 4-5. During his deposition, Dr. Medvidovic explained
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`that his position in Exhibits 1039-1041 was entirely consistent with this case. Ex.
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`1038 at 142:20-146:11. Specifically, for Exhibit 1039, Dr. Medvidovic testified
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`3
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`Patent Owner’s Reply ISO Motion to Exclude
`IPR2015-01979 (U.S. Patent No. 8,141,154)
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`that he did not believe a construction of the plain and ordinary meaning of
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`“content” was necessary for the Websense case. Id. at 143:10-144:16. However,
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`in this case, given the Petitioner’s extreme position, it was necessary to provide a
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`construction of the plain and ordinary meaning of content. Id.
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`Exhibits 1040 and 1041 discuss different terms that are more limiting than
`
`“content.” See Ex. 1040 (discussing the term “content processor”); Ex. 1041
`
`(discussing the term “content processor for processing content…”). Even if those
`
`terms were relevant, which they are not, Dr. Medvidovic’s positions are entirely
`
`consistent. In Exhibit 1040, Dr. Medvidvovic states that “the content processor
`
`processes scripts and other code.” Ex. 1040 at 15. His disagreement with
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`Petitioner’s construction was that it was too limiting because the content processor
`
`does not require “render[ing] the content for interactive viewing on a display
`
`monitor” which imports numerous unnecessary limitations such as “interactive
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`viewing” and a “display monitor.” Id. at 14-15. With regard to Exhibit 1041, Dr.
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`Medvidovic provided the opinion that the limitation “content processor for
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`processing content…” is not a means plus function terms as Proofpoint suggested,
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`which is entirely consistent with his position in this case. Ex. 1041 at 17-19.
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`In sum, such untimely evidence, which Petitioner has mischaracterized in
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`support of its arguments, is highly prejudicial to Patent Owner who has no
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`opportunity to respond to such arguments.
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`4
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`Patent Owner’s Reply ISO Motion to Exclude
`IPR2015-01979 (U.S. Patent No. 8,141,154)
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`III. The Board Should Exclude the DeSart Declaration (Ex. 1036).
`The DeSart Declaration should be excluded for lack of authentication and
`
`relevance. Petitioner introduced the testimony of Mr. DeSart for his purported
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`knowledge at the University of Washington Library yet he admitted that the Sirer
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`Document is not a properly indexed “printed publication.” Motion at 8–10. Mr.
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`DeSart’s testimony regarding the Inspec computer science database is not relevant
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`because he is an employee at the University of Washington Library, not Inspec,
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`and does not establish when the Sirer Document was publicly available.
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`IV. The Board Should Exclude the Sirer Document (Ex. 1004) and Related
`Exhibit 1024.
`The Board should exclude the Sirer Document and Ex. 1024. See generally
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`Motion at 10-14. Petitioner does not provide an explanation as to why Sirer is
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`allegedly a self-authenticating periodical. Moreover, Petitioner’s assertion that it is
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`relying on the date on Sirer to corroborate the DeSart testimony is a red herring—
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`this does not change the fact that Petitioner is inappropriately relying on the date to
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`establish when the reference was publicly available which differs from a date
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`merely reflected on a document. See id.
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`Even if Petitioner had properly authenticated Sirer (which it did not),
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`Petitioner has not established that it would have been available to a person
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`interested in the art. Therefore, Sirer is not properly authenticated, is inadmissible
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`hearsay, and is not relevant.
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`
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`5
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`Patent Owner’s Reply ISO Motion to Exclude
`IPR2015-01979 (U.S. Patent No. 8,141,154)
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`V. Conclusion
`For the foregoing reasons, the Board should grant Patent Owner’s Motion to
`
`Exclude.
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`
`
`Dated: December 2, 2016
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`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
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`6
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`Patent Owner’s Reply ISO Motion to Exclude
`IPR2015-01979 (U.S. Patent No. 8,141,154)
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that a true and
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`correct copy of the foregoing Patent Owner’s Reply to Petitioner’s Opposition to
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`Motion to Exclude was served on December 2, 2016, by filing this document
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`through the Patent Review Processing System as well as delivering via electronic
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`mail upon the following counsel of record for Petitioner and Joinder Petitioner:
`
`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
`
`
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`
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`7
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`Patent Owner’s Reply ISO 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
`
`
`8
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