UNITED STATES PATENT AND TRADEMARK OFFICE
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`
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
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`PALO ALTO NETWORKS, INC.
`Petitioner
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`v.
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`FINJAN, INC.
`Patent Owner
`
`
`
`Inter Partes Review No. 2015-019791
`U.S. Patent No. 8,141,154
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`
`
`PETITIONER’S REPLY IN SUPPORT OF ITS
`MOTION TO EXCLUDE EVIDENCE UNDER 37 C.F.R. § 42.64(c)
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`
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`1 Case IPR2016-00919 has been joined with this proceeding.
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`
`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 REPLY IN SUPPORT OF ITS
`MOTION TO EXCLUDE EVIDENCE UNDER 37 C.F.R. § 42.64(c)
`
`
`
`1 Case IPR2016-00919 has been joined with this proceeding.
`
`
`
`
`
`
`
`
`Petitioner’s Reply ISO Motion to Exclude
`Evidence Under 37 C.F.R. § 42.64(c)
`IPR2015-01979 (U.S. Patent No. 8,141,154)
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`Patent Owner’s (“PO”) Opposition to Petitioner’s Motion to Exclude (Paper
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`51) and the Goodrich Declaration (Exhibit 2036) do not establish the relevance or
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`authenticity2 of the challenged exhibits, and PO concedes that the challenged
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`exhibits are inadmissible hearsay. Exhibits 2009 and 2011-2013 should be
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`excluded because they are irrelevant, lack authentication, and are hearsay.
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`I.
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`EXHIBIT 2009 (KERNEL32.DLL WEBOPEDIA DEFINITION) IS INADMISSIBLE
`PO does not establish that Exhibit 2009 is relevant or authentic, and does not
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`contest that Exhibit 2009 is hearsay. Exhibit 2009 should be excluded.
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`PO relies on the Goodrich Declaration to argue that Exhibit 2009 is relevant
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`to show that the kernel32.dll discussed in Khazan does not meet certain claim
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`limitations of the ’154 patent. However, Dr. Goodrich’s testimony is unreliable,
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`lacks evidentiary support, and therefore does not establish the relevance of Exhibit
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`2009. Specifically, PO relies on Dr. Goodrich to argue that Exhibit 2009
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`demonstrates that “a library would not be considered an application program
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`comprising content over a network,” and “anything in kernel32.dll could not be
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`deemed a ‘call to the first function’ or ‘first function,’ in the context of the ’154
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`Patent.” (Paper 51 at 1-2.) But Dr. Goodrich blindly applied Dr. Medvidovic’s
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`improperly narrow construction of “content” to argue that a library is not “content”
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`2 Petitioner did not waive its authentication objections. (Paper 23 at 1-5.)
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`-1-
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`Petitioner’s Reply ISO Motion to Exclude
`Evidence Under 37 C.F.R. § 42.64(c)
`IPR2015-01979 (U.S. Patent No. 8,141,154)
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`received over a network. (Ex. 1047 at 4 (11:5-14), 5 (15:25-16:7), 5-6 (17:23-
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`18:4); Paper 35 at 5-8.) And Dr. Goodrich testified before another Board panel that
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`the library in Khazan can include a call to a function:
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`Q: And isn’t it accurate, sir, that Khazan teaches that a library can
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`include a call to a function? As you summarize in Paragraph 65, “At a
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`later point in time during execution of the application, as part of
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`dynamic analysis, calls made to target functions by the application
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`and/or its libraries are monitored.”? A: I see that. Q: Those are your
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`words; correct? A: Yes.
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`(Ex. 1047 at 11 (40:6-14) (citing Ex. 1048 at ¶ 65 (emphasis added).) Dr.
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`Goodrich’s testimony also fails to provide evidentiary support for the conclusion
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`that Exhibit 2009, undated and retrieved in 2016, shows the understanding of a
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`person of ordinary skill in the art (“POSA”) in 2005. (Ex. 2036 at ¶¶ 29-30.) Dr.
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`Goodrich’s testimony lacks credibility and does not establish relevance.
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`As to authentication and hearsay, Dr. Goodrich’s knowledge of what was
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`generally known regarding kernel32.dll during the 2005 timeframe is not sufficient
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`authentication for Exhibit 2009 (F.R.E. 901), and PO does not contest that Exhibit
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`2009 is hearsay. In order for F.R.E. 703 to apply, PO must show that experts in the
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`field would reasonably rely on Exhibit 2009 and PO does not meet its burden.
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`-2-
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`Petitioner’s Reply ISO Motion to Exclude
`Evidence Under 37 C.F.R. § 42.64(c)
`IPR2015-01979 (U.S. Patent No. 8,141,154)
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`II. EXHIBIT 2011 (“TYPE SIGNATURE” WIKIPEDIA PAGE) IS INADMISSIBLE
`PO does not establish that Exhibit 2011 is relevant or authentic, and does not
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`contest that Exhibit 2011 is hearsay. Exhibit 2011 should be excluded.
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`As to relevance, Dr. Goodrich does not provide any support for his
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`testimony that the Wikipedia definition of “type signature” in Exhibit 2011
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`demonstrates how a POSA would have understood that term in 2005. (Ex. 2036 at
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`¶¶ 31-32.) The Wikipedia article bears no date and was retrieved in 2016. Dr.
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`Goodrich’s unsupported testimony is insufficient to establish relevance.
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`As to authentication and hearsay, Dr. Goodrich’s knowledge of what was
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`generally known regarding “type signature” during the 2005 timeframe is not
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`sufficient authentication evidence for the particular definition contained in Exhibit
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`2011 (F.R.E. 901), and PO does not contest that Exhibit 2011 is hearsay. In order
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`for F.R.E. 703 to apply, PO must show that experts in the field would reasonably
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`rely on Exhibit 2011 and PO does not meet its burden.
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`III. EXHIBIT 2012 (DETOURS WEBPAGE) IS INADMISSIBLE
`PO does not establish that Exhibit 2012 is relevant or authentic, and does not
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`contest that Exhibit 2012 is hearsay. Exhibit 2012 should be excluded.
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`As to relevance, Dr. Goodrich does not provide any support for his
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`testimony that the Detours web page of Exhibit 2012 demonstrates how a POSA
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`-3-
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`Petitioner’s Reply ISO Motion to Exclude
`Evidence Under 37 C.F.R. § 42.64(c)
`IPR2015-01979 (U.S. Patent No. 8,141,154)
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`would have understood the Detours package in 2005. (Ex. 2036 at ¶¶ 33-35.) The
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`“established” date on Exhibit 2012 is not evidence of when the information cited
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`by PO was first made available. (Paper 46 at 5-6.) Dr. Goodrich’s testimony is
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`insufficient to establish relevance.
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`As to authentication and hearsay, Dr. Goodrich’s knowledge of what was
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`generally known regarding Detours during the 2005 timeframe is not sufficient
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`authentication evidence (F.R.E. 901), and PO does not contest that Exhibit 2012 is
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`hearsay. In order for F.R.E. 703 to apply, PO must show that experts in the field
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`would reasonably rely on Exhibit 2012 and PO does not meet its burden.
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`IV. EXHIBIT 2013 (STACKOVERFLOW WEBPAGE) IS INADMISSIBLE
`PO does not establish that Exhibit 2013 is relevant or authentic and does not
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`contest that Exhibit 2013 is hearsay. Exhibit 2013 should be excluded.
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`PO relies on Dr. Goodrich to argue that Exhibit 2013 is relevant to show that
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`Khazan does not teach instrumenting applications and therefore does not meet
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`certain claim limitations of the ’154 patent. (Paper 51 at 9.) However, Dr.
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`Goodrich’s testimony is unreliable, lacks evidentiary support, and therefore does
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`not establish the relevance of Exhibit 2013. Indeed, Dr. Goodrich testified before
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`another Board panel that Khazan teaches instrumenting an application:
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`-4-
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`Petitioner’s Reply ISO Motion to Exclude
`Evidence Under 37 C.F.R. § 42.64(c)
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`
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`Q: Paragraph 82 of Exhibit 8, top of page 31 says, “Khazan modifies
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`the program to indicate program-level function calls made during
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`execution of the program by instrumenting an application…” Do you
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`see that? A: Yes. Q: Those are your words; correct? A: Yes.
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` (Ex. 1047 at 11 (38:10-20) (citing Ex. 1048 at ¶ 82)) (emphasis added)); id. at 11
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`(38:21-40:5) (“Khazan explains that an application may be run in an emulator and
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`further explains that the application may be instrumented to execute monitoring
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`code.”) (citing Ex. 1048 at ¶ 83) (emphasis added).) Dr. Goodrich’s testimony also
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`fails to provide evidentiary support for the conclusion that Exhibit 2013 shows the
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`understanding of a POSA in 2005. (Ex. 2036 at ¶¶ 36-37.) Dr. Goodrich’s
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`testimony lacks credibility and does not establish relevance.
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`As to authentication and hearsay, Dr. Goodrich’s knowledge of what was
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`generally known by a POSA in the 2005 timeframe is not sufficient authentication
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`evidence (F.R.E. 901), and PO does not contest that Exhibit 2013 is hearsay. In
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`order for F.R.E. 703 to apply, PO must show that experts would reasonably rely on
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`Exhibit 2013 and PO does not meet its burden.
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`V. CONCLUSION
`For reasons set forth above and in Petitioner’s motion to exclude, Exhibits
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`2009 and 2011-2013 should be excluded.
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`-5-
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`Petitioner’s Reply ISO Motion to Exclude
`Evidence Under 37 C.F.R. § 42.64(c)
`IPR2015-01979 (U.S. Patent No. 8,141,154)
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`Dated: December 2, 2016
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`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Ave., NW, Suite 700
`Washington, DC 20004
`Tel: (703) 456-8000
`Fax: (202) 842-7899
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`By:
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`Respectfully submitted,
`COOLEY LLP
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`/Orion Armon/
`Orion Armon
`Reg. No. 65,421
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`-6-
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. §§ 42.6(e), the undersigned certifies that on
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`December 2, 2016, a complete and entire copy of this PETITIONER’S REPLY
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`IN SUPPORT OF ITS MOTION TO EXCLUDE EVIDENCE UNDER 37
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`C.F.R. § 42.64(c) was served by filing this document through the E2E System, as
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`well as delivering via electronic mail upon the following counsel of record:
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`Jeffrey H. Price
`KRAMER LEVIN NAFTALIS &
`FRANKEL LLP
`1177 Avenue of the Americas
`New York, NY 10036
`Phone: (212) 715-7502
`Fax: (212) 715-8302
`jprice@kramerlevin.com
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`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
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`By:
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`
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`/Orion Armon/
`Orion Armon
`Reg. No. 65,421
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`James Hannah
`KRAMER LEVIN NAFTALIS &
`FRANKEL LLP
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`990 Marsh Road
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`Menlo Park, CA 94025
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`Phone: (650) 752-1712
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`Fax: (650) 752-1812
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`jhannah@kramerlevin.com
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`Michael Kim
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`Finjan, Inc.
`2000 University Ave., Ste. 600
`E. Palo Alto, CA 94303
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`Phone: 650.397.9567
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`mkim@finjan.com
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`USPTO Reg. No. 40,450
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