UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`Palo Alto Networks, Inc.
`Petitioner
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`v.
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`Finjan, Inc.
`Patent Owner
`
`Case IPR2015-02001
`Case IPR2016-001571
`Patent No. 8,225,408 B2
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`
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`Petitioner’s Objections to Evidence Under 37 C.F.R. § 42.64
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`1 Case IPR2016-00157 has been consolidated with IPR2015-02001.
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`Palo Alto Networks, Inc.
`Petitioner
`
`v.
`
`Finjan, Inc.
`Patent Owner
`
`Case IPR2015-02001
`Case IPR2016-001571
`Patent No. 8,225,408 B2
`
`
`
`Petitioner’s Objections to Evidence Under 37 C.F.R. § 42.64
`
`
`1 Case IPR2016-00157 has been consolidated with IPR2015-02001.
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`
`
`
`
`
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`
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`Petitioner’s Objections to Evidence
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`IPR2015-02001 & IPR 2016-00157 (U.S. Patent No. 8,225,408)
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`
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`Petitioner Palo Alto Networks, Inc. (“Petitioner”) objects under the Federal
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`Rules of Evidence and 37 C.F.R. § 42.64(b)(1) to the admissibility of the following
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`exhibits submitted by Finjan, Inc. (“Patent Owner”) in support of its Patent Owner
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`Response: Ex. 2006, Cisco web page; Ex. 2007, the Declaration of Dr. Nenad
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`Medvidovic (“Medvidovic Declaration”); Ex. 2012, the Declaration of S.H.
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`Michael Kim (“Kim Declaration”); Ex. 2013, the Declaration of Dr. Harry Bims
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`(“Bims Declaration”); Ex. 2014, Appendix C to Finjan’s Disclosure of Asserted
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`Claims and Infringement Contentions in Finjan, Inc. v. Websense, Inc., Case No.
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`13-cv-04398 (N.D. Cal.) (“Websense claim chart”); and Ex. 2017, Appendix E to
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`Finjan’s Disclosure of Asserted Claims and Infringement Contentions in Finjan,
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`Inc. v. Proofpoint Technologies, Inc., et al., Case No. 13-cv-05808 (N.D. Cal.)
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`(“Proofpoint claim chart”).
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`Patent Owner served its Patent Owner’s Response on August 9, 2016. Paper
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`No. 19. Petitioner’s objections are timely under 37 C.F.R. § 42.64(b)(1). By
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`serving these objections on Patent Owner, Petitioner reserves its right to file
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`motions to exclude these exhibits under 37 C.F.R. § 42.64(c).
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`I.
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`CISCO WEB PAGE (EX. 2006)
`Petitioner objects to the admissibility of a Cisco web page that purportedly
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`displays an article titled “What is the Difference: Viruses, Worms, Trojans, and
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`Bots?” under FRE 401, 402, 403, and 703. Patent Owner improperly relies on the
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`1
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`Petitioner’s Objections to Evidence
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`IPR2015-02001 & IPR 2016-00157 (U.S. Patent No. 8,225,408)
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`Cisco web page to support the understanding of a person of ordinary skill in the
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`2004 time frame, but the web page itself indicates that it was retrieved on
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`August 9, 2016. See Ex. 2006. Accordingly, it is irrelevant, of no probative value,
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`and not the type of evidence reasonably relied upon by a person of ordinary skill
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`during the relevant time period. The Cisco web page is also inadmissible hearsay
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`under FRE 801 and 802 and lacks authentication under FRE 901.
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`II. MEDVIDOVIC DECLARATION (EX. 2007)
`Petitioner objects to the admissibility of the Medvidovic Declaration under
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`FRE 702 and 703 because it contains opinions that are conclusory, does not
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`disclose supporting facts or data, and/or is based on unreliable facts, data, or
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`methods. For example, Dr. Medvidovic relies on the Cisco web page discussed in
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`the preceding section (Ex. 2006) for his opinions concerning the understanding of a
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`person of ordinary skill in the 2004 time frame, despite the fact that the web page
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`indicates that it was retrieved on August 9, 2016. See, e.g., Ex. 2007 at ¶¶ 49, 86;
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`Ex. 2006. Dr. Medvidovic is also unqualified as an expert to provide opinions
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`from the perspective of a person of ordinary skill in the art, rendering the
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`Medvidovic Declaration
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`inadmissible under FRE 702. The Medvidovic
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`Declaration also contains opinions that are irrelevant, confusing, and of minimal
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`probative value under FRE 401, 402, and 403.
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`2
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`Petitioner’s Objections to Evidence
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`IPR2015-02001 & IPR 2016-00157 (U.S. Patent No. 8,225,408)
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`III. KIM DECLARATION (EX. 2012)
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`Petitioner objects to the Kim Declaration because it does not introduce
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`evidence of Mr. Kim’s personal knowledge of the subject matter of the testimony
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`contained therein, rendering such testimony inadmissible under FRE 602. For
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`example, the Kim Declaration states that Mr. Kim has been IP counsel at Patent
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`Owner since March 2015, yet Mr. Kim testifies regarding events that occurred
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`before that date without showing how Mr. Kim gained personal knowledge of
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`those events. In addition, the Kim Declaration contains testimony regarding the
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`terms of several Patent Owner license agreements, but Mr. Kim was not part of the
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`negotiation or execution of the licenses. The Kim Declaration produces no
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`evidence of Mr. Kim’s personal knowledge of these licenses.
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`
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`The Kim Declaration is also inadmissible hearsay under FRE 801 and 802.
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`The Kim Declaration is also inadmissible under FRE 401, 402, and 403 as
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`irrelevant, prejudicial, misleading, and of minimal probative value.
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`
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`Petitioner also objects to the admissibility of the Kim Declaration under FRE
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`702. The Kim Declaration offers inadmissible expert testimony because the
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`opinions contained in his Declaration are conclusory, do not disclose supporting
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`facts or data, and are biased and unreliable, and because the Kim Declaration
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`provides no basis to support Mr. Kim’s qualifications as an expert. Accordingly,
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`Mr. Kim’s opinions are inadmissible under FRE 702.
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`3
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`Petitioner’s Objections to Evidence
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`IPR2015-02001 & IPR 2016-00157 (U.S. Patent No. 8,225,408)
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`IV. BIMS DECLARATION (EX. 2013)
`Petitioner objects to the admissibility of the Bims Declaration under FRE
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`702 and 703 because it contains opinions that are conclusory, does not disclose
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`supporting facts or data, and/or is based on unreliable facts, data, or methods. For
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`example, Dr. Bims opines on the alleged obviousness of the ’408 patent without
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`considering a number of relevant factors, including but not limited to the scope and
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`content of the prior art and any alleged differences between the claimed invention
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`and the prior art. As another example, Dr. Bims opines that certain Websense and
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`Proofpoint products are covered by claims of the ’408 patent based on his review
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`of Patent Owner’s made-for-litigation infringement contentions. See, e.g., Ex.
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`2013, ¶¶ 16-17. Moreover, the infringement charts relied on by Dr. Bims cover
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`only a subset of the claims at issue in this IPR. See Exs. 2014, 2017. Accordingly,
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`the opinions contained in the Bims Declaration are not based on sufficient facts or
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`data, are not the product of reliable principles and methods, and should therefore
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`be excluded under FRE 702 and 703. Dr. Medvidovic is also unqualified as an
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`expert to provide opinions from the perspective of a person of ordinary skill in the
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`art, rendering the Bims Declaration inadmissible under FRE 702. The Bims
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`Declaration also contains opinions that are irrelevant, confusing, and of minimal
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`probative value under FRE 401, 402, and 403. Finally, the Bims Declaration relies
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`on exhibits that are inadmissible and unreliable for the reasons set forth below.
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`4
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`Petitioner’s Objections to Evidence
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`IPR2015-02001 & IPR 2016-00157 (U.S. Patent No. 8,225,408)
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`V. WEBSENSE AND PROOFPOINT CLAIM CHARTS (EXS. 2014 AND 2017)
`Petitioner objects to the admissibility of the Websense and Proofpoint Claim
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`Charts under FRE 401, 402, 403, and 703. Patent Owner improperly relies on the
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`claim charts to support its arguments concerning alleged nexus between the claims
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`of the ’408 patent and Patent Owner’s licensing program and alleged commercial
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`success of products purportedly covered by the claims of the ’408 patent. Patent
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`Owner’s made-for-litigation infringement contentions do not prove infringement
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`and do not establish nexus, and are therefore irrelevant, of no probative value, and
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`not the type of evidence reasonably relied upon by a person of ordinary skill during
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`the relevant time period. The claim charts are also inadmissible hearsay under
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`FRE 801 and 802 and lack authentication under FRE 901.
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`Dated: August 16, 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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`Respectfully submitted,
`COOLEY LLP
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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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`5
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`Petitioner’s Objections to Evidence
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`IPR2015-02001 & IPR 2016-00157 (U.S. Patent No. 8,225,408)
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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 August 16,
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`2016, a complete and entire copy of this Petitioner’s Objections to Evidence
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`Under 37 C.F.R. § 42.64, was served by filing this document through the Patent
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`Review Processing System and via electronic mail upon the following counsel of
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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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`By:
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`
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`/Orion Armon/
`Orion Armon
`Reg. No. 65,421
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`
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`record for Patent Owner:
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`
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`James Hannah
`KRAMER LEVIN NAFTALIS &
`FRANKEL LLP
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`
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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
`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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