UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`PALO ALTO NETWORKS, INC.,
`Petitioner,
`
`
`v.
`
`FINJAN, INC.,
`Patent Owner.
`____________________
`
`Case IPR2015-02001
`Case IPR2016-00157
`U.S. Patent No. 8,225,408 B21
`
`__________________________________________________________
`
`PATENT OWNER’S OBJECTIONS TO EVIDENCE IN PETITIONER’S
`REPLY UNDER 37 C.F.R. § 42.64
`
`
`1 Cases IPR2015-02001 and IPR2016-00157 are consolidated. Cases IPR2016-
`
`00955 and IPR2016-00956 have been consolidated and joined with this
`
`consolidated proceeding.
`
`
`
`
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`PALO ALTO NETWORKS, INC.,
`Petitioner,
`
`
`v.
`
`FINJAN, INC.,
`Patent Owner.
`____________________
`
`Case IPR2015-02001
`Case IPR2016-00157
`U.S. Patent No. 8,225,408 B21
`
`__________________________________________________________
`
`PATENT OWNER’S OBJECTIONS TO EVIDENCE IN PETITIONER’S
`REPLY UNDER 37 C.F.R. § 42.64
`
`
`1 Cases IPR2015-02001 and IPR2016-00157 are consolidated. Cases IPR2016-
`
`00955 and IPR2016-00956 have been consolidated and joined with this
`
`consolidated proceeding.
`
`
`
`
`
`Patent Owner’s Objections to Evidence
`IPR2015-02001, IPR2016-00157 (U.S. Patent No. 8,225,408)
`
`Patent Owner Finjan, Inc. (“Patent Owner”) objects under the Federal Rules
`
`
`
`
`of Evidence and 37 C.F.R. § 42.64(b)(1) to the admissibility of the following
`
`documents submitted by Palo Alto Networks, Inc. and Blue Coat Systems, Inc.
`
`(“Petitioner”) in its Reply to Patent Owner’s Response (“Reply”). Paper No. 27.
`
`
`
`Petitioner’s Reply was filed on November 4, 2016. Patent Owner’s
`
`objections are timely under 37 C.F.R. § 42.64(b)(1). Patent Owner serves
`
`Petitioner with these objections to provide notice that Patent Owner will move to
`
`exclude these exhibits as improper evidence.
`
`I.
`
`PETITIONER’S EVIDENCE
`A. Deposition Transcript of Nenad Medvidovic, IPR2015-02001 (Oct.
`28, 2016), (“Medvidovic Deposition Transcript”) (Exhibit 1062)
`
`Patent Owner objects to the admissibility of the Medvidovic Deposition
`
`Transcript for at least the following reasons:
`
`Patent Owner objects because the Medvidovic Deposition Transcript is not
`
`relevant. For example, the Medvidovic Deposition Transcript states that
`
`“analyzing the data in an individual packet might not give you any information.”
`
`Ex. 1062 at 78. However, Petitioner misinterprets the Medvidovic Deposition
`
`Transcript to mean “it was only necessary to use known techniques to analyze
`
`individual packets or, at most, a group of packets…” Paper No. 27 at 5.
`
`Accordingly, for at least the foregoing reasons, the cited portions of the
`
`Medvidovic Deposition Transcript are not relevant under FRE 401 and
`
`1
`
`
`
`Patent Owner’s Objections to Evidence
`IPR2015-02001, IPR2016-00157 (U.S. Patent No. 8,225,408)
`
`
`inadmissible under FRE 402. Moreover, Petitioner’s use of the Medvidovic
`
`Deposition Transcript is confusing, of minimal probative value, outweighed by
`
`prejudice, and/or a waste of time and is therefore inadmissible under FRE 403.
`
`Patent Owner objects to the portions of the Medvidovic Deposition
`
`Transcript that Petitioner does not cite to or rely on in its Reply. Accordingly, such
`
`evidence is not relevant under FRE 401 and is inadmissible under FRE 402. Any
`
`attempt by Petitioner to rely on these portions would be highly prejudicial to Patent
`
`Owner under FRE 403.
`
`B.
`
`Exhibit 4 to Deposition of Nenad Medvidovic, IPR2015-02001
`(Oct. 28, 2016), (“Medvidovic Exhibit 4”) (Exhibit 1063)
`
`Patent Owner objects to the admissibility of the Medvidovic Exhibit 4 for at
`
`least the following reasons:
`
`Petitioner has failed to authenticate the Medvidovic Exhibit 4 under FRE
`
`901 and FRE 602. Specifically, Petitioner has failed to establish that the
`
`Medvidovic Exhibit 4 is what Petitioner claims it to be.
`
`Patent Owner objects to the portions of the Medvidovic Exhibit 4 that
`
`Petitioner does not cite to or rely on in its Reply. Accordingly, such evidence is
`
`not relevant under FRE 401 and is inadmissible under FRE 402. Any attempt by
`
`Petitioner to rely on these portions would be highly prejudicial to Patent Owner
`
`under FRE 403.
`
`
`
`2
`
`
`
`Patent Owner’s Objections to Evidence
`IPR2015-02001, IPR2016-00157 (U.S. Patent No. 8,225,408)
`
`
`
`Patent Owner also objects because the Medvidovic Exhibit 4 is hearsay
`
`under FRE 801 and inadmissible under FRE 802 and FRE 803.
`
`The document introduces portions of writings, the whole of which were not
`
`submitted as evidence. The remainder of the writings must be submitted under
`
`FRE 106.
`
`Patent Owner objects because the Medvidovic Exhibit 4 is not relevant. For
`
`example, the Medvidovic Exhibit 4 defines the term “data stream” as “[a] sequence
`
`of digitally encoded signals used to represent information in transmission.” Ex.
`
`1063 at 10. Rather than using the exact definition, Petitioner chooses to
`
`mischaracterize the term to mean “a continuous flow of data during transmission.”
`
`Paper No. 27 at 15.
`
`Accordingly, for at least the foregoing reasons, the Medvidovic Exhibit 4 is
`
`not relevant under FRE 401 and inadmissible under FRE 402. Moreover, the
`
`Medvidovic Exhibit 4 is confusing, of minimal probative value, outweighed by
`
`prejudice, and/or a waste of time and is therefore inadmissible under FRE 403.
`
`C. Exhibit 6 to Deposition of Nenad Medvidovic, IPR2015-02001
`(Oct. 28, 2016), (“Medvidovic Exhibit 6”) (Exhibit 1064)
`
`Patent Owner objects to the admissibility of the Medvidovic Exhibit 6 for at
`
`least the following reasons:
`
`
`
`3
`
`
`
`Patent Owner’s Objections to Evidence
`IPR2015-02001, IPR2016-00157 (U.S. Patent No. 8,225,408)
`
`
`
`Petitioner has failed to authenticate the Medvidovic Exhibit 6 under FRE
`
`901 and FRE 602. Specifically, Petitioner has failed to establish that the
`
`Medvidovic Exhibit 6 is what Petitioner claims it to be.
`
`Patent Owner objects to the portions of the Medvidovic Exhibit 6 that
`
`Petitioner does not cite to or rely on in its Reply. Accordingly, such evidence is
`
`not relevant under FRE 401 and is inadmissible under FRE 402. Any attempt by
`
`Petitioner to rely on these portions would be highly prejudicial to Patent Owner
`
`under FRE 403.
`
`Patent Owner also objects because the Medvidovic Exhibit 6 is hearsay
`
`under FRE 801 and inadmissible under FRE 802 and FRE 803.
`
`The document introduces portions of writings, the whole of which were not
`
`submitted as evidence. The remainder of the writings must be submitted under
`
`FRE 106.
`
`Accordingly, for at least the foregoing reasons, the Medvidovic Exhibit 6 is
`
`not relevant under FRE 401 and inadmissible under FRE 402. Moreover, the
`
`Medvidovic Exhibit 6 is confusing, of minimal probative value, outweighed by
`
`prejudice, and/or a waste of time and is therefore inadmissible under FRE 403.
`
`D. Deposition Transcript of Harry Bims, IPR2015-02001 (Oct. 25,
`2016), (“Bims Deposition Transcript”) (Exhibit 1065)
`
`Patent Owner objects to the admissibility of the Bims Deposition Transcript
`
`for at least the following reasons:
`
`
`
`4
`
`
`
`Patent Owner’s Objections to Evidence
`IPR2015-02001, IPR2016-00157 (U.S. Patent No. 8,225,408)
`
`
`
`Patent Owner objects because the Bims Deposition Transcript is not
`
`relevant. For example, Petitioner mischaracterizes the Bims Deposition Transcript
`
`in an attempt to support its claim that “[i]t would have been obvious to a POSA
`
`that the same stream of data received by the computer passes through Chandnani’s
`
`lexical analyzer and then its parser as part of a continuous process, rather than a
`
`series of disjointed operations,” without providing any relevant citations. Paper
`
`No. 27 at 14.
`
`Accordingly, for at least the foregoing reasons, the cited portions of the
`
`Bims Deposition Transcript are not relevant under FRE 401 and inadmissible
`
`under FRE 402. Moreover, Petitioner’s use of the Bims Deposition Transcript is
`
`confusing, of minimal probative value, outweighed by prejudice, and/or a waste of
`
`time and is therefore inadmissible under FRE 403.
`
`Patent Owner objects to the portions of the Bims Deposition Transcript that
`
`Petitioner does not cite to or rely on in its Reply. Accordingly, such evidence is
`
`not relevant under FRE 401 and is inadmissible under FRE 402. Any attempt by
`
`Petitioner to rely on these portions would be highly prejudicial to Patent Owner
`
`under FRE 403.
`
`E. Deposition Transcript of Sang Hui Kim, IPR2015-02001 (Oct. 19,
`2016), (“Kim Deposition Transcript”) (Exhibit 1066)
`
`Patent Owner objects to the admissibility of the Kim Deposition Transcript
`
`for at least the following reasons:
`
`
`
`5
`
`
`
`Patent Owner’s Objections to Evidence
`IPR2015-02001, IPR2016-00157 (U.S. Patent No. 8,225,408)
`
`
`
`Patent Owner objects because the cited portions of the Kim Deposition
`
`Transcript are not relevant. For example, the Kim Deposition Transcript states
`
`Finjan has “licensed the ’408 [patent]… [but is] not aware of any standalone.” Ex.
`
`1066 at 40. However, Petitioner mischaracterizes the Kim Deposition Transcript
`
`in an attempt to support “admitting… it has never licensed the ‘408 patent on a
`
`standalone basis.” Paper No. 27 at 33.
`
`Accordingly, for at least the foregoing reasons, the cited portions of the Kim
`
`Deposition Transcript are not relevant under FRE 401 and inadmissible under
`
`FRE 402. Moreover, Petitioner’s use of the Kim Deposition Transcript is
`
`confusing, of minimal probative value, outweighed by prejudice, and/or a waste of
`
`time and is therefore inadmissible under FRE 403.
`
`Patent Owner objects to the portions of the Kim Deposition Transcript that
`
`Petitioner does not cite to or rely on in its Reply. Accordingly, such evidence is
`
`not relevant under FRE 401 and is inadmissible under FRE 402. Any attempt by
`
`Petitioner to rely on these portions would be highly prejudicial to Patent Owner
`
`under FRE 403.
`
`F. w3schools.com, “My First JavaScript Tutorial” (“First
`JavaScript”) (Exhibit 1053)
`
`In addition to the objections noted above, Patent Owner objects to the
`
`admissibility of First JavaScript for at least the following reasons:
`
`
`
`6
`
`
`
`Patent Owner’s Objections to Evidence
`IPR2015-02001, IPR2016-00157 (U.S. Patent No. 8,225,408)
`
`
`
`Patent Owner objects to First JavaScript as not relevant under FRE 401 and
`
`FRE 402 because it exceeds the proper scope of Petitioner’s Reply. See 37 C.F.R.
`
`§ 42.23(b). Patent Owner further objects to First JavaScript under FRE 403
`
`because of the prejudice arising from Patent Owner’s inability to respond to the
`
`untimely evidence and arguments therein.
`
`Patent Owner objects to First JavaScript as untimely because it should have
`
`been introduced in its Petition. See 37 C.F.R. § 42.104(b); 37 C.F.R. § 42.23(b).
`
`Patent Owner objects to First JavaScript because it is supplemental information
`
`that is improper and untimely under 37 C.F.R. § 42.123.
`
`Patent Owner objects to First JavaScript because Petitioner failed to cite to
`
`or rely on First JavaScript in its Petition. Accordingly, such evidence is not
`
`relevant under FRE 401 and is inadmissible under FRE 402. Petitioner’s attempt
`
`to rely on First JavaScript is highly prejudicial to Patent Owner under FRE 403.
`
`Petitioner has failed to authenticate First JavaScript under FRE 901 and
`
`FRE 602. Specifically, Petitioner has failed to establish that First JavaScript is
`
`what Petitioner claims it is, and has failed to authenticate the date by which First
`
`JavaScript was allegedly publicly accessible. For example, First JavaScript bears
`
`only a copyright timeframe of 1999-2015. However, Petitioner has failed to
`
`establish when the cited language was available on First JavaScript. To the extent
`
`that Petitioner attempts to rely on the date that appears on First JavaScript, the date
`
`
`
`7
`
`
`
`Patent Owner’s Objections to Evidence
`IPR2015-02001, IPR2016-00157 (U.S. Patent No. 8,225,408)
`
`
`is hearsay under FRE 801 and is inadmissible under FRE 802, and further, the
`
`date has not been authenticated and is inadmissible under FRE 901.
`
`Patent Owner also objects to First JavaScript because it is irrelevant,
`
`confusing, and of minimal probative value under FRE 401, 402, and 403, also
`
`because Petitioner has failed to establish that First JavaScript was available in the
`
`relevant timeframe.
`
`Because of these deficiencies, First JavaScript is not relevant under FRE
`
`401 and is inadmissible under FRE 402 and FRE 403.
`
`G. Objections to Exhibits Based on Relevance
`In addition to the objections noted above, Patent Owner objects to the
`
`admissibility of the following under FRE 401-403 because Petitioner never relied
`
`on these Exhibits in neither the Petition nor the Reply:
`
`Exhibits 1007, 1010, 1013, 1014, 1016, 1018, 1020, 1023, 1024, 1025, 1026,
`
`1027, 1028, 1029, 1030, 1031, 1032, 1033, 1034, 1035, 1036, 1037, 1038, 1039,
`
`1040, 1041, 1042, 1043, 1044, 1045, 1046, 1047, 1048, 1049, 1050, 1051, 1052,
`
`1054, 1055, 1056, 1057, 1058, and 1059.
`
`
`
`8
`
`
`
`
`
`
`
`
`
`Patent Owner’s Objections to Evidence
`IPR2015-02001, IPR2016-00157 (U.S. Patent No. 8,225,408)
`
`
`
`Dated: November 11, 2016
`
`Case No. IPR2015-02001
`
`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 H. 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
`
`Attorneys for Patent Owner
`
`
`
`9
`
`
`
`
`
`Patent Owner’s Objections to Evidence
`IPR2015-02001, IPR2016-00157 (U.S. Patent No. 8,225,408)
`
`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 Objections to Evidence in
`
`Petitioner’s Reply Under 37 C.F.R. § 42.64 was served on November 11, 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:
`
`10
`
`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 Objections to Evidence
`IPR2015-02001, IPR2016-00157 (U.S. Patent No. 8,225,408)
`
`
`Michael T. Rosato
`Andrew. S. Brown
`WILSON SONSINI GOODRICH & ROSATI
`701 Fifth Avenue, Suite 5100
`Seattle, WA 98104-7036
`mrosato@wsgr.com
`asbrown@wsgr.com
`
`Neil N. Desai
`WILSON SONSINI GOODRICH & ROSATI
`633 West Fifth Street, 15th Floor
`Los Angeles, CA 90071-2027
`ndesai@wsgr.com
`
`
`
`
`
`/James Hannah/
`
`James Hannah (Reg. No. 56,369)
`Kramer Levin Naftalis & Frankel LLP
`990 Marsh Road
`Menlo Park, CA 94025
`(650) 752-1700
`
`11
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