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. 2015-02001
`Inter Partes Review No. 2016-00157
`U.S. Patent No. 8,225,4081
`
`_____________________________________________________________
`
`PETITIONER’S MOTION TO EXCLUDE
`EVIDENCE UNDER 37 C.F.R. § 42.64(c)
`
`
`
`
`
`
`
`
`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
`
`Inter Partes Review No. 2015-02001
`Inter Partes Review No. 2016-00157
`U.S. Patent No. 8,225,4081
`
`_____________________________________________________________
`
`PETITIONER’S MOTION TO EXCLUDE
`EVIDENCE UNDER 37 C.F.R. § 42.64(c)
`
`
`
`
`
`
`
`
`1 Cases IPR2015-02001 and IPR2016-00157 are consolidated. Cases IPR2016-
`00955 and IPR2016-00956 have been consolidated and joined with this
`consolidated proceeding.
`
`
`
`TABLE OF CONTENTS
`
`
`I.
`II.
`
`Page
`THE CISCO WEB PAGE (EX. 2006) SHOULD BE EXCLUDED ............................. 1
`PARAGRAPHS 14-15 AND 18-23 OF THE BIMS DECLARATION (EX. 2013)
`SHOULD BE EXCLUDED .................................................................................... 3
`A. Dr. Bims’s opinions on licensing and alleged nexus should be
`excluded ................................................................................................ 3
`B. Dr. Bims’s opinions on industry praise should be excluded ................ 6
`III. CONCLUSION .................................................................................................... 6
`
`i
`
`
`
`
`
`
`
`
`
`
`
`TABLE OF AUTHORITIES
`
`
`Page(s)
`
`Cases
`In re Antor Media Corp.,
`689 F.3d 1282 (Fed. Cir. 2012) ............................................................................ 4
`Apple, Inc. v. Ameranth, Inc.,
`CBM2015-00080, Paper 44 (PTAB Aug. 26, 2016) ............................................ 4
`Graftech Int’l Holdings, Inc. v. Laird Techs, Inc.,
`652 Fed. Appx. 973 (Fed. Cir. June 17, 2016) ..................................................... 5
`Qualtrics Labs, Inc. v. OpinionLab, Inc.,
`IPR2014-00421, Paper 41 (PTAB. July 24, 2015) ............................................... 6
`Other Authorities
`37 C.F.R. § 42.64(c) ................................................................................................... 1
`Fed. R. Evid.
`401-402 ................................................................................................................. 1
`702, 703 ..................................................................................................... 3, 4, 5, 6
`802 ......................................................................................................................... 2
`803(18) .................................................................................................................. 2
`901 ......................................................................................................................... 2
`
`
`
`
`
`
`
`ii
`
`
`
`
`
`Petitioner’s Motion to Exclude
`IPR2015-02001
`
`
`Pursuant to 37 C.F.R. § 42.64(c), Petitioner moves to exclude Exhibit 2006
`
`submitted by Patent Owner and paragraphs 14, 15, and 18-23 of the Bims
`
`Declaration (Ex. 2013). Petitioner objected to these exhibits on August 16, 2016.
`
`(Paper 20.)
`
`I.
`
`THE CISCO WEB PAGE (EX. 2006) SHOULD BE EXCLUDED
`Petitioner moves to exclude Exhibit 2006 because it is irrelevant and
`
`inadmissible hearsay, with no applicable hearsay exception.
`
`Exhibit 2006 is an article titled “What Is the Difference: Viruses, Worms,
`
`Trojans, and Bots?” purportedly posted on a Cisco web page. (Ex. 2006.) Patent
`
`Owner and its technical expert, Dr. Medvidovic, rely on this article as evidence
`
`that a person of ordinary skill in the art would have recognized a distinction
`
`between the “exploits” recited in the challenged claims and prior art teachings
`
`regarding malicious code such as polymorphic viruses. (See Paper 19 at 9, 39; Ex.
`
`2007 at ¶¶ 49, 86.)
`
`Exhibit 2006 bears no publication date and indicates that it was retrieved on
`
`August 9, 2016, twelve years after the August 2004 priority date of the challenged
`
`claims. (Ex. 2006 at 1; Ex. 2002 at ¶ 34.) Accordingly, Exhibit 2006 is not
`
`probative of how a person of ordinary skill in the art in 2004 would have
`
`understood terms like “exploit” and “malware,” and should therefore be excluded.
`
`Fed. R. Evid. 401-402. (Ex. 2007 at ¶ 35 (“Counsel has informed me, and I
`
`
`
`1
`
`
`
`Petitioner’s Motion to Exclude
`IPR2015-02001
`
`
`understand, that the [POSA] is a hypothetical person who is presumed to be
`
`familiar with the relevant scientific field and its literature at the time of the
`
`invention.”) (emphasis added).)
`
`Exhibit 2006 is also an out-of-court statement offered for the truth of the
`
`matter asserted. Patent Owner quotes from Exhibit 2006 to show that “[a]lthough
`
`malware, such as viruses, can sometimes include an exploit, they are not the same
`
`thing.” (Ex. 2006 at 9; see also id. at 39.) Exhibit 2006 as used by Patent Owner is
`
`therefore inadmissible hearsay, and Patent Owner did not argue that a hearsay
`
`exception applies. See 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). But Patent Owner has not established that
`
`the Cisco web page is reliable or technically accurate or shown that it reflects the
`
`knowledge of a person skilled in the art in 2004, so the learned treatise exception
`
`does not apply. See id.
`
`Patent Owner also has not produced evidence that Exhibit 2006 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 2006. Patent Owner
`
`therefore failed to authenticate Exhibit 2006. See Fed. R. Evid. 901. Exhibit 2006
`
`should be excluded for this additional reason.
`
`
`
`2
`
`
`
`Petitioner’s Motion to Exclude
`IPR2015-02001
`II.
`
`
`PARAGRAPHS 14-15 AND 18-23 OF THE BIMS DECLARATION (EX. 2013)
`SHOULD BE EXCLUDED
`Petitioner moves to exclude paragraphs 14, 15, and 18-23 of Dr. Harry
`
`Bims’s declaration (Ex. 2013) because they contain opinions that are conclusory,
`
`are based on insufficient facts or data and unreliable principles and methods, and
`
`include testimony outside the scope of Dr. Bims’s specialized knowledge that will
`
`not assist the trier of fact. See Fed. R. Evid. 702, 703.
`
`A. Dr. Bims’s opinions on licensing and alleged nexus should be
`excluded
`Dr. Bims’s opinions on licensing (paragraphs 14 and 15) and a purported
`
`nexus with the challenged claims (paragraphs 18-21) should be excluded because
`
`they are outside the scope of Dr. Bims’s technical expertise and are not based on
`
`reliable facts or methods. See Fed. R. Evid. 702, 703.
`
`Dr. Bims’s opinions regarding Finjan licenses are based only on his
`
`conversations with Finjan’s attorneys. (Ex. 2013 at ¶¶ 14, 15; Ex. 1065, Bims Dep.
`
`at 51:1-4.) Dr. Bims performed no independent investigation or analysis
`
`concerning any Finjan licenses. (Ex. 1065, Bims Dep. at 52:5-54:15.) In fact, Dr.
`
`Bims (1) did not cite or attach any Finjan licenses as exhibits; (2) did not identify
`
`the amount paid under any Finjan license; (3) did not speak to anyone at Finjan
`
`other than its attorneys; and (4) did not speak with anyone at any of Finjan’s
`
`licensees. (Id. at 50:8-14, 53:9-16.) Dr. Bims admitted that he would need to
`
`
`
`3
`
`
`
`Petitioner’s Motion to Exclude
`IPR2015-02001
`
`
`review the licenses themselves to fully understand what the parties to those
`
`licenses agreed to. (Id. at 52:8-24.)
`
`Expert testimony based only on attorney-relayed facts is unreliable. See
`
`Apple, Inc. v. Ameranth, Inc., CBM2015-00080, Paper 44, at *38-39 (PTAB
`
`Aug. 26, 2016) (finding alleged evidence of nexus to be merely attorney argument
`
`where counsel provided the annotated evidence and the witness had merely relied
`
`on the attorney-provided evidence to provide his opinion). Thus, because Dr. Bims
`
`identifies no other basis for his opinions concerning Finjan licenses, paragraphs 14
`
`and 15 of the Bims Declaration should be excluded on this basis alone. See Fed. R.
`
`Evid. 702, 703.
`
`Dr. Bims’s licensing opinions are also deficient because they provide neither
`
`adequate evidence nor sufficient analysis to show nexus. See Apple, Inc. v.
`
`Ameranth, Inc., CBM2015-00080, Paper 44 at *36-37 (PTAB Aug. 26, 2016). But
`
`the mere existence of a license is insufficient to establish nexus. See, e.g., In re
`
`Antor Media Corp., 689 F.3d 1282, 1293-94 (Fed. Cir. 2012). Dr. Bims admitted
`
`that all of Finjan’s licenses are portfolio licenses that cover multiple patents, and
`
`that none of them allocate royalties on a patent-by-patent basis. (Ex. 1065, Bims
`
`Dep. at 50:15-51:6.) Moreover, Dr. Bims did not know the amount of any Finjan
`
`license and did no analysis to determine whether any Finjan licensee paid more for
`
`a license than it would have cost to litigate through trial and appeal. (Id. at 54:3-
`
`
`
`4
`
`
`
`Petitioner’s Motion to Exclude
`IPR2015-02001
`
`
`15.) Accordingly, Dr. Bims’s licensing opinions are unreliable and unhelpful to the
`
`Board. See Fed. R. Evid. 702, 703.
`
`Dr. Bims’s opinions concerning alleged nexus between the challenged
`
`claims and alleged evidence of secondary considerations (paragraphs 18-21)
`
`should be excluded for similar reasons. See Graftech Int’l Holdings, Inc. v. Laird
`
`Techs, Inc., 652 Fed. Appx. 973, 978-79 (Fed. Cir. June 17, 2016) (a nexus must
`
`exist between the claimed invention and the commercial success). For example,
`
`Dr. Bims provides no evidence that any commercial success resulted from the
`
`claimed inventions. Dr. Bims did not analyze whether any allegedly infringing
`
`products contained non-patented features, or what portion, if any, of the accused
`
`infringers’ revenues were attributable to the claimed inventions. (Ex. 1065, Bims
`
`Dep. at 47:18-49:14.) Dr. Bims also did not analyze whether the patented
`
`inventions drove demand for any allegedly infringing products and did not
`
`consider other possible reasons for commercial success, such as nonpatented
`
`features, pricing, or effective marketing. (Id. at 49:16-50:2.) Similarly, Dr. Bims
`
`did not perform any market share analysis for purposes of his opinions. (Id. at
`
`50:3-5.) Without such evidence, paragraphs 18-21 of the Bims Declaration are
`
`unreliable and should be excluded. See Graftech, 652 Fed. Appx. at 978-79; Fed.
`
`R. Evid. 702, 703.
`
`
`
`5
`
`
`
`Petitioner’s Motion to Exclude
`IPR2015-02001
`B. Dr. Bims’s opinions on industry praise should be excluded
`Dr. Bims’s opinions concerning praise by others and industry recognition
`
`
`
`(paragraphs 22-23) should be excluded because they are based on nothing more
`
`than a single sentence in a Gartner report that was published more than five years
`
`before the ’408 patent issued. (See Ex. 2013 at ¶¶ 22-23; Ex. 2021 at 15.) Evidence
`
`of praise is relevant only “when it is directed to the merits of the invention
`
`claimed.” Qualtrics Labs, Inc. v. OpinionLab, Inc., IPR2014-00421, Paper 41, at
`
`31-32 (PTAB July 24, 2015) (citations omitted). Dr. Bims provides no evidence or
`
`analysis linking Gartner’s praise to the merits of any invention claimed in the ’408
`
`patent, and he admitted that there were multiple solutions for what Gartner referred
`
`to as “zero-hour threats.” (See Ex. 2013 at ¶¶ 22-23; Ex. 1065, Bims Dep. at 55:18-
`
`58:13.) Because he provides no evidence of alleged nexus, Dr. Bims’s testimony
`
`concerning industry praise is not based on reliable facts or data, and should
`
`therefore be excluded. See Fed. R. Evid. 702, 703.
`
`III. CONCLUSION
`For the foregoing reasons, Exhibit 2006 and paragraphs 14, 15, and 18-23 of
`
`the Bims Declaration (Ex. 2013) should be excluded.
`
`
`
`
`
`
`
`
`
`6
`
`
`
`Petitioner’s Motion to Exclude
`IPR2015-02001
`
`
`Dated: November 22, 2016
`
`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Ave., NW, Suite 700
`Washington, DC 20004
`Tel: (703) 456-8000
`Fax: (202) 842-7899
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`COOLEY LLP
`
`
`
`By:
`
`
`
`/Orion Armon/
`Orion Armon
`Reg. No. 65,421
`
`
`
`
`
`7
`
`
`
`Petitioner’s Motion to Exclude
`IPR2015-02001
`
`CERTIFICATE OF COMPLIANCE WITH PAGE LIMIT
`Pursuant to 37 C.F.R. § 42.24(d), I certify that this Motion complies with the
`
`
`
`type-volume limits of 37 C.F.R. § 42.24(a)(1)(v) because it contains 6 pages,
`
`excluding the parts of this Motion that are exempted by 37 C.F.R. § 42.24(a).
`
`
`Dated: November 22, 2016
`
`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Ave., NW, Suite 700
`Washington, DC 20004
`Tel: (703) 456-8000
`Fax: (202) 842-7899
`
`
`Respectfully submitted,
`COOLEY LLP
`
`By:
`
`/Orion Armon/
`Orion Armon
`Reg. No. 65,421
`
`
`
`8
`
`
`
`Petitioner’s Motion to Exclude
`IPR2015-02001
`
`CERTIFICATE OF SERVICE
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on
`
`
`
`November 22, 2016, a complete and entire copy of this PETITIONER’S MOTION
`
`TO EXCLUDE was served by filing this document through the Patent Review
`
`Processing System and via electronic mail 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
`
`
`
`
`
`
`
`Matthew I Kreeger
`
`
`MORRISON FOERSTER
`425 Market Street
`San Francisco, CA 94105-2482
`Phone: (415) 268-7000
`
`
`Fax: (415) 268-7522
`
`
`FinjanPANMofoTeam@mofo.com
`
`
`
`
`
`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
`
`Michael T. Rosato
`Andrew S. Brown
`WILSON SONSINI GOODRICH
` & ROSATI
`701 Fifth Avenue, Suite 5100
`Seattle, WA 98104-7036
`Phone: (206) 883-2925
`Fax: (206) 883-2699
`mrosato@wsgr.com
`
`By: /Orion Armon/
`
`Orion Armon
`
`Reg. No. 65,421
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
