UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________
`
`
`PALO ALTO NETWORKS, INC.,
`Petitioner,
`
`v.
`
`FINJAN, INC.,
`Patent Owner.
`
`____________________
`
`Case IPR2016-001511
`U.S. Patent No. 8,141,154
`
`__________________________________________________________
`
`PATENT OWNER’S REPLY TO PETITIONER’S OPPOSITION TO
`PATENT OWNER’S MOTION TO EXCLUDE EVIDENCE
`
`
`1 Case IPR2016-01071 has been joined with this proceeding.
`
`
`
`
`
`__________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________
`
`
`PALO ALTO NETWORKS, INC.,
`Petitioner,
`
`v.
`
`FINJAN, INC.,
`Patent Owner.
`
`____________________
`
`Case IPR2016-001511
`U.S. Patent No. 8,141,154
`
`__________________________________________________________
`
`PATENT OWNER’S REPLY TO PETITIONER’S OPPOSITION TO
`PATENT OWNER’S MOTION TO EXCLUDE EVIDENCE
`
`
`1 Case IPR2016-01071 has been joined with this proceeding.
`
`
`
`
`
`Patent Owner’s Reply ISO Motion to Exclude
`IPR2016-00151 (U.S. Patent No. 8,141,154)
`
`
`Patent Owner’s Motion to Exclude (Paper No. 39, “Motion”) should be
`
`granted for the reasons set forth below.
`
`I.
`
`THE BOARD SHOULD EXCLUDE THE NEW EXHIBITS OUTSIDE
`THE PROPER SCOPE OF REPLY (EXS. 1005 AND 1012).
`
`The Board should exclude the belated exhibits introduced in Petitioner’s
`
`Reply to support its newly minted arguments. Motion at 1–3. Petitioner concedes
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`that the new evidence introduced in its reply was available at the time it filed its
`
`Petition, which alone dictates exclusion. See Paper No. 42 (“Opposition”) at 1–3.
`
`This Motion is a proper vehicle to object to Petitioner’s improper reply
`
`evidence. The Federal Circuit recognizes the appropriateness and timeliness of
`
`such requests: “[Patent Owner] may move to exclude evidence, whether as
`
`improper under the response-only regulation, under the Trial Practice Guide’s
`
`advice, or on other grounds.” Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1081
`
`(Fed. Cir. 2015); see also Toshiba Corp. v. Optical Devices, LLC, IPR2014-01447,
`
`Paper 34, at 44–47 (P.T.A.B. Mar. 9, 2016) (granting a patent owner’s motion to
`
`exclude new arguments and evidence offered by Petitioner in a reply).
`
`While Petitioner correctly notes that a reply is an opportunity to respond to
`
`arguments raised by a Patent Owner, a reply is not an opportunity to remedy
`
`deficiencies of a Petitioner by introducing new evidence and substantive
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`arguments. Toshiba Corp., IPR2014-01447, Paper 34, at 44–47 (P.T.A.B. Mar. 9,
`
`2016) (“[Section 42.23(b)], however, does not authorize or otherwise provide a
`
`1
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`
`
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`means for supplementing the evidence of record.”). “[T]he expedited nature of
`
`Patent Owner’s Reply ISO Motion to Exclude
`IPR2016-00151 (U.S. Patent No. 8,141,154)
`
`IPRs bring[s] with it an obligation for petitioners to make their case in their
`
`petition…” Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359,
`
`1369–70 (Fed. Cir. 2016). Petitioner is using its Reply to improperly supplement
`
`its prima facie case of invalidity with new and belated contentions that Finjan
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`contests. Petitioner’s belated introduction of this evidence has “denied [Patent
`
`Owner] the opportunity to file responsive evidence,” warranting exclusion. Scotts
`
`Co. v. Encap, LLC, IPR2013-00110, Paper 79 at 5–6 (P.T.A.B. June 24, 2014).
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`Thus, the Board should exclude Exhibits 1005 and 1012 as outside the
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`proper scope of reply.
`
`II. THE BOARD SHOULD EXCLUDE DR. RUBIN’S TESTIMONY
`(EXS. 1002 AND 1005).
`
`As explained in the Motion, Dr. Rubin’s testimony should be excluded
`
`because it is contradictory and unreliable. Motion at 3-7.
`
`First, Dr. Rubin's pseudocode is irrelevant and contrary to the law regarding
`
`obviousness because it was created well after the priority date of the ‘154
`
`Patent. See Motion at 5–6. Petitioner admits that Dr. Rubin's pseudocode was
`
`created in 2016. See Opposition at 4. Instead, Petitioner argues that this 2016
`
`code somehow shows obviousness to a person of skill in the art in 2005. Id.
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`Petitioner's argument should be rejected because it is without any legal
`
`basis. Indeed, Petitioner makes no attempt to distinguish the Nuvasive case cited
`
`2
`
`
`
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`by Patent Owner's motion, which rejects use of statements made after the priority
`
`Patent Owner’s Reply ISO Motion to Exclude
`IPR2016-00151 (U.S. Patent No. 8,141,154)
`
`date of the patent to show obviousness. Motion at 5–6.
`
`Second, contrary to Petitioner’s assertions, Dr. Rubin's testimony is
`
`inconsistent because Dr. Rubin provides two contrary opinions as to whether
`
`Ross’s alleged “content,” includes “a call to a first function.” Opposition at 3–4.
`
`Dr. Rubin originally stated that Ross discloses “a call to a first function.” Motion
`
`at 5–6. Dr. Rubin then directly contradicted himself by creating his own
`
`pseudocode to cure the missing “call to a first function.” Motion at 5–6. This is
`
`contrary to Dr. Rubin’s original declaration which asserted that the “content”
`
`processed by Ross already includes a call to a first function. Id. at 4–5. Petitioner
`
`argues that Dr. Rubin’s pseudocode is merely an example of other means to
`
`achieve the functionality of Ross’s pseudocode. Opposition at 3–4. However, this
`
`argument improperly ignores the issue that Dr. Rubin provides two contrary
`
`opinions as to whether Ross’s alleged “content” includes “a call to a first
`
`function.” Petitioner’s new argument that Dr. Rubin's pseudocode is an example
`
`that is described in paragraph 31 of Ross is also without merit because Petitioner’s
`
`only citation to paragraph 31 of Ross merely describes Fig. 4 of Ross itself, and
`
`makes no mention of the specific modifications that Dr. Rubin has included in his
`
`manufactured pseudocode. Ex. 1003, ¶ 31.
`
`3
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`
`
`Patent Owner’s Reply ISO Motion to Exclude
`IPR2016-00151 (U.S. Patent No. 8,141,154)
`
`
`Thus, the Board should exclude Dr. Rubin’s testimony as contradictory and
`
`unreliable.
`
`III. THE BOARD SHOULD EXCLUDE THE CITED PORTIONS OF THE
`DEPOSITION TRANSCRIPTS OF MR. YUVAL BEN-ITZHAK (EX.
`1009) AND DR. MARC BERGER (EX. 1010).
`
`Petitioner relies on the cited portions of the deposition transcripts of Mr.
`
`Ben-Itzhak and Dr. Berger for a standard that is contrary to the law, and, as such,
`
`cannot be relevant. Motion at 7–9. In particular, Patent Owner needs to show
`
`reasonable diligence toward reduction to practice under a holistic rule of reason
`
`analysis. Petitioner’s Opposition fails to rebut this showing.
`
`First, the cited deposition is irrelevant under the applicable legal standard.
`
`Specifically, Petitioner seeks to use this irrelevant testimony to show that the ‘154
`
`Patent does not antedate Ross despite the wealth of evidence proving that Ross is
`
`not prior art.
`
`Petitioner is plainly incorrect in contending that Perfect Surgical does not
`
`support exclusion. In its reply, Petitioner relied on Perfect Surgical for the
`
`proposition that an inventor and attorney’s recollections of the specific dates that
`
`certain calls took place somehow wipes away the existence of diligence. Paper No.
`
`32 at 4. As explained in the Motion, Patent Owner is not required to prove
`
`diligence with the exacting standard that Petitioner wishes (i.e., the precise number
`
`of phone calls and the specific dates such phone calls took place), and rather, need
`
`4
`
`
`
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`only demonstrate reasonable diligence toward reduction to practice under a holistic
`
`Patent Owner’s Reply ISO Motion to Exclude
`IPR2016-00151 (U.S. Patent No. 8,141,154)
`
`rule of reason analysis. Motion at 7–9. Thus, Petitioner’s reliance on the cited
`
`portions of the deposition transcripts has no relevance because it is contrary to the
`
`law, and is properly subject to exclusion.
`
`Second, Petitioner fails to establish that the testimony is relevant.
`
`Petitioner’ misses the mark in arguing that the portions of Mr. Ben-Itzhak’s and
`
`Dr. Berger’s testimony “impeach [] their credibility regarding their testimony that
`
`they ‘had several phone conversations between November 13, 2005 and December
`
`12, 2005 regarding the patent application’ (Ex. 2011, ¶ 7) or that Dr. Berger
`
`worked on various Office Actions and patent applications between October 31 and
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`December 6, 2015.” Opposition at 6–7. The fact that the inventor and the attorney
`
`do not recall the exact dates that their phone calls took place does not contradict
`
`their testimony that they recall having had phone calls regarding the patent
`
`application during the relevant time frame. Nor does it belie Dr. Berger’s
`
`testimony that he “worked on various Office Actions and patent applications
`
`between October 31 and December 6, 2015.” Ex. 2010, ¶ 7. Thus, the testimony
`
`does not impeach their testimony and, therefore, is not relevant to any issue before
`
`the Board.
`
`Therefore, the Board should exclude the cited portions of Mr. Ben-Itzhak’s
`
`and Dr. Berger’s deposition testimony as irrelevant.
`
`5
`
`
`
`
` CONCLUSION
`
`IV.
`
`Patent Owner’s Reply ISO Motion to Exclude
`IPR2016-00151 (U.S. Patent No. 8,141,154)
`
`For the foregoing reasons, along with the reasons explained in Patent
`
`Owner’s Motion to Exclude, the Board should grant Patent Owner’s Motion to
`
`Exclude Evidence.
`
`
`
`Dated: January 10, 2017
`
`
`
`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
`
`
`
` (Case No. IPR2016-00151) Attorneys for Patent Owner
`
`
`
`6
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`
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`Patent Owner’s Reply ISO Motion to Exclude
`IPR2016-00151 (U.S. Patent No. 8,141,154)
`
`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 Reply In Support of Its Motion to
`
`Exclude was served on January 10, 2017, by filing this document through the
`
`Patent Review Processing System as well as delivering via electronic mail upon
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`the following counsel of record for Petitioner and Joinder Petitioner:
`
`Nathaniel A. Hamstra
`Quinn Emanuel Urquhart & Sullivan
`LLP
`500 West Madison St., Ste. 2450
`Chicago, IL 60661
`nathanhamstra@quinnemanuel.com
`
`
`
`
`
`
`/James Hannah/
`
`James Hannah (Reg. No. 56,369)
`Kramer Levin Naftalis & Frankel LLP
`990 Marsh Road,
`Menlo Park, CA 94025
`(650) 752-1700
`
`7
`
`Matthew I. Kreeger
`MORRISON & FOERSTER LLP
`425 Market Street
`San Francisco, CA 94105
`MKreeger@mofo.com
`FinjanPANMofoTeam@mofo.com
`
`Jonathan Bockman
`Shouvik Biswas
`MORRISON & FOERSTER LLP
`1650 Tysons Boulevard
`McLean, VA 22102
`JBockman@mofo.com
`SBiswas@mofo.com
`FinjanPANMofoTeam@mofo.com
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