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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.
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`____________________
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`Case IPR2016-001511
`U.S. Patent No. 8,141,154
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`__________________________________________________________
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`PATENT OWNER’S REPLY TO PETITIONER’S OPPOSITION TO
`PATENT OWNER’S MOTION TO EXCLUDE EVIDENCE
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`1 Case IPR2016-01071 has been joined with this proceeding.
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`Patent Owner’s Reply ISO Motion to Exclude
`IPR2016-00151 (U.S. Patent No. 8,141,154)
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`Patent Owner’s Motion to Exclude (Paper No. 39, “Motion”) should be
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`granted for the reasons set forth below.
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`I.
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`THE BOARD SHOULD EXCLUDE THE NEW EXHIBITS OUTSIDE
`THE PROPER SCOPE OF REPLY (EXS. 1005 AND 1012).
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`The Board should exclude the belated exhibits introduced in Petitioner’s
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`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
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`Petition, which alone dictates exclusion. See Paper No. 42 (“Opposition”) at 1–3.
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`This Motion is a proper vehicle to object to Petitioner’s improper reply
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`evidence. The Federal Circuit recognizes the appropriateness and timeliness of
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`such requests: “[Patent Owner] may move to exclude evidence, whether as
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`improper under the response-only regulation, under the Trial Practice Guide’s
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`advice, or on other grounds.” Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1081
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`(Fed. Cir. 2015); see also Toshiba Corp. v. Optical Devices, LLC, IPR2014-01447,
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`Paper 34, at 44–47 (P.T.A.B. Mar. 9, 2016) (granting a patent owner’s motion to
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`exclude new arguments and evidence offered by Petitioner in a reply).
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`While Petitioner correctly notes that a reply is an opportunity to respond to
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`arguments raised by a Patent Owner, a reply is not an opportunity to remedy
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`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,
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`2016) (“[Section 42.23(b)], however, does not authorize or otherwise provide a
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`1
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`means for supplementing the evidence of record.”). “[T]he expedited nature of
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`Patent Owner’s Reply ISO Motion to Exclude
`IPR2016-00151 (U.S. Patent No. 8,141,154)
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`IPRs bring[s] with it an obligation for petitioners to make their case in their
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`petition…” Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359,
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`1369–70 (Fed. Cir. 2016). Petitioner is using its Reply to improperly supplement
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`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
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`Owner] the opportunity to file responsive evidence,” warranting exclusion. Scotts
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`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.
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`II. THE BOARD SHOULD EXCLUDE DR. RUBIN’S TESTIMONY
`(EXS. 1002 AND 1005).
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`As explained in the Motion, Dr. Rubin’s testimony should be excluded
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`because it is contradictory and unreliable. Motion at 3-7.
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`First, Dr. Rubin's pseudocode is irrelevant and contrary to the law regarding
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`obviousness because it was created well after the priority date of the ‘154
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`Patent. See Motion at 5–6. Petitioner admits that Dr. Rubin's pseudocode was
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`created in 2016. See Opposition at 4. Instead, Petitioner argues that this 2016
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`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
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`basis. Indeed, Petitioner makes no attempt to distinguish the Nuvasive case cited
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`2
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`by Patent Owner's motion, which rejects use of statements made after the priority
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`Patent Owner’s Reply ISO Motion to Exclude
`IPR2016-00151 (U.S. Patent No. 8,141,154)
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`date of the patent to show obviousness. Motion at 5–6.
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`Second, contrary to Petitioner’s assertions, Dr. Rubin's testimony is
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`inconsistent because Dr. Rubin provides two contrary opinions as to whether
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`Ross’s alleged “content,” includes “a call to a first function.” Opposition at 3–4.
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`Dr. Rubin originally stated that Ross discloses “a call to a first function.” Motion
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`at 5–6. Dr. Rubin then directly contradicted himself by creating his own
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`pseudocode to cure the missing “call to a first function.” Motion at 5–6. This is
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`contrary to Dr. Rubin’s original declaration which asserted that the “content”
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`processed by Ross already includes a call to a first function. Id. at 4–5. Petitioner
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`argues that Dr. Rubin’s pseudocode is merely an example of other means to
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`achieve the functionality of Ross’s pseudocode. Opposition at 3–4. However, this
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`argument improperly ignores the issue that Dr. Rubin provides two contrary
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`opinions as to whether Ross’s alleged “content” includes “a call to a first
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`function.” Petitioner’s new argument that Dr. Rubin's pseudocode is an example
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`that is described in paragraph 31 of Ross is also without merit because Petitioner’s
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`only citation to paragraph 31 of Ross merely describes Fig. 4 of Ross itself, and
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`makes no mention of the specific modifications that Dr. Rubin has included in his
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`manufactured pseudocode. Ex. 1003, ¶ 31.
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`3
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`Patent Owner’s Reply ISO Motion to Exclude
`IPR2016-00151 (U.S. Patent No. 8,141,154)
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`Thus, the Board should exclude Dr. Rubin’s testimony as contradictory and
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`unreliable.
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`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).
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`Petitioner relies on the cited portions of the deposition transcripts of Mr.
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`Ben-Itzhak and Dr. Berger for a standard that is contrary to the law, and, as such,
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`cannot be relevant. Motion at 7–9. In particular, Patent Owner needs to show
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`reasonable diligence toward reduction to practice under a holistic rule of reason
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`analysis. Petitioner’s Opposition fails to rebut this showing.
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`First, the cited deposition is irrelevant under the applicable legal standard.
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`Specifically, Petitioner seeks to use this irrelevant testimony to show that the ‘154
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`Patent does not antedate Ross despite the wealth of evidence proving that Ross is
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`not prior art.
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`Petitioner is plainly incorrect in contending that Perfect Surgical does not
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`support exclusion. In its reply, Petitioner relied on Perfect Surgical for the
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`proposition that an inventor and attorney’s recollections of the specific dates that
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`certain calls took place somehow wipes away the existence of diligence. Paper No.
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`32 at 4. As explained in the Motion, Patent Owner is not required to prove
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`diligence with the exacting standard that Petitioner wishes (i.e., the precise number
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`of phone calls and the specific dates such phone calls took place), and rather, need
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`4
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`only demonstrate reasonable diligence toward reduction to practice under a holistic
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`Patent Owner’s Reply ISO Motion to Exclude
`IPR2016-00151 (U.S. Patent No. 8,141,154)
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`rule of reason analysis. Motion at 7–9. Thus, Petitioner’s reliance on the cited
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`portions of the deposition transcripts has no relevance because it is contrary to the
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`law, and is properly subject to exclusion.
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`Second, Petitioner fails to establish that the testimony is relevant.
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`Petitioner’ misses the mark in arguing that the portions of Mr. Ben-Itzhak’s and
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`Dr. Berger’s testimony “impeach [] their credibility regarding their testimony that
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`they ‘had several phone conversations between November 13, 2005 and December
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`12, 2005 regarding the patent application’ (Ex. 2011, ¶ 7) or that Dr. Berger
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`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
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`do not recall the exact dates that their phone calls took place does not contradict
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`their testimony that they recall having had phone calls regarding the patent
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`application during the relevant time frame. Nor does it belie Dr. Berger’s
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`testimony that he “worked on various Office Actions and patent applications
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`between October 31 and December 6, 2015.” Ex. 2010, ¶ 7. Thus, the testimony
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`does not impeach their testimony and, therefore, is not relevant to any issue before
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`the Board.
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`Therefore, the Board should exclude the cited portions of Mr. Ben-Itzhak’s
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`and Dr. Berger’s deposition testimony as irrelevant.
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`5
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` CONCLUSION
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`IV.
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`Patent Owner’s Reply ISO Motion to Exclude
`IPR2016-00151 (U.S. Patent No. 8,141,154)
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`For the foregoing reasons, along with the reasons explained in Patent
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`Owner’s Motion to Exclude, the Board should grant Patent Owner’s Motion to
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`Exclude Evidence.
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`Dated: January 10, 2017
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`Respectfully submitted,
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`
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`
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`/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
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`
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` (Case No. IPR2016-00151) Attorneys for Patent Owner
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`6
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`Patent Owner’s Reply ISO Motion to Exclude
`IPR2016-00151 (U.S. Patent No. 8,141,154)
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that a true and
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`correct copy of the foregoing Patent Owner’s Reply In Support of Its Motion to
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`Exclude was served on January 10, 2017, by filing this document through the
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`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:
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`Nathaniel A. Hamstra
`Quinn Emanuel Urquhart & Sullivan
`LLP
`500 West Madison St., Ste. 2450
`Chicago, IL 60661
`nathanhamstra@quinnemanuel.com
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`
`
`
`
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`/James Hannah/
`
`James Hannah (Reg. No. 56,369)
`Kramer Levin Naftalis & Frankel LLP
`990 Marsh Road,
`Menlo Park, CA 94025
`(650) 752-1700
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`7
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`Matthew I. Kreeger
`MORRISON & FOERSTER LLP
`425 Market Street
`San Francisco, CA 94105
`MKreeger@mofo.com
`FinjanPANMofoTeam@mofo.com
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`Jonathan Bockman
`Shouvik Biswas
`MORRISON & FOERSTER LLP
`1650 Tysons Boulevard
`McLean, VA 22102
`JBockman@mofo.com
`SBiswas@mofo.com
`FinjanPANMofoTeam@mofo.com