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`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
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`Patent No. 8,141,154
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`_______________
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`Inter Partes Review No. IPR2016-00151
`____________________________________________________________
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`PETITIONER’S REPLY IN SUPPORT OF MOTION TO EXCLUDE
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`sf-3729666
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` Attorney Docket No. 719712801200
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`I.
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`INTRODUCTION .......................................................................................... 1
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`II. ARGUMENT .................................................................................................. 1
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`A.
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`B.
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`C.
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`Patent Owner Has Provided No Independent Evidence
`Authenticating Pages 3-20 of Exhibit 2007 ......................................... 1
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`Patent Owner’s Case Law Is Inapposite ............................................... 3
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`Finjan Has Not Explained the Inconsistencies in Its Evidence. ........... 4
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`III. CONCLUSION ............................................................................................... 5
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` Attorney Docket No. 719712801200
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`IPR2016-00151
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`I.
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`INTRODUCTION
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`Patent Owner Finjan’s response to Petitioner’s motion relies on inapposite
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`case law and ignores the issue at hand: that it has failed to provide “independent
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`evidence” to satisfy the authentication requirement. Patent Owner offers no reason
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`for the Board to deviate from its holding in Neste Oil in finding insufficient
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`corroborative evidence of authentication. See Neste Oil Oyj v. Reg Synthetic Fuels,
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`LLC, No. IPR2013-00578, Paper No. 52 at 3-4 (P.T.A.B. Mar. 12, 2015). The
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`Board should grant the motion and exclude pages 3-20 of Exhibit 2007.
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`II. ARGUMENT
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`A.
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`Patent Owner Has Provided No Independent Evidence
`Authenticating Pages 3-20 of Exhibit 2007
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`Finjan relies on a declaration from Mr. Ben-Itzhak, the inventor, and two
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`declarations from Dr. Berger, who prosecuted the patent application, in its attempt
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`to authenticate Exhibit 2007. (Opp’n, Paper No. 44 at 2.) Exhibit 2007 consists of
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`an email chain (on pages 1-2) and an undated, unsigned draft patent application (on
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`pages 3-20). (Ex. 2007.) The only evidence tying the draft patent application to
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`the date of October 31, 2005 is the Berger declaration stating that the draft
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`application was attached to an email of that date.
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`As discussed in Petitioner’s motion, because Finjan relies on Exhibit 2007 in
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`an attempt to prove prior invention, independent corroborative evidence of
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`authenticity other than the inventor’s testimony is required. (Mot., Paper No. 38 at
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`3 (citing Neste Oil).) The Board, citing Federal Circuit precedent, explained that
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`“[t]his rule is proper to avoid ‘circular’ situations in which a party seeks to rely on
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`a document to corroborate a witness’ testimony, but relies on that witness’
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`testimony to provide the date or other authentication of that document.” Neste Oil
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`at 4.
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`Contrary to Finjan’s argument, this case involves exactly the “circular”
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`authentication situation prohibited by Neste Oil. (Opp’n at 4-5.) Similar to Neste
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`Oil, in which the lab notebook page was “unsigned, undated, and unwitnessed,” the
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`draft application at issue here is also unsigned, undated, and unwitnessed. The
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`markings on Exhibit 2007 show that the exhibit is in fact three separate documents
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`that have been stitched together into one exhibit. The first page of Exhibit 2007
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`shows that it is page “1 of 1” printed out on December 12, 2005. The second page
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`of Exhibit 2007 bears the same markings and shows that it is a separate document
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`from page one, and also shows that it is page “1 of 1” printed out on December 12,
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`2005. However, the document at pages 3 to 20 bears no markings showing any
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`date, nor does it bear any signature. Thus, Finjan’s argument that the draft patent
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`application is “dated” misses the point entirely. (Opp’n at 4.)
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`Patent Owner attempts to distinguish Neste Oil by alleging that Mr. Yuval
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`Ben-Itzhak’s testimony authenticates the draft patent application. Putting aside
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`Mr. Ben-Itzhak’s lack of competence as an inventor, he never even testified that
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`pages 3-20 of Exhibit 2007 is the draft application that he supposedly sent to Dr.
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`Berger. Patent Owner’s failure to offer testimony from Mr. Ben-Itzhak, the
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`purported author of the draft patent application, about Exhibit 2007 only further
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`calls into question its authenticity. Thus, Mr. Ben-Itzhak does not and cannot
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`provide any evidence to authenticate that the draft patent application of Exhibit
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`2007 is the draft of October 31, 2005.
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`B.
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`Patent Owner’s Case Law Is Inapposite
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`Petitioner’s motion demonstrated that the testimony presented by Finjan is
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`not independent, as it is from Finjan’s inventor and the application’s patent
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`prosecutor. (Mot. at 3-4 (citing Microsoft Corp. v. Surfcast, Inc., No. IPR2013-
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`00292, Paper No. 93 at 16-17 (P.T.A.B. Oct. 14, 2014); Sprint Commc’ns Co. v.
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`Comcast IP Holdings, LLC, No. 12-1013-RGA, 2015 U.S. Dist. LEXIS 10836, at
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`*10-11 (D. Del. Jan. 30, 2015); see also Lacks Indus., Inc. v. McKechnie Vehicle
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`Components USA, Inc., 322 F.3d 1335, 1350 (Fed. Cir. 2003)).) As such,
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`Petitioner showed that the testimony offered by Finjan is insufficient to
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`authenticate the draft patent application on pages 3-20 of Exhibit 2007.
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`Nowhere in its response, however, does Finjan distinguish the case law cited
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`by Patent Owner, nor does Finjan cite to any case law to the contrary. Finjan relies
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`on Lacotte and Reese for the unremarkable proposition that “testimony of a
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`witness, other than an inventor to the actual reduction to practice” may be used to
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`provide independent corroboration. (Opp’n at 3.) But neither case involved the
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`submission of declarations from an inventor and a patent prosecutor to provide
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`independent corroboration. Rather, in both cases, the independent corroborating
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`evidence consisted of laboratory notebooks from research assistants who aided the
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`inventor in their reductions to practice. Lacotte v. Thomas, 758 F.2d 611, 612
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`(Fed. Cir. 1985); Reese v. Hurst, 661 F.2d 1222, 1226-27 (C.C.P.A. 1981). Thus,
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`Lacotte and Reese have no bearing on the issue at hand.
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`C.
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`Finjan Has Not Explained the Inconsistencies in Its Evidence.
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`Beyond its failure to address Petitioner’s relevant case law, Finjan has no
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`explanation for the inconsistencies in Exhibit 2007 discussed in Petitioner’s
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`motion. (Mot. at 4-5.) In particular, Finjan has no response to the fact that the
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`draft patent application in Exhibit 2007 has a different title from the document
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`referred to in Mr. Ben-Itzhak’s October 31, 2005 email. (Id.) The difference in the
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`titles strongly suggests that to the extent any document was attached to the October
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`31, 2005 email, it is not the draft application in Exhibit 2007.
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`Faced with the deficiency of its evidence, Finjan argues that it was
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`Petitioner’s duty to cross examine Finjan’s witnesses in order to establish the
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`sufficiency of its evidence. (Opp’n at 5.) Nothing requires Petitioner to assist
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`Patent Owner in remedying its deficient evidence. Petitioner was required to
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`timely object to the evidence, which it did, and to file a timely motion to exclude,
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`which it also did. Cross examination, to the extent taken, is optional. Indeed, in
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`the case cited by Finjan, no cross examination was taken at all. (Opp’n at 5 (citing
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`Toyota Motor Corp. v. Am. Vehicular Scis. LLC, No. IPR2013-00417, Paper
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`No. 78 at 12-13 (P.T.A.B. Jan. 7, 2015) (“AVS elected not to cross examine Ms.
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`Broadhurst, as it could have.”) (emphasis added)). As in the Toyota case,
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`Petitioner is relying on “this record, and under [IPR] procedures,” which support a
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`finding of lack of authenticity.
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`III. CONCLUSION
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`For the foregoing reasons, the Board should exclude pages 3-20 of Finjan’s
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`Respectfully submitted,
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`By: / Shouvik Biswas /
`Shouvik Biswas
` Registration No.: 68,439
`MORRISON & FOERSTER LLP
`1650 Tysons Boulevard, Suite 400
`McLean, VA 22102
`Tel: (703) 760-7774
`Attorney for Petitioner
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`Exhibit 2007 for lack of authentication.
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`Dated: January 10, 2017
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` Attorney Docket No. 719712801200
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`Certificate of Service (37 C.F.R. § 42.6(e)(4))
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`I hereby certify that the attached PETITIONER’S REPLY IN SUPPORT
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`OF MOTION TO EXCLUDE was served on the below date on the Patent Owner
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`via e-mail (by consent) to the following counsel of record for the Patent Owner:
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`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
`jprice@kramerlevin.com
`svdocketing@kramerlevin.com
`mkim@finjan.com
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`Petitioner’s counsel of record in IPR2016-01071:
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`Nathaniel A. Hamstra (Lead Counsel)
`nathanhamstra@quinnemanuel.com
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`/Kristine Obrenovic/
`Kristine Obrenovic
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`Dated: January 10, 2017
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