UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________
`
`PALO ALTO NETWORKS, INC.,
`Petitioner,
`
`v.
`
`FINJAN, INC.,
`Patent Owner.
`
`____________________
`
`Case IPR2016-00151
`Patent 8,141,154 B2
`
`__________________________________________________________
`
`PATENT OWNER’S OBJECTIONS TO EVIDENCE
`UNDER 37 C.F.R. § 42.64
`
`
`
`
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________
`
`PALO ALTO NETWORKS, INC.,
`Petitioner,
`
`v.
`
`FINJAN, INC.,
`Patent Owner.
`
`____________________
`
`Case IPR2016-00151
`Patent 8,141,154 B2
`
`__________________________________________________________
`
`PATENT OWNER’S OBJECTIONS TO EVIDENCE
`UNDER 37 C.F.R. § 42.64
`
`
`
`
`
`Patent Owner’s Objections to Evidence
`IPR2016-00151 (U.S. Patent No. 8,141,154)
`
`
`Patent Owner Finjan, Inc. (“Finjan”) objects under the Federal Rules of
`
`Evidence and 37 C.F.R. § 42.64 to the admissibility of the declaration of Dr. Aviel
`
`Rubin (the “Rubin Declaration”) and the annotated figures included in Petitioner’s
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`Petition submitted by Palo Alto Networks, Inc. (“Petitioner”).
`
`The Institution Decision issued on April 20, 2016. Paper No. 10. The Board
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`instituted trial for claims 1-8, 10, and 11 on the ground of obviousness over Ross
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`under 35 U.S.C. § 103. Id. Finjan’s objections are timely under 37 C.F.R. §
`
`42.64(b)(1). Finjan serves Petitioner these objections to provide notice that Finjan
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`will move to exclude the evidence as improper evidence.
`
`I.
`
`Rubin Declaration (Ex. 1002)
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`Finjan objects to the admissibility of the Rubin Declaration for at least the
`
`following reasons: Under FRE 702, Dr. Aviel Rubin’s opinions are inadmissible
`
`because they are conclusory, do not disclose underlying facts or data in support of
`
`his opinions, and are unreliable. Additionally, Dr. Aviel Rubin is unqualified as an
`
`expert to provide technical opinions of a person skilled in the art. See Ex. 1002, Ex.
`
`A (Curriculum Vitae of Dr. Aviel Rubin). As such, his opinions are inadmissible
`
`under FRE 702. His opinions are also irrelevant, confusing, and of minimal
`
`probative value under FRE 401, 402, and 403.
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`- 1 -
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`
`
`Patent Owner’s Objections to Evidence
`IPR2016-00151 (U.S. Patent No. 8,141,154)
`
`
`II. Annotated Figures
`Finjan objects to the admissibility of the Annotated Figures included in
`
`Petitioner’s Petition (Paper No. 2) for at least the following reasons: Petitioner is
`
`improperly relying on annotated figures that are not directly from U.S. Patent No.
`
`8,141,154 (“the ’154 Patent”) or U.S. Patent Publication 2007/0113282 (“Ross”).
`
`as indicated in the charts below.
`
`Petitioner’s Figure
`
`’154 Patent
`
`Patent Figure
`
`Paper No. 2 at 3.
`
`
`
`Fig. 2.
`
`- 2 -
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`
`
`
`
`Patent Owner’s Objections to Evidence
`IPR2016-00151 (U.S. Patent No. 8,141,154)
`
`Petitioner’s Figure
`
`’154 Patent
`
`Patent Figure
`
`
`
`Paper No. 2 at 4.
`
`
`
`Paper No. 2 at 5.
`
`
`
`
`
`Fig. 2.
`
`Fig. 2.
`
`
`
`
`
`Paper No. 2 at 6.
`
`Fig. 2.
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`- 3 -
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`
`
`
`
`
`
`
`
`Patent Owner’s Objections to Evidence
`IPR2016-00151 (U.S. Patent No. 8,141,154)
`
`Petitioner’s Figure
`
`Ross
`
`Ross Figure
`
`Paper No. 2 at 10.
`
`Fig. 6.
`
`
`
`
`
`Paper No. 2 at 11.
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`
`
`Paper No. 2 at 12.
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`
`
`
`
`Fig. 6.
`
`Fig. 6.
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`- 4 -
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`
`
`Patent Owner’s Objections to Evidence
`IPR2016-00151 (U.S. Patent No. 8,141,154)
`
`Petitioner’s Figure
`
`Ross
`
`Ross Figure
`
`
`
`Paper No. 2 at 12.
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`
`
`Fig. 6
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`
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`
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`Paper No. 2 at 14.
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`
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`Paper No. 2 at 15, 17.
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`Fig. 2.
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`Fig. 6.
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`- 5 -
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`
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`Patent Owner’s Objections to Evidence
`IPR2016-00151 (U.S. Patent No. 8,141,154)
`
`Petitioner’s Figure
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`Ross
`
`Ross Figure
`
`Paper No. 2 at 18.
`
`
`
`Fig. 6.
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`Paper No. 2 at 20.
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`Fig. 6.
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`
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`
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`Accordingly, Petitioner has failed to authenticate these annotated exhibits
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`under FRE 901 and FRE 602 because these exhibits are not the same exhibits as
`
`those in the ’154 Patent and Ross. These exhibits are also not self-authenticating
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`under FRE 902, not the original as required by FRE 1002, and not a “duplicate” as
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`defined by FRE 1001(e) and FRE 1003. Finjan further objects to the selective
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`inclusion of figures from the ’154 Patent and Ross. Under FRE 106, the complete
`
`version of the figures from the ’154 Patent and Ross should be considered. To the
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`extent that Petitioner attempts to rely on these annotated exhibits, these annotations
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`are hearsay under FRE 801 and are inadmissible under FRE 802 and FRE 803.
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`- 6 -
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`
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`Because of these deficiencies, the annotated exhibits are not relevant under FRE
`
`Patent Owner’s Objections to Evidence
`IPR2016-00151 (U.S. Patent No. 8,141,154)
`
`401 and are inadmissible under FRE 402 and FRE 403.
`
`
`
`Dated: May 4, 2016
`
`(Case No. IPR2016-00151)
`
`
`
`
`
`Respectfully submitted,
`
`
`
`
`
`/James Hannah/
`
`James Hannah (Reg. No. 56,369)
`Kramer Levin Naftalis & Frankel LLP
`990 Marsh Road
`Menlo Park, CA 94025
`Tel: 650.752.1700 Fax: 212.715.8000
`
`Jeffrey H. Price (Reg. No. 69,141)
`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)
`Finjan, Inc.
`2000 University Ave., Ste. 600
`E. Palo Alto, CA 94303
`Tel: 650.397.9567
`mkim@finjan.com
`
`Attorneys for Patent Owner
`
`- 7 -
`
`
`
`
`
`Patent Owner’s Objections to Evidence
`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 Objections to Evidence was served
`
`on May 4, 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:
`
`Matthew I. Kreeger
`Reg. No. 56,398
`MORRISON & FOERSTER LLP
`425 Market Street
`San Francisco, CA 94105
`MKreeger@mofo.com
`
`Shouvik Biswas
`Reg. No. 68,439
`MORRISON & FOERSTER LLP
`1650 Tysons Boulevard, Suite 400
`McLean, VA 22102
`FinjanPANMofoTeam@mofo.com
`
`
`
`
`Jonathan Bockman
`Reg. No. 45,640
`MORRISON & FOERSTER LLP
`1650 Tysons Boulevard, Suite 400
`McLean, VA 22102
`JBockman@mofo.com
`
`
`
`
`
`
`
`
`
`/James Hannah/
`
`James Hannah (Reg. No. 56,369)
`Kramer Levin Naftalis & Frankel LLP
`990 Marsh Road,
`Menlo Park, CA 94025
`(650) 752-1700
`
`- 8 -
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