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 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 MOTION TO EXCLUDE EVIDENCE
`
`
`1 Case IPR2016-01071 has been joined with this proceeding.
`
`
`
`Patent Owner’s Motion to Exclude Evidence
`IPR2016-00151 (U.S. Patent No. 8,141,154)
`
`
`
`Pursuant to 37 C.F.R. § 42.64, Patent Owner Finjan, Inc. (“Patent Owner”)
`
`moves to exclude the following evidence submitted in these proceedings by
`
`Petitioner Palo Alto Networks, Inc. (“Petitioner”). Patent Owner timely raised the
`
`objections set forth in this Motion in its Objections to Evidence. Papers 12 and 33.
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`The Board should grant Patent Owner’s Motion for the reasons set forth below.
`
`I.
`
`THE BOARD SHOULD EXCLUDE EXHIBITS THAT ARE
`OUTSIDE THE PROPER SCOPE OF REPLY (EXS. 1005 AND 1012).
`
`Petitioner’s Reply (Paper 32) improperly introduced new evidence and
`
`arguments in an attempt to resolve the deficient arguments and evidentiary
`
`shortcomings of its Petition. Specifically, Petitioner introduced for the first time in
`
`its Reply a new declaration from Dr. Rubin (Ex. 1005) and a new TCP/IP Network
`
`Administration reference (Ex. 1012). The Board should exclude these belated
`
`submissions because it is improper for Petitioner to introduce new evidence and
`
`arguments in its Reply. Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1081 (Fed.
`
`Cir. 2015) (“a party may move to exclude evidence, whether as improper under the
`
`response-only regulation, under the Trial Practice Guide’s advice, or on other
`
`grounds.”) (citation omitted).
`
`Dr. Rubin’s Declaration contains newly minted arguments regarding the
`
`“call to a first function” that is required to be included in the “content received
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`over a network” as recited in claim 1. The Petition only maps the recited “content”
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`and the recited “first function,” while ignoring the “call to a first function”
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`1
`
`
`
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`requirement. Dr. Rubin’s Reply declaration attempts to rectify this shortcoming by
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`Patent Owner’s Motion to Exclude Evidence
`IPR2016-00151 (U.S. Patent No. 8,141,154)
`
`advancing a belated new theory that Ross purportedly teaches that “hook scripts
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`could include a call to a first function,” modifying Ross with his own extrinsic
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`pseudocode. Ex. 1005 at ¶¶ 3–14; Ex. 2043 at 88:11-16 (“the reason I wrote this
`
`and the opinion that I have is that in the pseudocode in figure 4, there's no explicit
`
`call to a hooked function. But I showed in my pseudocode how, by adding a trivial
`
`amount of code, that functionality can be shown…”). The Board should exclude
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`these untimely arguments contained in Dr. Rubin’s declaration (¶¶ 3-14) which
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`were not in the Petition and to which Patent Owner had no opportunity to respond.
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`Tacitly recognizing that its arguments regarding Ross are flawed, Petitioner
`
`offers the TCP/IP Network Administration reference (Ex. 1012) as another belated
`
`attempt to supplement its arguments regarding the invalidity of the ‘154 Patent.
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`Ex. 1005, ¶ 19 (“TCP/IP [is] the preeminent communications protocol for linking
`
`together diverse computer systems since 1992.”). The TCP/IP Network
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`Administration reference and all of the arguments based on this reference were not
`
`previously identified in the Petition, and should thus be excluded. Paper 32 at 16
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`(citing Ex. 1005 at ¶ 19).
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`Petitioner may not use its Reply as a vehicle to add in new evidence that
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`could have been included in its Petition, and all such evidence should be excluded.
`
`See, e.g., Toshiba Corp. v. Optical Devices, LLC, IPR2014-01447, Paper 34, at 44–
`
`
`
`2
`
`
`
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`47 (P.T.A.B. Mar. 9, 2016) (“[Section 42.23(b)], however, does not authorize or
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`Patent Owner’s Motion to Exclude Evidence
`IPR2016-00151 (U.S. Patent No. 8,141,154)
`
`otherwise provide a means for supplementing the evidence of record.”); Toyota
`
`Motor Corp. v. Am. Vehicular Scis. LLC, IPR2013-00424, Paper 50, at 21
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`(P.T.A.B. Jan. 12, 2015) (“[Petitioner] cannot rely belatedly on this evidence in its
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`Reply and Reply Declaration of [its expert] to make up for the deficiencies in its
`
`Petition.”); The Scotts Co. LLC v. Encap, LLC, IPR 2013-00110, Paper 79, at 5–6
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`(P.T.A.B. June 24, 2014) (declining to consider untimely evidence and arguments
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`because the patent owner “was denied the opportunity to file responsive
`
`evidence.”). Here, there is no reason Petitioner could not have included Exhibits
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`1005 and 1012 and the related arguments in its Petition.
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`Petitioner’s attempt to sandbag Patent Owner with these untimely and
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`technically incorrect submissions is highly prejudicial, as Patent Owner has not
`
`had the opportunity to respond to this belated evidence and Petitioner’s related
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`arguments. Thus, the Board should exclude the newly filed Rubin Declaration and
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`TCP/IP reference and related arguments. See, e.g., Paper 32 at 16 (citing Ex. 1005
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`at ¶ 19).
`
`II. THE BOARD SHOULD EXCLUDE DR. RUBIN’S TESTIMONY
`(EXS. 1002, 1005).
`
`The Board should exclude the testimony of Dr. Rubin (Exhibits 1002 and
`
`1005) because his opinions are conclusory and unreliable. Fed. R. Evid. 702;
`
`Tietex Int’l, Ltd. v. Precision Fabrics Grp., Inc., Case IPR2014-01248, Paper 39 at
`
`
`
`3
`
`
`
`
`17 (P.T.A.B. Jan. 27, 2016) (a lack of objective support for an expert opinion “may
`
`Patent Owner’s Motion to Exclude Evidence
`IPR2016-00151 (U.S. Patent No. 8,141,154)
`
`render the testimony of little probative value in [a patentability] determination.”)
`
`(quoting Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294
`
`(Fed. Cir. 1985)). As discussed further below, although Dr. Rubin purports that
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`the “content” processed by Ross already includes a call to a first function, he
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`contradicted himself on multiple occasions when he admitted that Ross fails to
`
`disclose the claimed “call to a first function.”
`
`First, Dr. Rubin’s testimony is unreliable because he confirmed that “there is
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`no explicit call to a hooked function” in Ross and confirmed that he actually relies
`
`on his own pseudocode, labeled “My Pseudocode,” to show what is missing from
`
`the pseudocode in figure 4 of Ross. Ex. 2043 at 88:11-16 (“the opinion that I have
`
`is that in the pseudocode in figure 4, there's no explicit call to a hooked function.
`
`But I showed in my pseudocode how, by adding a trivial amount of code, that
`
`functionality can be shown…”). This testimony is contrary to Dr. Rubin’s
`
`declaration testimony that the “content” processed by Ross already includes a call
`
`to a hook function, which is alleged to be the “call to a first function.” Ex. 1002 at
`
`¶109 (“a POSITA would have understood that the hook scripts (i.e., content)
`
`processed by the script processing engine 224 to include a call to a first function
`
`call (i.e., hook functions within a hook script)…”). Therefore, Dr. Rubin’s
`
`testimony should be excluded as unreliable because it is self-contradictory. Fed. R.
`
`
`
`4
`
`
`
`
`Evid. 702; Brandeis Univ. v. Keebler Co., No. 1:12-CV-01508, 2013 WL 5911233,
`
`Patent Owner’s Motion to Exclude Evidence
`IPR2016-00151 (U.S. Patent No. 8,141,154)
`
`at *6 (N.D. Ill. Jan. 18, 2013) (granting plaintiff’s motion to exclude expert
`
`testimony because of issues with unreliability).
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`Second, Dr. Rubin’s testimony should be excluded as irrelevant because he
`
`offers contradictory testimony that the “content” Ross processes already includes a
`
`call to a first function. Ex. 1002 at ¶107 (“The ‘content’ received by the script
`
`processing engine 618 (i.e., a content processor) includes a call to a first
`
`function.”). Specifically, the fact that Dr. Rubin had to create his own version of
`
`the pseudocode demonstrates that the original pseudocode does not include a call
`
`to a first function. Ex. 1005 at ¶¶ 7–9; Ex. 2043 at 89:18-21, 88:25-89:3 (“Q:
`
`What do you mean by there's no explicit call in the pseudocode? A: The line that I
`
`added in the pseudocode was not in the original pseudocode.”):
`
`Ex. 1005 at ¶¶ 7–8; Ex. 2043 at 89:2-9 (“I added a line that's a function called
`
`hooked active X object which has a single line in that function which is a call to
`
`
`
`
`
`5
`
`
`
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`the substitute active X object and then I changed the name of the hooked active X
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`Patent Owner’s Motion to Exclude Evidence
`IPR2016-00151 (U.S. Patent No. 8,141,154)
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`object to be substitute active X object.”). This manufactured code is plainly
`
`irrelevant and contrary to the law regarding obviousness because it was created
`
`well after the priority date of the ‘154 Patent and, therefore, is not evidence of
`
`obviousness from the perspective of a person having ordinary skill in the art at the
`
`time of the invention. Fed. R. Evid. 401, 402; see also In re: Nuvasive, Inc., No.
`
`2015-1670, 2016 WL 7118526, at *6 (Fed. Cir. 2016) (the “expert’s statement was
`
`made in reference to benefits recognize after the priority date of the [] patent. This
`
`statement addresses neither the benefits that could have been obtained by
`
`combining the prior art references nor the PHOSITA’s motivation to combine at
`
`the time of the invention.”) (original emphasis). As a modern-day modification to
`
`the asserted prior art, the pseudocode is an improper attempt to show obviousness
`
`with hindsight. See InTouch Techs., Inc. v. VGO Comm’ns, Inc., 751 F.3d 1327,
`
`1348–49 (Fed. Cir. 2014) (patent challenger’s expert testimony “was nothing more
`
`than impermissible hindsight”).
`
`Such inconsistent and unsupported statements demonstrate that Dr. Rubin’s
`
`testimony is unreliable and not credible. Accordingly, the entirety of his testimony
`
`suffers serious defects and renders his analysis unreliable and unhelpful. Fed. R.
`
`Evid. 702; Fed. R. Evid. 401; Fed. R. Evid. 402. Therefore, the Board should
`
`
`
`6
`
`
`
`
`exclude Exhibits 1002 and 1005 because his testimony cannot assist the trier of
`
`Patent Owner’s Motion to Exclude Evidence
`IPR2016-00151 (U.S. Patent No. 8,141,154)
`
`fact and should be afforded no weight.
`
`III. THE BOARD SHOULD EXCLUDE THE CITED PORTIONS OF THE
`DEPOSITION TRANSCRIPTS OF MR. YUVAL BEN-ITZHAK
`(EXHIBIT 1009) AND DR. MARC BERGER (EXHIBIT 1010)
`(COLLECTIVELY, “THE BEN-ITZHAK AND BERGER
`DEPOSITION TRANSCRIPTS”).
`
`The Board should exclude Petitioner’s reliance on portions of Exhibits 1009
`
`and 1010, which are the deposition transcripts of Mr. Ben-Itzhak and Dr. Marc
`
`Berger, respectively. Petitioner offers these cited portions for the purpose of
`
`challenging Patent Owner’s claim to diligence after a pre-filing invention date.
`
`These citations should be excluded as irrelevant and prejudicial because they have
`
`no bearing on whether the inventor, Mr. Ben-Itzhak, was diligent in constructive
`
`reduction to practice of the invention. Fed. R. Evid. 401, 402.
`
`Specifically, Petitioner erroneously relies on deposition testimony that, ten
`
`years after the fact, the inventor and his attorney do not remember every detail
`
`regarding every meeting in which they discussed the patent application. Paper 32
`
`at 4. This is irrelevant, however, because Patent Owner is not required to prove
`
`diligence with such specific information. Rather, Patent Owner need only show
`
`reasonable diligence toward reduction to practice from a date prior to the other
`
`party’s conception to its reduction to practice under a holistic rule of reason
`
`analysis. Griffith v. Kanamaru, 816 F.2d 624, 625–26 (Fed. Cir. 1987).
`
`
`
`7
`
`
`
`
`
`Patent Owner’s Motion to Exclude Evidence
`IPR2016-00151 (U.S. Patent No. 8,141,154)
`
`Mr. Ben-Itzhak’s and Dr. Berger’s deposition testimony confirmed the
`
`relevant testimony in their Declarations. Specifically, Mr. Ben-Itzhak and Dr.
`
`Berger’s testimony confirms that Mr. Ben-Itzhak (and his co-inventor) conceived
`
`of the invention and they were diligent in preparing the patent application with Dr.
`
`Berger. See Ex. 1009 at 21:8–23:2; Ex.1010 at 17:20–18:9. Documentary
`
`evidence bolsters their testimony, including a draft application and a series of
`
`emails and phone calls regarding the patent application for the ‘154 Patent during
`
`the relevant time frame. See Ex. 2007 (email chain between Dr. Berger and Mr.
`
`Ben-Itzhak including the draft application); Ex. 2008 (email chain regarding the
`
`filing of the patent application); Ex. 2009 (file history excerpt); Ex. 2010 (Berger
`
`Declaration); Ex. 2011 (Ben-Itzhak Declaration). As a result, the evidence
`
`demonstrates that the invention date of the‘154 Patent antedates the critical date of
`
`the Ross reference.
`
`This testimony and evidence satisfy the holistic “rule of reason” test because
`
`“all of [Patent Owner’s] evidence, considered as a whole and under a rule of
`
`reason, collectively corroborates [Mr. Ben-Itzhak’s] testimony that he worked
`
`reasonably continuously within the confines of his and [Dr.Berger’s] occupations
`
`to diligently finalize the patent application.” Perfect Surgical Techniques, Inc. v.
`
`Olympus Am., Inc., 841 F.3d 1004, 1012 (Fed. Cir. 2016).
`
`
`
`8
`
`
`
`
`
`Patent Owner’s Motion to Exclude Evidence
`IPR2016-00151 (U.S. Patent No. 8,141,154)
`
`Dr. Berger reasonably corroborated Mr. Ben-Itzhak’s statements that he had
`
`several conversations with Dr. Berger regarding the prosecution of his patent in a
`
`one month period between November 13, 2005 and December 12, 2005, which is
`
`all that is required under the law to show entitlement to the early conception date.
`
`Paper 19 at 5–9. The snippets of testimony offered by Petition are not to the
`
`contrary and are directed to an incorrect legal standard to corroborate conception
`
`with specific dates.
`
`The cited testimony, which is limited to the witnesses not recalling the exact
`
`details of every phone call regarding the patent application, is irrelevant to the
`
`diligence analysis because that is not the correct legal standard. Petitioner cites to
`
`Perfect Surgical, slip. op. at 9-10. Paper 32 at 4. In that case, the Federal Circuit
`
`remanded back to the Board to consider whether the evidence corroborates the
`
`inventor’s testimony under the rule of reason analysis. Perfect Surgical does not,
`
`however, require recollection of exact dates, especially so long after the fact and
`
`where diligence is corroborated with contemporaneous evidence such as emails
`
`and draft applications. Because Petitioner cites the testimony in support of a
`
`legally incorrect theory, it should be excluded as irrelevant.
`
`IV. CONCLUSION
`For these reasons, the Board should grant Patent Owner’s Motion to Exclude
`
`Petitioner’s Evidence.
`
`
`
`9
`
`
`
`
`
`Dated: December 28, 2016
`
`Case No. IPR2016-00151
`
`Patent Owner’s Motion to Exclude Evidence
`IPR2016-00151 (U.S. Patent No. 8,141,154)
`
`
`
`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: 650.752.1800
`
`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
`
`Attorneys for Patent Owner
`
`
`
`10
`
`
`
`Patent Owner’s Motion to Exclude 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 Motion to Exclude Evidence was
`
`served on December 28, 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 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
`
`
`
`11
`
`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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