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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 MOTION TO EXCLUDE
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`sf-3723600
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` Attorney Docket No. 719712801200
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`TABLE OF CONTENTS
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`Page
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`I.
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`II.
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`PROCEDURAL HISTORY ........................................................................... 1
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`THE BOARD SHOULD EXCLUDE PAGES 3-20 OF EXHIBIT
`2007 ................................................................................................................ 2
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`A.
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`B.
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`Finjan Has Failed to Provide Competent Testimony to
`Authenticate Exhibit 2007. ................................................................... 3
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`Finjan’s Evidence is Insufficient to Support a Finding that
`Pages 3-20 of Exhibit 2007 Correspond to the Patent
`Application Allegedly Sent by Mr. Ben-Itzhak. .................................. 4
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`III. CONCLUSION ............................................................................................... 6
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` Attorney Docket No. 719712801200
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`Petitioner’s Exhibit List for Inter Partes Review of U.S. Patent No. 8,141,154
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`Exhibit Description
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`Exhibit #
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`U.S. Patent No. 8,141,154 (“the ’154 Patent”)
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`Declaration of Dr. Aviel D. Rubin in Support of Petition for Inter
`Partes Review (“Rubin Decl.”)
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`U.S. Publication No. 2007/0113282 A1 (“Ross”)
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`U.S. Publication No. 2002/0066022 A1 (“Calder”)
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`Declaration of Dr. Aviel Rubin in support of Petitioner’s Reply
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`Excerpt of Finjan Responses to Symantec First Interrogatories
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`Excerpt of Finjan Supplement Responses to Symantec First
`Interrogatories
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`Declaration of Nathan Hamstra, Esq.
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`Deposition Transcript of Mr. Yuval Ben-Itzhak
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`Deposition Transcript of Dr. Marc Berger, PhD
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`Deposition Transcript of Dr. Nenand Medvidovic
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`TCP/IP Network Administration
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`Excerpt of File History for 09/595,839
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`Excerpt of File History for 09/730,326
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`Supplemental Declaration of Dr. Marc Berger, Ph.D.
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`ii
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`1001
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`1002
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`1003
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`1004
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`1005
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`1006
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`1007
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`1008
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`1009
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`1010
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`1011
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`1012
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`1013
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`1014
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`1015
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`Petitioner’s Exhibits 1001-1014 were previously filed and are listed again here
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`based on 37 C.F.R. § 42.63. Petitioner’s Exhibit 1015 is newly filed.
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` Attorney Docket No. 719712801200
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`Pursuant to 37 C.F.R. § 42.64(c), Palo Alto Networks, Inc. (“Petitioner”)
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`moves to exclude portions of Exhibit 2007 relied upon by Patent Owner Finjan,
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`Inc. (“Patent Owner” or “Finjan”), for lack of authentication and insufficient
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`corroboration.
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`I.
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`PROCEDURAL HISTORY
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`Trial in this proceeding was instituted on April 20, 2016. (Paper No. 10.)
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`All instituted grounds depend on Patent Application No. US 2007/0113282 A1
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`(Ex. 1003) (“Ross”). (Id. at 17.) In its Patent Owner Response, Finjan argued that
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`Ross is not prior art because the ’154 patent was allegedly conceived and diligently
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`reduced to practice from a time predating Ross. (Paper No. 19 at 5.) In doing so,
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`Finjan relied on Exhibit 2007, which consists of a two page print-out of an email
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`chain between Mr. Ben-Itzhak and Dr. Berger, and a seventeen page undated draft
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`patent application, that supposedly was attached to the email. Finjan argues that
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`Exhibit 2007 establishes an alleged date of conception of October 31, 2005. (Id. at
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`7; Ex. 2007.)
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`Petitioner timely filed and served its objections to evidence on September 8,
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`2016. (Paper No. 22.) In its objections, Petitioner specifically objected to Exhibit
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`2007. (Id. at 1-2.) In response, Finjan served a supplemental declaration from Dr.
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`Berger. (Ex. 1015.) On December 6, 2016, Petitioner filed and served its
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`Petitioner’s Reply, in which it addressed Finjan’s argument based on Exhibit 2007
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`that the ’154 patent was allegedly conceived and diligently reduced to practice
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`from a time predating Ross. (Paper No 32 at 7-9.)
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`II. THE BOARD SHOULD EXCLUDE PAGES 3-20 OF EXHIBIT 2007
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`Federal Rule of Evidence 901 requires that the proponent “produce evidence
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`sufficient to support a finding that [an] item is what the proponent claims it is.”
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`Fed. R. Evid. 901(a). Here, the evidence fails to indicate that the document
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`corresponding to pages 3-20 of Exhibit 2007 is the patent application which was
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`allegedly attached to Mr. Ben-Itzhak’s, October 31, 2005 email.
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`According to Finjan, “Yuval Ben-Itzhak, one of the inventors of the ’154
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`Patent, emailed an invention disclosure, in the form of a draft patent application, to
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`Dr. Marc Berger on October 31, 2005, more than two weeks before Ross’ filing
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`date.” (Paper No. 19 at 7.) To support its statement, Finjan relies on a declaration
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`from Dr. Berger, a former employee of Finjan who drafted its patent applications at
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`the time, stating that on October 31, 2005 he received an email attaching a draft
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`patent application from Mr. Ben-Itzhak. (Ex. 2010 ¶¶ 4-5.) Finjan further relies
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`on a supplemental declaration from Dr. Berger, stating that pages 3-20 of Exhibit
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`2007, a document that he physically located in his files, “is a copy of the Invention
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`Disclosure that Mr. Ben-Itzhak attached in his October 31, 2005 email.” (Ex. 1015
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`¶ 2.) Finjan also submitted a declaration from Mr. Ben-Itzhak, stating generally
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`that in October 2005, he prepared a draft patent application and sent an email
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`attaching the draft application to Dr. Berger. (Ex. 2011 ¶ 6.)
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`A.
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`Finjan Has Failed to Provide Competent Testimony to
`Authenticate Exhibit 2007.
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`Finjan has relied on a declaration from its inventor, Mr. Ben-Itzhak, as well
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`as declarations from the Finjan employee who drafted the patent application that
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`issued as the ’154 patent, Dr. Berger, to authenticate Exhibit 2007. While
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`normally, the testimony of persons having personal knowledge of the documents
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`could be sufficient to support a finding that the item is authentic, “the context in
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`which these exhibits are offered requires more.” Neste Oil Oyj v. Reg Synthetic
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`Fuels, LLC, No. IPR2013-00578, Paper No. 52 at 3-4 (P.T.A.B. Mar. 12, 2015).
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`Specifically, because Finjan relies on Exhibit 2007 in an attempt to prove prior
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`invention, independent corroborative evidence of authenticity is required. See id.
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`at 4.
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`The testimony presented by Finjan is not independent, as it is from Finjan’s
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`inventor and the patent attorney who prosecuted the application. Microsoft Corp.
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`v. Surfcast, Inc., No. IPR2013-00292, Paper No. 93 at 16-17 (P.T.A.B. Oct. 14,
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`2014) (requiring “independent confirmation of the inventor’s testimony” to prove
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`the “date and identity of a physical exhibit offered to show conception” (emphasis
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`in original); Sprint Commc’ns Co. v. Comcast IP Holdings, LLC, No. 12-1013-
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`RGA, 2015 U.S. Dist. LEXIS 10836, at *10-11 (D. Del. Jan. 30, 2015) (holding
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`that testimony from patent prosecutor employed by patent holder “does not provide
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`sufficient independent corroboration” to establish date of conception); see also
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`Lacks Indus., Inc. v. McKechnie Vehicle Components USA, Inc., 322 F.3d 1335,
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`1350 (Fed. Cir. 2003) (holding cross-corroboration of oral testimony to be
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`insufficient). Thus, testimony from Mr. Ben-Itzhak and Dr. Berger cannot be used
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`to authenticate Exhibit 2007.
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`B.
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`Finjan’s Evidence is Insufficient to Support a Finding that Pages
`3-20 of Exhibit 2007 Correspond to the Patent Application
`Allegedly Sent by Mr. Ben-Itzhak.
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`Even if the declarations submitted by Finjan could be used to determine
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`authenticity, Finjan’s evidence is insufficient to support a finding that Mr. Ben-
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`Itzhak sent the draft patent application in Exhibit 2007 to Dr. Berger on October
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`31, 2005. As an initial matter, there is no indication of what attachments, if any,
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`were associated with the October 31, 2005 email. The email itself does not include
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`a document icon indicating that an attachment was included (Ex. 2007 at 2), nor is
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`there any evidence that any draft application was physically attached to the email
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`print-out Dr. Berger found in his files.
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`In addition, Exhibit 2007 actually suggests that the “attachment” included
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`within the exhibit is not the same document that was attached to the email sent on
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`October 31. In the email of October 31, Mr. Ben-Itzhak states that the title of the
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`draft application he is attaching is “System and method for the remote inspection
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`of code.” (Ex. 2007 at 2.) However, the document included within Exhibit 2007 is
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`titled “System and Method for Inspecting Dynamically Generated Executable
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`Code.” (Id. at 3.) Neither Finjan, nor any of its declarants, have explained the
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`discrepancy in titles. The difference in the titles strongly suggests that to the extent
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`any document was attached to the October 31, 2005 email, it is not the draft
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`application in Exhibit 2007.
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`Finjan’s only support for its allegation that the document in Exhibit 2007 is
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`the same as the supposed attachment to the October 31, 2005 email is Dr. Berger’s
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`recollection of events occurring over 10 years ago. Yet during his deposition, Dr.
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`Berger admitted time and time again that he could not remember specific dates
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`relating to his work on the Finjan patents, including dates on which he received the
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`invention disclosures. (Ex. 1010 at 10:19-18:22.) Indeed, in his October 31, 2005
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`email, Dr. Ben-Itzhak refers to at least one other version of the draft application,
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`which may or may not be the document corresponding to pages 3-20 of Exhibit
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`2007. (Ex. 2007 at 2.) Finjan has provided no evidence establishing which version
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`of the draft patent application corresponds to pages 3-20 of Exhibit 2007, nor has it
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`ruled out whether any other versions existed. Tellingly, Finjan has failed to
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`provide any declaration from Mr. Ben-Itzhak confirming that the document at
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`pages 3-20 of Exhibit 2007 is in fact the same draft application he supposedly
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`attached to his October 31, 2005 email.
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`Accordingly, Finjan has failed to provide sufficient evidence to show that
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`Mr. Ben-Itzhak provided a draft patent application to Dr. Berger on October 31,
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`2005, or that if he did, the document corresponding to pages 3-20 of Exhibit 2007
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`is the same as the draft patent application sent by Mr. Ben-Itzhak to Dr. Berger on
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`October 31, 2005.
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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: December 28, 2016
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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 MOTION TO
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`EXCLUDE was served on the below date on the Patent Owner via e-mail (by
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`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: December 28, 2016
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