`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`PALO ALTO NETWORKS, INC.,
`Petitioner
`
`v.
`
`FINJAN, INC.,
`Patent Owner
`
`Patent No. 8,141,154
`
`_______________
`
`Inter Partes Review No. IPR2016-00151
`____________________________________________________________
`
`PETITIONER’S OPPOSITION TO PATENT OWNER’S
`MOTION TO EXCLUDE
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`
`
`
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`
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`IPR2016-00151
`
`
`Attorney Docket No. 719712801200
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`TABLE OF CONTENTS
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`Page
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`I.
`
`II.
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`PETITIONER’S MOTION TO EXCLUDE IS PROCEDURALLY
`IMPROPER .................................................................................................... 1
`EXHIBITS 1005 AND 1012 ARE RESPONSIVE TO PATENT
`OWNER’S ARGUMENTS IN ITS PATENT OWNER RESPONSE ........... 2
`III. PATENT OWNER’S OBJECTIONS TO THE RUBIN
`DECLARATION SHOULD BE REJECTED ................................................ 3
`IV. MR. YUVAL BEN-ITZHAK’S AND DR. BERGER’S CROSS
`EXAMINATION DEPOSITIONS ARE PLAINLY RELEVANT TO
`THESE PROCEEDINGS AND ADMISSIBLE ............................................ 5
`CONCLUSION ............................................................................................... 7
`
`V.
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`
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`i
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`IPR2016-00151
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`Attorney Docket No. 719712801200
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`
`CASES
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`TABLE OF AUTHORITIES
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`Page(s)
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`Gnosis S.P.A. v. S. Ala. Med. Sci. Found.,
`No. IPR2013-00118, Paper No. 64 (P.T.A.B. June 20, 2014) ............................. 1
`
`Liberty Mut. Ins. Co. v. Progressive Cas. Ins. Co.,
`No. CBM2012-00002, Paper No. 66 (P.T.A.B. Jan. 23, 2014) ............................ 1
`
`Perfect Surgical Techniques, Inc. v. Olympus Am., Inc.,
`841 F.3d 1004 (Fed. Cir. 2016) ........................................................................ 5, 6
`
`Volkswagen Grp. of Am., Inc. v. Emerachem Holdings, LLC,
`No. IPR2014-01555, Paper No. 36 (P.T.A.B. Oct. 9, 2015) ................................ 2
`
`Xilinx, Inc. v. Intellectual Ventures I LLC,
`No. IPR2013-00112, Paper No. 51 (P.T.A.B. June 26, 2014) ............................. 1
`
`
`
`
`
`ii
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`
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`IPR2016-00151
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`Attorney Docket No. 719712801200
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`Petitioner Palo Alto Networks, Inc. provides this Opposition to the Patent
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`Owner’s Motion to Exclude Evidence Pursuant to 37 C.F.R. § 42.64(c) (Paper
`
`No. 39, “Motion”). Patent Owner’s Motion should be denied in all respects.
`
`I.
`
`PETITIONER’S MOTION TO EXCLUDE IS PROCEDURALLY
`IMPROPER
`
`Although styled as a motion to exclude, the Motion does not raise
`
`evidentiary issues and should therefore be rejected. “While a motion to exclude
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`may raise issues related to admissibility of evidence, it is not an opportunity to file
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`a sur-reply, and also is not a mechanism to argue that a reply contains new
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`arguments. . . .” Liberty Mut. Ins. Co. v. Progressive Cas. Ins. Co., No.
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`CBM2012-00002, Paper No. 66 at 62 (P.T.A.B. Jan. 23, 2014). The Motion
`
`violates both of these principles. Throughout the Motion, Patent Owner argues
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`that evidence presented in the Petitioner reply is not sufficient or persuasive, and
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`that it supposedly presents improper new argument. The Motion does not raise any
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`issue that genuinely relates to the admissibility of evidence. As a result, the
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`motion fails at the outset. Gnosis S.P.A. v. S. Ala. Med. Sci. Found., No. IPR2013-
`
`00118, Paper No. 64 at 43 (P.T.A.B. June 20, 2014); see also Xilinx, Inc. v.
`
`Intellectual Ventures I LLC, No. IPR2013-00112, Paper No. 51 at 44-45 (P.T.A.B.
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`June 26, 2014).
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`1
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`IPR2016-00151
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`Attorney Docket No. 719712801200
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`II. EXHIBITS 1005 AND 1012 ARE RESPONSIVE TO PATENT
`OWNER’S ARGUMENTS IN ITS PATENT OWNER RESPONSE
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`Patent Owner argues that the entirety of Dr. Rubin’s reply declaration
`
`(Ex. 1005) and the TCP/IP reference (Ex. 1012) submitted with the Petitioner reply
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`are “improperly introduced new evidence.” (Motion at 1.) However, in a reply, a
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`petitioner legitimately may respond to arguments made in an opposition. To do so,
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`often it is necessary to rely on new evidence. Volkswagen Grp. of Am., Inc. v.
`
`Emerachem Holdings, LLC, No. IPR2014-01555, Paper No. 36 at 5 (P.T.A.B. Oct.
`
`9, 2015). Here, both Dr. Rubin’s testimony and the TCP/IP reference are
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`responsive to arguments made by the Patent Owner in its response and are
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`therefore properly submitted in reply.
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`Dr. Rubin described during cross-examination how each portion of his reply
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`declaration maps to arguments made by the Patent Owner in its response to the
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`petition. (See Ex. 2043 at 52:11-57:9.) For example, Patent Owner cites FIG. 4 of
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`Ross as allegedly demonstrating that Ross fails to teach or suggest the “call to a
`
`first function” claim limitation. (See Patent Owner Response, Paper No. 19 at 19.)
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`In response to Patent Owner’s use of FIG. 4, Dr. Rubin’s testimony addresses how
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`FIG. 4 in fact teaches and suggests this feature, and his testimony is consistent with
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`his original declaration which states that Ross’ hook scripts teach or suggest “a call
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`to a first function” within the content received over a network. (Ex. 1002 ¶ 107.)
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`2
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`Attorney Docket No. 719712801200
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`Similarly, the TCP/IP reference is responsive to arguments made in the
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`Patent Owner response. In its response, Patent Owner relies on a strained reading
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`of the claim language to contend that the HTTP content and the hook scripts
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`disclosed in Ross must be received over the same network in order to satisfy the
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`claim limitations of the ‘154 patent. (See Patent Owner Response, Paper No. 19 at
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`25.) In response, the TCP/IP reference is cited by Dr. Rubin to show that Ross in
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`fact teaches and suggests to one of skill in the art that the HTTP content and the
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`hooks scripts can be received over the same network.
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`As Dr. Rubin’s declaration as well as the TCP/IP reference are responsive to
`
`arguments made by the Patent Owner in its response, they are properly submitted
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`and timely raised in reply.
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`III. PATENT OWNER’S OBJECTIONS TO THE RUBIN
`DECLARATION SHOULD BE REJECTED
`
`Patent Owner’s allegations regarding Dr. Rubin’s testimony do not address
`
`the admissibility of his testimony and should be rejected. In any event, Patent
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`Owner’s arguments are unpersuasive on the merits.
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`Patent Owner argues that Dr. Rubin’s testimony with respect to FIG. 4 of
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`Ross is allegedly inconsistent with his earlier testimony given in support of the
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`petition. This argument is wholly without merit. Dr. Rubin has consistently
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`alleged that “Ross’ description of the hook scripts and their associated inputs
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`would have taught or suggested to a person of skill in the art ‘the content including
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`IPR2016-00151
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`Attorney Docket No. 719712801200
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`a call to a first function, the call including an input,’ as recited in claim 1.”
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`(Ex. 1002 ¶ 107.) In his declaration in support of the Petitioner’s reply Dr. Rubin
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`further explains that “the example high-level pseudocode provided in FIG. 4 is
`
`meant only as an example, and that the functionality of the code provided in FIG. 4
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`could be achieved through other means.” (Ex. 1005 ¶ 4.) Dr. Rubin cites to ¶ 31
`
`of Ross as teaching or suggesting his modified pseudocode example. (Id.) Thus,
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`Dr. Rubin’s statement that FIG. 4 of Ross does not include an explicit call to a
`
`hooked function is in no way inconsistent with his earlier testimony.
`
`Patent Owner’s allegation that the pseudocode provided by Dr. Rubin “is not
`
`evidence of obviousness from the perspective of a person having ordinary skill in
`
`the art at the time of the invention” (see Motion at 6) is also wholly without merit.
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`Dr. Rubin plainly states in his declaration that the pseudocode helps show that
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`“based on the disclosures in Ross, it would have been obvious to a person of
`
`ordinary skill in the art, in 2005, to ensure that the act of having a hook function
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`supersede a call to an original function could be achieved via a call to a hook
`
`function within the hook script.” (Ex. 1005 ¶ 3 (emphasis added).) Thus, Patent
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`Owner’s argument that the pseudocode is irrelevant because it was created in 2016
`
`distorts Dr. Rubin’s testimony as he clearly states that the code would have been
`
`obvious to a person of ordinary skill in the art in 2005, the priority date of the ‘154
`
`patent.
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`4
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`IPR2016-00151
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`Attorney Docket No. 719712801200
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`IV. MR. YUVAL BEN-ITZHAK’S AND DR. BERGER’S CROSS
`EXAMINATION DEPOSITIONS ARE PLAINLY RELEVANT TO
`THESE PROCEEDINGS AND ADMISSIBLE
`
`Patent Owner’s attempt to exclude the cross-examination testimony of its
`
`own fact witnesses from these proceedings should be rejected. First, the argument
`
`in the Motion is a thinly disguised surreply, as Patent Owner argues on the merits
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`that its witnesses provided sufficient evidence to antedate the Ross reference. (See
`
`Motion at 7-9.) Such arguments are not appropriate for a Motion to Exclude
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`because they are not concerned with the admissibility of the evidence.
`
`At the end of its motion the Patent Owner offers a brief argument that the
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`cross examinations of Mr. Ben-Itzhak and Dr. Berger are supposedly irrelevant,
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`citing the recent decision by the Federal Circuit in Perfect Surgical Techniques,
`
`Inc. v. Olympus America, Inc., 841 F.3d 1004 (Fed. Cir. 2016). Patent Owner
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`distorts the holding in Perfect Surgical and as discussed below, the testimonies of
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`Mr. Ben-Itzhak and Dr. Berger are plainly relevant to the issue of whether the
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`Patent Owner can sufficiently establish that the ‘154 patent antedates Ross.
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`Mr. Ben-Itzhak testifies in his declaration that he and Dr. Berger “had
`
`several phone conversations between November 13, 2005 and December 12, 2005
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`regarding the patent application.” (Ex. 2011 ¶ 7.) Yet Patent Owner now seeks to
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`exclude cross-examination that undermines Mr. Ben-Ithak’s declaration testimony
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`by showing that Mr. Ben-Itzhak is unable to recall how many supposed phone
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`5
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`IPR2016-00151
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`Attorney Docket No. 719712801200
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`conversations they had and is unable to recall any dates that these alleged phone
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`calls took place. (Ex. 1009 at 16:9-18:24.) Dr. Berger testified that he was
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`working on various Office Action responses and patent applications between
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`October 31 and December 6, 2015. (See Ex. 2010 ¶ 7.) Yet Patent Owner now
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`seeks to exclude cross-examination testimony that shows that Dr. Berger is unable
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`to recall when he received the Office Actions that he supposedly worked on and is
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`unable to recall what days in particular he worked on those Office Actions. (See
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`Ex. 1010 at 10:12-16:16.) Nothing in Perfect Surgical establishes that such
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`testimony is irrelevant. In Perfect Surgical, the Federal Circuit vacated and
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`remanded the Board’s decision because the Board failed to consider all of the
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`evidence provided by the Patent owner in its diligence analysis including various
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`letters and draft applications passed between the inventor and the patent attorney
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`drafting the application, as well as the patent attorney’s billing records (none of
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`which have been provided by Patent Owner in this case). See Perfect Surgical,
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`841 F.3d at 1012. The Federal Circuit never held that the inventor and patent
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`attorney’s lack of recollection regarding exact dates was irrelevant.
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`Furthermore, in addition to highlighting gaps in diligence during the critical
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`period, Mr. Ben-Itzhak and Dr. Berger’s testimony is at least relevant because it
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`impeaches their credibility regarding their testimony that they “had several phone
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`conversations between November 13, 2005 and December 12, 2005 regarding the
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`6
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`IPR2016-00151
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`Attorney Docket No. 719712801200
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`patent application” (Ex. 2011 ¶ 7) or that Dr. Berger worked on various Office
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`Actions and patent applications between October 31 and December 6, 2015. (See
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`Ex. 2010 ¶ 7.) Patent Owner asks the Board to rely solely on the memories of the
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`witnesses with respect to these phone calls and other activities to prove diligence,
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`but as their testimony illustrates, their memories of events that occurred over a
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`decade ago is faulty at best.
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`V. CONCLUSION
`For the foregoing reasons, Petitioner respectfully requests that the Board
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`deny Patent Owner’s Motion to Exclude Evidence.
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`Dated: January 4, 2017
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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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`7
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`IPR2016-00151
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`Attorney Docket No. 719712801200
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`
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`
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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 Opposition to Patent Owner’s
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`Motion to Exclude was served on the below date on the Patent Owner via e-mail
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`(by consent) to the following counsel of record for the Patent Owner:
`
`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)
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`nathanhamstra@quinnemanuel.com
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`
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`Dated: January 4, 2017
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`
` / Kim Helenius /
`Kim Helenius
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`8
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