`
`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 OBJECTIONS TO EVIDENCE IN PETITIONER’S
`REPLY UNDER 37 C.F.R. § 42.64
`
`
`1 Case IPR2016-01071 has been joined with this proceeding.
`
`
`
`Patent Owner’s Objections to Evidence
`IPR2016-00151 (U.S. Patent No. 8,141,154)
`
`
`
`Patent Owner Finjan, Inc. (“Patent Owner”) objects under the Federal Rules
`
`of Evidence and 37 C.F.R. § 42.64(b)(1) to the admissibility of the following
`
`documents submitted by Palo Alto Networks, Inc. and Symantec Corp.
`
`(“Petitioner”) in its Reply to Patent Owner’s Response (“Reply”). Paper No. 32.
`
`Patent Owner also incorporates by reference its Objections to Evidence to
`
`Petitioner’s Petition for IPR, filed on May 4, 2016. Paper No. 12.
`
`
`
`Petitioner’s Reply was filed on December 6, 2016. Patent Owner’s
`
`objections are timely under 37 C.F.R. § 42.64(b)(1). Patent Owner serves
`
`Petitioner with these objections to provide notice that Patent Owner will move to
`
`exclude these exhibits as improper evidence.
`
`I.
`
`PETITIONER’S REPLY EVIDENCE
`
`A. Dr. Aviel Rubin Declaration (“Rubin Declaration”) (Ex. 1005)
`
`Patent Owner objects to the admissibility of the Rubin Declaration for at
`
`least the following reasons:
`
`Patent Owner objects to the Rubin Declaration as untimely because
`
`Petitioner should have introduced it in its Petition. See 37 C.F.R. § 42.104(b); see
`
`also 37 C.F.R. § 42.23(b). Patent Owner objects to the Rubin Declaration because
`
`it is supplemental information that is improper and untimely under 37 C.F.R. §
`
`42.123.
`
`1
`
`
`
`Patent Owner’s Objections to Evidence
`IPR2016-00151 (U.S. Patent No. 8,141,154)
`
`Patent Owner objects to the Rubin Declaration as not relevant under FRE
`
`401 and FRE 402 because it exceeds the proper scope of Petitioner’s Reply and
`
`does not properly respond to Patent Owner’s Response. See 37 C.F.R. § 42.23(b).
`
`Patent Owner further objects to the Rubin Declaration under FRE 403 because of
`
`the prejudice arising from Patent Owner’s inability to respond to the untimely
`
`evidence and arguments therein.
`
`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.
`
`Petitioner has failed to authenticate the Rubin Declaration under FRE 901
`
`and FRE 602. Specifically, Petitioner has failed to establish that a screenshot in
`
`the Rubin Declaration is what Petitioner claims it is. For example, Dr. Rubin
`
`creates the screenshot of what he claims to be “pseudocode” side by side with what
`
`he claims to be “Ross’ FIG. 4 pseudocode,” which Dr. Rubin also generated.
`
`Rubin Decl., ¶¶ 7, 10. However, FIG. 4 in Ross is a black and white figure, while
`
`Rubin’s screenshot is a color figure.
`
`
`
`2
`
`
`
`Patent Owner’s Objections to Evidence
`IPR2016-00151 (U.S. Patent No. 8,141,154)
`
`Rubin Decl., ¶ 7.
`
`
`
`Patent Owner objects to the Rubin Declaration because it does not introduce
`
`evidence of Dr. Rubin’s personal knowledge of the subject matter of the testimony
`
`contained therein, rendering such testimony inadmissible under FRE 602.
`
`Patent Owner also objects to the Rubin Supplemental Declaration because it
`
`is hearsay under FRE 801 and does not fall within a hearsay exception under FRE
`
`802 and FRE 803.
`
`Dr. Rubin’s opinions are not relevant under FRE 401 and FRE 402. For
`
`example, Dr. Rubin creates “pseudocode” in the Rubin Declaration to claim that
`
`“[a] person of skill in the art would have readily generated similar pseudocode
`
`provided above to effect the functionality described in Ross” in 2005, however, the
`
`pseudocode was created on December 6, 2016. Rubin Decl., ¶ 9. Moreover, the
`
`Rubin Declaration is confusing, of minimal probative value, outweighed by
`
`prejudice, and/or a waste of time and is therefore inadmissible under FRE 403.
`
`
`
`3
`
`
`
`Patent Owner’s Objections to Evidence
`IPR2016-00151 (U.S. Patent No. 8,141,154)
`
`Further, his opinions that rely on the exhibits cited therein are also unreliable and
`
`inadmissible for the reasons discussed above.
`
`B.
`
`Excerpt of Finjan Responses to Symantec First Interrogatories
`(“Finjan Response 1”) (Exhibit 1006)
`
`Patent Owner objects to the admissibility of Finjan Response 1 for at least
`
`the following reasons:
`
`Patent Owner objects to the Finjan Response 1 as untimely because
`
`Petitioner should have introduced it in its Petition. See 37 C.F.R. § 42.104(b); see
`
`also 37 C.F.R. § 42.23(b). Patent Owner objects to the Finjan Response 1 because
`
`it is supplemental information that is improper and untimely under 37 C.F.R. §
`
`42.123.
`
`Patent Owner objects to the Finjan Response 1 as not relevant under FRE
`
`401 and FRE 402 because it exceeds the proper scope of Petitioner’s Reply and
`
`does not properly respond to Patent Owner’s Response. See 37 C.F.R. § 42.23(b).
`
`Patent Owner further objects to the Finjan Response 1 under FRE 403 because of
`
`the prejudice arising from Patent Owner’s inability to respond to the untimely
`
`evidence and arguments therein.
`
`Patent Owner further objects to Petitioner’s selective inclusion of material
`
`from Finjan Response 1. Under FRE 106, the complete version of Finjan
`
`Response 1, in fairness, ought to be considered.
`
`
`
`4
`
`
`
`Patent Owner’s Objections to Evidence
`IPR2016-00151 (U.S. Patent No. 8,141,154)
`
`Petitioner has failed to authenticate Finjan Response 1 under FRE 901 and
`
`FRE 602. Specifically, Petitioner has failed to establish that Finjan Response 1 is
`
`what Petitioner claims it is, and has failed to authenticate any date in Finjan
`
`Response 1.
`
`Accordingly, Finjan Response 1 is not relevant under FRE 401 and is
`
`inadmissible under FRE 402. Moreover, Finjan Response 1 is confusing, of
`
`minimal probative value, outweighed by prejudice, and/or a waste of time and is
`
`therefore inadmissible under FRE 403.
`
`C. Excerpt of Finjan Supplemental Responses to Symantec First
`Interrogatories (“Finjan Response 2”) (Exhibit 1007)
`
`Patent Owner objects to the admissibility of Finjan Response 2 for at least
`
`the following reasons:
`
`Patent Owner objects to the Finjan Response 2 as untimely because
`
`Petitioner should have introduced it in its Petition. See 37 C.F.R. § 42.104(b); see
`
`also 37 C.F.R. § 42.23(b). Patent Owner objects to the Finjan Response 2 because
`
`it is supplemental information that is improper and untimely under 37 C.F.R. §
`
`42.123.
`
`Patent Owner objects to the Finjan Response 2 as not relevant under FRE
`
`401 and FRE 402 because it exceeds the proper scope of Petitioner’s Reply and
`
`does not properly respond to Patent Owner’s Response. See 37 C.F.R. § 42.23(b).
`
`Patent Owner further objects to the Finjan Response 2 under FRE 403 because of
`
`
`
`5
`
`
`
`Patent Owner’s Objections to Evidence
`IPR2016-00151 (U.S. Patent No. 8,141,154)
`
`the prejudice arising from Patent Owner’s inability to respond to the untimely
`
`evidence and arguments therein.
`
`Patent Owner further objects to Petitioner’s selective inclusion of material
`
`from Finjan Response 2. Under FRE 106, the complete version of Finjan
`
`Response 2, in fairness, ought to be considered.
`
`Petitioner has failed to authenticate Finjan Response 2 under FRE 901 and
`
`FRE 602. Specifically, Petitioner has failed to establish that Finjan Response 2 is
`
`what Petitioner claims it is, and has failed to authenticate any date in Finjan
`
`Response 2.
`
`Accordingly, Finjan Response 2 is not relevant under FRE 401 and is
`
`inadmissible under FRE 402. Moreover, Finjan Response 2 is confusing, of
`
`minimal probative value, outweighed by prejudice, and/or a waste of time and is
`
`therefore inadmissible under FRE 403.
`
`D. Deposition Transcript of Mr. Yuval Ben-Itzhak (“Ben-Itzhak
`Transcript”) (Exhibit 1009)
`
`Patent Owner objects to the admissibility of the Ben-Itzhak Transcript for at
`
`least the following reasons:
`
`Patent Owner objects to the Ben-Itzhak Transcript as not relevant under
`
`FRE 401 and FRE 402 because it exceeds the proper scope of Petitioner’s Reply
`
`and does not properly respond to Patent Owner’s Response. See 37 C.F.R. §
`
`42.23(b). Patent Owner further objects to the Ben-Itzhak Transcript under FRE
`
`
`
`6
`
`
`
`Patent Owner’s Objections to Evidence
`IPR2016-00151 (U.S. Patent No. 8,141,154)
`
`403 because of the prejudice arising from Patent Owner’s inability to respond to
`
`the untimely evidence and arguments therein.
`
`Patent Owner objects because the Ben-Itzhak Transcript is not relevant. For
`
`example, Petitioner cites the Ben-Itzhak Transcript for an assertion that “Mr. Ben-
`
`Itzhak is unable to recall any specific dates or facts with respect to those alleged
`
`phone calls” from over 10 years ago. Paper No. 32 at 4. This is not relevant
`
`because recalling exact dates of phone calls over a decade ago goes beyond the
`
`scope of the “holistic ‘rule of reason.’” Paper No. 32 at 4 (citing Perfect Surgical
`
`Techniques v. Olympus Am., Inc., No. 2015-2043, slip. op. at 9-10 (Fed. Cir. Nov.
`
`15, 2016)). Further, Petitioner’s reliance on the Ben-Itzhak Transcript is confusing
`
`and misleading because Mr. Ben-Itzhak testified he had “‘several’ phone
`
`conversations between November 13, 2005 and December 12, 2005.” Paper No.
`
`32 at 4.
`
`Accordingly, for at least the foregoing reasons, the cited portions of the Ben-
`
`Itzhak Transcript are not relevant under FRE 401 and are inadmissible under FRE
`
`402. Moreover, Petitioner’s use of the Ben-Itzhak Transcript is confusing, of
`
`minimal probative value, outweighed by prejudice, and/or a waste of time and is
`
`therefore inadmissible under FRE 403.
`
`
`
`7
`
`
`
`Patent Owner’s Objections to Evidence
`IPR2016-00151 (U.S. Patent No. 8,141,154)
`
`E. Deposition Transcript of Dr. Marc Berger (“Berger Transcript”)
`(Exhibit 1010)
`
`Patent Owner objects to the admissibility of the Berger Transcript for at least
`
`the following reasons:
`
`Patent Owner objects to the Berger Transcript as not relevant under FRE
`
`401 and FRE 402 because it exceeds the proper scope of Petitioner’s Reply and
`
`does not properly respond to Patent Owner’s Response. See 37 C.F.R. § 42.23(b).
`
`Patent Owner further objects to the Berger Transcript under FRE 403 because of
`
`the prejudice arising from Patent Owner’s inability to respond to the untimely
`
`evidence and arguments therein.
`
`Patent Owner objects because the Berger Transcript is not relevant. For
`
`example, Petitioner cites the Berger Transcript to support its arguments regarding
`
`diligence in reduction to practice of an invention. Paper No. 32 at 3, 6. This is not
`
`relevant because recalling exact dates of phone calls over a decade ago goes
`
`beyond the scope of the “holistic ‘rule of reason.’” Paper No. 32 at 4 (citing
`
`Perfect Surgical Techniques v. Olympus Am., Inc., No. 2015-2043, slip. op. at 9-10
`
`(Fed. Cir. Nov. 15, 2016)). Further, Petitioner’s reliance on the Berger Transcript
`
`is confusing and misleading because Dr. Berger testified he and Mr. Ben-Itzhak
`
`“spoke between November 13 until December 6 when I provided a first full draft.”
`
`Paper No. 32 at 5.
`
`
`
`8
`
`
`
`Patent Owner’s Objections to Evidence
`IPR2016-00151 (U.S. Patent No. 8,141,154)
`
`Accordingly, for at least the foregoing reasons, the cited portions of the
`
`Berger Transcript are not relevant under FRE 401 and are inadmissible under FRE
`
`402. Moreover, Petitioner’s use of the Berger Transcript is confusing, of minimal
`
`probative value, outweighed by prejudice, and/or a waste of time and is therefore
`
`inadmissible under FRE 403.
`
`Patent Owner objects to the portions of the Berger Transcript that Petitioner
`
`does not cite to or rely on in its Reply. Such evidence is not relevant under FRE
`
`401 and is inadmissible under FRE 402. Any attempt by Petitioner to rely on
`
`these portions would be highly prejudicial to Patent Owner under FRE 403.
`
`F. Deposition Transcript of Dr. Nenad Medvidovic (“Medvidovic
`Transcript”) (Exhibit 1011)
`
`Patent Owner objects to the admissibility of the Medvidovic Transcript for at
`
`least the following reasons:
`
`Patent Owner objects to the Medvidovic Transcript as not relevant under
`
`FRE 401 and FRE 402 because it exceeds the proper scope of Petitioner’s Reply
`
`and does not properly respond to Patent Owner’s Response. See 37 C.F.R. §
`
`42.23(b). Patent Owner further objects to the Medvidovic Transcript under FRE
`
`403 because of the prejudice arising from Patent Owner’s inability to respond to
`
`the untimely evidence and arguments therein.
`
`Patent Owner objects because the cited portions of the Medvidovic
`
`Transcript are not relevant under FRE 401 and are inadmissible under FRE 402.
`
`
`
`9
`
`
`
`Patent Owner’s Objections to Evidence
`IPR2016-00151 (U.S. Patent No. 8,141,154)
`
`Moreover, Petitioner’s use of the Medvidovic Transcript is confusing, of minimal
`
`probative value, outweighed by prejudice, and/or a waste of time and is therefore
`
`inadmissible under FRE 403.
`
`Patent Owner objects to the portions of the Medvidovic Transcript that
`
`Petitioner does not cite to or rely on in its Reply. Such evidence is not relevant
`
`under FRE 401 and is inadmissible under FRE 402. Any attempt by Petitioner to
`
`rely on these portions would be highly prejudicial to Patent Owner under FRE
`
`403.
`
`G. TCP/IP Network Administration (“TCP/IP”) (Exhibit 1012)
`
`Patent Owner objects to the admissibility of TCP/IP for at least the
`
`following reasons:
`
`Patent Owner objects to TCP/IP as not relevant under FRE 401 and FRE
`
`402 because it exceeds the proper scope of Petitioner’s Reply and does not
`
`properly respond to Patent Owner’s Response. See 37 C.F.R. § 42.23(b). Patent
`
`Owner further objects to TCP/IP under FRE 403 because of the prejudice arising
`
`from Patent Owner’s inability to respond to the untimely evidence and arguments
`
`therein.
`
`Patent Owner objects to TCP/IP as untimely because it should have been
`
`introduced in its Petition. See 37 C.F.R. § 42.104(b); see also 37 C.F.R. §
`
`
`
`10
`
`
`
`Patent Owner’s Objections to Evidence
`IPR2016-00151 (U.S. Patent No. 8,141,154)
`
`42.23(b). Patent Owner objects to TCP/IP because it is supplemental information
`
`that is improper and untimely under 37 C.F.R. § 42.123.
`
`Petitioner has failed to authenticate TCP/IP under FRE 901 and FRE 602.
`
`Specifically, Petitioner has failed to establish that TCP/IP is what Petitioner claims
`
`it to be.
`
`Patent Owner also objects because TCP/IP is hearsay under FRE 801 and
`
`inadmissible under FRE 802 and FRE 803.
`
`Accordingly, TCP/IP is not relevant under FRE 401 and inadmissible under
`
`FRE 402. Moreover, TCP/IP is confusing, of minimal probative value,
`
`outweighed by prejudice, and/or a waste of time and is therefore inadmissible
`
`under FRE 403.
`
`H. Excerpt of File History for 09/595,839 (“File History 1”) (Exhibit
`1013)
`
`Patent Owner objects to the admissibility of File History 1 for at least the
`
`following reasons:
`
`Patent Owner objects to the File History 1 because it is supplemental
`
`information that is improper and untimely under 37 C.F.R. § 42.123.
`
`Patent Owner objects to the File History 1 as not relevant under FRE 401
`
`and FRE 402 because it exceeds the proper scope of Petitioner’s Reply and does
`
`not properly respond to Patent Owner’s Response. See 37 C.F.R. § 42.23(b).
`
`Patent Owner further objects to the File History 1 under FRE 403 because of the
`
`
`
`11
`
`
`
`Patent Owner’s Objections to Evidence
`IPR2016-00151 (U.S. Patent No. 8,141,154)
`
`prejudice arising from Patent Owner’s inability to respond to the untimely
`
`evidence and arguments therein.
`
`Patent Owner further objects to Petitioner’s selective inclusion of material
`
`from File History 1. Under FRE 106, the complete version of File History 1, in
`
`fairness, ought to be considered.
`
`Petitioner has failed to authenticate File History 1 under FRE 901 and FRE
`
`602 because it has provided an incomplete copy. Specifically, Petitioner has failed
`
`to establish that File History 1 is what Petitioner claims it is by producing a
`
`truncated version of the File History. To the extent that Petitioner attempts to rely
`
`on any dates that appear on File History 1, the date is hearsay under FRE 801 and
`
`is inadmissible under FRE 802 and FRE 803.
`
`Accordingly, File History 1 is not relevant under FRE 401 and is
`
`inadmissible under FRE 402. Moreover, File History 1 is confusing, of minimal
`
`probative value, outweighed by prejudice, and/or a waste of time and is therefore
`
`inadmissible under FRE 403.
`
`I.
`
`Excerpt of File History for 09/730,326 (“File History 2”) (Exhibit
`1014)
`
`Patent Owner objects to the admissibility of File History 2 for at least the
`
`following reasons:
`
`Patent Owner objects to the File History 2 because it is supplemental
`
`information that is improper and untimely under 37 C.F.R. § 42.123.
`
`
`
`12
`
`
`
`Patent Owner’s Objections to Evidence
`IPR2016-00151 (U.S. Patent No. 8,141,154)
`
`Patent Owner objects to the File History 2 as not relevant under FRE 401
`
`and FRE 402 because it exceeds the proper scope of Petitioner’s Reply and does
`
`not properly respond to Patent Owner’s Response. See 37 C.F.R. § 42.23(b).
`
`Patent Owner further objects to the File History 2 under FRE 403 because of the
`
`prejudice arising from Patent Owner’s inability to respond to the untimely
`
`evidence and arguments therein.
`
`Patent Owner further objects to Petitioner’s selective inclusion of material
`
`from File History 2. Under FRE 106, the complete version of File History 2, in
`
`fairness, ought to be considered.
`
`Petitioner has failed to authenticate File History 2 under FRE 901 and FRE
`
`602 because it has provided an incomplete copy. Specifically, Petitioner has failed
`
`to establish that File History 2 is what Petitioner claims it is by producing a
`
`truncated version of the File History. To the extent that Petitioner attempts to rely
`
`on any dates that appear on File History 2, the date is hearsay under FRE 801 and
`
`is inadmissible under FRE 802 and FRE 803.
`
`Accordingly, File History 2 is not relevant under FRE 401 and is
`
`inadmissible under FRE 402. Moreover, File History 2 is confusing, of minimal
`
`probative value, outweighed by prejudice, and/or a waste of time and is therefore
`
`inadmissible under FRE 403.
`
`
`
`
`
`
`
`13
`
`
`
`Patent Owner’s Objections to 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
`
`Dated: December 9, 2016
`
`Case No. IPR2016-00151
`
`
`
`14
`
`
`
`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 in
`
`Petitioner’s Reply Under 37 C.F.R. § 42.64 was served on December 9, 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:
`
`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
`
`
`
`
`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
`
`
`
`15
`
`
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