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.,
`BLUE COAT SYSTEMS, INC.,
`Petitioner,
`
`v.
`
`FINJAN, INC.,
`Patent Owner.
`
`____________________
`
`Case IPR2016-001591
`U.S. Patent No. 8,677,494
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`__________________________________________________________
`
`
`
`PATENT OWNER’S MOTION TO EXCLUDE
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`
`1 Case IPR2016-01174 has been joined with this proceeding.
`
`
`
`__________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________
`
`
`PALO ALTO NETWORKS, INC.,
`BLUE COAT SYSTEMS, INC.,
`Petitioner,
`
`v.
`
`FINJAN, INC.,
`Patent Owner.
`
`____________________
`
`Case IPR2016-001591
`U.S. Patent No. 8,677,494
`
`__________________________________________________________
`
`
`
`PATENT OWNER’S MOTION TO EXCLUDE
`
`
`1 Case IPR2016-01174 has been joined with this proceeding.
`
`
`
`Patent Owner’s Motion to Exclude
`IPR2016-00159 (U.S. Patent No. 8,677,494)
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`Pursuant to 37 C.F.R. § 42.64, Patent Owner Finjan, Inc. hereby moves to
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`exclude the following exhibits submitted in this proceeding by Petitioner Palo Alto
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`Networks, Inc.: 1092, 1098, 1100, 1095, 1089, 1088, 1089, 1006, and 1047. The
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`Board should grant Patent Owner’s Motion to Exclude for the reasons set forth
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`below. Patent Owner timely raised the objections set forth in this Motion to
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`Exclude. On May 27, 2016, Patent Owner timely filed its objections to the
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`evidence in Petitioner’s Petition. Paper 12. On November 23, 2016, Patent Owner
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`timely filed its objects to the evidence in Petitioner’s Reply. Paper 27.
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`I.
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`The Board Should Exclude Petitioner’s New Arguments and Exhibits
`As Outside the Proper Scope of the Reply.
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`Petitioner’s Reply improperly introduced new evidence and arguments that
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`are inadmissible under 37 C.F.R. § 42.61 and are properly subject to exclusion.2
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`Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1081 (Fed. Cir. 2015) (“a party may
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`move to exclude evidence, whether as improper under the response-only
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`regulation, under the Trial Practice Guide’s advice, or on other grounds.”). These
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`belated submissions should be excluded because it is improper for Petitioner to
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`introduce new evidence and arguments in its Reply in order to resolve the deficient
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`arguments and evidentiary shortcomings of its Petition. “[T]he expedited nature of
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`2 The Board granted Patent Owner’s request to identify specific portions of
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`Petitioner’s Reply and evidence that is outside the proper scope of reply. Paper 29.
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`1
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`Patent Owner’s Motion to Exclude
`IPR2016-00159 (U.S. Patent No. 8,677,494)
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`IPRs bring with it an obligation for petitioners to make their case in their petition
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`to institute” unlike in district courts where “parties have greater freedom to revise
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`and develop their arguments over time.” Intelligent Bio-Sys., Inc. v. Illumina
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`Cambridge Ltd., 821 F.3d 1359, 1369–70 (Fed. Cir. 2016).
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`First, Petitioner improperly offers Exhibits 1095,3 1096,4 and 10975 in its
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`Reply as a belated attempt to revise its argument or supplement its evidence that
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`Swimmer (Exhibit 1006) was publicly available prior art. Petitioner failed to
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`provide sufficient evidence that Swimmer was publicly available because
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`Swimmer itself states that it was not intended to be publicly available and
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`Petitioner’s reliance on Mr. John Hawes’s testimony (as further discussed herein)
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`fails to remedy this deficiency as he lacked personal knowledge for his statements
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`and based his testimony on unauthenticated hearsay documents that were not
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`produced with the Petition. Paper 17 at 12-14.
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`The Board should not consider new evidence introduced in the Reply
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`because it was available at the time that Petitioner filed its Petition. Office Patent
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`3 Exhibit 1095 comprises comprising Exhibits 1006, 1007, 1011, 1037 from
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`Symantec Corp. v. Finjan, Inc., IPR2015-01892 (“Symantec IPR”).
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`4 Exhibit 1096 comprises Exhibits 1038, 1039 and 1040 from the Symantec IPR.
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`5 Exhibit 1097 comprises Exhibits 1026 and 1041 from the Symantec IPR.
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`2
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`Patent Owner’s Motion to Exclude
`IPR2016-00159 (U.S. Patent No. 8,677,494)
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`Trial Practice Guide, 77 Fed. Reg. 48,156, 48,767 (Aug. 14, 2012) (“reply that
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`raises a new issue or belatedly presents evidence will not be considered and may
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`be returned. The Board will not attempt to sort proper from improper portions of
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`the reply.”). “[I]ndications that a new issue has been raised in a reply include new
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`evidence necessary to make out a prima facie case for…patentability…and new
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`evidence that could have been presented in a prior filing.” Id.
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`There is no reason why Petitioner could not have included such evidence in
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`its Petition and in fact, the information contained in Exhibits 1095-1097 regarding
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`Swimmer’s alleged public accessibility was available at the time Petitioner filed its
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`Petition. Petitioner knew that it had the burden to demonstrate Swimmer’s public
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`availability in order to establish its prima facie invalidity case. Its belated attempt
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`to do so in its Reply should not be permitted. See, e.g., Toshiba Corp. v. Optical
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`Devices, LLC, IPR2014-01447, Paper 34 at 44–47 (P.T.A.B. Mar. 9, 2016)
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`(“[Section 42.23(b)]…does not authorize or otherwise provide a means for
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`supplementing the evidence of record.”); Toyota Motor Corp. v. Am. Vehicular
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`Scis. LLC, IPR2013-00424, Paper 50 at 21 (P.T.A.B. Jan. 12, 2015) (“[Petitioner]
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`cannot rely belatedly on this evidence in its Reply and Reply Declaration…to
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`make up for the deficiencies in its Petition.”); The Scotts Co. v. Encap, LLC, IPR
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`2013-00110, Paper 79 at 5–6 (P.T.A.B. June 24, 2014) (declining to consider
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`untimely evidence and arguments based on belated evidence because patent owner
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`3
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`Patent Owner’s Motion to Exclude
`IPR2016-00159 (U.S. Patent No. 8,677,494)
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`“was denied the opportunity to file responsive evidence.”). The Board should thus
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`exclude Exhibits 1095, 1096 and 1097 and Petitioner’s Reply arguments relying on
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`the same. Paper 26 at 3-5.
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`Second, Petitioner improperly attempts, in its Reply, to introduce new
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`references, Exhibits 1091, 1093 and 1094, to supplement its grounds for invalidity.
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`Petitioner introduces Exhibits 1093 and 1094, without any basis or authentication,
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`to support its contention of a POSITA’s understanding and in particular that
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`“function numbers correspond to computer operations identified by the ‘494 as
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`examples of operations that POSAs already understood to be suspicious.” Paper
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`26 at 9. Petitioner similarly relies on Exhibit 1091 in describing Avast products,
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`which are neither relevant to nor at issue in this IPR, and in alleging that “Avast’s
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`logs [] meet[] the DSP data limitation.” Paper 26 at 10.
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`Petitioner’s reliance on these new exhibits is improper because these
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`references are not part of the instituted grounds in this proceeding. Moreover,
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`Petitioner’s reliance on this new evidence is unfairly prejudicial to Patent Owner as
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`Patent Owner did not have an opportunity to substantively respond to the untimely
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`evidence and arguments. Fed. R. Evid. (“FRE”) 403 advisory comm. notes (2011)
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`(“‘Unfair prejudice’ within its context means an undue tendency to suggest
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`decision on an improper basis….”).
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`Thus, the Board should exercise its discretion and exclude Exhibits 1093 and
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`4
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`Patent Owner’s Motion to Exclude
`IPR2016-00159 (U.S. Patent No. 8,677,494)
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`1094 and associated arguments at pages 9 and 10 of the Reply.
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`II. The Board Should Exclude Portions of its Reply Relying on Exhibits
`1092, 1098 and 1100.
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`Petitioner relies on misrepresentations of Exhibits 1092, 1098 and 1100 in
`
`its Reply and thus the portions that rely on these exhibits should be excluded as
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`improper and not in compliance with Federal Rules of Evidence. Paper 26 at 7, 24.
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`Petitioner misrepresents Exhibit 1092 (Finjan’s Opening Claim Construction
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`Brief in the district court litigation Finjan, Inc. v. Blue Coat Systems, Inc., No. 13-
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`cv-03999-BLF). In particular, Petitioner relies on Exhibit 1092 in support of its
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`allegation that Finjan “improperly reads a limitation into the claims” with respect
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`to the claim term “suspicious.” Paper 26 at 6. Petitioner cites to Exhibit 1092 in
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`claiming that Finjan “admi[tted] that ‘suspicious’ ‘includes hostile, potentially
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`hostile, undesirable, potentially undesirable, etc.’” Id. at 7. However, Petitioner
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`disregards and fails to reveal that the portions of Exhibit 1092 it cites relate to an
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`entirely different patent than that at issue here – U.S. Patent No. 6,154,844 (“the
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`‘844 Patent”).
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`The ‘844 Patent, which is outside of the scope of this proceeding, discusses
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`“generating by the inspector a first Downloadable security profile that identifies
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`suspicious code in the received Downloadable.” In contrast, the ‘494 Patent claims
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`“deriving security profile data for the Downloadable, including a list of suspicious
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`computer operations.” The construction of the same word found in claims of two
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`5
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`Patent Owner’s Motion to Exclude
`IPR2016-00159 (U.S. Patent No. 8,677,494)
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`different patents is of no import here and prejudicial to Patent Owner. Further, the
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`quoted portion of Exhibit 1092 does not pertain the court’s construction of the ‘844
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`Patent and is only a quote of the ‘844 specification. This further reveals the
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`significant prejudice presented by Petitioner’s reliance on Exhibit 1092 because the
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`statements are mischaracterized. Exhibit 1092 should be excluded as irrelevant
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`because the cited portions relate to a different patent and highly prejudicial in light
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`of Petitioner’s mischaracterization of the document’s contents.
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`Similarly, Petitioner misrepresents the Deposition Transcripts of Dr.
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`Goodrich (Ex. 1098) and Dr. Medvidovic (Ex. 1100) and thus Petitioner’s reliance
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`on both in its Reply should be excluded. In particular, Petitioner cites to both
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`transcripts in alleging that “Finjan has not shown that any licensee’s products
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`actually practice the claims.” Paper 26 at 24 (citing Ex. 1100, Medvidovic Dep. at
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`68:22-73:15, 77:24-78:6; Ex. 1098, Goodrich Dep. at 44:4-45:7, 60:16-61:3).
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`To the contrary, a review of the entirety of both transcripts reveals that both
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`experts discussed the various licensees’ practice of the patent claims. Dr.
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`Goodrich explained that “[Websense, Avast, FSecure, Proofpoint, and Armorize]
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`products do practice the…‘494 patent.” Ex. 1098 at 56:24-57:25. Dr. Medvidovic
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`was asked during his deposition about and discussed his “analysis as to Avast, F-
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`Secure, Proofpoint and Armorize in … Exhibit 7” and how that analysis relates to
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`“Claim 1 of the ‘494 patent.” Ex. 1100 at 77:19-23. Petitioner further
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`6
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`Patent Owner’s Motion to Exclude
`IPR2016-00159 (U.S. Patent No. 8,677,494)
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`misrepresents Dr. Medvidovic’s testimony in asserting that “Swimmer’s focus on
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`actions resulting in infection – i.e., suspicious operations – further motivates tuning
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`the emulator to reduce overhead, as suggested by Swimmer.” Paper No. 26 at 12.
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`However, Dr. Medvidovic neither cites to nor discusses any supposed “actions
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`resulting in infection” under Swimmer or any “motivat[ion] to tun[e] the emulator
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`to reduce overhead” in the cited portions of his transcript. Compare Reply at 12
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`with Ex. 1100 at 34:15-35:13, 45:25-46:14.
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`Thus, the Board should exclude the identified portions of the Reply as
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`irrelevant, having minimal probative value and being outweighed by the prejudice
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`on Patent Owner in light of Petitioner’s misrepresentations. FRE 401, 402, 403.
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`III. The Board Should Exclude Exhibits 1095 and 1089.
`Exhibits 1095 and 1089 should be excluded as belated attempts to remedy
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`Petitioner’s failure to demonstrate Swimmer’s public availability and as irrelevant,
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`conclusory and unreliable.
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`First, Exhibit 1095 should be excluded as the opinions contained therein are
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`conclusory and unreliable. FRE 702. Exhibit 1095 contains declarations from Dr.
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`Sylvia Hall-Ellis on which Petitioner relies as supposed evidence of when
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`Swimmer became publicly available. However, Dr. Hall-Ellis, while purportedly
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`experienced with MARC Records, does not claim to have any actual knowledge as
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`to whether a POSITA would have been able to locate Swimmer, a requirement for
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`7
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`Patent Owner’s Motion to Exclude
`IPR2016-00159 (U.S. Patent No. 8,677,494)
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`establishing a document’s public accessibility. Kyocera Wireless Corp. v. Int’l
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`Trade Com’n, 545 F.3d 1340, 1350 (Fed. Cir. 2008) (to be publicly available prior
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`art, there must be a “satisfactory showing that such document has been
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`disseminated or otherwise made available to the extent that persons interested and
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`ordinarily skilled in the subject matter or art exercising reasonable diligence, can
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`locate it.”)(citation and internal quotations omitted). The mere fact that a MARC
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`Record was created for a document is not evidence that it was actually accessible.
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`In fact, Dr. Hall-Ellis admitted that the date on the MARC record she reviewed did
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`not indicate whether the Swimmer document, as Petitioner relies upon it, was
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`publicly available at the Virus Bulletin International Conference. See Ex. 2046,
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`Hall-Ellis Tr. at 60:17-61:9 (agreeing that the MARC Record “does not reflect any
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`information regarding whether [Swimmer] was available at the Virus Bulletin
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`proceedings”).
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`Moreover, Dr. Hall-Ellis testified that she did not have personal knowledge
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`of the statements made in Symantec Exhibit 1006, attached to Exhibit 1095. FRE
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`602. In particular, Dr. Hall-Ellis admitted she never attended the Virus Bulletin
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`Proceedings, did not view Swimmer on the asserted publication date, and never
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`spoke to any individual who had attended the conference. Ex. 2046, Hall-Ellis Tr.
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`at 39:4-8; 40:2-14; 44:19–25. To the extent Dr. Hall-Ellis relies on Symantec
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`Exhibit 1011 (MARC Record), also included in Exhibit 1095, to support that
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`8
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`Patent Owner’s Motion to Exclude
`IPR2016-00159 (U.S. Patent No. 8,677,494)
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`Swimmer was publicly available, she does not identify any foundation establishing
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`a connection between what is identified within the MARC Record and the
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`Swimmer in this proceeding. Dr. Hall-Ellis merely testified that the MARC record
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`demonstrates that Swimmer was purportedly available as of December 1, 1995
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`because a cataloger at the University of Washington Library created the MARC
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`record. Symantec Ex. 1006, ¶ 19. Accordingly, Dr. Hall-Ellis’s testimony fails to
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`authenticate Swimmer and is unreliable and conclusory as to the date Petitioner
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`contends Swimmer was publicly available. For these reasons, Exhibit 1095 is not
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`relevant and inadmissible under FRE 401, 402, 602 and 901.
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`Second, Mr. Hawes’s supplemental declaration (Exhibit 1089) should
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`similarly be excluded because Petitioner could have submitted it with the Petition
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`and because his opinions are conclusory and unreliable. In particular, Mr. Hawes
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`confirmed that he could have cited the exhibits attached to his supplemental
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`declaration in his earlier declaration submitted with the Petition. Indeed, the
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`information in his supplemental declaration was contained in some of the same
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`resources relied upon in his first declaration. Ex. 2045, Hawes Tr. at 34:9-15. Mr.
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`Hawes also admitted that the list of delegates he relies on only identifies “people
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`that paid, that bought tickets probably up to about a month before” the conference
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`and agreed that there is no indication as to whether any of them attended the
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`conference where Swimmer was allegedly made available. Id. at 22:10-21. His
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`9
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`Patent Owner’s Motion to Exclude
`IPR2016-00159 (U.S. Patent No. 8,677,494)
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`conclusory statements, therefore, are not credible and unreliable. Petitioner is thus
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`impermissibly using its Reply as a vehicle to add in new evidence that could have
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`been included in its Petition.
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`IV. The Board Should Exclude the Hawes Declarations (Exs. 1088, 1089).
`The testimony of Mr. John Hawes should be excluded because his opinions
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`are conclusory and unreliable. FRE 602, 702.
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`First, Petitioner relies on Mr. Hawes’ first declaration (Ex. 1088) as
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`evidence of when Swimmer (Ex. 1006) purportedly became publicly available.
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`Mr. Hawes lacks any personal knowledge for the representations made in his
`
`declaration regarding the alleged public availability of Swimmer at a conference in
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`1995. Mr. Hawes states that “Swimmer was published by Virus Bulletin to all 163
`
`attendees of the [] Conference…in September 1995,” but testified that he did not
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`begin working at Virus Bulletin until 2005 and did not attend any Virus Bulletin
`
`Conference before 2005. Ex. 1088 at ¶3; Ex. 2014 at 6:8-12; 20:12-24. Further,
`
`Mr. Hawes admitted that his statement that Swimmer was published to conference
`
`attendees was based on hearsay as he did not attend the conference nor did he
`
`include the alleged list of attendees to his first declaration. Ex. 2014 at 23:10-
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`24:24; 26:10-12. Thus, Mr. Hawes’ testimony fails to authenticate Exhibit 1006
`
`and is unreliable and conclusory regarding Swimmer’s alleged public availability.
`
`Second, Mr. Hawes’ supplemental declaration (Exhibit 1089), submitted
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`10
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`Patent Owner’s Motion to Exclude
`IPR2016-00159 (U.S. Patent No. 8,677,494)
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`with Petitioner’s Reply, should be excluded. As outlined supra, Exhibit 1089
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`should be excluded as untimely and not proper Reply material.
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`Third, both Hawes declarations should be excluded because his opinions are
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`conclusory, unreliable and lack foundation. FRE 702, 602. Mr. Hawes does not
`
`disclose underlying facts in support of his opinions. Instead, he merely states in
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`his first declaration, that “Swimmer was published by Virus Bulletin to all 163
`
`attendees of the Virus Bulletin International Conference” but fails to explain how
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`he knew this information, what specific evidence, if any, he relied on, or any of the
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`details surrounding how the document was purportedly available to 163 attendees.
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`Exhibit 1088 at ¶5.
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`Furthermore, it was only after Patent Owner’s deposition of Mr. Hawes that
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`Mr. Hawes provided, through his supplemental declaration, any documentation
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`pertaining to the alleged attendees of the conference where Swimmer was
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`purportedly available. Ex. 2045, Hawes Tr. at 20:6-19. He even testified that he
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`had no confirmation or personal knowledge that the individuals actually attended
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`the conference or even received Swimmer, and he acknowledged that the list of
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`attendees that he subsequently obtained was produced prior to the dates of the
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`alleged conference. Id. at 22:10-21.
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`Thus, both of Mr. Hawes’ declarations should be excluded for lack of
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`personal knowledge. FRE 602 (“A witness may testify to a matter only if evidence
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`11
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`Patent Owner’s Motion to Exclude
`IPR2016-00159 (U.S. Patent No. 8,677,494)
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`is introduced sufficient to support a finding that the witness has personal
`
`knowledge of the matter.”); see also Kyocera Wireless, 545 F.3d at 1350. For
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`these reasons, Exhibits 1088 and 1089 should be excluded. FRE 401, 402, 602,
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`901.
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`V. The Board Should Exclude the Swimmer Document (Exhibit 1006).
`The Board should exclude the Swimmer Document (Exhibit 1006) as
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`unauthenticated, hearsay and irrelevant.
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`First, Petitioner has failed to authenticate Swimmer as a document available
`
`to the public in 1995. In the Petition and as outlined above, Petitioner offers no
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`evidence of Swimmer’s publication date beyond Mr. Hawes’ first declaration
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`which is itself inadmissible and based entirely on hearsay. FRE 901 (“[T]he
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`proponent must produce evidence sufficient to support a finding that the item is
`
`what the proponent claims it is.”).
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`Second, the supplemental declarations Petitioner submitted in its Reply to
`
`attempt to establish Swimmer’s public availability should be excluded because, as
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`discussed supra they (1) are a belated attempt to remedy the deficiencies in the
`
`Petition and Petitioner could have included them in the Petition and (2) are
`
`irrelevant and fail to authenticate Swimmer. FRE 401, 402, 602, 901.
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`Third, Swimmer should be excluded as irrelevant because Petitioner fails to
`
`establish that it was available as prior art. Evidence is relevant if it has any
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`12
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`Patent Owner’s Motion to Exclude
`IPR2016-00159 (U.S. Patent No. 8,677,494)
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`tendency to make a fact more or less probable than it would be without the
`
`evidence and the fact is of consequence in determining the action. FRE 401. A
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`Petitioner can challenge the validity of a patent based only on prior art patents and
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`printed publications. 35 U.S.C. § 311(b). It is Petitioner’s burden to establish that
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`a document is a “printed publication” by demonstrating public accessibility to
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`persons concerned with the prior art to which the document relates. ServiceNow,
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`Inc. v. Hewlett-Packard Co., IPR2015-00716, Paper 13 at 8, 15–17 (P.T.A.B. Aug.
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`26, 2015) (denying institution because Petitioner did not meet burden of
`
`establishing a reference as prior art); see also In re Wyer, 655 F.2d 221, 227
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`(C.C.P.A. 1981). Here, Petitioner has not established the relevance of Swimmer
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`because it has not shown Swimmer is available as prior art.
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`Thus, for the foregoing reasons, Swimmer is unauthenticated and is not prior
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`art. Accordingly, Swimmer is not relevant in determining the ‘494 Patent’s
`
`validity because Petitioner cannot establish its availability as prior art. For these
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`reasons, the Board should exclude Swimmer.
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`VI. The Board Should Exclude Martin (Exhibit 1047).
`The Board should exclude Martin because Petitioner has not authenticated
`
`Martin and thus is irrelevant. Petitioner alleges Martin is prior art that was
`
`available by 1997. As its only evidence that Martin was prior art, Petitioner offers
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`Martin itself and a conclusory statement from Dr. Aviel Rubin. Neither is
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`13
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`Patent Owner’s Motion to Exclude
`IPR2016-00159 (U.S. Patent No. 8,677,494)
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`sufficient to authenticate Martin as prior art.
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`First, Petitioner relies on Exhibit 1047 to support its assertion that Martin
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`was publicly available. Petitioner states that Exhibit 1047, Proceedings of the
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`1997 Symposium on Network and Distributed Systems Security, shows that Martin
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`was “distributed to those who attend the symposium, which was held in San Diego,
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`California on February 10-11, 1997.” Paper 2 at 7. Petitioner relies on the 1997
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`date reflected on page 1 of Exhibit 1047 to support this statement but the mere
`
`appearance of a date on a document is insufficient to establish the date by when the
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`document was publicly available. TRW Automotive U.S. LLC v. Magna Elecs. Inc.,
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`IPR2014-01347, Paper 25 at 5–12 (Jan. 6, 2016) (granting motion to exclude prior
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`art for lack of authentication); Hilgraeve, Inc. v. Symantec Corp., 271 F. Supp. 2d
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`964, 975 (E.D. Mich. 2003) (“A date imprinted on a document, without more, does
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`not prove by clear and convincing evidence [when it] was known or used by others
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`in this country….”). Petitioner’s reliance on the 1997 date is further belied by a
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`stamped date on Exhibit 1047 which reads “JUNE 05 1998.” Petitioner may not
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`rely on the 1997 date alone on Exhibit 1047 because, in light of the additional date
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`stamp, the 1997 date is simply hearsay – that is, Petitioner is relying upon it to
`
`prove the truth of the contention that Martin was publicly accessible as a printed
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`publication in February 1997. Hilgraeve, 271 F. Supp. 2d at 974 and n.4 (“[T]he
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`dates imprinted on [] documents are hearsay when offered to prove the truth of the
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`14
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`Patent Owner’s Motion to Exclude
`IPR2016-00159 (U.S. Patent No. 8,677,494)
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`matter asserted…that SAM 1.3 was accessible to the public as of the date set forth
`
`on the documents.”) (citing FRE 801(c)).
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`Second, Petitioner’s reliance on Dr. Aviel Rubin’s Declaration (Exhibit
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`1002) to establish that the Exhibit 1047 was allegedly distributed in February 1997
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`must also be excluded. While Dr. Rubin states that he “still ha[s] [his] personal
`
`copy of the proceedings that [he] received at the 1997 NDSS conference,” he does
`
`not provide a copy of the proceedings to his declaration nor does he claim that
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`Exhibit 1047 is a true and correct copy of the proceedings booklet that allegedly
`
`contained Martin and was distributed at the conference. Exhibit 1002 at ¶ 58.6
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`Thus, for the foregoing reasons, Martin should be excluded because it is
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`unauthenticated and not prior art.
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`VII. Conclusion
`For the foregoing reasons, the Board should grant Patent Owner’s Motion to
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`Exclude.
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`
`
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`6 Petitioner’s belated attempt, through Dr. Rubin’s supplemental declaration (Ex.
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`1090) in its Reply, to remedy the deficiencies in Dr. Rubin’s initial declaration,
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`stands without merit. As discussed above, such untimely arguments and evidence
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`should be excluded as Petitioner could have included them in the Petition and was
`
`aware of the requirements for establishing Martin’s public availability. Supra §I.
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`15
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`
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`Dated: January 9, 2017
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`Patent Owner’s Motion to Exclude
`IPR2016-00159 (U.S. Patent No. 8,677,494)
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`Respectfully submitted,
`
`
`
`
`
`/James Hannah/
`
`James Hannah (Reg. No. 56,369)
`jhannah@kramerlevin.com
`Kramer Levin Naftalis & Frankel LLP
`990 Marsh Road
`Menlo Park, CA 94025
`Tel: 650.752.1700 Fax: 650.752.1800
`
`
`
`Jeffrey Price (Reg. No. 69,141)
`jprice@kramerlevin.com
`Kramer Levin Naftalis & Frankel LLP
`1177 Avenue of the Americas
`New York, NY 10036
`Tel: 212.715.7502 Fax: 212.715.8302
`
` (Case No. IPR2016-00159) Attorneys for Patent Owner
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`16
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`Patent Owner’s Motion to Exclude
`IPR2016-00159 (U.S. Patent No. 8,677,494)
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`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that a true and
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`correct copy of the foregoing Patent Owner’s Motion to Exclude was served on
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`January 9, 2017, by filing this document through the PTAB E2E system as well as
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`delivering via electronic mail upon the following counsel of record for Petitioner
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`and Joinder Petitioner:
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`Orion Armon
`Brian Eutermoser
`COOLEY LLP
`380 Interlocken Crescent, Suite 900
`Broomfield, Colorado 80021
`oarmon@cooley.com
`beutermoser@cooley.com
`zpatdcdocketing@cooley.com
`
`Max Colice
`COOLEY LLP
`500 Boylston Street, 14th Floor
`Boston, Massachusetts 02116-3736
`mcolice@cooley.com
`zpatdcdocketing@cooley.com
`
`Jennifer Volk-Fortier
`COOLEY LLP
`One Freedom Square
`Reston Town Center
`11951 Freedom Drive
`Reston, Virginia 2019
`jvolkfortier@cooley.com
`zpatdcdocketing@cooley.com
`
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`17
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`Patent Owner’s Motion to Exclude
`IPR2016-00159 (U.S. Patent No. 8,677,494)
`
`Michael T. Rosato
`Andrew. S. Brown
`WILSON SONSINI GOODRICH & ROSATI
`701 Fifth Avenue, Suite 5100
`Seattle, WA 98104-7036
`mrosato@wsgr.com
`asbrown@wsgr.com
`
`Neil N. Desai
`WILSON SONSINI GOODRICH & ROSATI
`633 West Fifth Street, 15th Floor
`Los Angeles, CA 90071-2027
`ndesai@wsgr.com
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`
` /James Hannah/
`James Hannah (Reg. No. 56,369)
`Kramer Levin Naftalis & Frankel LLP
`990 Marsh Road,
`Menlo Park, CA 94025
`(650) 752-1700
`
`18
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