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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`Palo Alto Networks, Inc. and
`Blue Coat Systems, Inc.,
`Petitioners
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`v.
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`Finjan, Inc.
`Patent Owner
`
`Case IPR2016-001591
`Patent No. 8,677,494
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`
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`PETITIONER’S MOTION TO EXCLUDE
`EVIDENCE UNDER 37 C.F.R. § 42.64(c)
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`1 Case IPR2016-01174 has been joined with the instant proceeding.
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`Petitioner’s Motion to Exclude
`IPR2016-00159
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`Pursuant to 37 C.F.R. § 42.64(c), Petitioner moves to exclude paragraphs
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`159-66 of Dr. Medvidovic’s Declaration (Ex. 2011) and exhibits 2016, 2020, 2022,
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`2024, and 2025 submitted by Patent Owner. Petitioner objected to these exhibits on
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`Aug. 19, 2016. (Paper 18.)
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`I.
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`PARAGRAPHS 159-66 OF THE MEDVIDOVIC DECLARATION (EX. 2011)
`SHOULD BE EXCLUDED
`Dr. Medvidovic’s opinions on licensing (paragraphs 159-60) and a purported
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`nexus with the challenged claims (paragraphs 161-66) should be struck because
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`they are outside the scope of Dr. Medvidovic’s technical expertise and are not
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`based on reliable facts or methods. See Fed. R. Evid. 702, 703.
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`Dr. Medvidovic performed no independent investigation or analysis
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`concerning any Finjan licenses. (Ex. 2011 at ¶¶ 159-60; Ex. 1100, Medvidovic
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`Dep. at 65:8-66:17.) In fact, Dr. Medvidovic (1) did not cite or attach any Finjan
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`licenses as exhibits; (2) did not identify the amount paid under any Finjan license;
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`(3) did not identify the number of patents licensed by Finjan to any of its licensees
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`(3) merely relied on attorney-relayed information; and (4) admitted that additional
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`analysis would be required to prove infringement by the licensees. (Ex. 1100,
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`Medvidovic Dep. at 65:8-66:24, 68:18-70:1, 71:9-73:8.) Expert testimony based
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`only on attorney-relayed facts is unreliable. See Apple, Inc. v. Ameranth, Inc.,
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`CBM2015-00080, Paper 44, at *38-39 (PTAB Aug. 26, 2016) (finding alleged
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`Petitioner’s Motion to Exclude
`IPR2016-00159
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`evidence of nexus to be merely attorney argument where counsel provided the
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`annotated evidence and the witness had merely relied on the attorney provided
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`evidence to provide his opinion). Because Dr. Medvidovic identifies no other basis
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`for his opinions concerning Finjan licenses, paragraphs 159-60 should be excluded
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`on this basis alone. See Fed. R. Evid. 702, 703.
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`Dr. Medvidovic’s licensing opinions are also deficient because they provide
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`neither adequate evidence nor sufficient analysis to show nexus. See Apple,
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`CBM2015-00080, Paper 44 at *36-37. The mere existence of a license is
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`insufficient to establish nexus. See, e.g., In re Antor Media Corp., 689 F.3d 1282,
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`1293-94 (Fed. Cir. 2012). Dr. Medvidovic admitted that at least some if not all of
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`Finjan’s licenses are portfolio licenses that cover multiple patents. (Ex. 1100,
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`Medvidovic Dep. at 66:2-17.) Furthermore, Dr. Medvidovic admitted that he
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`performed no analysis of what portion of any license payment, if any, was
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`allocable to the ’494 patent. (Id. at 65:17-20.) Accordingly, Dr. Medvidovic’s
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`licensing opinions are unreliable and unhelpful to the Board. See Fed. R. Evid.
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`702, 703.
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`Dr. Medvidovic’s opinions concerning a purported nexus between the
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`challenged claims and Finjan’s alleged evidence of secondary considerations
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`(paragraphs 161-66) should be excluded for similar reasons. See Graftech Int’l
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`Holdings, Inc. v. Laird Techs, Inc., 652 Fed. Appx. 973, 978-79 (Fed. Cir. June 17,
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`Petitioner’s Motion to Exclude
`IPR2016-00159
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`2016) (nexus must exist between the claimed invention and the commercial
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`success). Dr. Medvidovic also did not analyze whether the allegedly infringing
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`products contained non-patented features, or what portion, if any, of the accused
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`infringers’ revenues were attributable to the claimed inventions. (Ex. 1100,
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`Medvidovic Dep. at 75:5-16, 65:17-20, 81:23-84:19.) Similarly, Dr. Medvidovic
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`did not provide any market share analysis for purposes of his opinions. Universal
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`Remote Control, Inc. v. Universal Elecs. Inc., IPR2014-01106, Paper 49 at *25
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`(PTAB Dec. 15, 2015) (finding dollar amounts of sales did not establish
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`commercial success where patentee did not discuss or present market share
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`information); In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996) (finding insufficient
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`information to determine commercial success where patentee indicated only the
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`number of units sold without any indication as to whether it represented a
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`substantial quantity in the market); see Ex. 2011 at ¶¶ 161-66.) Without such
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`evidence, paragraphs 161-66 of the Medvidovic Declaration are unreliable and
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`should be excluded. See Fed. R. Evid. 702, 703.
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`II. THE DAVIDSON TRANSCRIPT (EX. 2016) SHOULD BE EXCLUDED
`The transcript for the deposition of Jack Davidson in Symantec Corp. v.
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`Finjan, Inc., Case No. IPR2015-01892, should be excluded because it is
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`inadmissible hearsay. (See Ex. 2016; Fed. R. Evid. 802.)
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`Exhibit 2016 contains out-of-court statements offered for the truth of the
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`Petitioner’s Motion to Exclude
`IPR2016-00159
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`matter asserted. See Fed. R. Evid. 801. For example, Finjan relies on Dr.
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`Davidson’s characterizations of Swimmer to support Finjan’s interpretations of
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`Swimmer. (Paper 17 at 22-23, 33-34, 40.) Patent Owner did not argue that a
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`hearsay exception applies. Fed. R. Evid. 802. Patent Owner may try to argue that
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`the Davidson transcript is a public record under Federal Rule of Evidence 803(8).
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`But a public office record is admissible only if it sets out office activities, a matter
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`observed while under a legal duty to report, or fact findings from an authorized
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`investigation. Fed. R. Evid. 803(8). A deposition transcript does not “set out”
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`office activities or matters observed under a duty to report and are not fact findings
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`from an authorized investigation.
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`III. THE WIKIPEDIA DEFINITION OF “LOGFILE” (EX. 2020) SHOULD BE
`EXCLUDED
`The Wikipedia entry that purportedly displays an explanation of “logfile”
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`(Ex. 2020) should be excluded because it is irrelevant hearsay with no applicable
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`hearsay exception and because it lacks authentication. Patent Owner relies on
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`Exhibit 2020 in its Response and in the Declaration of Dr. Medvidovic. (Paper 17
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`at 30-31; Ex. 2011 at ¶¶ 62, 107, 121.)
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`Exhibit 2020 is a Wikipedia page for “logfile,” which Patent Owner relies on
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`to provide the definition of “logfile” as understood by a person of ordinary skill in
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`1996-1997. (Paper 17 at 31; Ex. 2011 at ¶¶ 62, 107, 121.) Evidence is relevant if
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`Petitioner’s Motion to Exclude
`IPR2016-00159
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`“it has a tendency to make a fact more or less probable than it would be without the
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`evidence.” Fed. R. Evid. 401. Exhibit 2020 bears no publication date, was retrieved
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`on June 21, 2016, and was last modified on January 18, 2016, nearly 20 years after
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`the alleged priority date of the challenged patent claims. (Ex. 2020 at 1, 3.) Exhibit
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`2020 is not probative of how “logfile” would have been understood by a person of
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`ordinary skill in the art in 1996-1997 and should be excluded. Fed. R. Evid. 401-
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`402.
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`Exhibit 2020 is also an out-of-court statement on a web page offered for the
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`truth of the matter asserted. Patent Owner quotes from Exhibit 2020 to demonstrate
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`a log file’s alleged relationship with “an audit trail.” (Paper 17 at 30-31; Ex. 2011
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`at ¶¶ 62, 107, 121.) Exhibit 2020 as used by the Patent Owner is inadmissible
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`hearsay, and Patent Owner did not argue that a hearsay exception applies. Fed. R.
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`Evid. 802; see Sony Corp. v. Yissum Research and Development Co. of the Hebrew
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`Univ. of Jerusalem, Case IPR2013-00219, Paper 16, at 41-42, 45-48, 51-52 (PTAB
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`Sept. 22, 2014) (excluding portions of a Wikipedia article and parts of expert
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`testimony based on the Wikipedia article on hearsay and authentication grounds).
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`The most obvious hearsay exception that might apply here is the learned treatise
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`exception, which requires that the publication be established as a reliable authority
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`either through expert testimony or judicial notice. Fed. R. Evid. 803(18). Patent
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`Owner has not shown that the Wikipedia page of Exhibit 2020 is reliable or
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`IPR2016-00159
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`technically accurate, or that its contents accurately reflect the state of the art in
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`1996-1997 (as opposed to 2016), so the learned treatise exception does not apply.
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`Patent Owner also has not produced evidence showing who authored Exhibit
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`2020 or that Exhibit 2020 is what it purports to be. Nor has Patent Owner
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`presented evidence that Dr. Medvidovic, or any other witness, had first-hand
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`knowledge of Exhibit 2020. Patent Owner failed to authenticate Exhibit 2020. Fed.
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`R. Evid. 901; see Sony Corp., Case IPR2013-00219, Paper 16, at 44 n.16, 45.
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`Exhibit 2020 should be excluded.
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`IV. THE TECHTERMS.COM DEFINITION OF “LOGFILE” (EX. 2022) SHOULD BE
`EXCLUDED
`Techterms.com’s purported definition of logfile should be excluded because
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`it is irrelevant hearsay with no applicable hearsay exception, and because it lacks
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`authentication. Patent Owner relies on Exhibit 2022 in its Response and in Dr.
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`Medvidovic’s Declaration. (Paper 17 at 30-31; Ex. 2011 at ¶ 112.)
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`Exhibit 2022 is a techterms.com definition relied on by Patent Owner to
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`show the definition of “logfile” as it allegedly relates to a database and how
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`“logfile” would have been understood by a person of ordinary skill in 1996-1997.
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`(Paper 17 at 30-31; Ex. 2011 at ¶ 112.) Evidence is relevant if “it has a tendency to
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`make a fact more or less probable than it would be without the evidence.” Fed. R.
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`Evid. 401. Exhibit 2022 bears a 2016 copyright date and was last updated April 14,
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`IPR2016-00159
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`2010, nearly 15 years after the alleged priority date of the challenged patent. (Ex.
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`2020 at 1, 3.) Accordingly, Exhibit 2022 is not probative of how “logfile” or audit
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`trail would have been understood by a person of ordinary skill in the art in 1996-
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`1997 and should be excluded. Fed. R. Evid. 401-402; Ex. 2011 at ¶ 35 (“Counsel
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`has informed me, and I understand, that the [POSA] is a hypothetical person who
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`is presumed to be familiar with the relevant scientific field and its literature at the
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`time of the invention.”).)
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`Exhibit 2022 is also an out-of-court statement offered for the truth of the
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`matter asserted. Patent Owner cites Exhibit 2022 to support its description of a log
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`file’s structure, particularly as it relates to a database. (Paper 17 at 30-31; Ex. 2011
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`at ¶ 112.) Exhibit 2022 as used by the Patent Owner is inadmissible hearsay, and
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`Patent Owner did not argue that a hearsay exception applies. Fed. R. Evid. 802.
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`The most obvious hearsay exception that might apply here is the learned treatise
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`exception, which requires that the publication be established as a reliable authority
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`either through expert testimony or judicial notice. Fed. R. Evid. 803(18). Patent
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`Owner has not established that techterms.com is reliable or technically accurate or
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`shown that the techterms.com information reflects the knowledge of a person
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`skilled in the art in 1996-1997, so the learned treatise exception does not apply.
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`Patent Owner also has not produced evidence that Exhibit 2022 is what it
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`purports to be. Nor has Patent Owner presented any evidence that Dr. Medvidovic,
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`Petitioner’s Motion to Exclude
`IPR2016-00159
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`or any other witness, had first-hand knowledge of Exhibit 2022. Patent Owner
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`failed to authenticate Exhibit 2022. Fed. R. Evid. 901. Exhibit 2022 should be
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`excluded.
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`V. FINJAN, INC. V. WEBSENSE, INC. MATERIALS (EXS. 2024 & 2025) ARE
`INADMISSIBLE HEARSAY, IRRELEVANT, AND POTENTIALLY CONFUSING
`Dr. Medvidovic’s declaration in support of Finjan’s opening claim
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`construction brief (Ex. 2024) and Finjan’s infringement contentions (Ex. 2025),
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`filed in Finjan, Inc. v. Websense, Inc., Case No. 14-cv-01353, should be excluded
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`under Federal Rules of Evidence 802, 402, and 403.
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`First, these exhibits contain out-of-court statements offered for the truth of
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`the matter asserted. See Fed. R. Evid. 801. For example, Finjan relies on a
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`declaration submitted with its claim construction briefing (Ex. 2024) to support Dr.
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`Medvidovic’s construction of “database.” (Ex. 2011 at ¶ 125.) Finjan also offers a
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`claim chart drafted by its attorneys (Ex. 2025) to support its assertion and Dr.
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`Medvidovic’s assertion that Websense’s products embody the ’494 patent. (Paper
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`17 at 57; Ex. 2011 at ¶ 161.)
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`Patent Owner did not argue that a hearsay exception applies. Fed. R. Evid.
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`802. Patent Owner may try to argue that the claim chart and briefing constitute
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`public records under Federal Rule of Evidence 803(8). But a public office record
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`is admissible only if it sets out office activities, a matter observed while under a
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`Petitioner’s Motion to Exclude
`IPR2016-00159
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`legal duty to report, or fact findings from an authorized investigation. Fed. R. Evid.
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`803(8). A claim chart and declaration in support of claim construction briefing do
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`not “set out” office activities or matters observed under a duty to report and are not
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`fact findings from an authorized investigation. At most, they are disputed evidence
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`with inadmissible hearsay statements by parties not involved in this proceeding.
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`See Fed. R. Evid. 803(8).
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`Exhibits 2024 and 2025 should also be excluded because they are irrelevant,
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`unfairly prejudicial, and potentially confusing. See Fed. R. Evid. 401, 402. In
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`particular, Dr. Medvidovic’s district court declaration includes opinions prepared
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`under a different claim construction standard than that which will be applied in this
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`case. (Ex. 2024.) And Finjan’s made-for-litigation infringement contentions do not
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`prove infringement and do not establish nexus, and are therefore not probative.
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`(Ex. 2025; See Apple, Inc. v. Ameranth, Inc., CBM2015-00080, Paper 44 at *36-37
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`(PTAB Aug. 26, 2016).) Accordingly, Exhibits 2024 and 2025 should be excluded.
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`VI. CONCLUSION
`For the reasons stated above, paragraphs 159-66 of Dr. Medvidovic’s
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`Declaration (Ex. 2011) and Exhibits 2016, 2020, 2022, 2024, and 2025 should be
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`excluded.
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`Petitioner’s Motion to Exclude
`IPR2016-00159
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`Dated: January 9, 2017
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`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Ave., NW, Suite 700
`Washington, DC 20004
`Tel: (703) 456-8000
`Fax: (202) 842-7899
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`Respectfully submitted,
`COOLEY LLP
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`/Orion Armon/
`Orion Armon
`Reg. No. 65,421
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`By:
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`Petitioner’s Motion to Exclude
`IPR2016-00159
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`CERTIFICATE OF COMPLIANCE WITH WORD COUNT
`Pursuant to 37 C.F.R. § 42.24(d), I certify that this Motion complies with the
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`type-volume limits of 37 C.F.R. § 42.24(a)(1)(v) because it contains 9 pages,
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`excluding the parts that are exempted by 37 C.F.R. § 42.24(a).
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`Respectfully submitted,
`COOLEY LLP
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`By:
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`/Orion Armon/
`Orion Armon
`Reg. No. 65,421
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`Dated: January 9, 2017
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`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Ave., NW, Suite 700
`Washington, DC 20004
`Tel: (703) 456-8000
`Fax: (202) 842-7899
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`Petitioner’s Motion to Exclude
`IPR2016-00159
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on January 9,
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`2017, a complete and entire copy of this PETITIONER’S MOTION TO
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`EXCLUDE was served by filing this document through the E2E System and via
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`electronic mail upon the following counsel of record:
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`Jeffrey H. Price
`KRAMER LEVIN NAFTALIS &
`FRANKEL LLP
`1177 Avenue of the Americas
`New York, NY 10036
`Phone: (212) 715-7502
`Fax: (212) 715-8302
`jprice@kramerlevin.com
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`Michael T. Rosato
`Andrew S. Brown
`WILSON SONSINI GOODRICH
` & ROSATI
`701 Fifth Avenue, Suite 5100
`Seattle, WA 98104-7036
`Phone: (206) 883-2925
`Fax: (206) 883-2699
`mrosato@wsgr.com
`asbrown@wsgr.com
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`By:
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`/Orion Armon/
`Orion Armon
`Reg. No. 65,421
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`James Hannah
`KRAMER LEVIN NAFTALIS &
`FRANKEL LLP
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`990 Marsh Road
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`Menlo Park, CA 94025
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`Phone: (650) 752-1712
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`Fax: (650) 752-1812
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`jhannah@kramerlevin.com
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`Michael Kim
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`Finjan, Inc.
`2000 University Ave., Ste. 600
`E. Palo Alto, CA 94303
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`Phone: 650.397.9567
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`mkim@finjan.com
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`USPTO Reg. No. 40,450