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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`__________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`___________________
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`PALO ALTO NETWORKS, INC. and
`BLUE COAT SYSTEMS, INC.,
`Petitioner,
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`v.
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`FINJAN, INC.,
`Patent Owner.
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`____________________
`
`Case IPR2016-001591
`U.S. Patent No. 8,677,494
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`__________________________________________________________
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`PATENT OWNER’S OPPOSITION TO PETITIONER’S MOTION TO
`EXCLUDE
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`1 Case IPR2016-01174 has been joined with this proceeding.
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`
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`Patent Owner’s Opposition to Motion to Exclude
`IPR2016-00159 (U.S. Patent No. 8,677,494)
`Patent Owner Finjan Inc. (“Patent Owner”) opposes Petitioner Palo Alto
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`Networks, Inc. and Blue Coat Systems, Inc.’s (“Petitioner”) Motion to Exclude
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`(Paper 31, “Motion”). The Board should deny Petitioner’s request to exclude
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`paragraph 159-166 of Dr. Medvidovic’s Declaration (Ex. 2011) and Exhibits 2016,
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`2020, 2022, 2024 and 2025 because Petitioner has failed to meet its “burden of
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`proof to establish that it is entitled to the requested relief.” 37 C.F.R. § 42.20(c).
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`Patent Owner has submitted two declarations from its experts, Drs. Medvidovic
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`and Goodrich, which establish the relevance of these exhibits. Petitioner’s
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`objections as to hearsay are inapposite and, even if correct, an expert may rely on
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`hearsay materials. Finally, Petitioner waived its remaining objections by failing to
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`timely assert them. Accordingly, the Board should deny Petitioner’s Motion.
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`I.
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`Paragraphs 159-166 of the Medvidovic Declaration Are Admissible.
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`Paragraphs 159-166 of Dr. Medvidovic’s Declaration (Exhibit 2011) are
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`admissible. These paragraphs relate to Dr. Medvidovic’s opinion of the secondary
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`consideration of commercial success of the ‘494 Patent. Dr. Medvidovic’s
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`Declaration provides (1) an independent analysis for his opinion concerning
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`licensing and (2) overwhelming evidence and ample analysis to establish nexus
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`between the license agreements and the claims at issue. These paragraphs are,
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`thus, admissible under Federal Rules of Evidence 702 and 703.
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`First, as a threshold issue, Petitioner’s arguments relating to paragraphs 161-
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`1
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`Patent Owner’s Opposition to Motion to Exclude
`IPR2016-00159 (U.S. Patent No. 8,677,494)
`166 must be rejected outright because Petitioner waived these objections by failing
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`to timely assert them. Petitioner’s Objections only identified 159-160 as subject to
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`challenge. See Paper 18 at 2-3; 37 C.F.R. § 42.64; Valeo N. Am., Inc. v. Magna
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`Elecs., Inc., IPR2014-01204, Paper 52 at 12 (P.T.A.B. Jan. 25, 2016)(“Because
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`Patent Owner did not timely object to [the subject exhibits] after they became
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`evidence, [it] did not preserve its right to move to exclude [them].”).
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`Petitioner also waived its objections concerning nexus because it failed to
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`object to Dr. Medvidovic’s declaration on this basis in its Objections. Paper 18 at
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`2-3. When any objections to evidence are not filed within the required time period,
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`they are waived and cannot be relied upon in a motion to exclude. 37 C.F.R. §
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`42.64; see also Valeo, IPR2014-01204, Paper 52 at 8-22. To the extent Petitioner
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`attempts to point to a general, unspecified objection to the declaration, Petitioner
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`failed to put Patent Owner on notice of its objections which is improper and a basis
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`to deny its Motion outright. See, e.g., Int’l Bus. Machines Corp. v. Intellectual
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`Ventures II LLC, IPR2015-00092, Paper 44 at 55 (P.T.A.B. Apr. 25, 2016)
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`(rejecting an argument to exclude a reference as irrelevant because the “objection
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`[in the motion to exclude] is not the same” as the initial relevance objection and,
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`therefore, had been waived).
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`Second, Petitioner’s objections fail on the merits. Contrary to Petitioner’s
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`position, Dr. Medvidovic performed an independent analysis concerning the Finjan
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`2
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`Patent Owner’s Opposition to Motion to Exclude
`IPR2016-00159 (U.S. Patent No. 8,677,494)
`licenses. Dr. Medvidovic specifically explains how he “reviewed Finjan’s
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`Infringement Contentions in Finjan v. Websense, Inc.” and “created infringement
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`charts of the ‘494 Patent for Avast, F-Secure, Proofpoint and Armorize’s products”
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`in discussing and developing his opinions regarding commercial success and
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`Finjan’s various licenses. Ex. 2011 at ¶¶ 161-162. Moreover, he also reviewed
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`and relied on publicly available information, regarding the third parties and their
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`products, analyzed in the charts. Id.; see also Ex. 1100 at 73:24-74:1, 78:8-10. Dr.
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`Medvidovic’s opinion that there is a nexus between the claimed invention and
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`commercial success is grounded in his infringement analysis, and his testimony is
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`not “based only on attorney-relayed facts.” Motion at 1.
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`Petitioner is incorrect to claim that Dr. Medvidovic is required, in his
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`secondary consideration analysis, to “prove infringement.” Id. This is contrary to
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`the law as the “legal inferences or subtests [of secondary considerations] do focus
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`attention on economic and motivational rather than technical issues.” Graham v.
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`John Deere Co. of Kansas City, 383 U.S. 1, 35-36 (1966) (emphasis added).
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`Nonetheless, as Dr. Medvidovic noted, “confidential information would be
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`required to provide a complete proof of infringement” but his “infringement charts
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`. . . using publicly available information” were the basis for his opinion that the
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`various licensees “utilize[] the inventions disclosed in the ‘494 Patent.” Ex. 1100
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`at 78:4-6 (emphasis added); Ex. 2001 at ¶¶ 162-164. Thus, Dr. Medvidovic
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`3
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`Patent Owner’s Opposition to Motion to Exclude
`IPR2016-00159 (U.S. Patent No. 8,677,494)
`performed an independent investigation and analysis and provided the facts
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`underlying his opinions regarding the same and therefore, Petitioner’s argument
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`must be rejected.
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`Third, Petitioner’s premise—that Dr. Medvidovic failed to provide adequate
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`evidence and analysis regarding nexus—is incorrect. Petitioner’s assertion that Dr.
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`Medvidovic’s licensing opinions are “deficient” is baseless in light of Dr.
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`Medvidovic’s reliance on substantial third party information, including factual
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`information regarding Websense, Avast, F-Secure, Proofpoint and Armorize
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`products. Dr. Medvidovic relied on this information, directly from each of the
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`licensee’s public information, in his analysis of the benefits of the patented
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`technology to each of the third party’s products and their respective revenues. Ex.
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`2001 at ¶¶ 161-166. Thus, again, Petitioner’s argument must be denied.
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`Finally, to the extent Petitioner disagrees with the foregoing, it only
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`demonstrates that Petitioner’s challenges are improperly directed to the weight of
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`Dr. Medvidovic’s opinions and thus are not appropriate grounds to challenge the
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`admissibility of his opinions in a Motion to Exclude. See Valeo N. Am., Inc. v.
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`Magna Elecs., IPR2014-00220, Paper 59 at 10-11 (P.T.A.B. May 28, 2015); 77
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`Fed. Reg. 48,756, 48,767 (Aug. 14, 2012) (“A motion to exclude…may not be
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`used to challenge the sufficiency of the evidence to prove a particular fact.”). This
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`is exemplified by Petitioner’s statements in the Motion regarding “Dr.
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`4
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`Patent Owner’s Opposition to Motion to Exclude
`IPR2016-00159 (U.S. Patent No. 8,677,494)
`Medvidovic’s licensing opinions [as being] deficient” and its baseless allegations
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`surrounding the adequacy of the evidence or sufficiency of Dr. Mevidovic’s
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`analysis. Motion at 2. As a “non-jury tribunal with administrative expertise, [the
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`Board] is well positioned to determine and assign appropriate weight and/or
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`relevance to evidence presented.” HTC Corp. v. NFC Tech., LLC, IPR2014-
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`01198, Paper 56 at 47 (P.T.A.B. Feb. 3, 2016)(citing Gnosis S.p.A. v. S. Ala. Med.
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`Sci. Found., IPR2013- 00118, slip op. at 43 (P.T.A.B. June 20, 2014) (Paper 64)).
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`Because Petitioner waived its objections and fails to identify any basis for
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`exclusion, the Board should deny Petitioner’s request.
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`II. Exhibit 2016 (Davidson Transcript) is Admissible.
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`The Davidson Transcript (Exhibit 2016) is admissible because it is not
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`hearsay and is relevant to the instant proceedings. The Davidson Transcript
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`provides the deposition testimony of the petitioner’s expert in a co-pending IPR for
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`the ‘494 Patent – IPR2015-01892. Finjan relies on it here to further demonstrate
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`the baselessness of Petitioner’s position regarding Swimmer meeting the “a list of
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`computer operations deemed suspicious” limitation.
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`The Board has rejected the argument that testimony from other proceedings
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`should be excluded, noting that “whether Petitioner was a party to the proceeding
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`in which the [subject] Deposition was submitted is of no consequence in a
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`relevance inquiry.” Nestle Health. Nutr., Inc. v. Steuben Foods, Inc., IPR2015-
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`5
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`Patent Owner’s Opposition to Motion to Exclude
`IPR2016-00159 (U.S. Patent No. 8,677,494)
`00249, Paper 76 at 12-14 (P.T.A.B. June 2, 2016) (denying motion to exclude
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`deposition relating to same subject patent on relevance and hearsay grounds).
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`Here, even if the Board were to determine that Exhibit 2016 were hearsay, it
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`is still admissible because it falls within the residual hearsay exception. Federal
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`Rule of Evidence 807 provides that a document is admissible if it has “guarantees
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`of trustworthiness,” is “offered as evidence of a material fact,” is “more probative .
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`. . than any other evidence that the proponent can obtain through reasonable
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`efforts,” and will “serve the purposes of these rules and the interests of justice.”
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`FRE 807. Each of those requirements is satisfied here.
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`Petitioner does not contest the trustworthiness of the transcript, as Davidson
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`was under oath and was represented by counsel for a defendant attempting to show
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`that Finjan’s claims are invalid. Additionally, the Board has noted that where
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`another party has relied on the content of the subject exhibit in another proceeding,
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`“reliability concerns underlying hearsay are not present” thus again demonstrating
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`the tenuous nature of Petitioner’s attempt to exclude this exhibit as hearsay.
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`Nestle, IPR2015-00249, Paper 76 at 22.
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`The relevance of the Davidson Transcript is beyond debate. Patent Owner
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`relies on Exhibit 2016 as further evidence of Swimmer’s failure to meet certain
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`claim limitations of the ‘494 Patent and explains that it cites to Exhibit 2016
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`particularly because “Dr. Rubin’s declaration [in this proceeding] provides no
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`6
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`Patent Owner’s Opposition to Motion to Exclude
`IPR2016-00159 (U.S. Patent No. 8,677,494)
`analysis on th[e] point” of how “Swimmer’s audit trail does not include ‘a list of
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`computer operations deemed suspicious’” rendering it more probative on the point
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`for which it is offered. Paper 17 (“PO Resp.”) at 22; FRE 807. Moreover, since
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`Exhibit 2016 was submitted in a parallel proceeding against the same patent, and
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`the portions be relied upon relate to the same prior art reference at issue here –
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`Swimmer –it is in the interest of justice for the Board to consider the evidence as
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`highly relevant and to promote consistency across petitions. Thus, at the
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`minimum, Exhibit 2016 is highly relevant to the positions the Petitioner has taken
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`regarding the prior art and relevant to Dr. Rubin’s credibility and the weight that
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`should (not) be afforded to his declaration and opinions.
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`For these reasons, Petitioner’s Motion should be denied.
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`III. Exhibit 2020 (Definition of Logfile from Wikipedia) is Admissible.
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`For the reasons set forth herein, Petitioner’s request to exclude Exhibit 2020
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`should be denied because Exhibit 2020 is admissible.
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`First, Petitioner’s request to exclude Exhibit 2020 because of a purported
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`lack of authentication or “first-hand knowledge” should be denied. Petitioner did
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`not previously raise any objection to Exhibit 2020 based on a lack of authentication
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`or “first-hand knowledge,” waiving the argument. Paper 18 at 5-6. On this basis
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`alone, Petitioner’s motion should be denied. See 37 C.F.R. § 42.64.
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`Beyond waiver, Patent Owner’s reliance on Exhibit 2020 is based on
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`7
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`Patent Owner’s Opposition to Motion to Exclude
`IPR2016-00159 (U.S. Patent No. 8,677,494)
`personal knowledge and expert testimony authenticating the document. In fact, Dr.
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`Goodrich submitted a supplemental declaration in which he explained that, like Dr.
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`Medvidovic, he “would also consider sources such as Wikipedia [] in order to
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`confirm [his] opinion that a log and a database are distinct concepts” and that
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`Exhibit 2020 is “useful in defining the term ‘logfile’” as its definition is consistent
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`with that a POSITA would apply during the relevant time frame. Ex. 2047
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`(“Goodrich Supp. Decl.”) at ¶¶ 22, 30. Nonetheless, Patent Owner’s experts may
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`rely on materials that are otherwise inadmissible and thus Petitioner’s objections
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`based on a lack of authentication and “first-hand knowledge” should be denied.
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`FRE 703; Brose N. Am., Inc. v. UUSI, LLC, IPR2014-00417, Paper 49 at 26
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`(P.T.A.B. July 20, 2015) (“an expert may rely upon evidence regardless of whether
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`the evidence is admissible….”).
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`Second, Exhibit 2020 is relevant. As Petitioner admits, Exhibit 2020
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`“displays an explanation of ‘logfile.’” Motion at 4. More specifically, Exhibit
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`2020 is relevant because it supports how a log file differs from a database as it
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`demonstrates that (1) the type of “basic information” that Petitioner relies upon in
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`Swimmer as meeting the ‘494 Patent’s database requirement “would be considered
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`a simple ‘log file,’ not a database;” and (2) how it is well known in the art that “the
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`term event log includes audit trails” and thus differs from a database. PO Resp. at
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`30; Ex. 2011 at ¶¶ 62, 107, 121. These facts are significant because they provide
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`8
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`Patent Owner’s Opposition to Motion to Exclude
`IPR2016-00159 (U.S. Patent No. 8,677,494)
`evidence of how a POSITA understands the distinction between log files and
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`databases; a difference which, as Dr. Medvidovic and Patent Owner explain, is
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`identified in the ‘494 Patent’s specification and disregarded by Petitioner. PO
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`Resp. at 32-33; Ex. 2011 at ¶ 121. As further evidence, Dr. Goodrich also explains
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`that the definition of log file provided in Exhibit 2020 “is consistent with the
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`definition a person having skill in the art would have defined it at the relevant time
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`frame.”2 Goodrich Supp. Decl. at ¶ 30. Moreover, the Board has explained that
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`the “implication [of 37 C.F.R. § 42.65(a)] is that ordinarily the underlying facts
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`that form the basis of an expert opinion should be considered.” Nestle, IPR2015-
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`00249, Paper 76 at 11. Thus, Exhibit 2020 is relevant and admissible under
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`Federal Rules of Evidence 401-403 because it “has a tendency to make a fact more
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`or less probable than it would be without the evidence.” FRE 401.
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`Third, Petitioner’s argument based on hearsay stands without merit. In
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`particular, Patent Owner’s expert may rely on hearsay. FRE 703; Nestle, IPR2015-
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`2 Petitioner contends that the retrieval and “last modified” date on Exhibit 2020
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`require that the exhibit be excluded. As a preliminary matter, Dr. Goodrich’s
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`explanation that the definition provided is consistent with the relevant time frame
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`of the invention renders Petitioner’s argument inappropriate for a Motion to
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`Exclude. Furthermore, as explained herein, Patent Owner’s experts may rely on
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`material even if it were otherwise inadmissible.
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`9
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`Patent Owner’s Opposition to Motion to Exclude
`IPR2016-00159 (U.S. Patent No. 8,677,494)
`00249, Paper 76 at 13–14 (hearsay evidence relied upon by expert is admissible
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`because FRE 703 “permits an expert to base an opinion on facts or data in the case
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`that an expert has been made aware of if experts in the field would reasonably have
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`relied on such facts or data in forming an opinion.”). As explained above, both
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`Drs. Medvidovic and Goodrich rely on Exhibit 2020. Further, Exhibit 2020 is not
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`hearsay because Patent Owner is not relying on it to prove the truth of the matter
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`asserted. Rather, Patent Owner and its experts cite to Exhibit 2020 to demonstrate
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`the understanding of a POSITA, of the term “log file,” during the relevant time
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`frame. PO Resp. at 30-31; Ex. 2011 at ¶¶ 62, 107, 121; Goodrich Supp. Decl. at ¶¶
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`22, 30; see also EMC Corp. v. PersonalWeb Techs., LLC, IPR2013-00087, Paper
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`69 at 43 (P.T.A.B. May 15, 2014) (“If the significance of an offered statement lies
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`solely in the fact that it was made, no issue is raised as to the truth of anything
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`asserted, and the statement is not hearsay.”). Thus, Petitioner’s request to exclude
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`the exhibit based on hearsay should be denied.
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`For these reasons, the Board should deny Petitioner’s request to exclude
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`Exhibit 2020.
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`IV. Exhibit 2022 (Log File – techterms.com) is Admissible.
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`Exhibit 2022 is admissible and thus Petitioner’s request should be denied.
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`First, Petitioner’s request to exclude Exhibit 2022 because of a purported
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`lack of “first-hand knowledge” and authentication should be denied because, as
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`10
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`Patent Owner’s Opposition to Motion to Exclude
`IPR2016-00159 (U.S. Patent No. 8,677,494)
`with Exhibit 2020, Petitioner waived these objections because it did not raise them
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`in its Objections to Evidence. 37 C.F.R. § 42.64; Paper 18 at 5-6. Furthermore,
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`Patent Owner’s reliance on Exhibit 2022 is based on personal knowledge and
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`expert testimony authenticating the document. Dr. Goodrich explains that he, like
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`Dr. Medvidovic, “would [] consider sources such as [] techterms.com in order to
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`confirm [his] opinion that a log and a database are distinct concepts” and that
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`Exhibit 2022 is “useful in defining the term ‘log file’” as its definition is consistent
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`with that a POSITA would apply during the “relevant time frame.” Goodrich
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`Supp. Decl. at ¶¶ 22, 31. Nonetheless, Patent Owner’s experts may rely on
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`materials that are otherwise inadmissible and thus Petitioner’s objections based on
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`a lack of authentication and “first-hand knowledge” should be denied. FRE 703;
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`Brose N. Am., Inc., IPR2014-00417, Paper 49 at 26.
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`Second, Exhibit 2022, like Exhibit 2020, is relevant because it supports how
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`a log file is distinct from a database. Specifically, Exhibit 2022 demonstrates how
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`(1) the “type of basic information” stored in Swimmer, through its audit trail,
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`“would be considered a simple ‘log file,’ not a database” and (2) “all log files have
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`a specific type of structure, namely they are in the form of a file, as opposed to a
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`database.” PO Resp. at 30-31; Ex. 2011 at ¶¶ 111-114. As Dr. Goodrich also
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`explains, Exhibit 2022 is “useful in defining the term ‘log file’” and is “consistent
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`with the definition a person having skill in the art would have defined it at the
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`11
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`Patent Owner’s Opposition to Motion to Exclude
`IPR2016-00159 (U.S. Patent No. 8,677,494)
`relevant time frame.” Goodrich Supp. Decl. at ¶¶ 22, 31. As the Board has
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`previously explained, “the underlying facts that ordinarily form the basis of an
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`expert opinion should be considered” and at the minimum, Exhibit 2022 is an
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`underlying fact of both Drs. Medvidovic’s and Goodrich’s opinions. Nestle,
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`IPR2015-00249, Paper 76 at 11. Further, as explained supra with respect to
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`Exhibit 2020, Petitioner’s argument relating to the “copyright date” and “last
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`updated” date on Exhibit 2022 also fails. Thus, as with Exhibit 2020, Exhibit 2022
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`is relevant and admissible under Federal Rules of Evidence 401-403 because it
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`“has a tendency to make a fact more or less probable than it would be without the
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`evidence.” FRE 401.
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`Third, Petitioner’s argument based on hearsay should be denied. As
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`discussed supra regarding Exhibit 2020, Patent Owner’s experts may rely on
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`hearsay, and because Patent Owner and its experts are not relying on Exhibit 2022
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`for the truth of the matter asserted but rather to demonstrate the understanding of a
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`POSITA at the relevant time, Petitioner’s request to exclude the exhibit based on
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`hearsay stands without merit and should thus be denied. FRE 703; Nestle,
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`IPR2015-00249, Paper 76 at 13–14; EMC Corp., IPR2013-00087, Paper 69 at 43.
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`For these reasons, the Board should deny Petitioner’s request to exclude
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`Exhibit 2022.
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`12
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`Patent Owner’s Opposition to Motion to Exclude
`IPR2016-00159 (U.S. Patent No. 8,677,494)
`V. Exhibits 2024 and 2025 are Admissible.
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`For the reasons set forth below, Exhibits 2024 and 2025 are admissible and
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`thus the Board should deny Petitioner’s request to exclude both exhibits. These
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`exhibits are respectively a declaration submitted in support of Patent Owner’s
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`claim construction and Patent Owner’s infringement contentions both from a
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`district court action involving the ‘494 Patent.
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`First, Petitioner’s arguments based on hearsay are meritless. Petitioner
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`admits that Patent Owner’s expert – Dr. Medvidovic – relies on Exhibit 2024 “to
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`support [his] construction of ‘database’” and Exhibit 2025 to support his “assertion
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`that Websense’s products embody the ‘494 patent.” Motion at 8. Their relevance
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`to the facts underlying Dr. Medvidovic’s opinions alone requires that they be
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`considered and admitted. Nestle, IPR2015-00249, Paper 76 at 11.
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`Further, as explained supra with respect to Exhibits 2020 and 2022, Exhibits
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`2024 and 2025 are admissible because, even if they were hearsay (which Patent
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`Owner contends that they are not), Patent Owner’s experts may rely on hearsay
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`and material that is not otherwise admissible. FRE 703; Nestle, IPR2015-00249,
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`Paper 76 at 13–14; Brose N. Am., IPR2014-00417, Paper 49 at 26.
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`Second, Exhibits 2024 and 2025 are relevant and do not raise any concern of
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`unfair prejudice or potential confusion. Petitioner’s sole argument on these bases
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`with respect to Exhibit 2024 is that it includes “opinions prepared under a different
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`13
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`Patent Owner’s Opposition to Motion to Exclude
`IPR2016-00159 (U.S. Patent No. 8,677,494)
`claim construction standard.” Motion at 9. However, Petitioner identifies no
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`authority that an exhibit must reference or rely upon the same “standard” to be
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`relevant under the liberal standard of the Federal Rules of Evidence. FRE 401
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`(“Evidence is relevant if: (a) it has any tendency to make a fact more or less
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`probable than it would be without the evidence; and (b) the fact is of consequence
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`in determining the action.”). In fact, the Federal Circuit has held that “[e]ven with
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`a more lenient standard of proof, the PTO ideally should not arrive at a different
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`conclusion.” In re Baxter Int’l, Inc., 678 F.3d 1357, 1365 (Fed. Cir. 2012).
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`Further, Dr. Medvidovic relies on Exhibit 2024 in noting that the “proposed
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`definition of the term ‘database’ was the same as in this proceeding” and that
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`Patent Owner’s proposed construction there was adopted by the district court. Ex.
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`2011 at ¶¶ 125-127. Notably, Exhibit 2024 consists of a declaration by Dr.
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`Medvidovic in a district court action and Petitioner did not raise the exhibit nor Dr.
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`Medvidovic’s reliance on it in its deposition of Dr. Medvidovic here. Thus,
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`Exhibit 2024’s relevance to claim construction requires that the Motion be denied.
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`Furthermore, Exhibit 2025 is relevant as evidence of secondary
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`considerations of non-obviousness. In re Cyclobenzaprine Pat. Litig., 676 F.3d
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`1063, 1075-79 (Fed. Cir. 2012) (secondary considerations of non-obviousness
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`serve as an important check on hindsight bias and “must always when present be
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`considered.”). Petitioner’s sole relevance argument is that “Finjan’s made-for-
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`14
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`Patent Owner’s Opposition to Motion to Exclude
`IPR2016-00159 (U.S. Patent No. 8,677,494)
`litigation infringement contentions do not prove infringement and do not establish
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`nexus.” Motion at 9. However, the law allows “evidence that might be used to
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`support an inference of copying, such as knowledge of the patented technology
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`during development of the accused products….” Genband US LLC v. Metaswitch
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`Networks Corp., Case No. 2:14-cv-33-JRG-RSP, 2016 U.S. Dist. LEXIS 5158, at
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`*4 (E.D. Tex. Jan. 15, 2016). As Patent Owner explains, during the Finjan v.
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`Websense litigation, “Finjan provided Websense with notice regarding how its
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`products embodied the inventions disclosed in the ‘494 patent….” PO Resp. at 57;
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`see also Ex. 2011 at ¶ 161; Ex. 2012 at ¶ 9; Ex. 2048, Kim Supp. Decl. at ¶ 13.
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`Thus, Exhibit 2025 is relevant to the secondary consideration of non-obviousness
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`as it demonstrates copying of the ‘494 Patent and thus should not be excluded.
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`Therefore, Petitioner’s request to exclude Exhibits 2024 and 2025 should be
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`denied because its arguments are without merit.
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`VI. Conclusion
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`For the foregoing reasons, the Board should deny Petitioner’s request to
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`exclude paragraphs 159-166 of the Medvidovic Declaration (Ex. 2011) and
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`Exhibits 2016, 2020, 2022, 2024 and 2025.
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`15
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`Patent Owner’s Opposition to Motion to Exclude
`IPR2016-00159 (U.S. Patent No. 8,677,494)
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`Respectfully submitted,
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`
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`
`
`/James Hannah/
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`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
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`Dated: January 24, 2017
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`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
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` (Case No. IPR2016-00159) Attorneys for Patent Owner
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`16
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`Patent Owner’s Opposition to Motion to Exclude
`IPR2016-00159 (U.S. Patent No. 8,677,494)
`CERTIFICATE OF SERVICE
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`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 Opposition to Motion to Exclude was
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`served on January 24, 2017, by filing this document through the Patent Review
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`Processing System as well as delivering via electronic mail upon the following
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`counsel of record for 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
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`Max Colice
`COOLEY LLP
`500 Boylston Street, 14th Floor
`Boston, Massachusetts 02116-3736
`mcolice@cooley.com
`zpatdcdocketing@cooley.com
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`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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`Michael T. Rosato
`Andrew. S. Brown
`WILSON SONSINI GOODRICH & ROSATI
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`17
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`Patent Owner’s Opposition to Motion to Exclude
`IPR2016-00159 (U.S. Patent No. 8,677,494)
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`701 Fifth Avenue, Suite 5100
`Seattle, WA 98104-7036
`mrosato@wsgr.com
`asbrown@wsgr.com
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`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
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`18
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