UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`Palo Alto Networks, Inc. and
`Blue Coat Systems, Inc.,
`Petitioners
`
`v.
`
`Finjan, Inc.
`Patent Owner
`
`Case IPR2016-001591
`Patent No. 8,677,494
`
`
`
`PETITIONER’S RESPONSE TO PATENT OWNER’S
`MOTION FOR OBSERVATION
`
`
`
`
`
`
`1 Case IPR2016-01174 has been joined with the instant proceeding.
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`Palo Alto Networks, Inc. and
`Blue Coat Systems, Inc.,
`Petitioners
`
`v.
`
`Finjan, Inc.
`Patent Owner
`
`Case IPR2016-001591
`Patent No. 8,677,494
`
`
`
`PETITIONER’S RESPONSE TO PATENT OWNER’S
`MOTION FOR OBSERVATION
`
`
`
`
`
`
`1 Case IPR2016-01174 has been joined with the instant proceeding.
`
`
`
`
`
`Petitioner’s Response to Patent Owner’s
`Motion for Observation
`IPR2016-00159
`
`
`Petitioner Palo Alto Networks, Inc. hereby responds to Patent Owner Finjan,
`
`Inc.’s Observations of the November 30, 2016 cross-examination of John Hawes
`
`(Ex. 2045) as follows:
`
`I. MR. HAWES’S TESTIMONY REGARDING THE VIRUS BULLETIN
`CONFERENCE
`A. Response to Observation #1
`In Exhibit 2045, from pg. 25, line 12 to pg. 26, line 8, Mr. Hawes testified:
`
`Q. Do you have any confirmation that any of the 163 delegates to
`the 1995 conference ever received the proceedings book?
`A. Do I have any –
`Q.
`Confirmation. Firsthand knowledge, excuse me.
`A. Yes, yes. I know of at least two people who have full
`collections of Virus Bulletin magazines and conference books all the
`way back.
`Q. Who are those two people?
`A. One of them is Ian Whalley, W-H-A-L-L-E-Y, former editor.
`The other one is Righard Zweinenberg. R-I-G-H-A-R-D, Z-W-E-I-N-
`E-N-B-E-R-G. I have seen both of their archives.
`Q. Who are each of those individuals?
`A. One is a former editor of Virus Bulletin and one is a prominent
`anti-virus researcher.
`
`And in Exhibit 2045, at page 36, line 11 to page 37, line 23, Mr. Hawes
`testified:
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`1
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`Petitioner’s Response to Patent Owner’s
`Motion for Observation
`IPR2016-00159
`
`Q. You also testified that the list of conference delegates shown in
`Exhibit B to your October 7th declaration reflects people who
`registered for and bought tickets to the 1995 conference?
`A. Yes, that’s correct or had bought tickets up to the point where it
`was printed.
`Q. Do you know how much they paid for those tickets?
`A.
`I don’t know exactly, no. I imagine quite a lot.
`Q. Why do you say that?
`A. Our current price is I believe around $1,900 and people had
`mentioned that it’s been the same price for a very long time.
`Q.
`People at Virus Bulletin?
`A.
`Both ourselves and regular delegates. If we have occasional
`discussions about changing our prices.
`Q.
`So the delegates listed in Exhibit B to your October 7th
`declaration paid at least hundreds of dollars to attend?
`A. At least hundreds.
`Q. What percentage roughly of the advanced registrants for a Virus
`Bulletin conference typically show up?
`A. Almost all I would say. We occasionally get a few either
`through illness or things like visa issues, but probably less than five
`percent.
`Q. Has that been true your entire time at Virus Bulletin?
`A. Yes. We also get extra people signing up at the last minute as
`well, almost always.
`
`This testimony is responsive to Patent Owner’s observations on cross-
`
`
`
`2
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`Petitioner’s Response to Patent Owner’s
`Motion for Observation
`IPR2016-00159
`
`
`examination (Paper 34 at 1, Observations #1 & #2) and is relevant to the arguments
`
`in Petitioner’s Petition and Reply concerning the public availability of Swimmer.
`
`(Paper 2 at 6; Paper 26 at 3-5; Ex. 2014 at 32:21-50:6; Ex. 1088.)
`
`B. Response to Observation #2
`In addition to the testimony in Exhibit 2045 from pg. 25, line 12 to pg. 26,
`
`line 8 (Part II.A., supra), Mr. Hawes further testified at pg. 12, line 18 to page 13,
`
`line 16:
`
`Q. And then in Paragraph 4 of Exhibit A, your most recent
`declaration, you state that in your October 15th, 2015 declaration “the
`paper entitled, Dynamic Detection and Classification of Computer
`Viruses Using General Behavior Patters was published,” and then
`couple of lines down it says, “September 1995.” What is the basis for
`your knowledge of this statement?
`A.
`The records of my company.
`Q. What are those records?
`A. We keep copies of all the conference books that we have
`produced for each conference going back to the very beginning in
`1991. They’re stored in an archive which we reference quite regularly.
`Q. How do you know, as you state in Paragraph 4 of your
`declaration, that the paper you reference was quote/unquote published
`to all 163 attendees of the conference in September 1995?
`A.
`It’s out standard business practice that we produce a book of the
`proceedings that is provided to everybody that attends the conference.
`
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`3
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`Petitioner’s Response to Patent Owner’s
`Motion for Observation
`IPR2016-00159
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`And in Exhibit 2045, at page 38, lines 16-24, Mr. Hawes testified:
`
`
`
`Q. At the time you prepared your declaration, did you already
`know how the magazine was distributed in 1995?
`A. Yes.
`Q. How did you know that?
`A. Well, I have been working for the company for more than ten
`years and was familiar with it for six or seven years before that. I’m
`quite familiar with the way it worked.
`
`Furthermore, in Exhibit 2045, at page 39, line 4 to page 41, line 3, Mr. Hawes
`
`testified:
`
`Before you were asked to prepare any declarations for purposes
`Q.
`of these proceedings, had you ever spoken with anyone at Virus
`Bulletin about how the magazine was distributed back in the ’90s?
`A. Yeah. Yes. We – when we went through the process of deciding
`not to – to cease the subscription model, I was part of a team and there
`was a lot of discussion about the history of how we’ve done things
`and whether we should break these traditions, they’ve gone back a
`long way.
`
`Similarly also, when we stopped publishing the magazine, the
`printed copy, we had similar discussions about changing the way we’d
`done things because people don’t like change.
`
`But, yes, something that was regularly discussed – it’s
`something that was regularly discussed, the process that we used.
`Q.
`Before you were asked to prepare a declaration in this case, had
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`4
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`Petitioner’s Response to Patent Owner’s
`Motion for Observation
`IPR2016-00159
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`you ever spoken with anyone at Virus Bulletin about how the
`conference proceedings materials were prepared in the ’90s?
`A. Not specifically the ’90s, but historically. Again, we regularly
`discussed the way we have done things when we’re thinking of
`changing the way we do things.
`Q.
`Before you prepared the declarations in these proceedings, had
`you spoken with other Virus Bulletin employees about how the
`delegate lists were prepared before you arrived at Virus Bulletin?
`A. Yes. Again we – as I say, we, again, recently changed the way
`we do that. We do it entirely online. For a while we had a separately
`printed copy of the delegate list, so that it could be printed at the last
`minute because the book took rather long to print. And when we made
`those changes, we looked back at previous practices and discussed
`them with the team and regular delegates.
`Q.
`Before preparing your declarations in this case, had you ever
`spoken to other Virus Bulletin employees about how Virus Bulletin
`put together conference brochures before you arrived at Virus
`Bulletin?
`A. Yes. Again, same – every time we looked at the way we
`changed that practice, we looked at how it’s gone in the past.
`
`This testimony is responsive to Patent Owner’s observations on cross-examination
`
`(Paper 34 at 1, Observation #2) and is relevant to the arguments in Petitioner’s
`
`Petition and Reply concerning the public availability of Swimmer. (Paper 2 at 6;
`
`Paper 26 at 3-5; Exs. 1088, 1089.)
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`5
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`Petitioner’s Response to Patent Owner’s
`Motion for Observation
`IPR2016-00159
`
`
`Dated: January 24, 2017
`
`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Ave., NW, Suite 700
`Washington, DC 20004
`Tel: (703) 456-8000
`Fax: (202) 842-7899
`
`
`
`
`
`
`
`Respectfully submitted,
`COOLEY LLP
`
`
`
`By:
`
`
`
`/Orion Armon/
`Orion Armon
`Reg. No. 65,421
`
`
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`6
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`Petitioner’s Response to Patent Owner’s
`Motion for Observation
`IPR2016-00159
`
`CERTIFICATE OF SERVICE
`
`
`
`
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`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on January 24,
`
`2017, a complete and entire copy of this PETITIONER’S RESPONSE TO
`
`PATENT OWNER’S MOTION FOR OBSERVATION was served by filing
`
`this document through the E2E System and via electronic mail upon the following
`
`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
`
`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
`
`By:
`
`
`
`/Orion Armon/
`Orion Armon
`Reg. No. 65,421
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`counsel of record:
`
`
`
`
`James Hannah
`KRAMER LEVIN NAFTALIS &
`FRANKEL LLP
`
`
`
`990 Marsh Road
`
`
`
`Menlo Park, CA 94025
`
`
`Phone: (650) 752-1712
`
`
`Fax: (650) 752-1812
`
`
`jhannah@kramerlevin.com
`
`
`
`
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`Michael Kim
`
`
`
`Finjan, Inc.
`2000 University Ave., Ste. 600
`E. Palo Alto, CA 94303
`
`Phone: 650.397.9567
`
`
`mkim@finjan.com
`
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`USPTO Reg. No. 40,450
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