UNITED STATES PATENT AND TRADEMARK OFFICE
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`
`
`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
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`
`
`PETITIONER’S RESPONSE TO PATENT OWNER’S
`MOTION TO EXCLUDE
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`
`
`
`
`
`1 Case IPR2016-01174 has been joined with the instant proceeding.
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`
`
`
`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 TO EXCLUDE
`
`
`
`
`
`
`1 Case IPR2016-01174 has been joined with the instant proceeding.
`
`
`
`
`
`Petitioner’s Response to Patent Owner’s
`Motion to Exclude
`IPR2016-00159
`
`
`Table of Contents
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`Page
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`I.
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`B.
`C.
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`D.
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`PATENT OWNER’S ARGUMENTS REGARDING ALLEGED
`NEW MATERIAL SHOULD BE REJECTED ............................................. 1
`A.
`Exhibits 1095-1097 and Related Arguments Properly Rebut
`Finjan’s Response and Should Not Be Excluded ................................. 1
`Exhibit 1091 Should Not Be Excluded ................................................ 2
`Exhibits 1093 and 1094 and Associated Reply Discussion
`Properly Rebut Finjan’s Response and Should Not Be Excluded ....... 3
`Exhibit 1089 Properly Rebuts Patent Owner’s Response, Is
`Relevant and Reliable and Should Not Be Excluded as New
`Evidence ............................................................................................... 4
`Exhibit 1095 Properly Rebuts Patent Owner’s Response, Is
`Relevant and Reliable and Should Not Be Excluded as New
`Evidence ............................................................................................... 5
`EXHIBITS 1092, 1098, AND 1100 AND RELATED REPLY
`ARGUMENTS SHOULD NOT BE EXCLUDED ........................................ 6
`A.
`Exhibit 1092 is Relevant and Is Not Prejudicial .................................. 7
`B.
`Exhibits 1098 and 1100 Should Not Be Excluded ............................... 8
`III. EXHIBITS 1088 AND 1089 SHOULD NOT BE EXCLUDED ................. 10
`IV. SWIMMER (EX. 1006) SHOULD NOT BE EXCLUDED ........................ 11
`V. MARTIN (EX. 1047) SHOULD NOT BE EXCLUDED ............................ 13
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`E.
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`II.
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`-i-
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`Petitioner’s Response to Patent Owner’s
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`TABLE OF AUTHORITIES
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`Page
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`Cases
`Actifio, Inc. v. Delphix Corp.,
`IPR2015-00025, Paper 69 (PTAB Apr. 12, 2016) ....................................... 11, 14
`Constant v. Advanced Micro-Devices, Inc.,
`848 F.2d 1560 (Fed. Cir.), cert. denied, 988 U.S. 892 (1988) ........................... 11
`In re Hall,
`781 F.2d 897 (Fed. Cir. 1986) .................................................................... 4, 6, 11
`Hilgraeve, Inc. v. Symantec Corp.,
`271 F. Supp. 2d 964 (E.D. Mich. 2003) ............................................................. 15
`Int’l Business Machines Corp. v. Intellectual Ventures II LLC,
`IPR2015-00089, Paper 44 (PTAB Apr. 25, 2016) ................................. 12, 14, 15
`Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co.,
`CBM2012-00002, Paper 66 (PTAB Jan. 23, 2014) .....................................passim
`Nintendo of Am. Inc. v. Motion Games LLC,
`IPR2014-00164, Paper 51 (PTAB May 15, 2015) ........................................... 1, 7
`QSC Audio Products, LLC v. Crest Audio, Inc.,
`IPR2014-00127, Paper 43 (PTAB Apr. 29, 2015) ................................. 12, 14, 15
`Valeo North Am., Inc. v. Magna Elecs., Inc.,
`IPR2014-01204, Paper 51 (PTAB Jan. 25, 2016) .......................................... 5, 10
`Vibrant Media, Inc. v. General Elec. Co.,
`IPR2013-00172, Paper 50 (PTAB July 28, 2014) ............................................ 1, 7
`Other Authorities
`F.R.E. 401 ........................................................................................4, 7, 9, 10, 13, 15
`F.R.E. 402 .................................................................................................... 4, 7, 9, 10
`F.R.E. 403 ........................................................................................................ 7, 9, 10
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`F.R.E. 701 ............................................................................................................ 5, 10
`F.R.E 702 ............................................................................................................. 5, 10
`F.R.E. 807 .............................................................................................. 12, 13, 14, 15
`F.R.E. 901(b)(1), (b)(4) ...................................................................................... 12, 14
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`iii
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`Petitioner’s Response to Patent Owner’s
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`Patent Owner Finjan, Inc.’s Motion to Exclude (Paper 35) should be denied
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`
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`for the reasons below.
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`I.
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`PATENT OWNER’S ARGUMENTS REGARDING ALLEGED NEW MATERIAL
`SHOULD BE REJECTED
`Finjan disregards the Board’s Order allowing only a numbered list of alleged
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`new material and forbidding “arguments or statements identifying the reason these
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`portions are outside the scope of the Reply.” (Paper 29 at 2.) Finjan improperly
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`uses its motion to exclude to argue that the Reply raises new arguments. Nintendo
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`of Am. Inc. v. Motion Games LLC, IPR2014-00164, Paper 51 at 24 (PTAB May 15,
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`2015); Vibrant Media, Inc. v. General Elec. Co., IPR2013-00172, Paper 50, at 41
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`(PTAB July 28, 2014). Finjan’s motion to exclude Exhibits 1089, 1091, 1093-1097
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`and related arguments in the Reply should be denied for this reason alone. (Paper
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`35 at 1-4, 7-10.) As explained below, each of Finjan’s “new evidence” arguments
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`lacks merit.
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`A. Exhibits 1095-1097 and Related Arguments Properly Rebut
`Finjan’s Response and Should Not Be Excluded
`Finjan’s arguments for excluding Exhibits 1095-1097 (Paper 35 at 2) are
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`directed at the sufficiency of Petitioner’s public availability proof, rather than
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`admissibility. See Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co.,
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`CBM2012-00002, Paper 66 at 62 (PTAB Jan. 23, 2014). Accordingly, Exhibits
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`1095-1097 should not be excluded.
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`Exhibits 1095-1097 comprise exhibits filed by Symantec in IPR2015-01892
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`concerning the ’494 patent. These exhibits directly rebut Finjan’s speculation that a
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`copyright notice on Swimmer is indicative of a “limitation on [ ] dissemination.”
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`(Paper 17 at 12-14; Paper 26 at 3-5.) Exhibits 1095-1097 do not provide new
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`argument regarding Swimmer’s content. Rather,
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`they contradict Finjan’s
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`characterization of arguments and evidence previously submitted by Petitioner—
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`evidence which confirms that Swimmer was distributed at a Virus Bulletin
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`conference to 163 attendees and then made available for purchase. (Paper 2 at 6-7
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`(citing Ex. 1088).)
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`B.
`Exhibit 1091 Should Not Be Excluded
`Exhibit 1091 is an article cited by Finjan and Dr. Medvidovic in Exhibit
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`http://blog.avast.com/2012/12/03/new‐toy‐research‐lab/).) Petitioner
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`2027 and is not new evidence. (Paper 17 at 56, 57, 60; Ex. 2027 at 1-3 (citing
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`relies on
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`Finjan’s evidence to rebut Finjan’s assertion that Swimmer does not disclose “DSP
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`data, including a list of suspicious computer operations.” (Paper 17 at 17-22; Paper
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`26 at 9-10.) Despite Finjan’s assertion that “Avast products [ ] are neither relevant
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`to nor at issue in this IPR,” (Paper 35 at 4) Dr. Medvidovic and Finjan relied on the
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`article (Ex. 1091) as evidence that Avast products allegedly embody the ’494
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`claims. (Paper 17 at 17-22; Paper 26 at 9-10.) The Avast evidence reflects Finjan’s
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`and its expert’s characterization of what meets the ’494 limitations. Finjan’s
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`representations regarding the content of Exhibit 1091 support Petitioner’s
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`argument in the petition that Swimmer’s derivation of activity data meets the ’494
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`limitations. (Paper 2 at 44-46.) Exhibit 1091 was first introduced by Finjan and is
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`not new evidence or argument. Accordingly, it should not be excluded.
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`C. Exhibits 1093 and 1094 and Associated Reply Discussion Properly
`Rebut Finjan’s Response and Should Not Be Excluded
`In its Patent Owner Response, Finjan characterizes a POSA’s understanding
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`of exemplary computer operations recorded by Swimmer by citing Dr.
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`Medvidovic. (Paper 17 at 21-22.) Exhibits 1093 and 1094 rebut Finjan’s
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`characterizations, showing that a POSA already understood some operations, such
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`as file writes or write access, as potentially malicious. (Paper 26 at 9.) This
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`argument is not new and causes no prejudice to Finjan. Petitioner previously
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`identified exemplary suspicious operations in its Petition, including write
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`operations. (Paper 2 at 45-46.) Accordingly, Exhibits 1093 and 1094 should not be
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`excluded.
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`3
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`D. Exhibit 1089 Properly Rebuts Patent Owner’s Response, Is
`Relevant and Reliable and Should Not Be Excluded as New
`Evidence
`First, Exhibit 1089 is relevant rebuttal evidence offered in opposition to
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`Finjan’s assertions in its Patent Owner Response. In its Response, Finjan alleged
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`that Mr. Hawes’s sworn affidavit was flawed because it was based on business
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`records he reviewed in his position at Virus Bulletin. (Paper 17 at 8.) Finjan’s
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`argument is incorrect as a matter of law. See In re Hall, 781 F.2d 897, 899 (Fed.
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`Cir. 1986) (finding a witness’s reliance on common business practice to testify as
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`to public availability of a reference sufficient). Exhibit 1089 does not introduce
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`new argument—it responds directly to the arguments in Finjan’s Response
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`concerning Mr. Hawes’s original affidavit.2 (See Paper 17 at 7-8; Paper 2 at 6; Ex.
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`1088.) Accordingly, Exhibit 1089 is relevant to the issue of public availability and
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`is admissible. F.R.E. 401, 402.
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`Finjan also argues that Mr. Hawes’s supplemental declaration is conclusory
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`and unreliable. (Paper 35 at 7, 9-10.) Mr. Hawes’s testimony is rationally based on
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`2 During a July 19, 2016 Board call regarding Mr. Hawes’s first deposition, the
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`Board indicated that there could be an opportunity for Petitioner to introduce
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`additional evidence such as that attached to Exhibit 1089 if Finjan relied on Mr.
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`Hawes’s deposition testimony in its Patent Owner Response.
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`4
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`his position as Chief of Operations at Virus Bulletin and his knowledge based on
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`Virus Bulletin’s business records and practices and is helpful to determining public
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`availability, which is a fact at issue. (See Ex. 1089; F.R.E. 701.) Mr. Hawes is not
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`an expert witness, and his testimony is not based on scientific or specialized
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`knowledge. See F.R.E. 701, 702. Therefore, Finjan’s motion to exclude Exhibit
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`1089 should be denied.
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`E.
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`Exhibit 1095 Properly Rebuts Patent Owner’s Response, Is
`Relevant and Reliable and Should Not Be Excluded as New
`Evidence
`Finjan’s motion to exclude Exhibit 1095 under FRE 702 is merely an
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`improper sur-reply on the merits—addressing whether Exhibit 1095 is sufficient to
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`prove public availability and providing no evidence that Dr. Hall-Ellis’s statements
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`regarding MARC records are unreliable. (Paper 35 at 7-8; Liberty, CBM2012-
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`00002, Paper 66 at 62; Valeo North Am., Inc. v. Magna Elecs., Inc., IPR2014-
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`01204, Paper 51 at 14 (PTAB Jan. 25, 2016).) Dr. Hall-Ellis’s testimony (1) is
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`based on extensive education and experience; (2) will help the Board understand
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`the MARC record’s confirmation that Swimmer is a printed publication; (3) is
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`based on sufficient data (the MARC record for Virus Bulletin’s proceedings
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`obtained from the OCLC Connexion Database, maintained during the ordinary
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`course of business); (4) is the product of reliable principles and methods (the
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`OCLC database maintained by libraries using the industry-wide MARC standard);
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`and (5) is the product of Dr. Hall-Ellis’s personal identification of a MARC record
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`for Swimmer created by University of Washington Library in the OCLC database.
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`(Ex. 1095.) Accordingly, Exhibit 1095 should not be excluded. See In re Hall, 781
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`F.2d 897, 899 (Fed. Cir. 1986) (finding a librarian’s reliance on the library’s
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`general cataloguing practice sufficient to support his declaration estimating the
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`time a prior art dissertation was available to the interested public).
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`Exhibit 1095 is also proper rebuttal evidence, included to rebut Finjan’s
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`assertion that Swimmer’s notice discouraging copyright violation indicates that a
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`POSA would have had to seek permission in order to reprint copies of Swimmer.
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`(Paper 17 at 12-13.) As can be seen from Exhibit 1095, the Virus Bulletin
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`proceedings were distributed and Swimmer was made available to any POSA
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`wishing to check it out of the library. (Paper 26 at 3-5; Ex. 1095.)
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`II. EXHIBITS 1092, 1098, AND 1100 AND RELATED REPLY ARGUMENTS
`SHOULD NOT BE EXCLUDED
`Finjan’s assertion that Petitioner misrepresents exhibits is incorrect for the
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`reasons explained in each subsection below, and Finjan cites no authority
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`supporting exclusion on this basis. (Paper 35 at 5-7.) Furthermore, as mentioned
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`above, Finjan disregards the court-ordered method for dealing with allegedly new
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`material and improperly dedicates its motion to argument on the subject. (Paper 29
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`6
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`at 2; Nintendo of Am. Inc. v. Motion Games LLC, IPR2014-00164, Paper 51 at 24
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`(PTAB May 15, 2015); Vibrant Media, Inc. v. General Elec. Co., IPR2013-00172,
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`Paper 50, at 41 (PTAB July 28, 2014).)
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`A. Exhibit 1092 is Relevant and Is Not Prejudicial
`Petitioner’s Exhibit 1092 and related argument are relevant and not
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`prejudicial. F.R.E. 401-403. Petitioner cited Exhibit 1092 as evidence that Finjan
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`has previously interpreted the term “suspicious” to include “hostile, potentially
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`hostile, undesirable, potentially undesirable, etc.” (Paper 26 at 7.) Finjan’s previous
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`interpretation is consistent with the ’194 parent patent’s specification statement
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`that the DSP data contains “a list of all operations . . . which could ever be deemed
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`potentially hostile;” therefore, it is relevant. (Paper 26 at 7; F.R.E. 401.)
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`Finjan complains that Petitioner’s reliance on Exhibit 1092 as evidence of
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`how “suspicious” is interpreted is a misrepresentation, because Finjan’s previous
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`interpretation was given in the context of U.S. Patent No. 6,154,844. (Paper 35 at
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`5-6.) First, Finjan cites no authority supporting exclusion on this basis, and makes
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`this argument as an improper sur-reply. (See id.) Second, Finjan’s new argument
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`that “suspicious” means something different between two patents in the same
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`family does not indicate that Petitioner misrepresented Finjan’s previous
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`interpretation of the same term “suspicious.” (See id.; Paper 26 at 7.)
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`B.
`Exhibits 1098 and 1100 Should Not Be Excluded
`Petitioner cites the testimony of Finjan’s own experts to support its assertion
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`that Finjan has not shown that any licensee product actually practices the ’494
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`claims or that the patented features were responsible for any alleged commercial
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`success. (Paper 26 at 24.) For example, Dr. Medvidovic confirms that “additional
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`analysis” would be required to show that Websense products infringe the ’494
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`claims:
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`Q. It’s your opinion that the claim chart shown here in Exhibit 6 is not
`alone sufficient to prove infringement, correct?
`A. That is correct, additional analysis is required.
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`(Ex. 1100 at 73:4-8; see id. at 77:24-78:6 (confirming the same regarding Avast, F-
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`Secure, Proofpoint, and Armorize products).) As another example, Dr. Goodrich
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`merely relied on Dr. Medvidovic’s claim chart and confirmed that he performed no
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`independent analysis of whether any licensee products copied the ’494 patent or
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`had features of the ’494 to which success could be attributed:
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`Q. You have not undertaken any analysis other than relying on Dr.
`Medvidovic’s declaration concerning whether any company has
`copied the ’494 patent; correct?
`A. Beyond what’s discussed in Dr. Medvidovic’s declaration and the
`claim charts he cites, I have not done any additional analysis.
`Q. And . . . you have done no analysis to identify what portion of
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`those revenues would be attributable to the 494’s technology, correct?
`A. I did not do a separate analysis similar to what he did in his
`Paragraph 166.
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`(Ex. 1098 at 60:16-61:3.) Petitioner did not misrepresent the testimony contained
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`in Exhibit 1098 and 1100, and the exhibits are relevant and are not prejudicial. See
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`F.R.E. 401, 402, 403.
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`Second, Finjan’s allegation that “Dr. Medvidovic neither cites to nor
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`discusses any supposed ‘actions resulting in infection’ under Swimmer” is directly
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`contradicted by the portion of the transcript Petitioner cites:
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`Q. And the idea behind this section is that Swimmer is modeling
`actions that would result in file infections, correct?
`A. As part of a state transition diagram, it does represent actions that
`take the system from one state to another state, so that among other
`possibilities, it allows for actions that take you from a clean state to an
`infectious state.
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`(Ex. 1100 at 34:15-23.) Finjan’s allegation that Dr. Medvidovic does not discuss
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`any motivation to tune the emulator is also directly contradicted by the portion of
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`the transcript Petitioner cites:
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`Q. Setting aside whatever’s modeled later in the paper, you’d agree
`that Swimmer and co-authors are suggesting that you only should
`record, in terms of the approach they’re describing, the actions that
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`involve a modification of the current state, correct?
`A. Taken in a vacuum, that is what that statement says.
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`(Ex. 1100 at 46:7-14.) Accordingly, Dr. Medvidovic’s testimony supports
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`Petitioner’s rebuttal arguments showing Swimmer motivates tuning the emulator to
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`only record actions involving a modification of the current state. (See Paper 26 at
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`12 (citing Ex. 1006 at 5, 9, 13)3.)
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`Finjan’s assertions are more properly directed at the sufficiency of these
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`exhibits in supporting Petitioner’s case, and not at their admissibility. See Liberty,
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`CBM2012-00002, Paper 66 at 62. Also, Finjan’s motion is an improper sur-reply
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`on the merits. Valeo, IPR2014-01204, Paper 51 at 14. Exhibits 1098 and 1100 are
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`relevant, non-prejudicial, and should not be excluded. F.R.E. 401, 402, 403.
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`III. EXHIBITS 1088 AND 1089 SHOULD NOT BE EXCLUDED
`Finjan moves to exclude Mr. Hawes’s testimony under FRE 702; however,
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`Mr. Hawes’s testimony is rationally based on his perceptions as Chief of
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`Operations at Virus Bulletin of company records and practices and is not based on
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`scientific or specialized knowledge, so Finjan’s motion to exclude under FRE 702
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`is mistaken. (See Exs. 1089, 1099; F.R.E. 701, 702; Part I.D, supra.)
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`3 The citation “Id. at 5, 9, 13” on page 12 of its Reply refers to “Ex. 1006 at 5, 9,
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`13,” as indicated by the pincites.
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`Mr. Hawes’s testimony is based on his personal knowledge of Virus
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`Bulletin’s regular business practices and is therefore admissible. (Exs. 1088, 1089;
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`In re Hall, 781 F.2d at 899 (finding a librarian’s reliance on the library’s general
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`cataloguing practice sufficient to support his declaration estimating the time a prior
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`art dissertation was available to the interested public); Constant v. Advanced
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`Micro-Devices, Inc., 848 F.2d 1560 (Fed. Cir.), cert. denied, 988 U.S. 892 (1988).)
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`“The probative value of routine business practice to show the performance of a
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`specific act has long been recognized.” In re Hall, 781 F.2d at 899. Accordingly,
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`Mr. Hawes’s testimony is proper and should not be excluded.
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`IV. SWIMMER (EX. 1006) SHOULD NOT BE EXCLUDED
`As a preliminary matter, each of Finjan’s assertions against Swimmer stems
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`from Finjan’s allegation that Swimmer has not been sufficiently proven to be a
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`printed publication. (Paper 35 at 12-13.) These arguments are directed at the
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`sufficiency of Petitioner’s proof and not the admissibility of Swimmer; therefore,
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`they should be rejected. See Liberty, CBM2012-00002, Paper 66 at 62.
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`First, Swimmer was authenticated by its distinctive characteristics, witness
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`testimony, and extensive supporting evidence. (Paper 2 at 6-7; Paper 26 at 3-5; see
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`Actifio, Inc. v. Delphix Corp., IPR2015-00025, Paper 69 at 12 (PTAB Apr. 12,
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`2016) (prior art authenticated by its distinctive characteristics and authenticating
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`testimony). Swimmer bears a title, author information, and both a header and
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`footer indicating that Swimmer was published in the Virus Bulletin Conference
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`proceedings in September 1995. (Ex. 1006 at 1.) These characteristics are
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`corroborated and authenticated by testimony of Mr. Hawes, the Chief of
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`Operations at Virus Bulletin. (Exs. 1088, 1089.) Mr. Hawes testified that according
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`to Virus Bulletin’s business records maintained in the ordinary course of business,
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`Swimmer was published in the 1995 Virus Bulletin Conference proceedings to all
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`163 attendees. (Id.) Mr. Hawes also testified that the conference proceedings
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`containing Swimmer were subsequently made available for private sale to
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`individuals by Virus Bulletin. (Id.) Furthermore, Petitioner submitted additional
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`evidence corroborating the date found on Swimmer. (See Paper 26 at 3-4; Exs.
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`1095-1097.) Finjan offers no evidence showing Swimmer’s characteristics are
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`untrustworthy, and in light of the authenticating evidence, Swimmer—and the date
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`on its face—should not be excluded. F.R.E. 901(b)(1), (b)(4); Ericsson, Inc. v.
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`Intellectual Ventures I LLC, IP2014-01149, Paper 68 at 13 (PTAB Dec. 9, 2015).
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`Second, even if the date on Swimmer’s face is hearsay, dates on prior art
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`have been repeatedly admitted by the Board under the residual hearsay exception.
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`F.R.E. 807; QSC Audio Products, LLC v. Crest Audio, Inc., IPR2014-00127, Paper
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`43 at 14-15 (PTAB Apr. 29, 2015); Int’l Business Machines Corp. v. Intellectual
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`Ventures II LLC, IPR2015-00089, Paper 44 at 52-56 (PTAB Apr. 25, 2016)
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`(finding exhibits indicating dates in close “proximity” “corroborate[d] each other”
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`and offered “circumstantial evidence of trustworthiness”). Petitioner submitted
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`both Mr. Hawes’s testimony and extensive corroborating evidence regarding
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`Swimmer’s date of public availability. (See Paper 26 at 3-4; Exs. 1088-1089, 1095-
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`1097; F.R.E. 807(a)(1)-(2).) Swimmer is more probative than any other evidence
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`regarding the issue of public availability and admitting Swimmer’s date will serve
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`the interest of justice. F.R.E. 807(a)(3)-(4); QSC, IPR2014-00127, Paper 42 at 15.
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`Third, Finjan’s arguments that Swimmer is not relevant is based on alleged
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`insufficiency to prove Swimmer’s public accessibility. (Paper 35 at 12-13.)
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`Swimmer is relevant to Petitioner’s invalidity case and the date on Swimmer is
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`relevant to public availability, so Swimmer should not be excluded. F.R.E. 401.
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`V. MARTIN (EX. 1047) SHOULD NOT BE EXCLUDED
`Again, each of Finjan’s arguments stems from Finjan’s allegation that
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`Martin has not been sufficiently proven to be a printed publication. (Paper 35 at
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`13-15.) These arguments are directed at the sufficiency of Petitioner’s proof and
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`not the admissibility of Martin. See Liberty, CBM2012-00002, Paper 66 at 62.
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`First, Martin was authenticated by its distinctive characteristics, witness
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`testimony, and extensive supporting evidence. (Paper 2 at 7; Paper 26 at 5-6; see
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`Petitioner’s Response to Patent Owner’s
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`IPR2016-00159
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`Actifio, IPR2015-00025, Paper 69 at 12 (prior art authenticated by distinctive
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`characteristics and authenticating testimony). Martin bears a symposium title,
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`author, copyright page, and header indicating Martin was published in the February
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`1997 Symposium proceedings. (Ex. 1047 at 1-3.) These characteristics are
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`corroborated and authenticated by Dr. Rubin, a co-author. (Ex. 1002 at ¶ 58.) Dr.
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`Rubin testified that Martin was published in the February 1997 symposium
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`proceedings, which he maintains in his possession, and that the proceedings were
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`distributed to approximately 400 symposium attendees in February 1997. (Id.)
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`Finjan offers no evidence showing Martin’s characteristics are untrustworthy, and
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`in light of the authenticating evidence, Martin—and the date on is face—should
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`not be excluded. F.R.E. 901(b)(1), (b)(4); Ericsson, IP2014-01149, Paper 68 at 13.
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`Second, even if the date on Martin’s face is hearsay, dates on prior art have
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`been repeatedly admitted by the Board under the residual hearsay exception, where
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`they are corroborated by other evidence. F.R.E. 807; QSC, IPR2014-00127, Paper
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`43 at 14-15; IBM, IPR2015-00089, Paper 44 at 52-56 (PTAB Apr. 25, 2016)
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`(finding exhibits indicating dates in close “proximity” “corroborate[d] each other”
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`and offered “circumstantial evidence of trustworthiness”). Dr. Rubin corroborates
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`and confirms publication and distribution of Martin in the conference proceedings
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`in February 1997. (Ex. 1047 at 1-3; Ex. 1002 at ¶ 58; F.R.E. 807(a)(1)-(2).) Martin
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`IPR2016-00159
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`is more probative than any other evidence regarding the issue of public availability
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`and admitting Martin’s date will serve the interest of justice. F.R.E. 807(a)(3)-(4);
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`QSC, IPR2014-00127, Paper 42 at 15. Accordingly, Martin’s date should be
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`admitted under the residual hearsay exception.
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`Finjan’s reliance on Hilgraeve to support its assertion that the date on Martin
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`should be excluded as hearsay is misplaced. (Paper 35 at 14.) In Hilgraeve, the
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`District Court for the Eastern District of Michigan found that “[a] date imprinted
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`on a document, without more,” does not prove that it was publicly available.
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`Hilgraeve, Inc. v. Symantec Corp., 271 F. Supp. 2d 964, 975 (E.D. Mich. 2003).
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`But, as discussed above, Dr. Rubin offers sworn testimony that the article he co-
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`authored was published and distributed at the February 1997 symposium, thereby
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`offering the corroborating evidence that the Board has recognized makes Martin’s
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`date admissible. F.R.E. 807; QSC, IPR2014-00127, Paper 43 at 14-15; IBM,
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`IPR2015-00089, Paper 44 at 52-56. Accordingly, the date on Martin should be
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`admitted under the residual hearsay exception as discussed above.
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`Third, Finjan’s argument that Martin is not relevant is based on its other
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`objections and assertions regarding public availability. (Paper 35 at 13-14.) Martin
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`is relevant to Petitioner’s invalidity case and the date on Martin is relevant to
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`public availability. F.R.E. 401. Accordingly, Martin should not be excluded.
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`Petitioner’s Response to Patent Owner’s
`Motion to Exclude
`IPR2016-00159
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`Dated: January 24, 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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`By:
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`/Orion Armon/
`Orion Armon
`Reg. No. 65,421
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`Petitioner’s Response to Patent Owner’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 Response complies with
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`the type-volume limits of 37 C.F.R. § 42.24(a)(1)(v) and 42.24(b)(3) because it
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`contains 15 pages, excluding the parts of this Response that are exempted by 37
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`Respectfully submitted,
`COOLEY LLP
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`By:
`
`/Orion Armon/
`Orion Armon
`Reg. No. 65,421
`
`C.F.R. § 42.24(a).
`
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`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
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`Petitioner’s Response to Patent Owner’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 24,
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`2017, a complete and entire copy of this PETITIONER’S RESPONSE TO
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`PATENT OWNER’S MOTION TO EXCLUDE was served by filing this
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`document through the E2E System and via electronic mail upon the following
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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
`
`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:
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`
`
`/Orion Armon/
`Orion Armon
`Reg. No. 65,421
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`counsel of record:
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`James Hannah
`KRAMER LEVIN NAFTALIS &
`FRANKEL LLP
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`
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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
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